CCA Global Partners, Inc.

Trademark Trial and Appeal Board

Mar 26, 2008

No. 78693773 (T.T.A.B. Mar. 26, 2008)

Decision Mailed:
March 26 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re CCA Global Partners, Inc.
________

Serial No. 78693773
_______

Alan S. Nemes, Alisha L. Huls and Wendy Boldt Cohen of Blackwell
Sanders Peper Martin LLP for CCA Global Partners, Inc.

Jenny Park, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_______

Before Quinn, Hohein and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

CCA Global Partners, Inc. has filed an application to
register on the Principal Register in standard character form the
mark "RESISTA" for "synthetic fiber comprising an integral
component of carpet; [and] textile fiber comprising an integral
component of carpet" in International Class 27.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the

1 Ser. No. 78693773, filed on August 16, 2005, which is based on an
allegation of a bona fide intention to use such mark in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78693773
2
mark "RESISTAT," which is registered, by the same registrant, on
the Principal Register in standard character form for "textile
fiber" in International Class 222 and "synthetic textile yarn" in
International Class 23,3 as to be likely to cause confusion, or
to cause mistake, or to deceive.
Applicant has appealed and briefs have been filed.4 We
affirm the refusal to register.

2 Reg. No. 1,609,129, issued on August 7, 1990, which sets forth a date
of first use anywhere and in commerce of October 30, 1989; renewed.

3 Reg. No. 1,609,132, issued on August 7, 1990, which sets forth a date
of first use anywhere of August 20, 1977 and a date of first use in
commerce of November 9, 1989; renewed.

4 In addition, on the day prior to filing its initial brief, applicant
submitted an amendment to allege use ("AAU") of its mark. However, as
noted by the Examining Attorney in her brief, because she "did not
have jurisdiction over the file and the case was not remanded to her
except for submission of the brief, the merits of the AAU have not
been reviewed." TBMP §1206.01 (2d ed. rev. 2004) provides in relevant
part that where, as here, "an applicant which has filed a timely
appeal to the Board files an amendment to allege use, in the
application which is the subject of the appeal, more than six months
after issuance of the appealed action, the Board may, in its
discretion ... continue proceedings with respect to the appeal, thus
deferring examination of the amendment to allege use until after final
determination of the appeal. If the final determination of the appeal
is adverse to applicant, the amendment to allege use will be moot."

Also, with its initial brief, applicant for the first time
attached copies of the file histories for registrant's two cited
registrations along with what it refers to as a printout of a brochure
for registrant's goods which it obtained from registrant's website.
Although offering no reason for its failure to submit such evidence
prior to appeal, as to the printout of the brochure, applicant
specifically "requests that the Board take judicial notice" thereof.
The Examining Attorney, citing inter alia Trademark Rule 2.142(d),
states in her brief that she "objects to the applicant's inclusion of
a printout of a brochure for the registrant's goods from the
registrant's website and the printouts of the ... file history" for
the cited registrations, based upon applicant's untimely submission of
such printouts "for the first time with its appeal [brief]."
Irrespective thereof, she also "objects to the applicant's request for
the ... Board ... to take judicial notice of a printout of a brochure
of the registrant's goods," contending that such a brochure "is not an
appropriate matter" for judicial notice. We agree with the Examining
Attorney that the evidence submitted with applicant's initial brief is
manifestly untimely under Trademark Rule 2.142(d) and thus should not
be further considered. Moreover, while applicant urges in its reply

