Foseco Int’l. Ltd.v.Ashland Oil, Inc.

Trademark Trial and Appeal Board

Aug 13, 1997

OPP (T.T.A.B. Aug. 13, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG 13, 97
Hearing: Paper No. 36
November 6, 1996 TJQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Foseco International Limited
v.
Ashland Oil, Inc.
_____
Opposition No. 90,496
to application Serial No. 74/143,477
filed on March 1, 1991
_____
Herbert D. Hart III and David D. Headrick of McAndrews, Held
& Malloy for Foseco International Limited.
David L. Hedden and Vernon F. Venne for Ashland Oil, Inc.
______
Before Cissel, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Ashland Oil, Inc. to
register the mark ECOSET for "binders for making cores and
molds for use in the manufacturing of metal castings."1

1Application Serial No. 74/143,477, filed March 1, 1991, based
on a bona fide intention to use the mark in commerce. The
record reveals that applicant's first sale in interstate
commerce took place on April 30, 1993. (response, opposer's
interrogatory no. 4) The caption of applicant's brief at final
hearing on the case indicates that applicant apparently changed
its name to Ashland Inc. Applicant's attention is directed to
Trademark Rule 3.85 for the proper procedure to ensure that the
Opposition No. 90,496
2
Registration has been opposed by Foseco International
Limited under Section 2(d) of the Act on the ground that
applicant's mark, when applied to applicant's goods, so
resembles opposer's previously used and registered mark
ECOLOTEC for "chemical products, namely, binders for use in
the preparation of cores and molds for the foundry
industry"2 as to be likely to cause confusion.3
Applicant, in its answer, denied the salient
allegations of likelihood of confusion. Applicant also made
allegations, set forth as "affirmative defenses", which
amplify the denials.4
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; applicant's responses to
certain interrogatories and requests for admissions,
official records and excerpts from printed publications, all
introduced by way of opposer's notice of reliance; and
opposer's responses to certain interrogatories and requests

certificate of registration issues in applicant's new name
(assuming, of course, that applicant ultimately prevails in the
event of an appeal). See also: Trademark Trial and Appeal
Board Manual of Procedure, § 512.03.
2Registration No. 1,681,703, issued April 7, 1992.
3The notice of opposition included an additional claim of
likelihood of confusion between applicant's mark and opposer's
mark VELOSET, the subject of Registration No. 1,371,989. The
Board, in an order dated September 21, 1995, granted as
uncontested applicant's motion for summary judgment in its favor
on the issue of likelihood of confusion with respect to
opposer's mark VELOSET.
4The exhibits attached to the answer do not form part of the
record in this case, except, of course, to the extent that any
were properly introduced during applicant's testimony period.
Trademark Rule 2.122(c).
Opposition No. 90,496
3
for admissions, official records and excerpts from printed
publications, all made of record by applicant's notice of
reliance. Both parties filed briefs on the case and both
were represented by counsel at an oral hearing held before
the Board.
The parties are direct competitors in the foundry
binder market. Metal castings are made in foundries by
producing a mold into which molten metal is poured. The
metal is allowed to cool, and then the metal casting is
removed from the mold for finishing. The molds or cores
(having the dimensions which match the metal article to be
cast) for this process are formed with binders mixed with
sand. The binders act to bond the sand grains together.
After the metal castings cool and are removed from the
molds, some of the sand used to create the molds is
reclaimed and used for other molds. Other sand ends up
being dumped or removed from the foundry to a place where it
is disposed of. According to the testimony of John Wallace,
a college professor of metallurgy (offered as an expert by
opposer), a foundry is a rough, dirty and dusty environment.
Through the years, as indicated by Thomas Penko, opposer's
marketing manager for sand products, the selection of
binders by foundries was driven primarily by performance,
followed by cost. In recent years, however, federal and
state laws have been enacted to address heightened concerns
about the environmental impact of the use of binders. These
concerns have resulted in changes in the foundry industry,
Opposition No. 90,496
4
including changes in the selection of binders. Now,
environmental concerns have become important in the buying
decision, with foundries' wanting environmentally acceptable
(or "friendly") binders. The parties' binders sold under
the marks ECOLOTEC and ECOSET are purported to be
environmentally friendly; that is, the binders contain lower
levels of potentially hazardous materials, are easier and
less expensive to dispose of, and do not emit noxious odors
during the casting process.
In view of opposer's ownership of a valid and
subsisting registration for its pleaded mark, there is no
issue with respect to opposer's priority. King Candy Co.,
Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). In any event, the record establishes, and
applicant concedes that opposer is the prior user.
Our determination under Section 2(d) of the Act is
based on an analysis of all of the probative 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). The
factors deemed pertinent in the proceeding now before us are
discussed below.
There is no issue regarding the similarity between the
parties' goods. The analysis of likelihood of confusion in
these types of cases is based on a comparison of the goods
as identified in opposer's registration and applicant's
involved application. Although the goods here may have
Opposition No. 90,496
5
specific differences (for example, inorganic versus organic
composition, or "no bake" binders versus "cold box"
binders), the differences are not reflected in the
identifications of goods in the registration and the
application. For purposes of our analysis, the parties'
goods, as described in the involved registration and
application, are legally identical. Canadian Imperial Bank
of Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). Applicant essentially admits
this point, and further concedes that the goods travel in
the same channels of trade to the same classes of
purchasers.
With respect to the conditions under which and
purchasers to whom sales are made, opposer essentially
contends that buyers of foundry binders vary greatly in
experience and education. For example, according to
Professor Wallace, individuals purchasing binders in small
foundries frequently have only a high school education.
Thus, according to opposer, purchasers are not necessarily
sophisticated.
Notwithstanding opposer's contentions on this point, we
agree with applicant's claim that, given the technical
nature of binders, the purchase of binders by foundries
generally involves an informed and discriminating decision.5

