Capitol Aggregates, Inc.

Trademark Trial and Appeal Board

Sep 6, 2016

No. 86315025 (T.T.A.B. Sep. 6, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 6, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Capitol Aggregates, Inc.
_____

Serial No. 86315025
_____

Courtenay B. Allen and Kristi F. Dent of Dykema Gossett PLLC for Capitol
Aggregates, Inc.

Jeanie H. Lee, Trademark Examining Attorney, Law Office 105 (Susan Hayash,
Managing Attorney).
_____

Before Seeherman, Greenbaum, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Capitol Aggregates, Inc. (“Applicant”) has filed an application to register on the
Principal Register the mark CAPITOL AGGREGATES INC in standard characters,
with AGGREGATES INC disclaimed, for:
Wholesale and retail store services featuring construction
materials in the nature of construction cement, oilwell
cement, crushed stone, gravel, sand, base materials, and
Serial No. 86315025

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pre-coat aggregates for construction projects, in
International Class 35.1
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, as used
in connection with Applicant’s services, so resembles the registered marks shown
below as to be likely to cause confusion, or to cause mistake, or to deceive.
Reg. No. Mark
40959942

45682983
41567884

The three cited registrations are owned by a single Registrant. Color is not claimed
as a feature of any of the cited marks. In each registration, the services are:

1 Application Serial No. 86315025, filed June 19, 2014 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s use of the mark in commerce, stating
December 11, 2011 as the date of first use and first use in commerce.
2 Registered February 7, 2012; MATERIALS, INC. disclaimed.
3 Registered July 15, 2014; BUILDING SUPPLY disclaimed.
4 Registered June 12, 2012; INTERIOR PRODUCTS and the pictorial representation of the
State of New Jersey disclaimed.
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Distributorships in the field of commercial building
materials; Wholesale distributorships in the field of
commercial building materials, in International Class 35.
When the refusal was made final, Applicant appealed to this Board. Applicant and
the Examining Attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods or services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We will confine our analysis to the issue of likelihood of confusion between
Applicant’s mark and the mark in Reg. No. 4095994, CAPITOL MATERIALS INC.
and design. This mark is arguably more similar to Applicant’s mark than the other
cited marks. If the refusal is affirmed on the basis of this cited registration, it will
be unnecessary to address the likelihood of confusion with respect to the other
registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010). Further, if likelihood of confusion is not found with respect to this closer
mark, it would not be found with respect to the other registrations.
1. The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
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73 USPQ2d 1689 (Fed. Cir. 2005). “The 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.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks omitted). Moreover, marks must be considered in light of the
fallibility of memory. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085
(Fed. Cir. 2014). While we must consider the marks in their entireties, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis appears to be
unavoidable.” Id.
To begin, we agree with the Examining Attorney that the word CAPITOL is the
dominant element of each mark. The words MATERIALS and AGGREGATES are
clearly generic names for the goods offered through the distributorship and store
services at issue, as can be seen from the respective recitations of services. INC is
merely a generic designation for a common type of business entity; it does not
effectively distinguish one incorporated business from another.5 By contrast,
CAPITOL, which means a building that houses a legislative body, is arbitrary as

