Burlingame Industries, Inc.v.Allmet Building Products, Inc.

Trademark Trial and Appeal Board

Mar 12, 2003

No. 91117553 (T.T.A.B. Mar. 12, 2003)

Mailed:
March 12, 2003
Paper No. 8
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Burlingame Industries, Inc.
v.
Allmet Building Products, Inc.
_____
Opposition No. 117,553
to application Serial No. 75/728,376
filed on June 14, 1999
_____
Edward R. Schwartz of Christie, Parker & Hale, LLP for
Burlingame Industries, Inc.
Darrell L. Olson of Knobbe, Martens, Olson & Bear, LLP for
Allmet Building Products, Inc.
______
Before Hohein, Bottorff and Rogers, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark CAPISTRANO TILE (in typed form; TILE disclaimed)
for “metal roofing panels.” The application was filed on
June 14, 1999 on the basis of use in commerce under
Trademark Act Section 1(a), 15 U.S.C. §1051(a), and May 25,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 117,553
2
1999 is alleged in the application as the date of first use
of the mark anywhere and first use of the mark in commerce.
Opposer filed a timely notice of opposition to
registration of applicant’s mark, alleging as grounds
therefor that applicant’s mark, as applied to applicant’s
goods, so resembles opposer’s mark CAPISTRANO, used by
opposer since 1989 as a mark for “roofing tiles,” as to be
likely to cause confusion, to cause mistake, or to deceive.
See Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant filed an answer denying the allegations of
the notice of opposition which are essential to opposer’s
claim.
The evidence of record consists of the January 11, 2001
testimony deposition of Roger D. Thompson, opposer’s vice-
president and president of opposer’s Eagle Roofing Division,
and the exhibits thereto. Applicant was not represented at
the deposition and did not cross-examine the witness.
Applicant presented no evidence during applicant’s testimony
period.
Opposer filed a brief on the case, but applicant did
not. No oral hearing was requested. We sustain the
opposition.
The undisputed evidence of record establishes that
opposer has used the mark CAPISTRANO in connection with
roofing tiles since 1989. (Thompson depo. at 10). Thus,
Opposition No. 117,553
3
opposer’s use of its mark pre-dates applicant’s application
filing date and claimed date of first use by ten years. In
view thereof, we find that opposer has standing to oppose
registration of applicant’s mark, as well as priority for
purposes of its Section 2(d) ground of opposition.1
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We find that applicant’s mark CAPISTRANO TILE is highly
similar to opposer’s previously-used mark CAPISTRANO in
terms of appearance, sound, and meaning. Indeed, but for
applicant’s addition to its mark of the disclaimed
1 The evidence of record also shows that opposer is the owner of
application Serial No. 75/751,610, by which opposer seeks
registration on the Principal Register of the mark CAPISTRANO for
“roofing tiles.” Applicant’s prior-filed application (the
application involved in this proceeding) has been cited as a
potential Section 2(d) bar to registration of opposer’s mark, and
opposer’s application has been suspended pending registration or
abandonment of applicant’s application. These facts, as well,
establish opposer’s standing. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Opposition No. 117,553
4
descriptive or generic word TILE, the marks are identical.
We find that the marks create the same overall commercial
impression, notwithstanding the presence of the word TILE in
applicant’s mark. This similarity of the marks weighs
heavily in favor of a finding of likelihood of confusion in
this case.
We also find that applicant’s goods, i.e., “metal
roofing panels,” are closely related, if not legally
identical, to opposer’s “roofing tiles.” Mr. Thompson’s
undisputed testimony establishes that applicant’s and
opposer’s goods are competitive products which are marketed
and sold in the same trade channels and to the same classes
of purchasers. (Thompson depo. at 22-23.)
In summary, we find that applicant’s mark is highly
similar to opposer’s previously-used mark, and that
applicant’s goods and opposer’s goods, and the trade
channels and classes of purchasers for such goods, likewise
are highly similar if not identical. Having considered all
of the du Pont likelihood of confusion factors for which
there is evidence of record, we conclude that a likelihood
of confusion exists. In view thereof, and because opposer
also has established its priority and standing to oppose, we
find that opposer is entitled to prevail in this case.
Decision: The opposition is sustained.