Celanese International Corporationv.Halliburton Energy Services, Inc.

Trademark Trial and Appeal Board

Dec 2, 2008

No. 91166550 (T.T.A.B. Dec. 2, 2008)

Mailed: December 2, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Celanese International Corporation

v.

Halliburton Energy Services, Inc.
_____

Opposition No. 91166550
to application Serial No. 78471625
filed on August 23, 2004
_____

Peter M. Ferrell III of Ferrells, PLLC for Celanese
International Corporation

Shawn K. Look of Look Law Firm PLLC for Halliburton Energy
Services, Inc.
______

Before Walters, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

An application has been filed by Halliburton Energy
Services, Inc. (hereinafter, “Halliburton” or “applicant”)
to register the mark CELLEX (in standard characters) for
“drilling mud additive for use in oil well drilling for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91166550

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reducing filtration rate and for making low solids mud” in
International Class 1.1
Registration has been opposed by Celanese International
Corporation (hereinafter, “Celanese” or “opposer”) on the
ground of priority and likelihood of confusion. In its
notice of opposition, opposer alleges that it “produces and
markets chemicals, plastics, fibers and textile products for
use in industrial and commercial applications,” including
those for use “in functional fluids and drilling muds,” and
has continuously done so since as early as 1949 under its
“CELANESE and CELVOL trademarks.” Opposer pleaded ownership
of the following registrations:2
(1) CELANESE (typed characters) for: chemicals for
industrial and other uses, such as plasticizers,
lubricant additives, solvents and intermediates-
namely, aldehydes, such as form-aldehyde,
acetaldehyde organic acids, such as acetic acid and
propionic acid; ketones, such as acetone and methyl
ethyl ketone; alcohols, such as methyl, propyl and
butyl alcohols; organic oxides, such as methylal;
and glycols;3

(2) CELANESE (stylized) for: chemicals for
industrial and other uses such as lubricant
additives, functional fluids, solvents,
plasticizers, intermediates, and bactericides,
aldehydes, acids, anhydrides, ketones, alcohols such
as glycols and polyols, ethers, such as polyesters,
ether such as cyclic ethers, acetals lactones,
amines, and special solvents;4

1 Serial No. 78471625, filed on August 23, 2004, based on a
statement of first use anywhere and in commerce of May 1, 1961.
2 Opposer also claimed ownership of Registration No. 832786;
however, this registration was cancelled on May 2, 2008 under
Section 8.
3 Registration No. 506533, issued on February 8, 1948; renewed.
4 Registration No. 811180, issued on July 19, 1966; renewed.
Opposition No. 91166550

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(3) CELANESE (stylized) for: chemicals for
industrial, commercial, and other uses, such as
acids, aldehydes, anhydrides, organic oxides,
polyols, vinyl monomers, acrylates, alcohols,
esters, ethers, glycols, ketones, amines, salts,
plasticizers, solvents, and intermediates for the
production of chemical compounds;5 and

(4) CELVOL (typed characters) for: polyvinyl
alcohols for use in the manufacture of paper,
adhesives, fiber, textiles, textile treatments,
ceramics, joint compounds, title mortars, textured
coatings, extruded plastic film, furniture, contact
lenses, dispersants, stabilizers, emulsifiers, and
release coatings.6

Opposer further alleges that it has “extended the use
of the CEL- prefix in its CELANESE trademarks to create a
family of product names registered as trademarks ... by
opposer and its affiliated companies.” The additional
registered marks, owned and pleaded by opposer in connection
with its claim of a family of marks, are as follows:7
1. CELANEX (typed characters) for “thermoplastic resins in
the form of pellet capable of being molded under heat
and/or pressure or otherwise fabricated”;8
2. CELAWRAP (typed characters) for “reusable packaging kit
comprising of a girth wrap and folding top and bottom
caps, all of plastic, for wrapping bales of compressed
fibers”;9

