Coverall North America, Inc.v.Cover-All, Inc.

Trademark Trial and Appeal Board

Mar 9, 2005

No. 91118366 (T.T.A.B. Mar. 9, 2005)

Mailed: 3/9/05

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Coverall North America, Inc.
v.
Cover-All, Inc.
_____

Opposition No. 91118366
to application Serial No. 75434680
filed on February 17, 1998
_____

Michael A. Grow, Christopher Grigorian of Arent Fox PLLC for
Coverall North America, Inc.

Thomas I. Rozsa of Rozsa & Chen for Cover-All, Inc.
______

Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Cover-All, Inc. to register
the mark COVER-ALL for “installation of floor coverings.”1
Coverall North America, Inc. opposed registration on
the ground of likelihood of confusion pursuant to Section
2(d) of the Trademark Act. Opposer alleged that applicant’s
mark, when used in connection with applicant’s services, so
resembles opposer’s previously used and registered COVERALL

1 Application Serial No. 75434680, filed February 17, 1998,
alleging first use anywhere and first use in commerce on January
2, 1996.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91118366
2
marks for maintenance and cleaning services, as to be likely
to cause confusion. Opposer has pleaded the following
previously registered marks: COVERALL for “maintenance and
cleaning of offices and commercial buildings”;2 COVERALL
CLEANING CONCEPTS for “maintenance and cleaning of offices
and other commercial buildings”;3

for “maintenance and cleaning of offices and commercial
buildings”;4

for “maintenance and cleaning of offices and commercial
buildings”;5 SINGLE SOURCE BY COVERALL for “arranging for

2 Registration No. 2178521, issued August 4, 1998; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
3 Registration No. 2075333, issued July 1, 1997; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
4 Registration No. 2252554, issued June 15, 1999. The word
“cleaning” is disclaimed apart from the mark.
5 Registration No. 2337703, issued April 4, 2000. The word
“cleaning” is disclaimed apart from the mark. The stippling
shown in the drawing is for shading purposes only and is not
intended to indicate color.
Opposition No. 91118366
3
repair and maintenance services, namely, janitorial
cleaning, pressure cleaning, pest control, lawn maintenance,
painting, carpentry, drywall, parking lot maintenance, snow
removal, fire and flood restoration, and HVAC, duct and
filter service”;6 and

for “cleaning preparations, namely floor cleaners;
commercial floor maintenance services; and application of
specialty chemicals to granite, marble, ceramic and other
surfaces.”7
In addition to the likelihood of confusion claim,
opposer also pleaded that applicant’s mark falsely suggests
a connection with opposer or its related companies pursuant
to Section 2(a) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations in the notice of opposition. Applicant further
set forth several allegations captioned as “affirmative
defenses.”

6 Registration No. 2533774, issued January 29, 2002.
7 Registration No. 2718891, issued May 27, 2003. The words
“floorsystems” and “division” are disclaimed apart from the mark.
The lining is a feature of the mark and does not indicate color.
The registration includes the following description: “The mark
consists of a shield with three footprints inside the shield.”
Opposition No. 91118366
4
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by both parties; status and title copies of
opposer’s pleaded registrations, copies of third-party
registrations, portions of a discovery deposition and
related exhibits, and applicant’s responses to certain of
opposer’s interrogatories, all introduced by way of
opposer’s notices of reliance; and opposer’s responses
(original and amended) to applicant’s interrogatories and
request for production, made of record by applicant’s notice
of reliance. Both parties filed briefs.8 An oral hearing
was not requested.
Evidentiary Objections
Opposer objected to certain portions of applicant’s
trial testimony on the ground that these portions contain
inadmissible hearsay. In each of the nine subject
depositions, the witness was asked whether he/she ever
received telephone calls wherein the caller had confused

