ATB Indústria e Comércio de Adesivos LTDA

Trademark Trial and Appeal Board

Aug 17, 2020

88975359 (T.T.A.B. Aug. 17, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re ATB Industria e Comercio
de Adesivos Ltda.
_____

Serial No. 88975359
_____

Felipe Rubio of Rubio & Associates
for ATB Industria e Comercio de Adesivos Ltda.

Mark Sparacino, Trademark Examining Attorney, Law Office 103
Stacy Wahlberg, Acting Managing Attorney.
_____

Before Bergsman, Wolfson, and Larkin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
ATB Industria e Comercio de Adesivos Ltda. (Applicant) seeks registration on
the Principal Register of the mark TEK BOND and design, reproduced below, for
“Adhesive tapes, other than stationery and not for medical or household purposes,
namely, duct tape, strapping tape, masking tape, anti-slip tape, self-fusing tape,” in
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International Class 17.1

The description of the mark reads as follows: “The mark consists of the words
‘TEK BOND’ in stylized letters.” Color is not claimed as a feature of the mark.
Applicant disclaims the exclusive right to use the term “BOND.”
The Examining Attorney refused to register Applicant’s mark under Trademark
Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that the mark, as applied to the
goods identified in the application, so resembles the registered mark TEKBOND (in
standard characters) for
Plastics in extruded form, namely, non-elastomeric processed plastics
in the form of technopolymer pressure sensitive adhesive films and
tapes for industrial and commercial use; semi-worked plastics, namely,
high performance fluoropolymer adhesive films and tapes used to cover
other materials with the aim of providing non-stick, low coefficient of
friction, sealing properties, release properties, and resistance to high
temperature and chemicals, in International Class 17
as to be likely to cause confusion.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for

1 Serial No. 88975359 filed August 31, 2018, under Section 44(e) of the Trademark Act, 15
U.S.C. § 1126(e), based on Applicant’s claim of ownership of Brazilian Reg. No. 82199773,
issued August 27, 2002.
2 Registration No. 5551495, registered August 28, 2018.
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reconsideration, the appeal was resumed. Applicant and the Examining Attorney
filed briefs. We affirm the refusal to register.
I. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). “Not all DuPont factors are relevant in each case.” Stratus
Networks, Inc. v. UBTA-UBET Communs. Inc., 955 F.3d 994, 2020 USPQ2d 10341,
*7 (Fed. Cir. 2020). The Board considers only those DuPont factors for which there is
evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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.”).
A. The Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
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appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir.
2018). We are mindful that “[t]he proper test is not a side-by-side comparison of the
marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Cai v. Diamond Hong, 901 F.3d 1367,
127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)).
The Examining Attorney argues that “the literal elements of the respective marks
are phonetically identical”; that the “literal elements are dominant over the design
elements”; and that “because the registered mark is in standard characters,” it could
be depicted in the same font style as Applicant’s mark. 11 TTABVUE 7-8.3 Applicant
argues that its “high-contrast, two-tier design [mark] creates an overall commercial
impression that is sufficiently distinct from Registrant’s straightforward word mark”;
that its mark “draws the viewer’s eye to either ‘TEK’ or ‘BOND’ - not to
both…simultaneously”; and that its mark will be pronounced “as two distinct units”
whereas “Registrant’s unitary mark, meanwhile, lends itself to articulation as a
single word.” 9 TTABVUE 7-8.

