No-Burn Investments, L.L.C.

Trademark Trial and Appeal Board

Apr 16, 2007

No. 76529667 (T.T.A.B. Apr. 16, 2007)

Mailed: 4/16/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re No-Burn Investments, L.L.C.
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Serial No. 76529667
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Christopher John Rudy, Esq. for No-Burn Investments, L.L.C.

Justine D. Parker, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by No-Burn Investments,
L.L.C. to register the mark FABRIC FIRE GARD (“FABRIC FIRE”
disclaimed) for “water-based fire-retardants, and such
fire-retardants especially for absorptive application to
fabrics and textiles and cloth, paper, wood and other
porous materials including on or in couches, mattresses,
THIS DISPOSITION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76529667
2
carpets, drapes, camping equipment, homes, autos, boats,
and recreational vehicles.”1
The examining attorney refused registration under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
goods, so resembles the previously registered mark FABRIC
GUARD (“FABRIC” disclaimed) for “fabric protective coating”2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.3
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, 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 (CCPA 1976). See also: In re Dixie

1 Application Serial No. 76529667, filed July 7, 2003, alleging
first use anywhere and first use in commerce on June 6, 2003.
2 Registration No. 966358, issued August 21, 1973; renewed.
3 The examining attorney named in the caption was newly assigned
to this application shortly before the appeal brief was filed.
Ser No. 76529667
3
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first turn to consider the marks. In determining
the similarity or dissimilarity of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. Palm Bay
Imports, 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 sufficiently similar in their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant concedes that the marks “bear some
superficial or general similarities,” but goes on to focus
on what it perceives to be “significant dissimilarities,”
namely the presence of the word “FIRE” in its mark and its
use of “GARD” rather than “GUARD.”
The marks are similarly constructed in that both begin
with the identical term “FABRIC” and end with the phonetic
Ser No. 76529667
4
equivalents “GUARD” and “GARD.” Because of this similar
construction, the marks look alike and sound alike. The
presence of “FIRE” in the middle of applicant’s mark does
not appreciably change the appearance or sound of
applicant’s mark.
The marks also have similar meanings in that both
convey the idea that the respective products serve to
protect or “guard” fabrics. We recognize, however, that
applicant’s mark further imparts more specific information,
namely that its product protects against fire.
Nevertheless, the idea conveyed by registrant’s mark is
broad enough to cover the protection of fabric against
anything, including fire. In re M. Serman & Company, Inc.,
223 USPQ 52 (TTAB 1984).
Taking into account all of the similarities between
the marks FABRIC FIRE GARD and FABRIC GUARD, we find that
the marks engender similar overall commercial impressions.
The mere addition of a term (especially when it is merely
descriptive as in the case of “FIRE”) to a registered mark
does not avoid a similarity between the marks. See In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re El Torito Restaurants Inc., 9
USPQ2d 2002 (TTAB 1988); and In re Corning Glass Works, 229
USPQ 65 (TTAB 1985). Likewise, applicant’s use of the
Ser No. 76529667
5
phonetic equivalent “GARD” does not serve to distinguish
its mark from registrant’s mark. In re Great Lakes
Canning, Inc., 227 USPQ 483 (TTAB 1985).
The first du Pont factor, the similarity between the
marks, weighs in favor of finding a likelihood of
confusion.
As just noted, the marks have similar meanings.
Notwithstanding the clearly suggestive meanings of the
involved marks as applied to fabric protective coatings,
the record is devoid of any evidence of third-party uses or
registrations of the same or similar mark in the fabric
coatings field. This sixth du Pont factor weighs in favor
of finding a likelihood of confusion.
We next turn to a consideration of the goods. It is
not necessary that the respective goods be identical or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they
Ser No. 76529667
6
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
Applicant focuses its argument on the specific
differences between the goods in reality, that is,
applicant’s product protects against fire whereas
registrant’s product protects against stains (and even
renders a fabric more flammable).
Insofar as the goods are concerned, however, it is
well settled that the question of likelihood of confusion
must be determined based on an analysis of the goods
recited in applicant’s application vis-à-vis the goods
identified in the cited registration. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993);
and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in
the cited registration are broadly identified as to their
nature and type (as is the case herein), such that there is
an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
Ser No. 76529667
7
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
In view thereof, registrant’s broadly worded
identification “fabric protective coating” encompasses all
types of such goods. The identification is not limited to
a stain protective coating; rather, and contrary to
applicant’s arguments, it is presumed that registrant’s
coating protects fabrics from a variety of harms, including
fire.4
Applicant, relying on certain materials about
registrant’s product, contends that registrant’s product
protects against stains only, and that it is not fire
retardant, but rather that it actually accelerates
flammability. Applicant’s attempt to essentially limit the
scope of registrant’s goods is to no avail. An applicant
may not restrict the scope of the goods covered in the
cited registration by argument or extrinsic evidence. In
re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Lest there be any doubt about the relatedness of the
goods, the examining attorney’s evidence shows that the