5 Registration No. 832787, issued on August 1, 1967; renewed.
6 Registration No. 2560464, issued on September 9, 1997; renewed.
7 Opposer referenced several other registrations that have either
expired or been cancelled and, thus, have not been considered.
They are Registration Nos.: 628715 (FENT-O-SEAL stylized),
expired March 17, 1997; 609202 (ARNEL), cancelled (under Section
8) on April 22, 2006; 668521 (CELAFIL) expired registration;
1423954 (CELEBRATE!), cancelled on October 13, 2007; 1430295
(CELEBRATE!), cancelled on December 1, 2007; and 1350184 (CEL-
EX), cancelled on November 4, 1992.
8 Registration No. 924042 issued on November 23, 1971; renewed.
9 Registration No. 2585709 issued on June 25, 2002; Section 8 and
15 affidavits have been accepted and acknowledged.
Opposition No. 91166550

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3. CELDEFOAM (typed characters) for “foam inhibitor used
in textile manufacturing and processing”;10 and
4. CELPOL (typed characters) for “liquid sizing and
binding agent used in the textile industry.”11

Also in connection with its claim of a family of marks,
opposer identified in the notice of opposition several
registrations allegedly owned by affiliated companies, and
these are as follows:
Owned by CNA Holdings, Inc.
AMCEL for “chemicals for industrial, commercial and other
uses-namely, molding compounds, and synthetic resins”;12

CELECTRA for “cellulose acetate fibers for textile use”;13

CELSTRAN for “raw plastic material in the form of pellets
reinforced with long strand fiber capable of being molded
under heat and/or pressure or otherwise fabricated into
shaped articles for use in various industries, namely,
aerospace, aircraft, appliance, automotive, building,
construction, electrical, electronic, recreation, and the
like”;14 and

CELCON for “powders, chips, slabs, blanks, and the like,
all capable of being molded under heat and/or pressure or
otherwise fabricated.”15

Owned by PBI Performance Products, Inc.

Registrations Nos. 1537394, 1410999 (both for mark
CELAZOLE).16

10 Registration No. 2580446 issued on June 11, 2002; Section 8 and
15 affidavits have been accepted and acknowledged.
11 Registration No. 2744919 issued on July 29, 2003.
12 Registration No. 694414 issued on March 15, 1960; renewed.
13 Registration No. 2657246, issued on December 3, 2002.
14 Registration No. 1432612, issued on March 17, 1987, renewed.
15 Registration No. 700305, issued on July 5, 1960, renewed.
16 Assignment from opposer, recorded on March 6, 2006 (at reel
3259, frame 0280). As discussed in this decision, opposer has
not established that there is a relationship between opposer and
the current owner of these registrations, other than that the
registrations were once owned by opposer.
Opposition No. 91166550

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Opposer alleges that it “will be damaged by the
registration of [applicant’s mark] because such registration
would be likely to cause confusion with respect to source
and origin of the goods sold by opposer and applicant under
their respective marks.”
In its answer, as amended, applicant denied the salient
allegations of the notice of opposition, and pleaded the
affirmative defenses of laches, acquiescence and estoppel.
Applicant also filed a counterclaim to cancel opposer’s
pleaded Registration No. 2560464 (for the mark CELVOL),
pleading in the alternative that, should the Board find a
likelihood of confusion between the pleaded registered mark
and applicant’s mark, applicant “is clearly the senior user
of the CELLEX mark ... [and opposer] is not entitled to
continue owning the registration ... because [opposer’s] use
of the mark is likely to cause confusion.”
In its answer to the counterclaim, opposer denied that
applicant is the “senior user of the CELLEX mark to the
extent that applicant claims priority [of] use of
[opposer’s] CEL-prefix marks.”17 However, as discussed
below, opposer admitted applicant’s priority with respect to
opposer’s CELVOL mark. Both parties filed trial briefs.

17 Opposer admitted the allegations of paragraph 15 of the
counterclaim, as discussed below.
Opposition No. 91166550

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The Record
The record consists of the pleadings, the file of the
involved application, and the file of the registration
involved in the counterclaim. In addition, opposer
submitted the following evidence: the deposition testimony
of Michael E. George (opposer’s “global marketing manager
for the polyvinyl alcohol innovation segment”) and Cory J.
Sikora (opposer’s “marketing manager for polyvinyl alcohol
in the Americas region”), with exhibits. Opposer also
introduced, by way of a notice of reliance, certified status
and title copies of all registrations pleaded in its notice
of opposition and two trademark applications (discussed
below), as well as copies of certain discovery responses
from applicant to opposer’s interrogatories.
Applicant submitted the deposition testimony of Robert
W. Pike, with exhibits. Also, by way of notices of
reliance, applicant submitted status and title copies for
Registrations Nos. 1490725 and 822600 (both cancelled
registrations for the mark CELLEX);18 as well as USPTO TESS
database printouts of third-party registrations and
applications for marks containing a “CEL” prefix.19

