Celotex Corp.v.Cellux Converters, Inc.

Trademark Trial and Appeal Board

Sep 5, 2001

No. 91109080 (T.T.A.B. Sep. 5, 2001)

Hearing: 9/5/01 Paper No. 32
June 7, 2001 BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Celotex Corporation
v.
Cellux Converters, Inc.
_____

Opposition No. 109,080
to application Serial No. 75/191,597
filed on November 1, 1996
_____

David W. Pettis, Jr. of Pettis & Van Royen, P.A. for
Celotex Corporation.

Cellux Converters, Inc., pro se.1
______

Before Quinn, Hohein and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:

1 Applicant was represented before the USPTO by the same
attorney and law firm from the filing of its application in
November 1996 through the oral hearing held on June 7, 2001.
However, on May 30, 2001, or about one week prior to the
scheduled oral hearing date, applicant’s attorney had filed a
motion to withdraw as counsel. Due to possible prejudice to
applicant, the Board deferred a decision on the request to
withdraw until after the oral hearing. Following the oral
hearing (at which applicant’s attorney appeared), applicant’s
attorney’s motion to withdraw as counsel was granted by the
Board in an order dated June 14, 2001. Thus, applicant is now
pro se, and applicant’s copy of this order will be mailed only
to applicant, and it will not be mailed to applicant’s previous
attorney.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 109080
2
Cellux Converters, Inc. filed an application to
register the mark CELLOTEC on the Principal Register for
“adhesive tape for stationery or household purposes” in
International Class 16, and “adhesive packing tape for
sealing cartons for industrial or commercial use” in
International Class 17.2
Celotex Corporation has opposed registration of the
mark (in both classes) alleging that opposer owns nine
registrations for the mark CELOTEX all appearing in
either one or the other of the two design forms shown
below

3 and 4

2 Application Serial No. 75/191,597, filed November 1, 1996,
based on applicant’s allegation of a bona fide intention to use
the mark in commerce.
3 Registration No. 167,860, issued May 8, 1923, for “composition
of material for wall boards, linings for houses, and heat-
insulating lumber,” republished in 1948, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, third renewal;
Registration No. 395,899, issued June 16, 1942, for a variety
of asphalts, pitches, gypsums, and landplasters, second renewal;
Registration No. 401,741, issued June 8, 1943, for various
cements comprising an asphalt base for adhering construction
materials, second renewal;
Registration No. 408,163, issued July 25, 1944, for “paints and
painters’ materials, namely, asphalt roof paint, asbestos roof
paint, and paints having an asphalt and/or coal tar base,”
second renewal;
Registration No. 517,361, issued November 8, 1949, for
“composition of material for wall boards, linings for houses,”
Section 8 affidavit accepted, Section 15 affidavit acknowledged,
second renewal. (This registration, however, expired in 2000
Opposition No. 109080
3
all for goods related to those of applicant; that opposer
commenced use of the mark CELOTEX on adhesive tape

for failure to file a further renewal and will not be given
further consideration.);
Registration No. 528,607, issued August 8, 1950, for “fiber
insulation board, in its various forms identified as insulating
wallboard, insulating sheathing, tile, and the like in
accordance with the end use of the goods,” Section 8 affidavit
accepted, Section 15 affidavit acknowledged, second renewal.
(This registration, however, just expired in 2001 for failure to
file a further renewal and will not be given further
consideration.); and
Registration No. 556,165, issued March 18, 1952, for
“composition of material for wall boards in board or sheet form
and used as linings for houses, box-making material, fiberboard
suitably saturated with, coated and/or processed, namely, sound
absorbing tile, insulating brick siding and siding boards; fiber
hardboard; asphalt shingles, siding, and roll roofing; gypsum
plasters, wall boards, plasterboard, and lath; and tile mounting
systems, namely, metal retaining strips, splines, and miniature
beams for the erection of prefabricated tile,” Section 8
affidavit accepted, Section 15 affidavit acknowledged, second
renewal.
4 Registration No. 984,290, issued May 21, 1974, for “gypsum
sheathing, gypsum wallboard, mineral fiber acoustical lay-in
panels, mineral fiber acoustical tile, urethane insulation,
asphalt shingles, roll roofing, fiberboard acoustical tile,
fiber building board, fiberboard sheathing, asphalt coated
sheathing, fiberboard ceiling tile, metal grid parts, fiberboard
lay-in panels, concrete joint filler, roof insulation, vapor
barrier base sheet and insulating siding” (International Class
6) and “electrical lighting fixtures” (International Class 11),
Section 8 affidavit accepted, Section 15 affidavit acknowledged,
renewed; and
Registration No. 1,142,164, issued December 9, 1980, for
“plastic adhesives for general construction use” (International
Class 1), “asphalt coatings for general purpose use on metal,
wood, composition roofing, and concrete” (International Class
2), “asphalt emulsions for use as general protective coatings
for masonry, metal, wood, and the like; asphalt primers for
priming metal, concrete, masonry, and other surfaces prior to
application of hot roofing or waterproofing asphalts;
construction cements; joint system cement compound”
(International Class 19), Section 8 affidavit accepted, Section
15 affidavit acknowledged. (A renewal was due on this
registration by June 9, 2001, but there is no record of same
Opposition No. 109080
4
products prior to the filing date of applicant’s
application; that opposer’s registered and unregistered
marks (CELOTEX in stylized lettering) have become well
known as identifying opposer as the source of insulation
products and adhesives; and that applicant’s mark, if
used in connection with its goods, would so resemble
opposer’s previously used and registered marks as to be
likely to cause confusion, mistake, or deception.5
Applicant, stating in its answer that it was without
information to form a belief as to the truth thereof, has
therefore denied each of the salient allegations of the
notice of opposition.