3 All citations in this opinion to the appeal record are to TTABVUE, the docket history system
for the Trademark Trial and Appeal Board. Citations to the prosecution history of the
application are to pages from the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
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Considering the marks in their entireties, we find that they are virtually identical.
Both will be pronounced as “TEK BOND.” The fact that Applicant’s mark is stylized
with the two terms stacked one upon the other, and with the term TEK appearing in
white text against a black background ( ) does not change the likely
pronunciation of the mark. The marks are also similar in appearance. The stylization
of the letters is minimal and the background design merely serves as a carrier for the
wording in the mark.
The Board may accord greater weight to the literal portion of a mark, and we do
so in this appeal. The term TEK BOND in Applicant’s mark will be pronounced,
whereas the background design will not. See, e.g., Herbko Int’l, Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (“Because the impact of
the design in the overall commercial impression is minor when compared with the
words, a consumer viewing Herbko’s mark would attach greater significance to the
words CROSSWORD COMPANION than to the crossword puzzle design.”). See also
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (affirming
the Board's finding that the wording X-SEED was the dominant portion of Opposer’s
X-SEED and design mark: “This is not a case, therefore, where a larger design is
separate and independent from the literal features of the mark.”)
Applicant’s mark is also similar in connotation to Registrant’s mark, to the extent
the term “TEK BOND” has any meaning related to the adhesive quality of the goods.
Moreover, because the Registrant’s mark is the term TEKBOND in standard
characters, it could be displayed in the same font style and inverted color scheme as
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the words in Applicant’s mark , making the marks virtually identical in
appearance, sound, meaning and commercial impression. See Viterra, 101 USPQ2d
at 1909 (holding that the specific font style of a mark cannot serve as the basis to
distinguish it from a mark in standard character form); Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (registrant
“entitled to depictions of the standard character mark regardless of font style, size,
or color”).
Applicant argues that Registrant’s mark TEKBOND, for processed plastics in the
form of pressure sensitive adhesive films and tapes, is a weak mark entitled to a
narrow scope of protection. The Examining Attorney does not dispute that the term
“bond” is a weak component of the mark, inasmuch as it describes the adhesive
qualities of Registrant’s goods and has been disclaimed,4 but argues that “Applicant
provided no evidence that the entire mark TEK BOND [sic] is a weak term.”
Examining Attorney’s Brief, 11 TTABVUE 21.
Applicant contends that “TEK is a highly descriptive and widely used term.”
Applicant’s Brief, 9 TTABVUE 9. In support, Applicant submitted TSDR printouts
for eight use-based registrations for marks including the term TEK or its phonetic
equivalent TEC.5 The Examining Attorney argues that TEK is not a weak component

4 See December 20, 2018 Office Action at TSDR 7 (definition of “bond” as “the way that two
surfaces are stuck together, usually with glue,” from the MacMillan Dictionary). At
www.macmillandictionary.com/dictionary/american/bond.
5 Attached to June 19, 2019 Response to Office Action at TSDR 43-108. Applicant also
submitted TSDR printouts of two applications, two registrations based on Section 66(a), and
one registration based on Section 44(e). The applications have no probative value other than
as evidence that they were filed. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8
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of the mark based on “the few similar third-party registrations submitted by
applicant.” 11 TTABVUE 12.
Third-party registrations based on use can demonstrate “the sense in which the
word is used in ordinary parlance and may show that a particular term has
descriptive significance as applied to certain goods or services.” Institut National Des
Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196
(Fed. Cir. 1992). See also In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB
2006) (“[T]hird-party registrations can be used in the manner of a dictionary
definition to illustrate how a term is perceived in the trade or industry”). The extent
to which third-party use-based registrations bear on our determination of the cited
mark’s strength depends on the number of such registrations, the level of similarity
between the involved marks, and the closeness of the goods or services recited in the
third-party registrations vis-à-vis those in the cited registration.
Third-party registrations for unrelated goods, however, are of limited probative
value. See In re i.am.symbolic, LLC, 866 F.2d 1315, 123 USPQ2d 1744, 1751 (Fed.
Cir. 2017); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (third-party
registrations for goods that appear to be in fields which are far removed from the
goods at issue are of limited probative value). Here, three of the eight third-party
registrations are for finished products made of rubber or plastic that are not adhesive