Ser. No. 78693773
3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity in the goods at issue and the
similarity or dissimilarity of the respective marks in their
entireties.5 See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Here, as pointed
out by the Examining Attorney in her brief, inasmuch as applicant
has not offered any argument with respect to the similarity or
dissimilarity in the goods at issue and, thus, appears to concede

brief that such evidence nonetheless is proper subject matter for
judicial notice, given that Fed. R. Evid. 201 "states that a
judicially noticed fact must be one not subject to reasonable dispute
in that it is either (1) generally known within the territorial
jurisdiction of the trial court or (2) capable of accurate and ready
determination by resort to sources whose accuracy cannot reasonably be
questioned," we disagree. Plainly, the information which applicant
requests that the Board take judicial notice of is not generally known
nor, in the case of evidence taken from the Internet, can its accuracy
not be reasonably questioned, given the well known changeability of
websites. It is settled, furthermore, that the Board does not take
judicial notice of third-party registrations, a practice which extends
to the file histories thereof. See, e.g., In re Duofold Inc., 184
USPQ 638, 640 (TTAB 1974). In any event, we hasten to add that even
if such evidence were to be treated as part of the record herein, it
is essentially cumulative in nature and hence would make no difference
in the outcome of this appeal.

5 The court, in particular, pointed out that: "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."
192 USPQ at 29.
Ser. No. 78693773
4
that such goods are commercially related as contended by the
Examining Attorney, the primary focus of our inquiry is on the
similarities and dissimilarities in the respective marks, when
considered in their entireties, along with, as applicant also
asserts, the additional du Pont factors of the number and nature
of similar marks in use on similar goods and the length of time
during and conditions under which there has been contemporaneous
use without evidence of actual confusion.
Nonetheless, as a preliminary matter, we observe that
registrant's "textile fiber" and "synthetic textile yarn" are
closely related in a commercial sense to applicant's "synthetic
fiber comprising an integral component of carpet; [and] textile
fiber comprising an integral component of carpet" in that
registrant's goods may be used in the manufacture of, inter alia,
carpet fiber as an integral component of carpets, which appears
to be the same use as in the case of applicant's goods.
Applicant, as the Examining Attorney points out in her brief,
does not contend to the contrary and, in support of her position,
the Examining Attorney has made of record copies of various use-
based third-party registrations which show the goods identified
therein as (i) "raw synthetic textile fiber sold as a component
of carpet"; (ii) "nylon textile fiber for use in the manufacture
of carpet"; (iii) "synthetic fibers ... for use in the
manufacture of ... carpets, namely, polyester fiber sold as a
component of carpet"; (iv) "polypropylene fiber sold as a
component of carpet"; (v) "nylon fiber for such purposes as
manufacture of ... carpet"; (vi) "solution dyed nylon fiber used
Ser. No. 78693773
5
in the manufacture of carpet"; (vii) "nylon fiber used in the
manufacturing of carpet"; (viii) "nylon fiber used as a component
of carpet"; (ix) "synthetic fibers, featuring a heat treatment to
reduce fuzz, for use in the manufacture of carpet; synthetic
fiber"; (x) "textile fibers for use in the manufacture of
carpet"; and (xi) "synthetic fiber for use in the manufacture of
carpet." In view thereof, registrant's goods would appear to be
suitable for use for the same purpose as applicant's goods and,
hence, would be sold through the same channels of trade to the
same classes of purchasers.
Turning, then, to the respective marks, applicant
argues in its initial brief that, in essence, its mark "RESISTA
has a much different connotation and commercial impression" than
that of registrant's mark "RESISTAT," notwithstanding that the
marks differ by only one letter. This is because, according to
applicant, "[t]he STAT portion of the ... [Registrant's mark]
connotes that the Registrant's goods are 'resistant' to
'static.'" Applicant asserts, based on the copies of numerous
third-party registrations which it has made of record, that
"[t]he many marks on the Principal Register that incorporate the
term STAT for goods for or relating to 'anti-static' properties
demonstrate that the suffix STAT is clearly associated with the
term 'static.'" Applicant contends, in this regard, that
"purchasers will understand that the term STAT in the ...