5 We appreciate that the term in Applicant’s mark is “INC” (without a period) while the
term in Registrant’s mark is “INC.” (with a period). This distinction is unlikely to be noticed
(or remembered) by customers and does not serve to distinguish the two marks. For the
sake of economy, we will use the term “INC” (without a period) to discuss this element of
either mark.
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applied to the services at issue and has source-indicating significance in both
marks. The dominance of the word CAPITOL is reinforced by its position as the first
part of each mark. It is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered. Palm Bay Imports, 73
USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992. We give less weight to the design
element of Registrant’s mark because the wording would be used by consumers to
request the services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB
1999). In the case of both marks, customers would view CAPITOL as the primary
indicator of the source of the services.
Turning to the marks in their entireties, the two marks are similar in appearance
in that each includes the literal terms CAPITOL and INC. Points of difference in
appearance are the pyramid design in Registrant’s mark, and the words
MATERIALS in Registrant’s mark and AGGREGATES in Applicant’s mark.
However, because these words merely name the products sold, they do not
distinguish the source of the wholesale services. Nor does the pyramid design; as we
have already discussed, it is by the words that consumers will refer to and
remember Registrant’s mark. The lettering in Registrant’s mark is slightly stylized;
however, Applicant seeks to register its mark in standard characters, and therefore
its use would not be limited to any particular display. Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“the argument concerning a
difference in type style is not viable where one party asserts rights in no particular
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display. By presenting its mark merely in a typed drawing, a difference cannot
legally be asserted by that party.”).
In sound, both marks begin with the word CAPITOL and end with the term INC,
and in that regard their pronunciation would be similar. They differ in sound by
virtue of their respective second words, AGGREGATES and MATERIALS but,
again, because these words name the materials sold, the difference in pronunciation
caused by their inclusion in the marks is not a distinguishing factor.
In meaning, the two marks are quite similar. The words CAPITOL and INC would
be understood to have the same meaning in both marks. The words AGGREGATES
and MATERIALS have related meanings; in the relevant fields of “construction
materials” and “building materials,” the word AGGREGATES describes a type of
MATERIALS. We note also that the two marks are similar in structure, consisting
of the distinctive word CAPITOL followed by the name of a construction material
and the word INC. Thus, the marks overall have similar meanings, with Applicant’s
mark simply being more specific in its meaning.
Turning to the overall commercial impressions of the marks, both create the
impression of a business entity that offers construction supplies, with the term
CAPITOL serving as the distinctive source-indicator. Considering the marks in
their entireties, we find that the similarities outweigh the differences and that
overall the marks create similar commercial impressions. Accordingly, the du Pont
factor of the similarity or dissimilarity of the marks weighs in favor of a finding of
likelihood of confusion.
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2. The services.
Next we consider the similarity or dissimilarity of the services as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom
Syst. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). It is not necessary that the services of Applicant and Registrant be
similar or even competitive to support a finding of likelihood of confusion. Coach
Services Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722. Rather, likelihood of
confusion may be found if the respective services are related in some manner or if
the circumstances surrounding their marketing are such that they could give rise to
the mistaken belief that they emanate from the same source. Id.
The Examining Attorney contends that Registrant’s broadly identified services
encompass Applicant’s more narrowly identified services.6 Applicant’s services are a
specific type of “wholesale and retail store services.” Registrant’s services are
“distributorships” and “wholesale distributorships.” A “distributorship” is:
a franchise granted by a manufacturer or company to
market its goods esp. at wholesale in a particular area;
also : an office or business concern having such a
franchise.7
A “distributor” is:

6 Examining Attorney’s brief, 6 TTABVUE 15.
7 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) p. 660. The Board may take
judicial notice of dictionary definitions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 86315025

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Any individual, partnership, corporation, association, or
other legal relationship which stands between the
manufacturer and the retail seller in purchases,
consignments, or contracts for sale of consumer goods. A
wholesaler.8
The Examining Attorney goes too far by suggesting that, by definition, “wholesale
distributorships” encompass “wholesale stores.” However, it is clear that such
services are closely similar in purpose. Both bring goods to market and offer them
at wholesale. We must next decide whether the service of a wholesale distributor of
“commercial building materials” is related to a wholesale store featuring
“construction materials in the nature of construction cement, oilwell cement,
crushed stone, gravel, sand, base materials, and pre-coat aggregates for
construction projects.” In order to demonstrate that such services are similar, the
Examining Attorney has made of record excerpts of several websites that offer
“building materials,” among which are aggregates and cement. We note the
following:
Eagle Materials: “a leading U.S. manufacturer and distributor of building
materials including Portland cement, concrete and aggregates
…”9

CalPortland: “a major diversified building materials and construction
solutions provider …” “expertise in cement production and
distribution, ready mixed concrete, construction aggregates, …
and other building materials.”10

8 BLACK’S LAW DICTIONARY (5th ed. 1979) p. 427.
9 Office Action of October 6, 2014 at 20-21.
10 Id. at 22.
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Oldcastle
Materials: a “building products distributor” that offers aggegates and
cement mixes.11

Anchorage Sand
and Gravel Co: offering “Aggregates, Sand, Gravel & Rock” and “Building
Materials.”12

Lehigh Hanson: offering “aggregates and building materials”; cement which “is
one of the world’s oldest building materials.”13