(TTAB 2009). The Sections 66(a) and 44(e) registrations have little probative value as they
are not based on use and Applicant did not prove that an affidavit or declaration of continuing
use was filed in any of them. See Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100
USPQ2d 1213, 1221 n.15 (TTAB 2011).
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in nature.6 Two of the registrations are for compounds used in making molded or
extruded articles of manufacture.7 There is no record evidence showing that these
goods, as ingredients, are more than tangentially related to the finished plastics.
These five registrations are therefore of limited probative value.
The relevant registrations submitted by Applicant are:
• Registration No. 2217785 for the mark TECHFILM for
“epoxy-based films for use in the manufacture of electronic
components”;
• Registration No. 1640116 for the mark BOND-TEC for
“adhesive epoxy for use in the automotive industry”; and
• Registration No. 4715223 for the mark TEC-BOND for
“industrial and commercial adhesives, and locking elements
for fasteners in the nature of adhesive chemicals that are kept
separate until activated and which, when activated, create a
locking and sealing action to the fasteners; Pre-applied
industrial and commercial adhesives containing a two part
micro-encapsulated, reactive system comprised of adhesive
chemicals that, when activated, harden the resin and provide
a locking and sealing action to the fasteners, and also proof
the fasteners against vibration and leakage.”

6 These are: Registration No. 1565923 for the mark PRO-TEK for “impact resisting devices
of rubber and plastic, namely, dock bumpers, wall guards, corner guards and cushioned
handrails”; Registration No. 2505226 for the mark TEKNI-FILMS for “plastic film in the
form of rolls used for vacuum forming packaging in the pharmaceutical, food, and electronics
industries; plastic film in the form of rolls to be used by others in manufacturing
pharmaceutical blister films; and plastic laminated blister films for use in the further
manufacture of packaging materials”; and Registration No. 2692776 for the mark FLO-TEK
for “silicone rubber for use in the manufacture of swimming accessories ear plugs, nose plugs,
headbands, eyeglass holders, cell phones.”
7 These are: Registration No. 1778578 for the mark TEKRON for “plastic molding compound
for use in manufacture of molded plastic articles”; and Registration No. 2405384 for the mark
TEKBOND for “thermoplastic elastomer compounds for use in the making of molded or
extruded articles of manufacture.”
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The first of these three registrations is for the mark TECHFILM; this mark
presents a different commercial impression from TEKBOND and therefore carries
less weight. The other two are similar enough to Registrant’s mark to be relevant,
but are too few in number to show that “TEK” or its phonetic equivalent “TEC” has a
descriptive significance when applied to adhesive films or tapes. Cf. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (at least fourteen relevant third-
party uses or registrations of record); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (at least twenty-six relevant
third-party uses or registrations of record). The evidence does not demonstrate that
the cited mark TEKBOND is weak. It is thus entitled to an ordinary scope of
protection.
The first DuPont factor favors a finding that confusion is likely.
B. The Goods and their Trade Channels
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration.” DuPont, 177
USPQ at 567. “This factor considers whether ‘the consuming public may perceive [the
respective goods] as related enough to cause confusion about the source or origin of
the goods ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed.
Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002)).
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The goods need not be identical or even competitive to find a likelihood of
confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d
1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods] … emanate from the same source.” Coach Servs., 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)).
It is unnecessary for the Examining Attorney to demonstrate that all of the goods
in the application are related to those in the cited registration; it is sufficient if
Applicant’s mark for any of its identified goods is likely to cause confusion with the
Registrant’s mark for any of its identified goods. See SquirtCo v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from
among several may sustain a finding of likelihood of confusion); Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is likely to be confusion with respect to
any item that comes within the identification of goods or services in the application).
Registrant’s goods include “plastics in extruded form, namely, non-elastomeric
processed plastics in the form of technopolymer pressure sensitive adhesive films and
tapes for industrial and commercial use.” The Examining Attorney argues that
Registrant’s goods are “clearly worded broadly enough to include applicant’s
narrower list of pressure sensitive adhesive tapes.” 11 TTABVUE 17. In support, the
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Examining Attorney attached a printout from Wikipedia defining “pressure-sensitive
tape” as “an adhesive tape that will stick with application of pressure, without the
need for a solvent (such as water) or heat for activation [that] can be used in the home,
office, industry, and institutions for a wide variety of purposes.”8
The entry states that pressure-sensitive tape is also known as “PSA tape,” id. at
TSDR 2, and provides examples under “Varieties of PSA tape.”9 These include “duct
tape” and “masking tape,” goods listed in Applicant’s identification:
Duct tape usually has a plastic-coated fabric backing and a
strong adhesive.
Masking tape is used to cover areas that should not be
painted. It usually has a paper backing and an adhesive
designed to be removed from surfaces (within a limited
time).
Id.
Registrant’s pressure sensitive adhesive tapes encompass all types of tape for
industrial and commercial use. Applicant’s adhesive tapes are restricted to non-
stationery, non-medical and not-for-household purposes. Thus, Applicant’s goods
include tapes for industrial or commercial use and the evidence shows Applicant’s
duct tape and masking tape, at least, are encompassed within the description of
Registrant’s “pressure sensitive adhesive films and tapes for industrial and

