C & D Detergents, Inc.v.Spraytec Systems, L.L.C.

Trademark Trial and Appeal Board

Mar 30, 2005

No. 91112834 (T.T.A.B. Mar. 30, 2005)

Mailed:
30 March 2005
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

C & D Detergents, Inc.1
v.
Spraytec Systems, L.L.C.
_____

Opposition No. 91112834
to application Serial No. 75206932
_____

Robert G. Shepherd of Mathews, Collins, Shepherd & McKay for
C & D Detergents, Inc.

William L. Klima, Esq. for Spraytec Systems, L.L.C.
______

Before Walters, Rogers, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On November 26, 1996, Spraytec Systems, L.L.C.
(applicant) applied to register the mark EXTRA (typed) for
goods ultimately identified as “all purpose hard surface
cleaning preparations, namely, solutions and concentrates

1 The opposition was initiated by USA Detergents, Inc. In a
paper dated November 28, 2001, opposer provided a Certificate of
Amendment of Certificate of Incorporation to show that the “name
of this corporation shall be C&D Detergents, Inc.” USPTO records
for opposer’s registration reflect that these documents were
recorded at Reel/Frame No. 2401/0155. Subsequently, additional
documents were recorded to indicate that the current owner is
Church & Dwight Co., Inc. See Reel/Frame Nos. 2417/0351,
2426/0045, and 3007/0206.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91112834
2
thereof provided in packaging receivable by spray bottle and
into which said solutions and concentrates are released as
needed for dispensing therefrom” in Class 3. The
application (No. 75206932) is based on an allegation of a
bona fide intention to use the mark in commerce.
C & D Detergents, Inc. (opposer) has opposed
registration on the ground that its mark XTRA for “laundry
detergent” in Class 32 has been used “continuously and for a
long time prior to any date claimed by or available to
Applicant. Consequently, Opposer avers that confusion,
mistake and deception in the trade and in the minds of the
purchasers as between Opposer’s and Applicant’s Marks, and
as to the origin of their respective goods, will be likely.”
Notice of Opposition at 4.3
Applicant has denied the salient allegations of the
notice of opposition.
The Record
The record consists of the pleadings; the file of the
involved application; opposer’s notice of reliance on status
and title copies of its registration and an intent-to-use
application of opposer; the testimonial and rebuttal
depositions with exhibits of Bruce Y. Prince, a former vice

2 Registration No. 1,637,328 issued March 12, 1991, renewed.
3 In the Notice of Opposition, opposer also referred to a second
registration for CLASSIC XTRA for “laundry detergent” (No.
2,133,908), but this issue was not separately tried.
Opposition No. 91112834
3
president of opposer’s predecessor; the testimonial
deposition with exhibits of William L. Klima, applicant’s
vice president (and an attorney); and the testimonial
deposition with exhibits of Anthony M. “Mickey” Veich,
applicant’s investigator.
Discussion
Opposer, as plaintiff in the opposition proceeding,
bears the burden of proving, by a preponderance of the
evidence, priority and likelihood of confusion. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000); Cerveceria Centroamericana,
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989).
Priority is not an issue here inasmuch as opposer
relies on its ownership of a valid Principal Register
registration (No. 1,637,328). See King Candy Co. v. Eunice
King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Therefore, the question that we must address is whether
there is a likelihood of confusion between applicant’s EXTRA
mark for its hard surface cleaning preparations and
opposer’s XTRA registration for laundry detergents. In
likelihood of confusion cases, we analyze the facts in light
of the relevant factors set out in In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
See also In re E. I. du Pont de Nemours & Co., 476 F.2d
Opposition No. 91112834
4
1357, 177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000).
We begin by comparing the marks. Applicant’s mark is
the single word EXTRA and registrant’s mark is XTRA. Both
the application and the registration depict that mark in
typed form, which means that by “presenting its mark merely
in a typed drawing, a difference cannot legally be asserted
by that party.” Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983). The words “Extra” and
“Xtra” would be pronounced identically and their meanings
would be the same, i.e., “extra.” XTRA, Inc. v. Warren
Petroleum Corp., 175 USPQ 660, 662 (TTAB 1972) (“‘XTRA’
being the equivalent of ‘EXTRA’”). Furthermore, the
appearance and commercial impressions of the marks are very
similar with the only difference being that registrant does
not include the initial letter “e,” a letter that does not
change the meaning or pronunciation of the mark. Therefore,
we find that the marks are very similar, if not virtually
identical.
Next, we compare the goods of the parties. Opposer’s
goods are laundry detergent while applicant’s goods are “all
purpose hard surface cleaning preparations, namely,
solutions and concentrates thereof provided in packaging
receivable by spray bottle and into which said solutions and
Opposition No. 91112834
5
concentrates are released as needed for dispensing
therefrom.”
It “has often been said that goods or services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
enough that goods or services are related in some
manner or that circumstances surrounding their
marketing are such that they would be likely to be seen
by the same persons under circumstances which could
give rise, because of the marks used thereon, to a
mistaken belief that they originate from or are in some
way associated with the same producer or that there is
an association between the producers of each parties'
goods or services.”