[Registrant's mark] means or refers to anti-static textile fibers
and synthetic textile yarn, which is exactly how the Registrant
has marketed its products." Applicant therefore maintains that
Ser. No. 78693773
6
its mark "RESISTA has a much different connotation than the ...
[Registrant's mark]." Based, furthermore, on a list which it has
made of record of various additional third-party registrations,
applicant "notes that ... numerous other RESIST marks co-exist on
the Principal Register in connection with the same or similar
goods as the ... [Registrant's mark]." Applicant insists that
because "there are many companies owning registrations
incorporating the term 'RESIST' with distinctive additional
elements ... for flooring and fiber products," "consumers can
distinguish between these various RESIST marks." Thus, applicant
urges, "[t]he co-existence of these many marks for similar goods
indicates no customer confusion is likely with respect to
Applicant's mark in connection with its goods." Finally, noting
that "it recently amended its application to allege use in
commerce" and that it "has been selling its goods under the
current mark since January of 2006 without any known instances of
consumer confusion with the ... [Registrant's mark]," applicant
concludes that such contemporaneous use "without confusion is
highly probative of the absence of likelihood of confusion."
We agree with the Examining Attorney, however, that the
marks at issue, when considered in their entireties, are so
substantially similar that confusion as to the source or
sponsorship of the respective goods is likely to occur. As the
Examining Attorney points out in her brief, both "applicant's
mark and registrant's mark share the common term 'RESIST.'"
While, we note, applicant's mark adds the letter "A" at the end
thereof and registrant's mark similarly ends with the additional
Ser. No. 78693773
7
letters "AT," the Examining Attorney maintains that "the overall
commercial impression of the marks derives largely from the
meaning and significance of the term 'RESIST.'" In view thereof,
the Examining Attorney asserts that the fact that applicant's
mark, in effect, deletes the end letter "T" from registrant's
mark "does not change the overall commercial impression of the
marks" inasmuch as purchasers of the respective goods "are likely
to recollect [the term] RESIST." Such term, we note, also gives
the marks at issue a substantial similarity in connotation, with
both marks suggesting that the goods associated therewith have
the property of being resistant to something, e.g., stains and/or
static electricity. Moreover, because applicant's "RESISTA" mark
is incorporated in its entirety by registrant's mark "RESISTAT,"
such marks are substantially similar in overall sound and
appearance.
As to applicant's contention that the "STAT" portion of
registrant's "RESISTAT" mark will be understood by purchasers as
connoting that registrant's goods "are 'resistant' to 'static'"
and that such portion sufficiently serves to distinguish the mark
from applicant's "RESISTA" mark, the Examining Attorney, citing
Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988), for the proposition that, as stated therein,
"[i]t is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered," argues
that it is the shared term "RESIST" in both marks which
"consumers are more inclined to focus on" and thus would lead to
a likelihood of confusion. Furthermore, the Examining Attorney
Ser. No. 78693773
8
argues that, even if the term "STAT" in the registrant's mark
"refers to antistatic properties of its goods, the issue at hand
is whether the applicant's mark and the registrant's mark when
viewed in their entireties create a confusingly similar
commercial impression." We concur that even though registrant's
mark "RESISTAT" could be specifically said to project the
connotation and commercial impression of a textile fiber and
synthetic textile yarn which, when used as integral components of
carpet, are resistant to static, that does not mean that such
mark is sufficiently distinguishable from applicant's "RESISTA"
mark, which as noted previously engenders a substantially similar
connotation and commercial impression, when used in connection
with a textile fiber and synthetic fiber which comprise an
integral component of carpet, of goods that are likewise
resistant to something, including static and/or stains.
With respect to applicant's assertion that the record
shows that "there are many companies owning registrations
incorporating the term 'RESIST' with distinctive additional
elements ... for flooring and fiber products"6 such that it may
be assumed that "consumers can distinguish between these various
RESIST marks," as well as applicant's mark, without there being a