18 Registration No. 1490725 was cancelled (under Section 8) on
December 12, 1994; and Registration No. 822600 expired (under
Section 9) as of April 24, 1987.
19 Opposer has objected to Halliburton’s introduction of
the TESS-database printouts for third-party registrations on the
“basis of relevance.” Opposer essentially argues that these
registrations “appear to pertain to [goods that] opposer does not
Opposition No. 91166550

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As to the record, there are some issues involving
opposer’s pleaded registrations and the certified status and
title copies submitted that require discussion. First, as
already noted in footnotes 2 and 7, several of the
registrations pleaded by opposer as its own or owned by “one
of its affiliated companies,” have expired or been
cancelled. Surprisingly, neither party brought this
information to the Board’s attention in the briefing of this
case. The expired or cancelled registrations are not
entitled to any of the statutory presumptions of Section
7(b) of the Trademark Act and have not been considered. See
In re Hunter Publishing Co., 204 USPQ 957, 963 (TTAB 1979)
(cancellation “destroys the Section [7(b)] presumptions and
makes the question of registrability ‘a new ball game’ which
must be predicated on current thought.”) Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d
1307, 1309 (Fed. Cir. 1989)(“[A] canceled registration does
not provide constructive notice of anything.”).

produce or market.” Brief, pp. 3-4. We do not find it
appropriate to exclude this type of evidence, which is routinely
offered in Board proceedings. See The Sports Authority Michigan,
Inc. v. The PC Authority, Inc., 63 USPQ2d 1782 (TTAB 2002); TBMP
§ 704.07 n.180 (2d ed. rev. 2004). Accordingly, opposer’s
objection is overruled and this evidence has been considered for
whatever probative value it may have.

Opposition No. 91166550

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Second, as to the certified status and title copies for
applications, these are evidence only of their filing and,
thus, have very little if any probative value.
Finally, applicant objected to opposer’s reliance “on
the certified copies of any and all registrations which are
owned by parties other than [opposer].” Brief, p. 9. As
identified above, the notice of opposition references four
registrations that Office records indicate are owned by CNA
Holdings, Inc. and two registrations owned by PBI
Performance Products, Inc. In his testimony, Mr. George
stated that CNA Holdings, Inc. is “Celanese North America,
which owns the intellectual property of the performance
plastics division of [opposer].” George deposition, p. 18.
As to the latter entity, PBI Performance Products, Inc., Mr.
George testified that this is a “third-party company.” Id.,
p. 19. Based on this testimony, we find that opposer has
established that there is relationship between itself and
CNA Holdings, Inc. such that it may rely on registrations
owned by CNA Holdings, Inc. to help show use of a family of
marks containing the letters “CEL” by related parties.
However, we can not reach the same conclusion with respect
to PBI Performance Products, Inc. Indeed, Mr. George’s
testimony shows that those registrations are owned by a
“third party,” without any claim of a relationship thereto.
Accordingly, applicant’s objection to reliance on the
Opposition No. 91166550

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registrations owned by CNA Holdings, Inc. is overruled and
these registrations have been considered; applicant’s
objection to opposer’s reliance on the PBI Performance
Products, Inc. registrations is sustained and these
registrations have been given no consideration.
Standing
Because opposer has properly made several of its
pleaded registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
Likewise, applicant has standing to bring the
counterclaim for the simple reason that opposer is relying
on the registration subject to the counterclaim in asserting
likelihood of confusion in its opposition to the applicant’s
application. Thus applicant has a real interest in seeking
to cancel the registration. See TBMP § 309.03(b)(2nd ed.
rev. 2004) and authorities cited therein. Accordingly, we
conclude that applicant has standing to bring the
counterclaim.
Priority
Generally, where an opposer pleads and establishes a
valid registration against an application, the issue of
Opposition No. 91166550