8 Opposer’s motion to extend its time to file a reply brief, to
which applicant consented, is granted. The reply brief was
timely filed.
Opposer, in its briefs, has made references to and relied upon
prior Board opinions marked, as is the present opinion, “This
disposition is not citable as precedent of the TTAB.” Decisions
that are so designated are not citable authority and will not be
considered by the Board. Opposer should refrain in the future
from citation to “unpublished” Board opinions. See In re A La
Vielle Russie Inc., 60 USPQ2d 1895, 1897 n. 2 (TTAB 2001); and In
re Polo International Inc., 51 USPQ2d 1061, 1063 n. 3 (TTAB
1999). See generally TBMP §§101.03 and 1203.02(f) (2d ed. rev.
2004).
Opposition No. 91118366
5
applicant with opposer, or whether any employee of applicant
ever informed the witness that the employee had received
telephone calls from someone asking for opposer. In each
instance, the witness testified that he/she had not received
any such calls nor had any employee informed him/her that
the employee had received any misdirected calls.
Applicant, for its part, objected to certain portions
of opposer’s trial testimony on the ground of inadmissible
hearsay. In each of the portions of eight depositions
objected to by applicant, the witness was asked if he/she
ever received telephone calls wherein the caller had
confused opposer with applicant and, in each case, the
witness testified that he/she had received such calls.
Each party argues that the subject testimony is
relevant, of course, to the nature and extent of any actual
confusion. Opposer relies on its testimony to show that
there have been instances of actual confusion, while
applicant relies on its testimony to show the absence of any
actual confusion.
Hearsay is an out-of-court statement offered to prove
the truth of the matter asserted. Fed. R. Evid. 801(c).
Courts have responded to the hearsay objection in varying
ways. See generally, J.T. McCarthy, McCarthy on Trademarks
and Unfair Competition, § 23:15 (4th ed. 2004).
Opposition No. 91118366
6
The parties’ respective objections are overruled, and
we have considered each party’s testimony in the present
case. Opposer’s testimony is not hearsay for it is accepted
not for the truth of the statements made by the non-
witnesses to opposer’s deponents or the reasons therefor,
but rather for the fact that the statements referred to in
their testimony were, in fact, made to them. In a similar
fashion, applicant’s witnesses’ statements of what others
told them, that is, that no one has asked whether opposer
and applicant were related, is not hearsay. See Toys “R”
Us, Inc. v. Lamps R Us, 219 USPQ 340, 346 (TTAB 1983); and
Finance Co. of America Corp., 205 USPQ 1016, 1035 (TTAB
1979).
Although the testimony is admissible, the probative
value is discussed infra.
The Parties
Opposer has been engaged in the commercial cleaning
business since 1982. Opposer’s cleaning and janitorial
services include floor care services such as vacuuming, dust
mopping, stripping and waxing, buffing, shampooing, deep
cleaning and other carpet and hard floor services. The
services are rendered through a nationwide network of
franchisees. According to Marci Kleinsasser, opposer’s
director of marketing, opposer has grown into one of the
world’s largest commercial cleaning franchises, with over
Opposition No. 91118366
7
7,000 franchise owners (and 85 regional support centers)
providing services to more than 22,000 accounts. Account
types include commercial office buildings, retail stores,
hospitals and medical offices, government buildings,
warehouses, and the common areas of apartment and
condominium buildings. Revenues in 2002 were approximately
$200 million. Opposer promotes its services both nationally
and locally through television and radio, the Internet,
magazines, newspapers, brochures, Yellow Pages directories,
and appearances at trade shows. Advertising expenditures in
2002 exceeded $2.2 million. Opposer also has been the
beneficiary of unsolicited favorable publicity, and has been
identified in recent years as one of the country’s top 500
franchises (ranked #10 by Entrepreneur Magazine).
Applicant has been engaged, since 1996, in the
installation of flooring and flooring products, such as
carpet, wood, vinyl, ceramic, and tile. These installation
services are rendered to residential customers through large
chain retailers like Home Depot, Sears and Costco. The
services are marketed through brochures and business cards,
listings in the Yellow Pages and the Internet. Applicant’s
advertising expenditures in 1996 and 1997 were approximately
$7,200 and $9,500, respectively.
Opposition No. 91118366
8
Priority
In view of opposer’s ownership of valid and subsisting
registrations, there is no issue regarding opposer’s
priority. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Thus, the only
issue to decide herein is likelihood of confusion (see
discussion regarding mootness of Section 2(a) claim, infra).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). These, and other du Pont
factors deemed pertinent in the proceeding now before us,
are discussed below.
The Marks
Opposer’s typed mark COVERALL, of all of opposer’s
pleaded marks, is closest to applicant’s typed mark COVER-
ALL. Opposer owns prior rights in the mark COVERALL
standing alone, both by virtue of its prior use and prior
Opposition No. 91118366
9
registration. This mark is virtually identical in
appearance to applicant’s mark COVER-ALL, the only
difference being a hyphen in applicant’s mark. The marks
are absolutely identical in sound. See Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983).
As to meaning, the marks COVERALL and COVER-ALL are
arbitrary and distinctive, although they convey slightly
different connotations. Both are somewhat suggestive,
opposer’s mark suggesting that its services cover all facets
of cleaning and maintenance of offices and commercial
buildings, and applicant’s mark being suggestive of its
installation of all types of floor coverings.
The virtual identity in the marks’ appearance and the
identity in sound outweigh any slight difference in
connotation. As to overall commercial impression, the marks
convey essentially the same impression.
Further, applicant’s mark is similar to each of
opposer’s other COVERALL marks. Although each of these
marks includes other matter, the dominant portion of the