Summit
Materials: A “construction materials company that produces aggregates,
cement …” Uses the term “Building Materials.”14

The Examining Attorney’s evidence indicates that aggregates and cements are
considered “building materials” and that single entities market both aggregates and
cements.
Applicant has made of record specimens from the application files underlying the
cited registrations, including the registration we are currently considering.15
Applicant argues that Registrant’s distributorship services are limited to “complete
drywall and acoustical supplies” and that “Applicant does not distribute or offer for
sale drywall and acoustical supplies. … Consequently, the services offered under
the cited marks and those services offered by Applicant are so substantially
different that confusion is unlikely.”16 Applicant goes on to argue that “the goods

11 Id. at 16-18.
12 Office Action of July 15, 2015 at 6.
13 Id. at 10.
14 Id. at 12.
15 Applicant’s response of April 6, 2015 at 208-210.
16 Applicant’s brief at 13-14, 4 TTABVUE 14-15.
Serial No. 86315025

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associated with the marks are not competitive in that they are not interchangeable
by buyers for the same purposes.”17 Applicant’s effort to limit the scope of protection
afforded the cited registration is unavailing. In considering the scope of the cited
registration, we look to the registration itself, and not to extrinsic evidence about
Registrant’s actual goods, customers, or channels of trade. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958). We must therefore consider Registrant’s mark as applied to wholesale
distributorships featuring all kinds of “commercial building materials.”
We find the evidence discussed above sufficient to show that relevant customers
would readily believe that the services identified in Applicant’s application and the
cited registration could emanate from a single source. Accordingly, the du Pont
factor of the similarity or dissimilarity of the services weighs in favor of a finding of
likelihood of confusion.
3. Similar third-party marks in use.
Applicant argues that “the word CAPITOL, and variants thereof, are commonly
registered and used with goods/services related to construction goods and services”;
and that therefore Registrant’s mark is “weak, and [is] only afforded a narrow scope
of protection.”18 To support this contention, Applicant has submitted copies of 171
third-party registrations of marks that include the term CAPITOL.19 Most of these
registrations relate to goods or services that are far disparate from the field of

17 Id.
18 Applicant’s brief at 7-8, 4 TTABVUE 8-9.
19 Applicant’s response of April 6, 2015 at 21-207.
Serial No. 86315025

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construction materials and the sale thereof, such as beer, spinal implants, and
music publishing. We note, however, the following registrations, that appear to be
somewhat relevant:
Item Reg. No. Mark Relevant Goods/Services

1. 4483753

Construction of commercial,
residential and hotel property.
2. 4674338

Building construction, remodeling
and repair; building construction
supervision; etc.
3. 3979093

Hand tools, namely, utility knives,
carpet knives, drywall and brick
saws, trowels, pliers, nippers,
scrapers, etc.

4. 3979094

CAPITOL NORTH AMERICA

[SAME AS ABOVE]
5. 3610905

CAPITOL [SAME AS ABOVE]
6. 3610915 [SAME AS ABOVE]
7. 3890465 CAPITOL Flooring and tiling refinishing
and cleaning materials, namely,
floor cleaning preparations and
carpet cleaning preparations for
removing adhesives.
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8. 3890467

[SAME AS ABOVE]
9. 3560359

Floor coverings; rugs.
10. 2755863

CAPITOL LIGHT
MAINTENANCE
General contractor services,
namely, the replacement and
maintenance of lamps, ballasts
and other electrical products in
retail establishments.

11. 2033934

Distributorship services in the
area of lighting and electrical
equipment.
12. 3151355

Metal windows and doors;
nonmetal windows and doors.
13. 1439817

CAPITOL Aluminum structural items
namely aluminum framed window
and door units and extrusions
therefor.

14. 2023720

CAPITOL CONSTRUCTION
GROUP
Construction services, namely
general contracting of retail,
industrial, residential and
commercial construction.