4 We note that applicant amended its identification of goods to
more specifically define its goods. However, if a cited
registration has a broad identification of goods, an applicant
does not avoid likelihood of confusion merely by more narrowly
identifying its related goods. See In re Diet Center Inc., 4
USPQ2d 1975 (TTAB 1987); and In re Uncle Sam Chemical Co., Inc.,
229 USPQ 233 (TTAB 1986).
Ser No. 76529667
8
same entities manufacture both stain-resistant fabric
coatings and fire-resistant fabric coatings.
We agree with the examining attorney’s assessment that
consumers familiar with registrant’s FABRIC GUARD for
fabric protective coatings would be likely to mistakenly
believe that applicant’s mark FABRIC FIRE GARD identifies a
fire resistant product line originating from registrant.5
The similarity between the goods weighs in favor of finding
a likelihood of confusion.
Applicant argues that the relevant purchasers of the
goods are sophisticated. Neither applicant’s nor
registrant’s identification of goods is so limited.
Further, as evidenced by the information on applicant’s
website, its product may be used by do-it-yourself
consumers. Even assuming arguendo that purchases are
carefully made, we find that the substantial similarity of
the marks and the similarity between the goods clearly
outweigh any sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.

5 In this connection it is interesting to note that applicant
uses both FABRIC FIRE GARD and FABRIC GARD in connection with its
product. On its website, applicant indicates that its FABRIC
FIRE GARD brand product is the retail version of its FABRIC GARD
brand product.
Ser No. 76529667
9
1990) [similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and
expensive goods]. The fact that consumers may be careful
in their purchases does not necessarily mean that they are
sophisticated in the field of trademarks or immune from
source confusion. 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.”].
The two declarations of William Kish, applicant’s
president, do not compel a different result in this case.
In addition to his statements pertaining to other du Pont
factors, Mr. Kish states that there have been no instances
of actual confusion between applicant’s and registrant’s
marks. Based on the use dates set forth in the application
and registration, there have been a few years of
contemporaneous use; however, there is no additional
evidence relating to the extent of the respective uses.
Thus, we are unable to ascertain whether there has been a
meaningful opportunity for confusion to occur in the
marketplace. The applicable test under Section 2(d) is, in
any event, likelihood of confusion. Giant Food, Inc. v.
Ser No. 76529667
10
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
396 (Fed. Cir. 1983). Accordingly, this factor is neutral.
We conclude that purchasers familiar with registrant’s
“fabric protective coating” sold under its mark FABRIC
GUARD would be likely to believe, upon encountering
applicant’s mark FABRIC FIRE GARD for “water-based fire-
retardants, and such fire-retardants especially for
absorptive application to fabrics and textiles and cloth,
paper, wood and other porous materials including on or in
couches, mattresses, carpets, drapes, camping equipment,
homes, autos, boats, and recreational vehicles,” that the
goods originate with or are associated with or sponsored by
the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register in each class is
affirmed.