being filed with the USPTO. Accordingly, this registration will
not be given further consideration.)
5 Opposer’s original notice of opposition also included the
wording “and to dilute the value and source identifying power of
Opposer’s marks....” (See paragraphs 2, 4 and 5.) At the time
the notice of opposition was filed, the Board had no authority
under the Trademark Act to determine the issue of dilution.
However, after the close of trial and completion of the briefing
of this case, the Trademark Act was amended, and opposer filed a
motion to amend the pleading to include a dilution claim. (The
only change in opposer’s proposed amended notice of opposition
was an inclusion of a citation to the Trademarks Amendments Act
of 1999.) In an order dated April 19, 2001, the Board deferred
a decision of both opposer’s motion to amend the pleading and
opposer’s motion to strike applicant’s brief filed in response
to the motion to amend. Having now reviewed the entire record,
opposer’s motion to amend the pleading is denied because the
issue of dilution was not tried. See Fed. R. Civ. P. 15(b).
Opposer’s motion to strike applicant’s brief in opposition to
the motion to amend is also denied.
We recognize that opposer’s amendment to the pleading was
merely the addition of a statutory citation; but even with
regard to the original pleading, the necessary elements of a
Opposition No. 109080
5
The record consists of the pleadings; the file of
the opposed application; status and title copies of
opposer’s nine pleaded registrations which accompanied
the original notice of opposition pursuant to Trademark
Rule 2.122(d)(1); the declaration testimony, with one
exhibit, of E. H. Fuhs, opposer’s product manager6; and
opposer’s notice of reliance on applicant’s responses to
opposer’s first and second sets of interrogatories and
document requests, and on opposer’s first set of requests
for admissions, to which applicant failed to respond.
Applicant took no testimony and offered no evidence
during its testimony period. Both parties filed briefs
on the case. An oral hearing was held before the Board
on June 7, 2001.
With regard to the issue of priority in relation to
the goods set forth in opposer’s pleaded registrations,
to the extent that opposer owns valid and subsisting
registrations of its pleaded marks, the issue of priority
does not arise. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974);

proper dilution claim were neither pleaded nor proven in this
case.
6 Opposer indicated that applicant’s attorney stipulated to the
submission. Informationally, opposer is advised that Trademark
Rule 2.123(b) has been amended to require the written agreement
of the parties to testimony so submitted.
Opposition No. 109080
6
and Carl Karcher Enterprises Inc. v. Stars Restaurants
Corp., 35 USPQ2d 1125 (TTAB 1995).
With regard to the issue of priority in relation to
opposer’s claim of common law rights in the mark CELOTEX
(in stylized lettering with a line under the word and
connecting the letter “C” and the letter “X”) for
adhesive tape “primarily intended for use in combination
with [opposer’s] foam board products” (Fuhs declaration),
opposer’s evidence establishes its continuous use thereon
since 1985, which is well prior to applicant’s filing
date of November 1, 1996. In applicant’s June 24, 1998
answers to opposer’s interrogatories applicant answered
regarding its first use of the mark on adhesive tape as
follows:
“Applicant has not used the Mark in
connection with any rolls of tape at
the present time. All shipments up to
this point have been made as plain
core/carton.” (Answer to
interrogatory No. 9); and

“There have been no sales of tape,
whereby the Mark has been used to
identify the product.” (Answer to
interrogatory No. 10).

