AdamsProducts Company

Trademark Trial and Appeal Board

Jul 13, 2006

No. 76599592 (T.T.A.B. Jul. 13, 2006)

Mailed: 7/13/06

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Adams Products Company
________

Serial No. 76599592
_______

Richard E. Jenkins of Jenkins, Wilson & Taylor for Adams
Products Company.

Linda A. Powell, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Bucher and Kuhlke, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Adams Products Company to
register the mark GREENLINE (in standard character form)
for “recycled concrete masonry blocks.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), on the ground that applicant’ s mark, if applied
to applicant’s goods, would so resemble the previously

1 Application Serial No. 76599592, filed June 25, 2004, alleging
a bona fide intention to use the mark in commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76599592
2
registered mark shown below

for “concrete set accelerators, compounds for dust-proofing
and damp-proofing concrete, concrete curing and hardening
compounds, bonding agents for mixing with cementicious
materials, concrete form release compounds, [and]
entraining agents for use in concrete” (in International
Class 1); and “coatings for blacktop surfaces, coatings and
sealers for concrete masonry and other porous surfaces,
water-based primers for concrete, [and] masonry or other
porous surfaces which will increase the adherence of
membranes or other non-paint coatings,”2 as to be likely to
cause confusion.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs.
Applicant argues that the “pre-product” concrete
additive products and “post-product” sealers and primers
covered by the cited mark are different from applicant’s

2 Registration No. 1865108, issued November 29, 1994; renewed.
Ser No. 76599592
3
recycled concrete masonry blocks. Applicant also contends
that the goods are sold through different trade channels.
According to applicant, its goods are bought by
sophisticated professionals in the building structure
industry who wish to utilize recycled or so-called “green”
building materials for specific design purposes, as for
example, buildings and retaining walls. Registrant’s
goods, applicant asserts, are sought out by those “seeking
to enhance a bituminous construct for a specific purpose
(i.e., to make the construct damp-proof or to make the
construct release from a form more easily) or by those
seeking to enhance the construct (such as a concrete slab)
by sealing or priming it.” Applicant further states that
registrant’s goods “are also narrowly tailored within a
channel of trade specific for the betterment of concrete
(or blacktop asphalt or similar material) slab-type
products for a specific purpose.” (Brief, p. 5).
Applicant contends that the respective goods are bought
under different conditions and circumstances, and that the
goods are bought by discerning and sophisticated purchasers
after “extensive” consideration. Applicant also points to
the absence of any actual confusion. In connection with
its argument that the cited mark is weak, applicant relied
upon two third-party registrations of GREENLINE marks.
Ser No. 76599592
4
The examining attorney maintains that the marks are
almost identical, and that the goods are complementary in
nature. Thus, according to the examining attorney,
purchasers confronting both marks will ascribe a common
source to the respective goods. The examining attorney
also asserts that the goods move in the same trade channels
for building construction materials. In support of the
refusal, the examining attorney submitted excerpts of
third-party websites to show that the goods are
complementary.
We first direct our attention to an evidentiary
matter. Applicant, in its March 22, 2005 response,
referred to two third-party registrations. The examining
attorney, in her April 20, 2005 responsive Office action,
indicated that the registrations were not properly made of
record. The examining attorney alternatively went on to
consider the registrations, according them minimal
probative weight. Applicant then provided copies of the
two registrations with its appeal brief. The examining
attorney, in her brief, reiterated her view that this
evidence was of little consequence in determining the
merits of the refusal.
Trademark Rule 2.142(d) states that the record in an
application should be complete prior to the filing of an
Ser No. 76599592
5
appeal. Moreover, the mere reference to third-party
registrations during the prosecution of an application is
insufficient to make the referenced registrations of
record. To make a third-party registration of record, a
copy of the registration, either a copy of the paper USPTO
record, or a copy taken from the electronic records of the
Office, should be submitted. In re Volvo Cars of North
America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB 1998). See
TBMP § 1208.02 (2d ed. rev. 2004).
In spite of the deficiencies related to the proper
introduction of this evidence, we have followed the
examining attorney’s lead in considering the two third-
party registrations.
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
Ser No. 76599592
6
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
With respect to the marks GREENLINE and GREEN LINE
(stylized), they are identical in sound. They also are
identical in meaning, both connoting an environmentally-
friendly or “green” line of products.
The fact that the two words comprising applicant’s
mark appear without a space between them hardly
distinguishes the mark from the cited mark. Moreover, the
stylization of registrant’s mark is relatively minimal,
neither striking nor otherwise dramatic, and it does little
to distinguish the marks in view of the fact that
purchasers are unlikely to remember this simple
distinction. Rather, the words themselves are more likely
to be recalled, and they will be used in calling for the
goods. Inasmuch as applicant’s mark is presented in
standard characters, applicant is not limited to any
particular depiction. Accordingly, applicant’s mark
presumably could be used in the same or similar manner of
script as shown in registrant’s mark. See In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
In sum, the marks are identical in sound and meaning,
and virtually identical in appearance and overall
Ser No. 76599592
7
commercial impression. This factor weighs heavily in
registrant’s favor.
We next turn to a consideration of the goods. We
note, at the outset of considering this du Pont factor,
that the greater the degree of similarity between
applicant’s mark and the cited registered mark, the lesser
the degree of similarity between applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). If the marks are the same or
nearly so, as in this case, it is only necessary that there
be a viable relationship between the goods in order to
support a finding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
The goods are related in that all are building
construction materials and supplies. The Internet evidence
provided by the examining attorney makes it quite clear
that goods of the type sold by registrant, namely coatings,
sealers and primers for concrete masonry, are used on
applicant’s type of goods, namely concrete masonry blocks.
We think the examining attorney has it right when she
states the following about the complementary nature of the
goods:
Ser No. 76599592
8
In the instant case, consumers building
structures, walls, retaining walls or
the like from concrete masonry blocks
such as those provided by applicant,
are likely to seek sealers or
protective coatings for concrete
masonry blocks to reduce dust, to
protect the blocks from weather or
environmental damage, to enhance the
visual appearance of the concrete
masonry, or to prepare the concrete
masonry of other non-paint coatings.
Upon discovering sealers and coatings
for concrete and masonry bearing an
almost identical mark, consumers are
likely to mistakenly believe that the
goods originate from the same source,
and that the goods are intended to be
used together.
(Brief, unnumbered p. 3).

