Andpak, Inc.

Trademark Trial and Appeal Board

Apr 22, 2014

No. 76705609 (T.T.A.B. Apr. 22, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Andpak, Inc.
_____

Serial No. 76705609
_____

John Joseph Hall, Esq. for Andpak, Inc.

Seth A. Rappaport, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
_____

Before Kuhlke, Mermelstein and Bergsman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Andpak, Inc., dba Zip-Chem Products (“applicant”) filed a use-based
application on the Principal Register to register the mark SUR PREP, in standard
character form, for goods ultimately identified as follows:
Natural cleaning preparations and degreasing
preparations specially formulated in liquid and aerosol
form to meet and satisfy military and commercial
specifications to remove various contaminants such as but
not limited to grease, oil residues, oxidized dust, and
adhesive residues on aircraft surfaces, with established
channels of trade of goods limited to direct sales by
applicant to highly sophisticated direct customers in the
aircraft industry and through highly sophisticated
distributors in the aircraft industry specially selected by
Serial No. 76705609

2

applicant, said aircraft industry including both military
and commercial aircraft, in Class 3.
Applicant disclaimed the exclusive right to use the term “Prep.” In response to a
now-withdrawn refusal to register the mark on the ground of mere descriptiveness,
applicant offered—and the examining attorney accepted—a claim pursuant to
Trademark Act § 2(f) that the mark has become distinctive of the identified goods.
The Trademark Examining Attorney refused to register applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the registered mark SUR-PREP, in typed
drawing form, for “wiping products; namely, cleaning cloths, washing cloths, and
non-abrasive glossing cloths,” in Class 21, as to be likely to cause confusion.1
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the essential characteristics
of the goods and differences in the marks”). These factors, and any other relevant
du Pont factors in the proceeding now before us, will be considered in this decision.

1 Registration No. 1823762, issued February 22, 1994; renewed.
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Serial No. 76705609

4

In its September 15, 2011 response to an Office action, “[a]pplicant
acknowledges that the question of likelihood of confusion must be determined on
the goods recited in the cited registration and the goods recited in applicant’s
application,” but then applicant references extrinsic evidence showing the
differences in the nature of its actual goods and those of the registrant, their
channels of trade and classes of consumers. While applicant’s description of goods
has restrictions regarding the nature of the product (i.e., for use on aircraft as set by
military and commercial specifications) and channels of trade (i.e., direct sales in
the aircraft industry), the wiping products in the cited registration are broadly
described and have no restrictions or limitations. Based on the description of goods
in the cited registration, registrant’s wiping products could be used on aircraft
pursuant to military and commercial specifications and they could be sold by direct
sales in the aircraft industry albeit not by applicant.
When considering the scope of the cited registration, we look to the
registration itself, and not to extrinsic evidence about the registrant’s actual goods,
customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA
1958). See also In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)
(evidence that relevant goods are expensive wines sold to discriminating purchasers
must be disregarded given the absence of any such restrictions in the application or
registration). Because there are no limitations as to channels of trade or classes of
purchasers in the description of goods in the cited registration, we must presume
Serial No. 76705609

5

that registrant’s goods move in all channels of trade normal for those goods, and
that they are available to all classes of purchasers for those goods, such as
purchasers in the aircraft industry for both military and commercial aircraft, and
that they could be sold through direct sales. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“we give full sweep to
appellant’s registration description of goods”); Kalart Co. v. Camera-Mart, Inc., 119
USPQ at 139-40; In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In applicant’s May 8, 2013 response to an Office action, applicant submitted
four unverified statements from three of applicant’s customers and a distributor
that “confirm and verify” that applicant’s customers and distributors “would reject
towel products for use to remove contaminants from aircraft surfaces for failure to
satisfy the military and commercial specifications of the SUR PREP Registration
Guide.”2 The following excerpt is from the statement by Paula Mello, Parts
Manager for the Aircraft Shop for El Aero Services, Inc., is representative. We note
that the four statements are essentially the same.

2 Despite the fact that registrant’s description of goods is “wiping products; namely,
cleaning cloths, washing cloths, and non-abrasive glossing cloths,” applicant reviewed a
profile of registrant in Bloomberg Businessweek magazine (investing.businessweek.com)
which described registrant as offering “foodservice towels, wet wipe towels, multipurpose
cleaning towels, and cleaning and sanitizing towels for foodservice cleaning applications in
high volume areas, in kitchen/deli and food prep areas, and on tables and counters. It also
offers general purpose towels for general purpose wiping; and dusting towels for multi-
purpose dusting applications.” Hall Declaration, Exhibit 3, attached to the September 15,
2011 response to Office action. Applicant’s arguments improperly focuses on extrinsic
evidence regarding registrant’s use of its mark rather than addressing applicant’s broader
description of goods.
Serial No. 76705609

