Centraz Industries, Inc.v.Spartan Chemical Company, Inc.

Trademark Trial and Appeal Board

Jan 23, 2006

No. 91159335 (T.T.A.B. Jan. 23, 2006)

Hearing:
September 22, 2005 Mailed: 1/23/2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Centraz Industries, Inc.
v.
Spartan Chemical Company, Inc.
_____

Opposition No. 91159335
to application Serial No. 78247599
filed on May 9, 2003
_____

Matthew A. Rosenberg and Jeffrey L. Michelman of Blumenfeld,
Kaplan & Sandweiss for Centraz Industries, Inc.

Jody H. Armstrong and Martin Miller of Dinsmore & Shohl for
Spartan Chemical Company, Inc.
______

Before Quinn, Hohein and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Spartan Chemical Company,
Inc. to register the mark shown below

for “floor finishing preparations.”1

1 Application Serial No. 78247599, filed May 9, 2003, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DECISION IS CITABLE
AS PRECEDENT OF THE
TTAB
Opposition No. 91159335
2
Centraz Industries, Inc. opposed registration under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered mark ICE
SHINE for “floor finishing preparations”2 as to be likely to
cause confusion.
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; and trial testimony, with related
exhibits, taken by each party. Both parties filed briefs,
and both were represented by counsel at an oral hearing held
before the Board.
Opposer, according to the testimony of its president,
Dennis Miller, is a manufacturer of cleaning and specialty
products, including a line of floor products intended
primarily for commercial, institutional and office use. In
1989, opposer launched a floor care product line under marks
and trade dress relating to an ice/polar theme, including
ICE SHINE brand floor finishing preparations used to shine
any tile floor surface. Opposer’s floor products now are
available for sale directly from opposer through its
Internet web site, but until this recent change, the
products were sold solely through distributors. End users

2 Registration No. 2862422, issued July 13, 2004.
Opposition No. 91159335
3
of the products include retail stores, schools and offices.
The products are advertised mainly in trade journals and
through industry-wide bulletins.
Applicant, according to Melanie Mance, applicant’s
assistant advertising manager, is engaged in the formulation
and manufacture of specialty maintenance cleaning products
for the industrial and institutional markets. The products
include ISHINE brand floor finishing preparations that are
sold through distributors. The products are advertised in
trade publications and through appearances at trade shows.
Although the involved application is based on an intention
to use the mark in commerce under Section 1(b), and no
amendment to allege use was filed, Ms. Mance testified that
applicant commenced use of the mark in 2003. Applicant’s
total sales under the ISHINE mark have exceeded $2 million
for the last two years, and advertising expenditures during
that time have totalled approximately $100,000.
In view of opposer’s ownership of a valid and
subsisting registration, there is no issue regarding
opposer’s priority. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, the only issue to decide herein is likelihood of
confusion.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
Opposition No. 91159335
4
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities or dissimilarities
between the marks and the similarities or dissimilarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These,
and other du Pont factors deemed pertinent in the proceeding
now before us, are discussed below.
With respect to the goods, as often stated, Board
proceedings are concerned with registrability and not use of
a mark and, thus, the common identification of goods in the
registration and application herein frames the issue.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); and Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987). Both products are identified as “floor
finishing preparations.” As identified, the goods are
legally identical for purposes of our likelihood of
confusion determination. This factor weighs heavily in
opposer’s favor.
As established by the record, both parties’ products
are sold to commercial and institutional customers. In at
least four cases, the same distributors handle both of the
Opposition No. 91159335
5
products sold under the ICE SHINE and ISHINE marks. It is
reasonable to assume that the parties’ commercial and
institutional customers will be relatively sophisticated in
making their purchases of cleaning products, including floor
finishing preparations.
We also note, however, that the identifications of
goods are not limited to commercial and institutional
customers. Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990). In the absence of any limitations in the parties’
identifications of goods, we must presume that the goods
move through all reasonable trade channels for such goods to
all usual classes of consumers for such goods. Schieffelin
& Co. v. Molson Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB
1989); Morton-Norwich Products, Inc. v. N. Siperstein, Inc.,
222 USPQ 735, 736 (TTAB 1984); and In re Elbaum, 211 USPQ
639, 640 (TTAB 1981)[“[W]here the goods in a cited
registration are broadly described and there are no
limitations in the identifications of goods as to their
nature, type, channels of trade or classes of purchasers, it
is presumed that the scope of the registration encompasses
all goods of the nature and type described, that the
identified goods move in all channels of trade that would be
normal for such goods, and that the goods would be purchased
by all potential customers.”]. Accordingly, in addition to
Opposition No. 91159335
6
the trade channels mentioned above, it must be presumed that
the parties’ goods will also be sold in retail outlets like
grocery stores, drug stores and warehouse merchandisers.
Likewise, it is presumed that the goods will be purchased by
ordinary consumers, employing nothing more than ordinary
care in their purchasing decision.
The factors of similar trade channels and classes of
purchasers generally weigh in favor of opposer. In the case
of the parties’ commercial and institutional customers,
their sophistication in making purchasing decisions weighs
in applicant’s favor. The factor of conditions under which
and buyers to whom sales are made is, therefore, neutral, as
some customers would be sophisticated in their purchasing
decisions, while others might not.
The parties have focused the bulk of their attention on
the crux of this controversy, namely, the first du Pont
factor involving the similarities/dissimilarities between
the marks. We must determine whether opposer’s registered
mark and applicant’s mark, when compared in their entireties
in terms of appearance, sound, connotation, and commercial
impression are similar or dissimilar. Palm Bay Import, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
Opposition No. 91159335
7
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); and Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June
5, 1992).
Additionally, where, as in the present case, the marks
are applied to identical goods, the degree of similarity
between the marks which is necessary to support a finding of
likely confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994).
With respect to appearance, the stylization of
applicant’s mark gives it a different look from opposer’s
mark in standard character form. In saying this, however,
the stylization of applicant’s mark is not striking or
otherwise dramatic; thus, prospective purchasers would
readily perceive the essence of applicant’s mark as
“iSHINE.”3