marks registered in Registration Nos. 2075333, 2252554 and
2337703 is COVERALL. In opposer’s typed mark COVERALL
CLEANING CONCEPTS, the first word in the mark is the one
most likely to be remembered by purchasers, and the term
COVERALL will likely be used in calling for the services.
Opposition No. 91118366
10
Opposer’s logo marks are dominated by the term COVERALL; as
shown in the drawings, the COVERALL portion is prominently
displayed. In the logo marks, the literal portion COVERALL
CLEANING CONCEPTS dominates over the design features, and,
in turn, the literal portion is dominated by COVERALL. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987);
and Inter-State Oil Co., Inc. v. Questor Corp., 209 USPQ 583
(TTAB 1980). In comparing these marks with applicant’s
mark, we must consider, of course, the marks in their
entireties. In doing so, however, there is nothing improper
in according more weight to the suggestive, distinctive
literal element of these marks, namely the term COVERALL.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1845 (Fed. Cir. 2000); and In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In comparing applicant’s mark to opposer’s mark SINGLE
SOURCE BY COVERALL shown in Registration No. 2533774, we
find that the virtual identity between COVERALL and COVER-
ALL outweighs the differences between these two marks. In
considering likelihood of confusion between these marks, we
also are mindful of the fame of the mark COVERALL (see
discussion, infra).
Lastly, we turn to opposer’s mark shown in Registration
No. 2718891. Clearly, the AEGIS portion thereof dominates
this logo mark. Again, however, in considering this mark,
Opposition No. 91118366
11
we are mindful of the fame of COVERALL. Although we find
that this mark and applicant’s mark are sufficiently similar
for purposes of likelihood of confusion, we readily concede
that this mark is least close to applicant’s mark in terms
of overall commercial impression.
In attempting to distinguish the marks, applicant
presses the point that opposer’s COVERALL mark and
applicant’s mark, as actually used in commerce, often appear
with other wording. In this connection, applicant points to
advertisements of record showing that opposer uses “COVERALL
Cleaning Concepts” while applicant utilizes “COVER-ALL
Flooring Services. Sales. Installation.” Applicant’s
point is irrelevant for purposes of our likelihood of
confusion analysis in that the additional words used by
applicant do not appear in the drawing of the mark showing
the mark sought to be registered. It is the mark shown in
the drawing that must be compared to opposer’s marks. See
Blue Cross and Blue Shield Association v. Harvard Community
Health Plan Inc., 17 USPQ2d 1075, 1077 (TTAB 1990), citing
Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347,
120 USPQ 480, 481 (CCPA 1959).
Opposer, in addition to its other marks, has
established prior rights in the mark COVERALL standing
alone. Thus, the critical comparison for us to make in the
present case is to compare applicant’s mark to the mark of
Opposition No. 91118366
12
opposer that is closest to it, namely, COVERALL versus
COVER-ALL.
The facts that COVERALL and COVER-ALL are identical in
sound and virtually identical in appearance and overall
commercial impression “weighs heavily against applicant.”
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289, 1290 (Fed. Cir. 1984).
The Services
Applicant’s argument that its installation of floor
coverings services are different from opposer’s commercial
maintenance and janitorial services is at the center of its
contention that confusion is unlikely to occur between the
marks COVERALL and COVER-ALL.
In addition to its maintenance, cleaning and janitorial
services, opposer sells floor cleaners. However, we have
focused our attention, as have the parties, on the services
rendered by each. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986 (CCPA
1981) [finding of likelihood of confusion may be based on
relatedness of any one item in the involved identifications
of goods/services].
With respect to the services, it is well established
that the services of the parties need not be similar or
competitive, or even that they are offered through the same
channels of trade, to support a holding of likelihood of
Opposition No. 91118366
13
confusion. It is sufficient that the respective services of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
services are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue
is not whether purchasers would confuse the services, but
rather whether there is a likelihood of confusion as to the
source of the services. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
The nature and scope of a party’s services must be
determined on the basis of the services recited in the
application and/or registration. See, e.g., Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In comparing the services, we initially note that where
virtually identical marks are involved, as is the case here,
the lesser the degree of similarity between the parties’
Opposition No. 91118366
14
services that is required to support a finding of likelihood
of confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688-1689 (Fed. Cir. 1993); Time Warner Entertainment
Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re
Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). See generally 3
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §23:20.1 (4th ed. 2004).
Opposer’s recitations of services encompass the
maintenance and cleaning of floors and floor coverings.
Moreover, the record shows that opposer’s maintenance,
cleaning and janitorial services are comprehensive in
nature, and include floor care services. These services
include stripping, waxing, sweeping, carpet shampooing and
vacuuming. Ms. Kleinsasser testified that opposer invests
substantial resources in training programs for its employees
and franchisees. An element of their training relates to
specialized skills in caring for carpets and floors.
Opposer’s “Hard Floor Care Certification Program” involves
training in buffing, stripping and waxing of such floors,
and the “Carpet Cleaning Certification Program” provides
training in techniques and use of carpet cleaning equipment
and chemicals.
Opposer also offers a non-slip floor treatment service