Opposer has established its priority with regard to
common law rights in the mark CELOTEX (stylized) for
adhesive tape primarily intended for use with opposer’s
foam board products.
Opposition No. 109080
7
Thus, the only remaining issue before the Board is
likelihood of confusion. Our determination of likelihood
of confusion must be based on our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973). Based on the record before us
in this case, we find that confusion is likely.
We turn first to consideration of the similarities
or dissimilarities of the marks. Applicant argues that
its mark CELLOTEC appears in typed form, whereas
opposer’s marks (registered and common law) show the word
CELOTEX in special forms; that there are two “L”s in
applicant’s mark but only one “L” in opposer’s mark; and
that applicant’s mark ends in “C” while opposer’s mark
ends in “X.”
While the differences described by applicant are
accurate, we nonetheless find that these marks, CELLOTEC
and CELOTEX (in various stylized lettering) are similar
in sound, appearance, connotation and commercial
impression. There is nothing in the record to indicate
that the marks are anything other than arbitrary in
meaning in relation to the goods. Both marks begin with
“CELLO” or “CELO” and end in “TEC” or “TEX.” The
Opposition No. 109080
8
difference of one letter “L” is not significant; the
ending letters “C” and “X” sound like the singular or
plural of the same term; and the stylized lettering in
opposer’s mark does not offer sufficient differences to
create a separate and distinct commercial impression.
See In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Moreover, the differences in the marks may not be
recalled by purchasers seeing the marks at separate
times. The emphasis in determining likelihood of
confusion is not on a side-by-side comparison of the
marks, but rather must be on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of the many trademarks
encountered; that is, the purchaser’s fallibility of
memory over a period of time must also be kept in mind.
See Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller,
477 F.2d 586, 177 USPQ 573 (CCPA 1973); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d unpub’d (Fed. Cir., June 5, 1992); and
Edison Brothers Stores v. Brutting E.B. Sport-
International, 230 USPQ 530 (TTAB 1986).
Even if purchasers specifically realize that there
are some differences between the involved marks, they may
Opposition No. 109080
9
believe that applicant’s mark is simply a revised version
of opposer’s mark, with both serving to indicate origin
in the same source. Opposer’s mark has been registered
for almost eighty years, and a purchaser familiar with
opposer’s goods sold under the mark CELOTEX may, upon
seeing applicant’s mark on these related goods, assume
that applicant’s goods come from the same source as
opposer’s goods.
Thus, we find these marks are similar in sound,
appearance, meaning and commercial impression.
Turning to the du Pont factor of the fame of
opposer’s mark, applicant failed to respond to opposer’s
request for admission No. 4 that applicant admit that
opposer’s CELOTEX mark is famous and, therefore,
applicant is deemed to have admitted same pursuant to
Fed. R. Civ. P. 36. (Applicant does not argue otherwise
in this case.) This record establishes that opposer’s
mark CELOTEX is famous. The fame of opposer’s mark
increases the likelihood that consumers will believe that
applicant’s goods emanate from or are sponsored by the
same source. See Recot Inc. v. M.C. Becton, 214 F.3d
1332, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker
Toys Inc. v. Rose Art Industries Inc. 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992).
Opposition No. 109080
10
Turning next to consideration of the parties’
respective goods, it is well settled that goods (and/or
services) need not be identical or even competitive to
support a finding of likelihood of confusion, it being
sufficient instead that the goods (and/or services) are
related in some manner or that the circumstances
surrounding their marketing are such that they would
likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB
1992); and In re International Telephone and Telegraph
Corporation, 197 USPQ 910 (TTAB 1978).
Further, it has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
proceedings regarding the registrability of marks, the
Board is constrained to compare the goods (and/or
services) as identified in the application with the goods
(and/or services) as identified in the registration(s).
See Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and
Canadian Imperial Bank of Commerce, National Association
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987).
Opposition No. 109080
11
Applicant’s goods are identified as “adhesive tape
for stationery or household purposes” in International
Class 16, and “adhesive packing tape for sealing cartons
for industrial or commercial use” in International Class
17. With respect to opposer’s registered mark, CELOTEX
(in stylized lettering), the identified goods include
“box making material” (Registration No. 556,165), and
opposer’s goods on which it has established prior common
law rights in the mark are adhesive tape “primarily”
(though not solely) intended for use with opposer’s foam
board products. We find that there is a commercially
significant relationship between opposer’s adhesive tape
used with its foam board products and its box-making
materials, on the one hand, and applicant’s adhesive
packing tape for sealing cartons for commercial and
industrial tape, on the other hand. Moreover, even
applicant’s general household adhesive tape is a related
product, albeit for a different purpose, to the
aforementioned goods of opposer. Opposer sells box-
making material, and applicant intends to sell an
adhesive packing tape for sealing cartons. Opposer sells
an adhesive tape with the “primary” (but not the sole)
purpose of use with opposer’s wallboard products, but
Opposition No. 109080
12
according to applicant, it “uses7 its mark on dozens of
types of adhesive tapes in the general market. Applicant
sells adhesive tape for medical applications, graphic
arts/picture framing, industrial uses, carpet
installation and office and consumer tape.” (Brief, p.
6.) (Emphasis added.) Given the wide variety of
adhesive tapes covered by applicant’s identifications of
goods, and especially with regard to those for industrial
uses, opposer’s adhesive tape could be encompassed within
applicant’s goods.
Applicant strongly urges that the goods are not sold
in the same trade channels to the same classes of
purchasers. It is true that there is little evidence on
this point;
however, when we consider the goods on which applicant
asserts a bona fide intention to use the mark as
identified in the application, as we must, it is not
limited in any way so as to preclude overlap in the
industrial or commercial markets in which opposer’s mark
is involved. Therefore, applicant’s identification of
goods encompasses adhesive tapes for household use and a
specific adhesive packing tape for sealing cartons for