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priority does not arise. In such case, opposer does not
have to prove prior use, and the filing date of its
registration is irrelevant. See King Candy Co., Inc. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). However, in an opposition proceeding where the
applicant counterclaims for cancellation of opposer's
pleaded registration, the question of priority does arise.
See Ultratan Suntanning Centers Inc. v. Ultra Tan
International AB, 49 USPQ2d 1313 (TTAB 1998); Massey Junior
College, Inc. v. Fashion Institute of Technology, 492 F.2d
1399, 181 USPQ 272, n. 6 (CCPA 1974) (“prior use need not be
shown by an opposer relying on a registered mark unless the
applicant counterclaims for cancellation”).
Here, applicant has counterclaimed to cancel only one
of opposer’s pleaded registrations, namely, Registration No.
2560464 for the mark CELVOL. Consequently, opposer has
established priority in this opposition based on its
established and subsisting registrations, with the exception
of the CELVOL registration that is subject to the
counterclaim. Priority remains an issue with respect to the
registered mark that is the subject to the counterclaim.
As plaintiff in the counterclaim, applicant has the
burden of establishing priority of its mark, CELLEX, over
opposer’s registered mark, CELVOL. In this case,
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applicant’s priority is established by opposer’s admission
of paragraph 15 of applicant’s counterclaim which reads:20
Applicant/ Counterclaimant is now, and had been using
the mark CELLEX as a drilling mud additive for use in
oil well drilling for reducing filtration rate and for
making low solid mud. Applicant/ Counterclaimant first
used the mark through a predecessor in interest in
commerce in May 1961 for the aforementioned goods and
has continued to use the mark in commerce in connection
with the identified goods in the oil and gas drilling
industry to this day.

Accordingly, applicant may rely on May 1961 as its
priority date.
Opposer, as defendant in the counterclaim, likewise is
entitled to constructive use as of the filing date of its
own application (for the CELVOL registration), i.e.,
November 17, 2000, a date subsequent to applicant’s priority
date of May 1961. Opposer does not argue that it is
entitled to an earlier priority date with respect to the
CELVOL registration, nor did opposer present evidence in
this regard. We therefore find that applicant has
established its priority with respect to its CELLEX mark
vis-à-vis opposer’s registered mark, CELVOL.
Finally, to the extent that opposer is asserting a
likelihood of confusion with respect to its family of “CEL”
marks, not only must opposer establish that it owns a family
of marks, but opposer must also demonstrate, inter alia,

20 Opposer’s Answer to the Counterclaim unambiguously contains the
admission, “Opposer admits the allegations contained in Paragraph
15 of the Counterclaim.”
Opposition No. 91166550

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priority with respect to this asserted family vis-à-vis
applicant’s mark. Marion Laboratories Inc. v.
Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218 (TTAB
1988)(plaintiff asserting family of marks must prove “first,
that prior to the entry into the field of the opponent's
mark, the marks containing the claimed ‘family’ feature or
at least a substantial number of them, were used and
promoted together by the proponent in such a manner as to
create public recognition coupled with an association of
common origin predicated on the ‘family’ feature…”). In
this regard, opposer’s admission in its answer to the
counterclaim of applicant’s use of its mark as of May 1961
also establishes applicant’s date of first use for purposes
of the opposition. Therefore, opposer must show that its
purported family of marks was created, i.e., would have been
recognized as a family, prior to applicant’s established
first use date of May 1961.
Based on the record before us, we can not conclude
that, prior to May 1961, opposer made use of any combination
of its marks in such a manner as to “create public
recognition coupled with an association of common origin
predicated upon the ‘family’ feature,” (id.) namely, marks
containing the common element “CEL.” In its reply brief,
opposer correctly states that it is not necessary for all
members of the family to be in existence at time of
Opposition No. 91166550