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The registrations listed above as items 3 through 8 belong to a single registrant, as
do the registrations listed as items 10 and 11 and items 12 and 13. Thus, the 14
registrations are owned by seven different registrants.
Third-party registrations alone do not demonstrate that the registered marks
have been used in the marketplace, let alone that they are used so extensively that
consumers have become sufficiently conditioned by their usage that they can
distinguish between such marks on the bases of minute differences. See Lilly
Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (C.C.P.A. 1967)
(“the existence of these registrations is not evidence of what happens in the market
place or that customers are familiar with their use.”). See also Olde Tyme Foods Inc.
v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). However, it
is true that “[t]hird party registrations are relevant to prove that some segment of
the composite marks … has a normally understood and well recognized descriptive
or suggestive meaning, leading to the conclusion that that segment is relatively
weak,” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1675 (Fed. Cir. 2015).
Here, Applicant has shown that seven registrants have selected and registered
marks that include the term CAPITOL for use in fields of business that are in some
way related to building construction but are, for the most part, different from
Registrant’s distributorship services, i.e., building construction, hand tools, flooring,
doors and windows, and distribution of lighting and electrical products. We
therefore do not agree with Applicant’s contention that these third-party
Serial No. 86315025

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registrations demonstrate that CAPITOL has a significance for commercial building
materials or the distribution of such materials, such that we can conclude that
Registrant’s mark is weak.
4. Trade channels.
Both Applicant and the Examining Attorney argue that the similarity or
dissimilarity of trade channels is an important factor in this case. Applicant argues
that Applicant’s customers are looking for goods such as cement and aggregates,
while Registrant’s customers are looking for drywall and ceiling materials and that,
consequently, Applicant’s customers “are not likely to encounter the cited marks in
the same marketing context.”20 This argument depends upon the same
impermissible limitation of the scope of the cited registration discussed above, i.e.,
the suggestion that Registrant’s services do not relate to all “building materials” as
stated in the registration. As noted above, we must presume that Registrant’s
services encompass the distribution of all types of “commercial building materials.”
“Trademark cases involving the issue of likelihood of confusion must be decided on
the basis of the respective descriptions of goods … [and] we give full sweep to
[Registrant’s] registration description of goods ….” Paula Payne Products Company
v. Johnson Publishing Company, Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
See also In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006).
The Examining Attorney, for her part, argues that, because the recitations of
services in Applicant’s application and Registrant’s registration lack any

20 Applicant’s brief at 14-15, 4 TTABVUE 15-16.
Serial No. 86315025

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restrictions as to trade channels, the services are presumed to travel in the same
channels of trade to the same classes of customers.21 Such a presumption is logically
valid only where the services at issue are identical; however, here we are comparing
wholesale distributorships and wholesale stores.
It is apparent from the respective recitations of services that Applicant and
Registrant are serving the same customers. Applicant’s customers are those seeking
to make wholesale purchases of specific “construction materials” “for construction
projects.” Registrant’s customers are those seeking wholesale “commercial building
materials” (which would include the specific “construction materials” offered
through Applicant’s services). These common customers would include, at a
minimum, builders involved in construction projects. To this extent, some of the
classes of customers are the same and the channels of trade du Pont factor favors a
finding of likelihood of confusion.
5. Conditions of sale.
Applicant argues that its customers are “highly sophisticated construction
professionals who carefully select their construction materials … [and] perform
research and due diligence before arranging for Applicant’s services.” Applicant
argues that they purchase materials in large quantities in contemplation of a
specific construction project and are not purchasing on impulse; and that their

21 Examining Attorney’s brief, 6 TTABVUE 15.
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“experience, knowledge, and research will eliminate any opportunity for
confusion.”22
A builder’s careful selection of the goods he purchases does not necessarily carry
over to the wholesaler through which those goods reach the market. (Wholesalers
typically carry the goods of various makers, and a purchaser may consider some of
them to be good products and others bad.) Such care does not guarantee that a
purchaser will not confuse the reputations of two wholesalers operating under
similar marks. The asserted sophistication of the purchasers is a neutral factor or,
at best, weighs slightly against a finding of likelihood of confusion.
6. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Although
purchaser sophistication may weigh slightly in Applicant’s favor, it is outweighed by
the evidence regarding the other du Pont factors, as discussed above. We find that
Applicant’s mark so resembles the cited mark as to be likely, when used in
connection with Applicant’s identified services, to cause confusion as to the source of
Applicant’s services. In view of our determination, we need not consider the issue of
likelihood of conclusion with respect to the marks in Reg. Nos. 4568298 and
4156788.
Decision: The refusal to register is affirmed.

22 Applicant’s brief at 15-16, 4 TTABVUE 16-17.