through its Aegis Floorsystems division. This treatment
removes surface particles of the silica sand in floor tiles,
Opposition No. 91118366
15
thereby providing improved traction on the floor. The
treatment is designed to reduce the number of slip-and-fall
accidents, and it has been marketed primarily to fast-food
franchises. According to Thomas Clark, the director of
operations of this division, this treatment is an
alternative to floor covering replacement and competes
directly with the types of services offered by applicant.
Mr. Clark testified that customers of this service made a
specific choice between treating their existing floors and
replacing the floors.
Although the cleaning and maintenance of floors and
floor coverings on the one hand, and the installation of
floor coverings on the other, are specifically different
services, we find, based on the record before us, that the
parties’ services are commercially related. The services
are related to the extent that a prospective purchaser may
make a choice to maintain existing flooring (using opposer’s
services) or to install new flooring (using applicant’s
services).
Applicant installs the same types of floor coverings
that opposer cleans and maintains. In finding that the
parties’ services are related, we considered the several
third-party registrations covering both floor cleaning and
maintenance services and carpet/floor installation services.
Third-party registrations, which individually cover
Opposition No. 91118366
16
different goods and/or services and which are based on use
in commerce, serve to suggest that the listed goods and/or
services are of a type that may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
The relatedness of the parties’ services weighs in
opposer’s favor.
Trade Channels
The evidence of record reveals that opposer’s services
are rendered to commercial accounts, and this trade channel
is reflected in the recitations of services in the pleaded
registrations. The record shows that opposer’s accounts
include residential apartments and condominiums where it
cleans common areas (including floors and carpets), but not
the individual units. The record also reveals that
applicant’s services are rendered primarily to residential
customers. In saying this, however, it is important to note
that applicant has installed, in the past, floors and floor
coverings for commercial customers. Although applicant has
not focused on the commercial market, Gad Leshem,
applicant’s chief executive officer and president, testified
that “I’m providing installation of flooring services and it
will be open to whoever needs my services.” [12/16/03 dep.,
p. 56]. Indeed, Mr. Leshem identified restaurants,
Opposition No. 91118366
17
hospitals and the armed services branches of the federal
government as prior customers.
As indicated above in discussing the similarity between
the parties’ services, applicant’s services, as identified
in the involved application, are not limited to residential
use or to any other trade channel. Where the services in an
involved application or registration are broadly described
and there are no limitations in the identification of
services as to their nature, type, channels of trade or
classes of purchasers, it is presumed that the scope of the
identification encompasses all services of the nature and
type described, that the identified services are offered
through all channels of trade that would be normal therefor,
and that the services would be purchased by all of the usual
potential customers. Thus, here, in the absence of any
limitation, we must presume that applicant’s services are
rendered through all reasonable channels of trade, including
both residential and commercial markets. CBS, Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983);
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989); and Morton-Norwich Products, Inc. v. N.
Siperstein, Inc., 222 USPQ 735, 736 (TTAB 1984). In point
of fact, as noted above, applicant has rendered its services
to commercial customers. Accordingly, the trade channels
overlap in the commercial arena.
Opposition No. 91118366
18
Conditions of Sale and Classes of Purchasers
As indicated earlier, applicant points to the evidence
of record in an attempt to distinguish the customers for its
services (homeowners) from opposer’s customers (building
managers and commercial property owners). As was the case
with trade channels, however, applicant’s identification of
services similarly does not include any limitations on
purchasers for its services. Thus, we must presume that all
potential purchasers, including both residential homeowners
as well as commercial accounts, buy the floor installation
services. In light of this presumption, there is an overlap
in the classes of purchasers for the services.
There is competition between the parties and an overlap
in customers in that, as noted earlier, a customer may
decide either to replace a floor covering (using applicant’s
services) or to refurbish an existing floor (using opposer’s
services).
We recognize that the respective services may be costly
and may require an informed purchasing decision.
Nonetheless, given the virtual identity between the marks
COVERALL and COVER-ALL, and the relatedness of the services
rendered thereunder, even a discriminating purchaser would
not be immune from confusion. In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
Opposition No. 91118366
19
Fame
The fifth du Pont factor requires us to consider
evidence of the fame of opposer’s marks and, if established,
fame plays a “dominant” role in determining likelihood of
confusion. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 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). As the Federal
Circuit stated in Bose Corp. v. QSC Audio Products Inc.,
supra at 1305:
Fame of an opposer’s mark or marks, if
it exists, plays a “dominant role in the
process of balancing the duPont
factors,” Recot, 214 F.3d at 1327, 54
USPQ2d at 1456, and “[f]amous marks thus
enjoy a wide latitude of legal
protection.” Id. This is true as
famous marks are more likely to be
remembered and associated in the public
mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong
mark...casts a long shadow which
competitors must avoid.” Kenner Parker
Toys, 963 F.2d at 353, 22 USPQ2d at
1456. A famous mark is one “with
extensive public recognition and
renown.” Id.