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650, 1661 (TTAB 2002).
Here, as evidence that laundry detergent and
applicant’s hard surface cleaners are related, opposer’s
witness testified that opposer’s predecessor is also the
source of a hard surface cleaner and laundry detergent.
Q. Now, when you first went to work for USA Detergents
in 1997, what were the products that the old USA
Detergents was selling at that time?

A. USA Detergents sold at that time both laundry
detergent and fabric softeners, as well as household
cleaners, hard surface cleaners, and candles, as well.

Prince Dep. at 9.
Opposer’s witness also testified that, while it did not
use the XTRA mark on hard surface cleaners, it did use at
least two marks, the USA DETERGENTS and AMERICA’S VALUE
marks, on both laundry detergent and hard surface cleaners.
Prince Dep. at 20. Opposer’s witness also testified that it
Opposition No. 91112834
6
was aware of two other companies that “manufacture both
laundry detergent and hard surface cleaners … Proctor and
Gamble, [and] Colgate-Palmolive.” Prince Dep. at 11. In
addition, the witness testified that “in a larger store
there would be, as well, household cleaners sold in the same
aisle” as laundry detergents. Prince Dep. at 12. Also, the
evidence shows that opposer’s detergent and all purpose hard
surface cleaners are advertised together. Prince Ex. 9.
Based on the evidence of record, we hold that laundry
detergent and all purpose hard surface cleaning preparations
are related products inasmuch as if consumers encountered
very similar marks on these products, they would likely
assume that there is some sponsorship, association, or
relationship between the sources of the products. We note
that applicant’s products are not merely “all purpose hard
surface cleaning preparations.” They are specifically
“solutions and concentrates provided in packaging receivable
by spray bottle and into which said solutions and
concentrates are released as need for dispensing therefrom.”
We have considered the entire identification of goods in our
analysis because we must consider the goods as they are
identified in the respective identifications of goods.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
Opposition No. 91112834
7
an applicant’s mark must be decided 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 the
sales of goods are directed”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”). This additional
language in the identification of goods does not result in
the goods being unrelated because the identification of
goods does not change the purchasers or the channels of
trade. Nothing in the identification of goods would prevent
applicant’s hard surface cleaning preparations from being
sold in the same retail establishments as opposer’s laundry
detergent.
In addition to the similarities of the marks and the
relatedness of the goods, we take several other factors into
consideration.4 Opposer argues that its “mark has achieved

4 We also note that during the taking of depositions each party
highlighted arguably inconsistent statements made by the other
during the ex parte prosecution of their applications. See Klima
Dep. at 31-33 and Prince Dep. at 44. While we have considered
these statements, they are not determinative. “That a party
earlier indicated a contrary opinion respecting the conclusion in
a similar proceeding involving similar marks and goods is a fact,
and that fact may be received in evidence as merely illuminative
of shade and tone in the total picture confronting the decision
maker. To that limited extent, a party's earlier contrary
Opposition No. 91112834
8
a level of fame in the detergent field.” Brief at 17.
Opposer has submitted some evidence that indicates that its
XTRA mark has acquired a degree of recognition in the
marketplace.
Q. And through what channels is that product [XTRA
detergent] distributed?

A. It’s sold throughout almost every channel of trade
in North America.

Q. In other words, all retail stores that carry
detergents at all would carry the Xtra detergent
product?

A. Approximately 98 percent ACT, All Cumulative
Volume, which is the rating that is used to gauge
penetration by any consumable product is the amount
that it is sold in the Untied States.

Q. Who establishes that rating?

A. That rating is established by a company called IRI,
Information Resources, who tracks products’ penetration
as well as product sales success. The only customer
that it does not gauge because it doesn’t participate
in its sales data is Wal-Mart who has all Xtra products
as mandatory distributed products world wide.

Prince Rebuttal Dep. at 7.

In addition, opposer’s witness testified that “Xtra is
the number 1 selling value brand in North America as rated
by IRI.” Prince Rebuttal Dep. at 10. Also, “the Xtra
brand’s power is demonstrated in any given retailer’s shelf