Contrary to applicant’s contentions, the goods would
travel through the same or similar trade channels, that is,
those involving building construction materials and
supplies. As pointed out by the examining attorney, there
are no limitations in the identifications of goods. 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 application at issue and/or in the cited registration
Ser No. 76599592
9
are broadly identified as to their nature and type, 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
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Accordingly, we must assume that applicant’s and
registrant’s goods would travel in the same trade channels,
such as building supply stores. Further, the goods would
be bought by the same classes of purchasers (both building
construction professionals and do-it-yourselfers). The
fact that some purchasers may be sophisticated or
knowledgeable in the building construction field does not
necessarily mean that they are sophisticated or
knowledgeable in 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.”]. See
also In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Ser No. 76599592
10
Applicant contends that the cited mark is weak and, in
trying to limit the scope of protection to be accorded
registrant’s mark, applicant has relied upon two third-
party registrations. This evidence is not persuasive of a
different result. The two third-party registrations are
not evidence of use of the marks shown therein. Thus, they
are not proof that consumers are familiar with such marks
so as to be accustomed to the existence of similar marks in
the marketplace, and as a result would be able to
distinguish between GREEN LINE marks based on slight
differences between them. Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and
Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989
(TTAB 1982). The probative value of the two third-party
registrations is significantly diminished by virtue of the
fact that the trademarks cover goods (paints and floor
adhesives) that are removed from the types of goods
involved in the present appeal. See Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991),
aff’d unpub., (Appeal No. 92-1086, Fed. Cir., June 5,
1992).
Ser No. 76599592
11
Applicant’s statement that there have been no
instances of actual confusion is of no moment. Applicant
refers to the contemporaneous use of its mark shown below3

with the cited mark. Firstly, applicant’s two marks are
very different, and the lack of any actual confusion
between its design mark and registrant’s mark is irrelevant
to the present appeal. Secondly, the present word mark is
based on an intention to use the mark, so there has been no
opportunity for actual confusion to occur between the mark
at issue and registrant’s mark.
We conclude that purchasers familiar with registrant’s
“concrete set accelerators, compounds for dust-proofing and
damp-proofing concrete, concrete curing and hardening
compounds, bonding agents for mixing with cementicious
materials, concrete form release compounds, [and]
entraining agents for use in concrete” and “coatings for

3 Application Serial No. 76599297 is currently pending. The
drawing is lined for the color green, and the mark is described
as follows: “The mark is a band of green color and the mark is
used by positioning the band of green color on one end of a
concrete masonry block.”
Ser No. 76599592
12
blacktop surfaces, coatings and sealers for concrete
masonry and other porous surfaces, water-based primers for
concrete, [and] masonry or other porous surfaces which will
increase the adherence of membranes or other non-paint
coatings” sold under its mark GREEN LINE (stylized) would
be likely to believe, upon encountering applicant’s
“recycled concrete masonry blocks” sold under the mark
GREENLINE, that the goods originated with or are somehow
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); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.