The record establishes that opposer has enjoyed
considerable success with its services (annual sales
exceeding $200 million), and that its marks have been
nationally promoted (annual advertising costs exceeding $2.2
million). Opposer is one of the most successful franchises
Opposition No. 91118366
20
in the country according to printed publications in the
field. In the face of this evidence, applicant essentially
conceded the fame of opposer’s COVERALL mark, with the
caveat that this fame is confined “strictly and solely for
use in conjunction with providing janitorial and cleaning
services and not for anything else.” (Brief, p. 38).
Applicant emphasizes its point that “[o]pposer’s fame is
strictly and solely [confined to] the providing of
janitorial and cleaning services through its franchisees to
specific commercial buildings” and that “[t]here is no fame
and no brand recognition whatsoever of Opposer’s mark for
the installation of flooring services of any kind whatsoever
and no brand recognition and fame of the Opposer’s mark for
use in conjunction with providing services of any type to
consumers in their homes.” Id.
Although applicant attempts to limit the fame of
opposer’s COVERALL mark, this attempt impermissibly
undercuts the legal standard of protection for famous marks.
Famous marks are accorded more protection precisely because
they are more likely to be remembered and associated in the
public mind than a weaker mark. The fame of a mark may
affect the likelihood purchasers will be confused inasmuch
as less care may be taken in purchasing a product or service
under a famous name. Recot Inc. v. M.C. Becton, supra at
1897.
Opposition No. 91118366
21
Fame for confusion purposes arises as long as a
significant portion of the relevant consuming public
recognizes the mark as a source indicator. The proper legal
standard for evaluating the fame of a mark under the fifth
du Pont factor is the class of customers and potential
consumers of the service, and not the general public. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
en 1772, ___F.3d___, 73 USPQ2d 1689 (Fed. Cir. 2005). As
discussed above, the customers for the parties’ respective
services overlap and, thus, the fame of opposer’s COVERALL
mark plays an important role in this case.
In response to the type of argument set forth by
applicant herein, our primary reviewing court has stated
that a famous mark “can never be ‘of little consequence’”
and instructed:
This reasoning applies with equal force
when evaluating the likelihood of
confusion between marks that are used
with goods that are not closely related,
because the fame of a mark may also
affect the likelihood that consumers
will be confused when purchasing these
products. Indeed, it is precisely these
circumstances which demand great
vigilance on the part of a competitor
who is approaching a famous mark, for,
as the present case illustrates, the
lure of undercutting or discounting the
fame of a mark is especially seductive
See Recot, slip op. at 19 (“It is
applicant’s position that opposer’s
marks are famous for a variety of human
food products, but that the fame of
opposer’s marks does not extend beyond
that field....”). Accordingly, we hold
Opposition No. 91118366
22
that the fame of the mark must always be
accorded full weight when determining
the likelihood of confusion. When a
famous mark is at issue, a competitor
must pause to consider carefully whether
the fame of the mark, accorded its full
weight, casts a “long shadow which
competitors must avoid.” [citations
omitted].