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applicant’s entry in order for opposer to prevail. See
American Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457,
1978 WL 2155 (TTAB 1978) (family cloak will cover other
members born after defendant's intervening use). Still, in
this regard, we note that only one of the pleaded
registrations owned by opposer issued prior to 1961, that is
Registration No. 506533 for the mark CELANESE (stylized)
which issued in 1948. Only two of the registrations owned
by the related company, CNA Holdings, Inc., issued prior to
1961, Registration No. 694414 for the mark AMCEL and
Registration No. 700305 for the mark CELCON, both issuing in
1960. But, even more importantly, opposer has not presented
any evidence whatsoever from which we can conclude that it,
or any predecessor in interest or affiliate, used these
marks or any combination of its other marks in such a manner
that they can be construed as creating a family of “CEL”
marks prior to May 1961. In order to create the requisite
recognition of the common element of the marks or “family
surname,” the common element must be so extensively
advertised that the public recognizes the “family surname”
as a trademark. Reynolds & Reynolds Co. v. I.E. Systems,
Inc., 5 USPQ2d 149, 1751 (TTAB 1987). Opposer did not
submit any evidence to prove this type of recognition of its
purported family of “CEL” marks prior to May 1961. Cf., Han
Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d
Opposition No. 91166550

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1557, 1559 (Fed. Cir. 2001)(substantial evidence supports
Board's finding that plaintiff's family of marks “exists and
arose before [defendant's] filing date”).
To be clear, we are not making a finding that opposer
has never owned, or does not currently own, a family of
“CEL” marks. Rather, based on the record before us, we are
unable to find that opposer possessed a family of “CEL”
marks as of May 1961. Accordingly, opposer has not
established its priority with respect to its purported
family of “CEL” marks.
In summarizing our findings with regard to priority,
opposer has established its priority based on the pleaded
and subsisting registrations of record that it owns, except
for the registration for the mark CELVOL, which is the
subject of applicant’s counterclaim for cancellation.
However, opposer has not established that it owned a family
of “CEL” marks prior to applicant’s established first use
date. Lastly, applicant has demonstrated that it has
priority with respect to its mark, CELLEX, only vis-à-vis
opposer’s registered mark CELVOL.
Because priority is a necessary element of any claim
under Trademark Act § 2(d), and opposer does not have
priority with respect to its purported family of “CEL” marks
and the registered CELVOL mark, opposer’s claim of
likelihood of confusion based solely on its claim of a
Opposition No. 91166550

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family of “CEL” marks can not prevail.21 Our likelihood of
confusion analysis, below, is therefore limited to the
counterclaim and to opposer’s established and subsisting
registered marks, individually, vis-à-vis the mark in the
involved application.22
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Our analyses below, as is often the case, are based

21 In its briefs, opposer does not argue that there is a
likelihood of confusion between any one specific pleaded
registered mark and applicant’s CELLEX mark. Rather, opposer
states in its reply brief that it “is asserting its rights to a
common component of multiple trademark registrations owned by
itself and at least one of its commonly owned affiliates.
Opposer commenced this proceeding to protect its trademark
interest in the CEL-prefix of a sixty-two year old and growing
family of trademarks for products in several distinct lines of
business, including the oil well drilling industry….” Reply
brief, p. 7. Opposer also argues, for the first time in its
reply brief, it “has increased its presence in the oil field
industry as a natural expansion of its industrial chemical
business.” Reply brief, p. 8. However, opposer did plead and
try the issue of likelihood of confusion with respect to its
individual registered marks and, thus, we consider whether there
is a likelihood of confusion between each of opposer’s registered
marks and applicant’s mark for the respective goods and services.
22 As noted supra, opposer, in its reply brief, argues that it is
not asserting a likelihood of confusion between its individually
registered marks vis-à-vis applicant’s mark. Nonetheless, giving
opposer’s notice of opposition and main brief a broad
interpretation, we find that a likelihood of confusion analysis
between these marks is warranted.

Opposition No. 91166550

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primarily upon the crucial factors involving the similarity
of the marks and the similarity of the goods of the parties.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
We turn our attention first to applicant’s counterclaim
to cancel opposer’s registered mark, CELVOL. Initially, we
note that it is apparent that this claim is defensive in
nature and, likewise, has been pleaded in the alternative,
i.e., applicant seeks to cancel opposer’s registration only
if we find a likelihood of confusion between that mark and
applicant’s CELLEX mark. Despite the fact that opposer can
not possibly prevail on a likelihood of confusion between
these marks inasmuch as we have already determined priority
in applicant’s favor, we must still determine the issue of
likelihood of confusion. In this respect, both parties seem
to agree that there is no likelihood of confusion.
Applicant argues unequivocally that there is no likelihood
of confusion between its mark, CELLEX, and opposer’s mark,
CELVOL, when used on the respective goods. Brief, pp. 19-
25. Opposer, in its reply brief, states that it “has
carefully considered the arguments of applicant against
finding of confusion between its CELVOL mark and the CELLEX
Opposition No. 91166550