3 We have compared, of course, opposer’s mark to the mark sought
to be registered in stylized form. In this connection, however,
we also note that applicant, in the text of certain promotional
material, consistently refers to its mark as “iShine” in a typed
format.
Opposition No. 91159335
8
As to meaning, we note that opposer’s mark is promoted
in connection with images of polar bears and diamonds, both
of which have an association with “ice.” Opposer’s mark
conveys a cold, clear shine. With respect to applicant’s
mark, Ms. Mance was solely responsible for creating it. She
described her decision as follows (Mance dep., p. 7):
Well, it’s a floor finish, okay? And,
you know, you want your floors shiny,
so--and I had a cat named Sunshine who I
called “Shine” oftentimes. And at the
same time I was introducing ISHINE, I
came out with the name WHITE SUN. And
they just seemed to relate well back
into one another since both products
would be launched at the same time. And
that’s pretty much where it came from.

Ms. Mance later indicated that the mark “reflects floor
finish that’s warm, bright, inviting.” (Mance dep., p. 20).
Applicant posits that the mark “suggests that application of
the product makes the floor proclaim ‘I shine!’” (Brief, p.
11). Having reviewed the various meanings set forth by
applicant, we remain uncertain as to what specific
connotation purchasers will attach to the “i” portion of
applicant’s mark. Although we are unsure as to the meaning
of “i” in applicant’s mark, the mark as a whole suggests,
just as in the case of opposer’s mark, that the use of the
product will result in a shiny floor.
What stands out in the comparison between the marks ICE
SHINE and ISHINE (stylized) is the similarity in sound.
Opposer asserts that the only difference in pronunciation is
Opposition No. 91159335
9
“in the first syllable (long ‘i’ standing alone versus ‘is’
with a long ‘i’).” (Brief, p. 9). According to opposer,
“[t]his very slight difference in the first syllable is
diminished even more, as in ordinary speech, most people
will tend to roll the ‘s’ sound from the first syllable into
the ‘sh’ sound beginning with the second syllable.” Id.
Thus, opposer contends, “the only way to avoid the marks’
sounding identical is to carefully annunciate [sic] the ‘s’
sound in ICE.” Id. In attempting to avoid the phonetic
similarity between the marks, applicant argues that, if
properly pronounced, the marks sound different.
The marks are similarly constructed, both beginning
with a similar, long “i” sound, followed by the word
“shine.” There is no correct pronunciation of a trademark,
and it obviously is not possible for a trademark owner to
control how purchasers will vocalize its mark. Interlego AG
v. Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB
2002), citing In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ
227 (CCPA 1969). Thus, we find quite reasonable opposer’s
assessment that purchasers may roll the “s” sound from the
pronunciation of “ice” into the “sh” sound beginning the
second syllable “shine.” When opposer’s mark is spoken as
such, the two marks at issue herein sound remarkably
similar. Even if opposer’s mark is pronounced correctly,
with a first syllable “ice,” the marks ICE SHINE and ISHINE
Opposition No. 91159335
10
sound very much alike. Inasmuch as the goods may be ordered
by phone or recommended by word of mouth, the similarity in
sound is an important factor in comparing the marks,
especially where, as here, identical products are involved.
Inasmuch as the similarity in sound is so substantial
that it outweighs any differences in appearance and meaning,