*****

The Board also erred when it
distinguished this court’s precedent on
the ground that our prior cases
concerned products that were identical
or closely related. Indeed, this court
and its predecessor court have
consistently stated that the fame of the
mark is a dominant factor in the
likelihood of confusion analysis for a
famous mark, independent of the
consideration of the relatedness of the
goods. [citations omitted].

Recot Inc. v. M.C. Becton, supra at 1897-98.
Accordingly, we have accorded the conceded fame of
opposer’s COVERALL mark for cleaning and janitorial services
its full measure of weight in our likelihood of confusion
analysis. As we found above, the services herein are
related; but even if we had been persuaded by applicant’s
contention that the services are not related, the fame of
opposer’s COVERALL mark would still weigh heavily in
opposer’s favor.
Third-Party Use
In connection with the strength of opposer’s COVERALL
mark, we also note that the record is devoid of evidence of
Opposition No. 91118366
23
any third-party uses or registrations of the same or similar
marks for similar or related services.
Actual Confusion
As discussed above in ruling on the parties’
evidentiary objections, each party introduced testimony
bearing on this factor. Opposer took the testimony of
individuals (employees and franchisees of opposer) who
testified about their receipt of misdirected phone calls,
and one misdirected written correspondence. Applicant
countered with the testimony of its employees who testified
that they neither had received any misdirected phone calls,
nor were aware of any instance where anyone confused
applicant with opposer relative to the source of the
respective services.
Convincing evidence of significant actual confusion
occurring under actual marketplace conditions is strong
proof of a likelihood of confusion. In the present case,
although the evidence of actual confusion (or the lack
thereof) is admissible, we have given it limited probative
value on the issue of likelihood of confusion.
We have considered opposer’s evidence to the extent
that it shows that the calls did occur and were misdirected
to opposer. In the absence of corroborating evidence about
the callers, however, we are reluctant to place significant
weight on this evidence. Had the callers themselves been
Opposition No. 91118366
24
identified and made available for cross-examination, they
could have explained their reasons for their questions as to
the affiliation between opposer and applicant. While
opposer’s witnesses testified, not surprisingly, that the
stated reason for the callers’ confusion was the similarity
between the marks and the services rendered thereunder, we
would prefer to hear it from the callers themselves.
Thus, we have accorded only minimal weight to the
parties’ evidence on this factor. In any event, evidence of
actual confusion is not essential to proving a case of
likelihood of confusion.9 Giant Food, Inc. v. Nation’s
Foodservice, Inc., supra. Simply put, this du Pont factor
is not critical in our analysis of the merits in this case.
Other Issues
Applicant has taken opposer to task for its failure to
undertake a trademark confusion survey to gauge the
subjective reactions of prospective purchasers to the marks
at issue. As stated in the past, the Board, although
receptive to surveys, does not require them in Board
proceedings. See, e.g., Miles Laboratories Inc. v.
Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB
1986). The Board appreciates the significant financial cost