6

My company requires SUR PREP products and any
product for use to remove contaminants from aircraft
surfaces to satisfy the military and commercial
requirements listed on the Specification Guide for such
use.
Although my company may use towels for cleaning
generally, towels are unable to remove contaminants from
aircraft surfaces. Further, towels are unable to satisfy
the military and commercial requirements of the
Specification Guide. Consequently, my company rejects
towels for use in removing contaminants from aircraft
surfaces.
The Specification Guide for removing contaminants from aircraft surfaces to
satisfy military and commercial requirements is a list identifying which SUR PREP
products meet military specifications and/or commercial specifications. It is not a
specification per se. The Specification Guide does not set forth any requirements for
the products used to remove contaminants from aircraft. In other words, there is
nothing in the Specification Guide indicating whether towels or any other wiping
products are used as part of removing contaminants from aircraft (e.g., wiping down
or wiping off the aircraft after the application of a decontaminant or subsequently
polishing the aircraft after the decontamination process).
The customer statements contend that towels are unable to remove
contaminants and are unable to satisfy the military and commercial requirements
of the Specification Guide. As indicated above, the Specification Guide made of
record is a list of applicant’s products that purportedly meet military and
commercial specifications. There is nothing of record that sets forth the elements or
requirements of the specification. Moreover, the customers’ contentions do not
mean that towels or other wiping products are not used in the process of removing
Serial No. 76705609

7

contaminants or otherwise may not be used in the process of cleaning and polishing
an aircraft.
The customer statements contend that their companies reject towels for use
in removing contaminants from aircraft surfaces. All that means is that a towel
alone cannot remove contaminants from aircraft surfaces. Other wiping cloths may
be used to clean and polish aircraft.
Applicant explains that its customers and distributors would reject the towels
in the cited registration because they are “not identified as satisfying military and
commercial requirements for removal of contaminants from aircraft surfaces and
would be rejected on that ground by the SUR PREP sophisticated direct customers
and distributors.” However, as indicated above, the wiping products in the cited
registration are not subject to any restrictions or limitations and, therefore, the
wiping products may include wiping products that meet military and commercial
aircraft specifications.3

3 It would have been helpful had applicant introduced evidence to explain that “wiping
products” are not used on aircraft or, if they are, what kind of wiping products are used for
aircraft and the terms used to refer to such wiping products. For example, if accurate,
applicant could have explained why registrant’s wiping products as defined in the cited
registration are not used in the aircraft industry and what term or terms are used in the
aircraft industry to reference suitable wiping products. In the absence of any other
definition of the terms as they are used in the relevant trade, we give the registrant’s
“cleaning cloths [and] washing cloths” their ordinary and unrestricted meaning, i.e., cloths
for any kind of cleaning and washing, including cloths used for cleaning and washing
aircraft.
In any event, applicant was not without a remedy. Applicant could have filed a petition for
cancellation or restriction of the cited registration on the ground of abandonment alleging
that registrant is no longer using (or never used) the mark in connection with wiping
products used in the aircraft industry. Johnson & Johnson v. Obschestvo s Ogranitchennoy,
104 USPQ2d 2037, 2038 n.2, 2039 (TTAB 2012) (counterclaim seeking partial cancellation
as to only three of the items identified in the class based on abandonment due to nonuse
Serial No. 76705609

8

To show that the goods are related, the Trademark Examining Attorney
submitted use-based, third-party registrations registered for both cleaning
preparations and cleaning cloths. Third-party registrations which individually
cover a number of different goods that are based on use in commerce have some
probative value to the extent that they serve to suggest that the listed goods are of a
type which may emanate from the same source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988). The following registrations may serve to suggest that
cleaning preparations and cleaning cloths emanate from a single source under the
same mark:4
Mark Reg. No. Goods
FULLER 1402725
All-purpose degreaser;

Dust cloths, anti-fog cleaning cloths
TOUGH GUY 3864758
All-purpose cleaning preparations; preparations for
cleaning vehicle surfaces; degreasing preparations;
detergents for land, air and water vehicles;

Cleaning cloths
KEY FOOD 3694631
Detergent; all-purpose cleaner;

Cleaning cloths

without an intent to resume use is a counterclaim of abandonment sufficiently stated
notwithstanding reference to Section 18); DAK Industries Inc. v. Daiichi Kosho Co., 35
USPQ2d 1434, 1437 (TTAB 1995) (because applicant sought to strike from opposer's
registration goods specifically listed therein, such as “open reel audio tape,” on the grounds
that opposer was no longer using and had no intent to resume use of its mark on such
goods, it was proper to plead abandonment and applicant did not need to plead that a
finding of likelihood of confusion will be avoided by the restriction it sought).
4 We have not included the entire description of goods for each registration. We have listed
only the goods relevant to this decision.
Serial No. 76705609

9

Mark Reg. No. Goods
ACUITY 3283440
Chemical solvents for cleaning and degreasing;
general purpose cleaners; degreasing preparations
for all purpose use; vehicle detergents and
shampoo; electrical equipment aerosol cleaner and
lubricant;

Wiping cloths
AMSAN 3076262
All-purpose cleaning preparations;
Dusting or cleaning cloths
GUARDSMAN
PRO SERIES 3179775
General purpose cleaning liquids and powders;