6 The list of third-party registrations which applicant has made of
record, however, consists of just seven registrations (owned by four
registrants) for the following marks and goods: "RESISTRON" for
"carpeting"; "REGGIE RESISTANT" for "carpets"; "NICCARESIST" for a
"concentrated stain resist agent for nylon carpets"; "ANSO
CRUSHRESISTER" (stylized) for "nylon carpet yarn"; "ANSO CRUSHRESISTER
III ACT" for "nylon fiber sold as an integral component of carpets";
"ANSO CRUSHRESISTER III TLC" for "nylon fiber sold as an integral
component of carpets"; and "ASTROTURF UV SHIELD ULTRAVIOLET RESISTANT
FORMULA" and design for "ultraviolet radiation resistant synthetic
turf systems."
Ser. No. 78693773
9
likelihood of confusion, it is well settled that third-party
registrations do not demonstrate use of the marks which are the
subjects thereof in the marketplace or that the purchasing public
is familiar with the use of those marks and has learned to
distinguish between them. See, e.g., Olde Tyme Foods, Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir.
1992); Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462, 463 (CCPA 1973); and AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
Furthermore, as our principal reviewing court noted in In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001), "[e]ven if some prior registrations had some
characteristics similar to [applicant's] application, the ...
allowance of such prior registrations does not bind the Board or
this court." See also, In re Broyhill Furniture Industries Inc.,
60 USPQ2d 1511, 1514 (TTAB 2001); and In re Pennzoil Products
Co., 20 USQP2d 1753, 1758 (TTAB 1991). In any event, even if
applicant had established that the third-party marks on which it
relies are in use and that the public has learned to distinguish
between them, it is still the case that none of such marks is as
substantially similar to applicant's "RESISTA" mark in sound,
appearance, connotation and commercial impression as is the cited
registrant's "RESISTAT" mark. Thus, the du Pont factor of the
number and nature of similar marks in use on similar goods is
neutral rather than in favor of applicant.
Finally, as to applicant's argument that it has been
selling its goods under its mark "since January of 2006 without
Ser. No. 78693773
10
any known instances of consumer confusion with the ...
[Registrant's mark]" and that such contemporaneous use "is highly
probative of the absence of likelihood of confusion," suffice it
to say that, aside from the meager evidence offered by applicant
with respect thereto, an asserted lack of any incidents of actual
confusion is a meaningful factor only where the record
demonstrates that there has been appreciable and continuous use
by applicant of its mark in the same market(s) as those served by
registrant under its mark. See, e.g., Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Specifically,
there must be evidence showing that there has been an opportunity
for instances of actual confusion to occur and here the record is
devoid of any such proof. See, e.g., Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). In
particular, other than applicant's claim to have used its
"RESISTA" mark in connection with its goods only since January of
2006, there is no proof as to the extent of applicant's sales and
advertising, nor is there any evidence that such took place in
the same markets as those served by registrant under the
"RESISTAT" mark for its products. It consequently is the case
that the du Pont factor of the length of time during and
conditions under which there has been contemporaneous use without
evidence of actual confusion must be considered neutral instead
of being in applicant's favor.
Accordingly, weighing all the relevant du Pont factors,
we conclude that purchasers who are familiar or otherwise
acquainted with registrant's "RESISTAT" mark for "textile fiber"
Ser. No. 78693773
11
and "synthetic textile yarn" would be likely to believe, upon
encountering applicant's substantially similar "RESISTA" mark for
"synthetic fiber comprising an integral component of carpet;
[and] textile fiber comprising an integral component of carpet,"
that such closely related goods emanate from, or are sponsored by
or affiliated with, the same source. Purchasers, for example,
could readily regard the goods sold by applicant under its
"RESISTA" mark as a new, expanded or up-graded line of synthetic
fiber and textile fiber, each of which comprises an integral
component of carpet, that is resistant to stains as well as
static electricity and is from the same source as the antistatic
textile fiber and synthetic textile yarn marketed by respondent
under its "RESISTAT" mark.
Decision: The refusal under Section 2(d) is affirmed.