9 Even if we had ruled the other way in each of the parties’
respective objections to evidence, none of the subject testimony
is outcome determinative and, thus, we would reach the same
result on the merits.
Opposition No. 91118366
25
of surveys and, further, obviously recognizes the limited
jurisdictional nature of Board proceedings, wherein only
rights to federal registrability, not use, are determined.
Thus, the Board does not draw any negative inferences from a
party’s failure to offer survey evidence in a proceeding
before the Board. Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423, 1435-36 (TTAB 1993).
Applicant also argues that an absence of any likelihood
of confusion may be presumed by the USPTO’s publication of
applicant’s mark over opposer’s registrations. This
contention is ill founded. The Board reviews the issue
based on the record evidence, most of which was not before
the examining attorney during ex parte examination, and the
Board is not bound or restricted in any way by the examining
attorney’s actions. McDonald’s Corp. v. McClain, 37 USPQ2d
1274, 1277 (TTAB 1995).
Next, it is well settled that a newcomer has both the
opportunity and the obligation to avoid confusion.
Consequently, a party which knowingly adopts a mark similar
to one used by another for the same or closely related goods
or services does so at its own peril. All doubt on the
issue of likelihood of confusion must be resolved against
the newcomer. This is especially the case where the
established mark is one that is famous. TBC Corp. v. Holsa
Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997); Nina
Opposition No. 91118366
26
Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12
USPQ2d 1901 (Fed. Cir. 1989); and Kimberly-Clark Corp. v. H.
Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed.
Cir. 1985).
Although we have resolved any doubt in favor of
opposer, so as to be clear, we do not find any bad faith
adoption by applicant. Indeed, as indicated above,
applicant acted at its own peril in adopting a mark
virtually identical to opposer’s mark that was disclosed in
a trademark search report. The record evidence is not of
the caliber, however, upon which to base a finding of a bad
faith adoption by applicant.
As a final point, applicant, in its brief, maintains
that opposer’s inaction, following the alleged instances of
actual confusion, establishes laches. As pointed out by
opposer, however, laches is not a viable defense in an
opposition proceeding inasmuch as the delay is based on the
time running from knowledge of the application for
registration rather than from knowledge of use. National
Cable Television Association v. American Cinema Editors,
Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991).
Conclusion
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto (including
Opposition No. 91118366
27
any arguments not specifically discussed in this opinion),
and we conclude that opposer has proved its Section 2(d)
ground of opposition. Given the fame of opposer’s COVERALL
mark, the relatedness of the parties’ services, and the
overlap in trade channels and classes of purchasers, we find
that applicant’s mark COVER-ALL is essentially identical to
opposer’s mark COVERALL and is sufficiently similar to each
of opposer’s other COVERALL marks that confusion is likely.
We conclude that purchasers familiar with opposer’s
maintenance and cleaning services for commercial offices and
buildings under its famous COVERALL mark would be likely to
believe, upon encountering applicant’s COVER-ALL mark for
installation of floor coverings services, that the services
originated with or were somehow associated with or sponsored
by the same entity.
Having determined that opposer is entitled to prevail
in this opposition based upon its Section 2(d) claim of
likelihood of confusion, we need not reach the merits of
opposer’s claim of false suggestion of a connection under
Section 2(a). See American Paging Inc. v. American
Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB 1989), aff’d
without opinion, 17 USPQ2d 1726 (Fed. Cir. 1990).
Decision: The opposition is sustained on the Section
2(d) claim and registration to applicant is refused.