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trademark of applicant... [and] respectfully adopts those
arguments as its own” with respect to the counterclaim.
Reply brief, p. 9.
We agree with the parties that there is no likelihood
of confusion between applicant’s CELLEX mark and opposer’s
CELVOL mark. The marks are so dissimilar overall that, when
used on the respective goods, there is no likelihood of
confusion. Accordingly, the counterclaim is dismissed.
We now turn to opposer’s likelihood of confusion claim
against the involved application. Because they have been
addressed supra, we do not consider opposer’s CELVOL
registration, nor do we consider opposer’s family of “CEL”
marks allegation.
The first du Pont factor involves the similarity or
dissimilarity of the marks in terms of sound, appearance,
connotation and commercial impression. Of all of the
relevant marks, opposer’s CELANEX bears the closest
resemblance to applicant’s mark, CELLEX. The obvious
similarity is that both marks begin with the letters “CEL”
and end with the letters “EX.” And, to the extent they have
these common elements, they will be pronounced somewhat
similarly.
Applicant argues that “CEL” is a weak component of the
respective marks because it is a common prefix used in marks
on goods in the chemical industry and it is also used to
Opposition No. 91166550

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signify a key ingredient, cellulose, in applicant’s goods.
Brief, p. 20. In support of this contention, applicant
submitted copies of numerous third-party registrations for
marks beginning with the letters “CEL” for biochemicals and
other goods in International Class 1 involving chemicals.
Under the du Pont factors, existence of widespread
third-party use may serve to indicate the weakness of a term
in the context of its source identifying significance. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir.
2005). However, while third-party registrations may, in
some circumstances, be used to indicate that a term has been
commonly adopted in a particular field or may be used in the
manner of dictionary definitions to indicate the descriptive
or suggestive significance of a term, they are not probative
of third-party use. Compare In re Hamilton Bank, 222 USPQ
174, 177 (TTAB 1984) (“Such registrations are … competent to
show that others in a particular area of commerce have
adopted and registered marks incorporating a particular
term. We can also note from such registrations that the
term or feature common to the marks has a normally
understood meaning or suggestiveness in the trade ….”) with
AMF Inc. v. American League Products, Inc., 474 F.2d 1403,
1406, 177 USPQ 268, 269-70 (CCPA 1973) (“We have frequently
said that little weight is to be given such registrations in
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evaluating whether there is likelihood of confusion. The
existence of these registrations is not evidence of what
happens in the market place or that customers are familiar
with them ….”) Therefore, we find the third-party
registrations are of limited probative value.
Moreover, even if we were to find that the prefix “CEL”
is not arbitrary and has widespread use with respect to
chemicals, we can not disregard the other common element,
namely, the “EX” suffix. Of all of the third party
registrations submitted, very few contained both the prefix
“CEL” and the suffix “EX” as is the case herein.
Considering the marks CELLEX and CELANEX in their
entireties, we find them to be similar.
We find that, overall, opposer’s other registered marks
(namely, CELANESE, CELAWRAP, CELDEFOAM and CELPOL), are not
similar to applicant’s mark, CELLEX. Although they also
share the same first three letters “CEL” found in
applicant’s mark, each of these marks contains additional
letters and/or a suffix that, when considering each of the
marks in their entireties, creates a different commercial
impression from applicant’s mark, CELLEX.
Accordingly, the similarity of the marks favors finding
a likelihood of confusion only as to opposer’s mark CELANEX,
but does not favor finding a likelihood of confusion as to
its marks CELANESE, CELAWRAP, CELDEFOAM and CELPOL.
Opposition No. 91166550