we find that the marks engender similar overall commercial
impressions, both conveying, when used in connection with
floor finishing preparations, the image of a shiny floor as
a result of using the product.
In sum, the similarity between the marks weighs in
opposer’s favor.
As we indicated earlier, neither opposer’s nor
applicant’s identification of goods contains any limitations
on trade channels or classes of purchasers and, accordingly,
we must include ordinary consumers as among prospective
purchasers of the goods. In that circumstance, we keep in
mind the recollection of these average purchasers who
normally retain a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
In an attempt to show that the “SHINE” portion of the
marks is weak, applicant introduced, as an exhibit to Ms.
Mance’s testimony, a trademark search report ordered by
applicant when it filed the involved application, and
Opposition No. 91159335
11
conducted by a private search firm. The report indicates
that the accompanying copies of the third-party
registrations were obtained from the private firm’s
proprietary database.
The trademark search report is not credible evidence of
the third-party uses or registrations listed in the report.
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1232 (TTAB 1992);
and Burns Philip Food Inc. v. Modern Products Inc., 24
USPQ2d 1157, 1159 n. 3 (TTAB 1992), aff’d unpublished, 28
USPQ2d 1687 (Fed. Cir. 1993). Accordingly, the listings
therein are not entitled to any probative value. Even in
the absence of this evidence, however, we recognize the
common element of the marks, “SHINE,” is a term that, as
applied to floor finishing preparations, is, at the very
least, highly suggestive. In this connection, both parties
tout the “crystal clear shine” imparted by use of their
products on floors. Thus, to the extent that opposer’s mark
is suggestive, a similar suggestion, as indicated earlier,
is conveyed by applicant’s mark.
The absence of actual confusion does not compel a
different result in the likelihood of confusion analysis.
Although each party is unaware of any actual confusion over
a two-year period of contemporaneous use of the marks,
evidence of actual confusion is not essential to proving a
case of likelihood of confusion. Giant Food, Inc. v.
Opposition No. 91159335
12
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). This factor is neutral.
In deciding this case, we have given absolutely no
weight to opposer’s evidence of purported bad faith
adoption. Suffice it to say, opposer’s allegations
regarding Bruce Link’s4 role in applicant’s adoption of the
involved mark are far fetched; the tenuous connection drawn
by opposer is not supported by the record.
We conclude that consumers familiar with opposer’s
floor finishing preparations sold under its mark ICE SHINE
would be likely to believe, upon encountering applicant’s
mark ISHINE (stylized) for floor finishing preparations,
that the goods originate with or are somehow associated with
or sponsored by the same entity.
To the extent that any of applicant’s points raise a
doubt about our conclusion on likelihood of confusion, doubt
on the issue of likelihood of confusion is resolved in favor
of the prior user and against the newcomer. Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992).
Decision: The opposition is sustained and registration
to applicant is refused.

4 Mr. Link accepted a sales manager position with opposer.
Before assuming his duties, but after he was given access to
information about opposer’s product, Mr. Link rescinded his job
acceptance. Mr. Link subsequently took a position with applicant
as a regional manager.