Cleaning cloth
CLEANWELL 3930061
All-purpose cleaning preparations;

Cleaning cloths with disinfecting properties
JOHNSON WAX
PROFESSIONAL 2646351
All-purpose cleaning preparations, other than for
use on the body;

Cleaning cloths
METHOD 3388928
All-purpose cleaning preparations;

Dusting or cleaning cloths

We acknowledge that none of the third-party registrations specifically include
cleaning preparations or degreasers for aircraft. However, the third-party
registrations referenced above include “all-purpose” and “general purpose” cleaning
preparations or degreasers without any limitation or restriction as to use. When
interpreting the description of goods, “[t]he common understanding of words or
phrases used in an identification determines the scope and nature of the goods or
services.” TMEP § 1402.03 (October 2013). See also TMEP § 1402.07 (“for the
purpose of determining the scope of an identification, the examining attorney
should consider the ordinary meaning of the wording apart from the class number
Serial No. 76705609

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designation.”). Where a description of goods is broadly constructed, we must allow
for all possible products that may fall within the description. See In re Wacker
Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010), citing Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). We also
do not read limitations into the identification of goods. Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage
of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly
read limitations into the registration.”). Thus, an all-purpose cleaning preparation
or degreaser may be used in the aircraft industry.5
It is settled that it is not necessary that the respective goods be identical or
even competitive in order to find that they are related for purposes of our likelihood
of confusion analysis. That is, the issue is not whether consumers would confuse
the goods themselves, but rather whether they would be confused as to the source of
the goods. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). The goods need only
be sufficiently related that consumers would be likely to assume, upon encountering
the goods under similar marks, that the goods originate from, are sponsored or

5 As noted above in footnote 2, if the “all-purpose cleaning preparation” or degreaser is a
term of art and has a meaning other than that suggested by the plain meaning of the
description of goods, it was incumbent upon applicant to submit that evidence. See TMEP
§ 1402.03 (October 2013) (“The common understanding of words or phrases used in an
identification determines the scope and nature of the goods or services.”). On the other
hand, the third-party websites submitted by the Trademark Examining Attorney have no
probative value because they do not include cleaning preparations and degreasers used in
the aircraft industry. Unlike the third-party registrations where we must give terms such
as “all-purpose” a broad scope of protection, the third-party websites show use of specific
products, none of which were used in connection with aircraft.
Serial No. 76705609

11

authorized by, or are otherwise connected to the same source. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In this regard,
even when goods are not intrinsically related, the use of identical marks, as in this
case, can lead to the assumption that there is a common source, particularly when
the marks at issue are virtually identical. In re Shell Oil Co., 992 F.2d 1024, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993).
In view of the foregoing, we find that applicant’s natural cleaning
preparations and degreasing preparations that are specifically formulated for
aircraft surfaces and registrant’s wiping products are complementary products
because registrant’s wiping products, as set forth in the description of goods, may be
used to clean and polish aircraft even if not specifically with applicant’s natural
cleaning preparations and degreasing preparations. If goods are complementary in
nature, or used together, this relatedness can support a finding of likelihood of
confusion. See, e.g., In re Martin's Famous Pastry Shoppe, Inc., 223 USPQ at 1290.
In addition, because there is no restriction as to the channels of trade and classes of
consumers in the description of goods in the cited registration, we must presume
that registrant’s wiping products may be sold to the aircraft industry.
C. Degree of consumer care.
Applicant asserts that its customers “are highly sophisticated direct
customers in the aircraft industry and applicant’s distributors are highly
Serial No. 76705609

12

sophisticated distributors in the aircraft industry specially selected by applicant.”6
Even assuming that applicant’s customers exercise a high degree of care when
purchasing aircraft cleaning preparations and degreasers, this does not mean that
they are equally skilled in distinguishing between similar trademarks, especially in
this case where the marks are legally identical and used on complementary
products. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of
discriminating purchasers ... are not infallible."). See also Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); and In re Pellerin Milnor
Corp., 221 USPQ 558 (TTAB 1983).
D. Balancing the factors.
Because the marks are virtually identical, the goods are related, and we must
presume that the goods move in the same channels of trade and are sold to the
same classes of consumers, we find that applicant’s mark SUR PREP for “natural
cleaning preparations and degreasing preparations specially formulated in liquid
and aerosol form to meet and satisfy military and commercial specifications to
remove various contaminants such as but not limited to grease, oil residues,
oxidized dust, and adhesive residues on aircraft surfaces, with established channels
of trade of goods limited to direct sales by applicant to highly sophisticated direct
customers in the aircraft industry and through highly sophisticated distributors in

6 Applicant’s Brief, pp. 3-4.
Serial No. 76705609

13

the aircraft industry specially selected by applicant, said aircraft industry including
both military and commercial aircraft” so resembles the mark SUR-PREP for
“wiping products; namely, cleaning cloths, washing cloths, and non-abrasive
glossing cloths” as to be likely to cause confusion.
Decision: The refusal to register is affirmed.