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We next consider the du Pont factor regarding the
similarity or dissimilarity of the goods. Applicant’s goods
are identified as “drilling mud additive for use in oil well
drilling for reducing filtration rate and for making low
solids mud.” Looking at all of the identified goods in
opposer’s registrations for the marks CELANEX, CELANESE,
CELAWRAP, CELDEFOAM and CELPOL, we find none of these goods
is related to applicant’s goods.
Specifically, with regard to the only mark, CELANEX,
which we found similar to applicant’s mark, we note that the
registration for that mark covers “thermoplastic resins in
the form of pellets capable of being molded under heat
and/or pressure or otherwise fabricated.” It is readily
apparent that these goods are different from applicant’s
goods and opposer has not submitted any evidence to show
otherwise.
The other goods identified in opposer’s CELANESE,
CELAWRAP, CELDEFOAM and CELPOL registrations are dissimilar
from applicant’s goods as well, inasmuch as they cover
plastics, resins or other goods for use in different
industries. Opposer’s registered mark, CELANESE, covers
“chemicals for industrial and other uses, such as
plasticizers, lubricant additives, solvents and
intermediates-namely, aldehydes, such as form-aldehyde,
acetaldehyde organic acids, such as acetic acid and
Opposition No. 91166550

21
propionic acid; ketones, such as acetone and methyl ethyl
ketone; alcohols, such as methyl, propyl and butyl alcohols;
organic oxides, such as methylal; and glycols.” These goods
would appear to be quite different from applicant’s goods.
Opposer does not even argue that the goods identified
in its registrations are similar to applicant’s goods.
Rather, opposer argues that it has naturally expanded its
industrial chemical business to include polyvinyl alcohol
products for use in the oilfield and drilling industry, and
these products are sold under its CELVOL mark. There are
several problems with this argument. First, as already
discussed, opposer’s registered mark CELVOL is not one of
the registered marks being considered in this likelihood of
confusion analysis inasmuch as applicant established
priority of its mark, CELLEX, over CELVOL. Second, opposer
has not established that it would be natural for it to
expand its business from the goods identified in the
relevant pleaded and established registrations to polyvinyl
alcohol products for use in the oilfield and drilling
industry. In other words, opposer has not shown how any of
the goods identified in the relevant registrations are of a
type that the producer of these goods would normally expand
from this line of goods to polyvinyl alcohol products for
use in the oilfield and drilling industry.
A trademark owner cannot by the normal expansion of its
business extend the use or registration of its mark to
Opposition No. 91166550

22
distinctly different goods or services not comprehended
by its previous use or registration where the result
could be a conflict with valuable intervening rights
established by another through extensive use and/or
registration of the same or similar mark for like or
similar goods or services.

American Stock Exchange, Inc. v. American Express Company,
207 USPQ 356, 364 (TTAB 1980). The fact that opposer is now
in the business of polyvinyl alcohol products is not proof,
in itself, that such an expansion is normal or natural.
Accordingly, we find that none of identified goods in
the relevant registrations is similar or related to the
goods identified in the involved application. This factor
weighs strongly against a finding of likelihood of
confusion.
With respect to the du Pont factors involving trade
channels and classes of purchasers, again, there is no
evidence demonstrating that any of opposer’s identified
goods are sold in the same trade channels as applicant’s
identified goods or that the respective goods would be
encountered by the same purchasers. These du Pont factors
are therefore neutral or favor a finding of no likelihood of
confusion.
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion. Opposer acknowledges
that “neither party to this opposition submitted any
evidence of actual confusion as to source among customers
for its respective products,” but argues that actual
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23
confusion is not necessary. Brief, pp. 11-12. Based on the
record before us, we have insufficient information from
which to conclude that the absence of any instances of
actual confusion has any relevance here. Thus, this du Pont
factor remains neutral.
In sum, when we consider the evidence of record in
light of all relevant du Pont factors, we conclude that
there is no likelihood of confusion. Only one of opposer’s
marks, CELANEX, is similar to applicant’s mark, CELLEX.
However, the goods covered by opposer’s CELANEX registration
are so different from applicant’s identified goods that we
find no likelihood of confusion. As to opposer’s other
marks, they are not only dissimilar from applicant’s mark,
but the goods identified in the registrations for those
marks have no viable relationship to applicant’s goods.
Decision: The opposition and counterclaim, both based
on a ground of likelihood of confusion, are dismissed.