8 At https://en.wikipedia.org/wiki/Pressure-sensitive_tape, attached to January 8, 2020
Denial of Request for Reconsideration, TSDR 2-5.
9 “PSA Tape” is also defined by the Pressure Sensitive Tape Council at https://www.pstc.org
as “a continuous flexible strip of cloth, paper, metal or plastic coated on one or both sides
with a permanently tacky adhesive at room temperature which will adhere to a variety of
surfaces with light pressure (finger pressure) with no phase change (liquid to a solid) and
usually on a roll.” Id. at TSDR 11.
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commercial use.” The goods are thus in-part legally identical. See In re Solid State
Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (where the goods in an
application or registration are broadly described, they are deemed to encompass all
the goods of the nature and type described therein); In re Hughes Furniture Indus.,
Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”).
Turning to the trade channels and consumers, because the goods are legally
identical in part, we may presume that the trade channels and classes of consumers
for those overlapping goods are identical. Viterra, 101 USPQ2d at 1908 (even though
there was no evidence regarding channels of trade and classes of consumers, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion); see also Inter IKEA Sys. B.V. v. Akea, 110 USPQ2d 1734, 1743 (TTAB
2014); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007)
(“Because the goods of both parties are at least overlapping, we must presume that
the purchasers and channels of trade would at least overlap.”).
Applicant argues that “there is a clear distinction between the way in which
Registrant commercializes its goods versus Applicant’s goods,” 9 TTABVUE 6, relying
on advertising from its and Registrant’s websites. However, notwithstanding
Applicant’s argument and evidence regarding the actual uses of the marks at issue,
we may not limit, by resort to extrinsic evidence, the scope of the goods as identified
in the cited registration or subject application. See Cunningham v. Laser Golf Corp.,
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222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that
where the identification is unrestricted, “we must deem the goods to travel in all
appropriate trade channels to all potential purchasers of such goods”); Octocom Sys.,
Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (relatedness of the goods, their trade channels and classes of consumers rests
“on the basis of the identification of goods set forth in the application regardless of
what the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which sales of the goods are
directed”).
The second and third DuPont factors weigh in favor of likely confusion.
C. Purchaser Sophistication
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567. Applicant argues that Registrant’s customers are
sophisticated because its goods are “highly technical” and “tailored to highly
specialized and developed industries, such as oil and gas, infrastructure, and
hydraulics.” 9 TTABVUE 4.
We may not read such limitations into the unlimited identification of goods, nor
may we decline to consider the sophistication of all potential customers of the goods
as they are recited in the application and registrations, respectively. See Stone Lion
Capital, 110 USPQ2d at 1162-63 (noting that Board’s decisions must take into
account the least sophisticated purchasers of the involved goods or services).
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Furthermore, it is settled that even sophisticated purchasers are not immune from
source confusion, especially in cases such as the instant one involving similar marks
and closely related goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986) (“[t]hat the relevant class of buyers may exercise care does not
necessarily impose on that class the responsibility of distinguishing between similar
trademarks for similar goods”) (citing Carlisle Chem. 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 fourth DuPont factor is neutral.
II. Conclusion
The marks at issue are similar in appearance, sound, connotation and overall
commercial impression. The goods are in-part legally identical and otherwise closely
related and must be deemed to travel in identical or overlapping trade channels to
the same classes of purchasers. Accordingly, we find that Applicant’s stylized TEK
BOND mark, when used in connection with Applicant’s goods, so resembles the cited
mark TEKBOND as to be likely to cause confusion, mistake or deception.
Decision:
The refusal to register Applicant’s mark on grounds of likelihood of
confusion under Trademark Act Section 2(d) is affirmed.