7 Based on this statement by applicant’s attorney, we presume
that applicant has commenced actual use of the mark CELLOTEC on
the applied-for goods.
Opposition No. 109080
13
commercial and industrial uses which would be sold
through all normal channels of trade to all the usual
purchasers for those goods. See Octocom Systems Inc. v.
Houston Computer Services Inc., supra, at 1787; and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991).
We find applicant’s goods are closely related to
opposer’s common law goods, and they are overlapping or
complementary to certain of opposer’s registered goods,
most notably, “box-making material”; and that the
parties’ goods would be sold in similar channels of trade
to the same purchasers.
Another du Pont factor to be considered in the case
now before us is “the variety of goods on which a mark is
or is not used (house mark, ‘family’ mark, product
mark).” In re E. I. du Pont de Nemours & Co., supra, at
567. Opposer has registered the mark CELOTEX for a
variety of products regularly used in household,
commercial and industrial applications, including
compositions of material for wall boards, box-making
material, asphalts, pitches, landplasters, cements,
certain roof paints, tile mounting systems, fiberboard,
insulation, heat insulating lumber, roofing, sheathing,
insulation siding and metal grid parts. Further, the
Opposition No. 109080
14
record is clear that opposer currently sells and for many
years has sold an adhesive tape used in connection with
opposer’s foam board products. Purchasers aware of the
variety of opposer’s goods sold under the mark CELOTEX
may well assume that opposer is now offering adhesive
tape for household use and/or adhesive packing tape for
sealing cartons for industrial use under the mark
CELLOTEC. See Uncle Ben’s Inc. v. Stubenberg
International Inc., 47 USPQ2d 1310, 1313 (TTAB 1998).
Accordingly, because of the similarity of the
parties’ marks; the fame of opposer’s mark; the
relatedness of some of the parties’ goods and the
overlapping or complementary nature of other goods; the
overlapping trade channels and similar purchasers; and
the variety of goods on which opposer has used and
registered its mark, we find that there is a likelihood
that the purchasing public would be confused if
applicant uses CELLOTEC as a mark for its adhesive tape
for stationery and household purposes and adhesive
packing tape for sealing cartons for industrial and
commercial use.
Applicant, as the newcomer, had the obligation to
select a mark which would avoid confusion. See In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
Opposition No. 109080
15
(Fed. Cir. 1988); and Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
Decision: The opposition is sustained, and
registration to applicant is refused.