opinion may be considered relevant and competent. Under no
circumstances, may a party's opinion, earlier or current, relieve
the decision maker of the burden of reaching his own ultimate
conclusion on the entire record. Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA
1978).
Opposition No. 91112834
9
space as viewing how much – how many faces a given retailer
will give to Xtra, and Wal-Mart particularly, it gives Xtra
24 faces on its shelf to show the prominence of the brand.”
Prince Rebuttal Dep. at 11. This evidence, while lacking
specifics, does support opposer’s argument that its mark has
achieved some recognition. Furthermore, we note that
opposer’s mark is registered on the Principal Register.
This evidence of public recognition is balanced against
the fact that “[b]eing suggestive of quality, ‘XTRA’ is not
entitled to a broad scope of protection.” XTRA, Inc., 175
USPQ at 662 (XTRA on trailer leasing services not confusing
similar to XTRA for gasoline and motor oil). See also ITT
Corp. v. XTRA Corp., 225 USPQ 723, 728 (D. Mass. 1985)
(“XTRA leases ‘boxes,’ trucks, and warehouse space. ITT
sells personal computers. No one seeking intermodal
transport services could buy one from XTRA”). In addition,
opposer’s witness has agreed that the “word ‘extra’ and
variations thereof are commonly used adjectives.” Prince
Dep. at 43.
Finally, applicant introduced evidence of third-party
use of the term “Xtra” or “Extra.” The evidence consists of
(1) a brochure from LABCO that on page 2 mentions X-Tra
Punch Built Alkali (Veich Ex. A-3); (2) Extravac® EX17PR
Self-Contained Carpet Extractor (Ex. A-4); (3) Hillyard
Extra Strength CSP “Fast Acting Restroom/Shower Cleaner”
Opposition No. 91112834
10
(Ex. A-5); a photo of XTRA LEMON and XTRA PINE that is
apparently a cleaning product (Ex. A-7 and A-10); X-TRA
TOUCH POWDERS All Purpose Kleaner (Ex. A-8); X-TRA SHINE
extended gloss vinyl sealer and protectant (Ex. A-12);
“Extra” Disinfectant germicidal concentrate (Ex. A-13);
Whisk - For Those EXTRA Dirty Hands® Industrial Hand Towels
(Ex. A-14); and Extra restroom disinfectant (Ex. A-15; Veich
Dep. at 215).
Most of the above evidence involves goods that are more
remote from opposer’s goods and/or marks that include more
than just the word XTRA or EXTRA. In addition, we have no
indication of the amount of market penetration and
recognition of these marks. Indeed, many of the exhibits
would indicate that the products have a relatively limited
market presence. There is not enough evidence about other
exhibits to form much of a conclusion. For example, the
photos in Exhibits A-7 and A-10 are similar. When the
investigator was asked on cross-examination whether the
photos were taken in the same store, the witness replied:
“I’m not positive. I suspect it was, but I’m not sure.”
Veich Dep. at 16-17. When asked about how Exhibit A-6 was
discovered, and specifically “Was that searched through the
computer,” the witness replied: “Could have been. I

5 The mark is not visible in the exhibit.
Opposition No. 91112834
11
suspect it was. I do most of my Internet searching on the
computer.” Veich Dep. at 18.
In a somewhat similar case, the board noted:
We see some other problems which limit the probative
value of the evidence of third- party use. Many of the
marks being used are less similar to opposer's marks
than are applicant's marks. Further, applicant has not
furnished any evidence regarding the extent of use of
the marks by these third parties… Moreover, the
pictures of these restaurants tend to indicate that
the operations are small and local in nature.

Carl Karcher Enterprises Inc. v. Stars Restaurants
Corp., 35 USPQ 1125, 1131 (TTAB 1995).
We also do not find that the number of relevant third-
party uses is so extensive that it would demonstrate that
the term XTRA is only entitled to a very narrow scope of
protection.
We are not the least bit surprised that the word "star"
and/or various star designs appear in connection with
restaurants, as they undoubtedly do in connection with
many other goods and/or services. That is to say, we
recognize that a star design is a common shape, and
that such designs, as well as the word "star,” are
laudatory in nature. Nonetheless, applicant's evidence
of third-party use is balanced by opposer's evidence of
its marks' considerable notoriety.

Id.

We add that prospective purchasers of laundry detergent
and applicant’s hard surface cleaning preparations would at
least overlap. The purchasing of laundry detergent and hard
surface cleaning preparations is not normally a purchase
that requires a great deal of care. Applicant’s witness
gave an example as follows: “You don’t go in and ask for
Opposition No. 91112834
12
Windex. You just go up to the shelf and buy Windex.” Klima
Dep. at 8. Opposer’s witness estimated that purchasers of
its detergent “will take upwards of two minutes and not more
to make their choice.” Prince Dep. at 13. Furthermore, the
evidence shows that ordinary purchasers would purchase these
products in retail stores.
Therefore, we have considered the laudatory nature of
the term XTRA and the fact that it not a unique term.
However, when we balance this evidence with the fact that
opposer’s mark has acquired some recognition, that the goods
would be sold in the same stores and in the same section of
stores to the same purchasers, and that opposer and other
producers are the source of hard surface cleaning
preparations and laundry detergent, we determine that there
is a likelihood of confusion in this case.
Decision: The opposition is sustained.