5Although opposer has taken issue with applicant's contention
that the purchasers are sophisticated, opposer has not disputed
applicant's claim that binders are technical in nature and,
therefore, involve a thoughtful purchasing decision. Indeed,
Opposition No. 90,496
6
Gregory Sturtz, applicant's manager of consulting and
technical services, foundry products division, has eighteen
years of experience in the foundry industry, and has visited
hundreds of foundries throughout the world. He testified
about foundries' decisions to purchase binders for making
cores and molds for use in the manufacturing of metal
castings.
Mr. Sturtz stated that product information is given to
prospective customers because foundry binders are very
technical in nature, and detailed information is needed by
customers to allow them to make an informed decision on
whether or not a proposed binder system is proper for a
specific use in the foundry. Mr. Sturtz testified that the
sale of binders to a foundry, especially sales of a new
binder system, is "a great deal of work." The binders are
sold by direct sales after face-to-face meetings. According
to Mr. Sturtz, the foundry has to be educated about "the
productivity of the system, the quality of the system, the
casting properties of the system, the handling
characteristics of the cores and molds produced by the
system, worker exposure issues and so forth." If it appears
to the foundry that the binders are appropriate, a technical
presentation is made to the prospective foundry customer,
followed by an initial trial of the binder so that the
customer sees the advantages of the new binder system under

Professor Wallace recognized that binders are "so important" in
the foundry industry.
Opposition No. 90,496
7
actual working conditions. Mr. Sturtz further testified
that many people in the foundry are involved in the
purchasing decision, including the workers on the floor, the
production manager, the foundry superintendent, the foundry
manager and the environmental manager. Mr. Sturtz also
enumerated the factors that influence the customer's
selection of a binder, and discussed the purchasing
decision:
A. Certainly the bottom line is produce
saleable castings at the lowest possible
cost. Things that are related to that
objective are productivity of the
binder, the cost of the binder per
pound, the ability of the binder to
produce a defect free casting, the
safety, the ability of the binder to be
used in a particular application in a
safe manner, and the environmental
characteristics of the binder related to
emissions to the atmosphere, leachates
to the water, residual sand, disposal
issues and so forth. There are many,
many different issues which relate to
the bottom line of producing a saleable
casting at the lowest possible cost.
Q. Based on your experience how long
does it typically take to get a new
foundry binder introduced into the
foundry?
A. From my experience with a number of
new systems it can take several years
for a new binder being commercially
successful.
Q. Why do you think it takes so long?
A. It takes a long time to introduce a
new binder system based on new
technology because of unfamiliarity of
the foundry industry with that
Opposition No. 90,496
8
technology and the various complicated
use of that particular binder system in
the foundries.
I will elaborate just briefly.
Foundries vary widely in their
requirements for [a] particular binder
system. Castings can weigh from a few
ounces up to tons. And a binder system
needs to fit many different requirements
within the foundry.
In order to become commercially
successful many customers have to be
converted to a given binder system, and
it's almost a case-by-case basis on
converting those customers.
A review of the printed publications also makes it apparent
that binders are very technical in nature, and that many
considerations go into the selection of a binder which is
appropriate to a specific application in the foundry.
The binders are bought in bulk and Mr. Penko stated
that binders are typically shipped by truck. Further,
Professor Wallace testified that a large amount of sand is
required to make a casting and "that's why the sand and the
sand binders are so important, because of the large
quantities involved."6 This testimony tends to indicate
that the cost of binders, in the large quantities required,
is significant.
The record indicates that the relevant classes of
purchasers are not uniformally highly educated.
Nonetheless, the above testimony and evidence convince us
that the purchase of binders involves a thoughtful and

6Professor Wallace roughly estimated that five units of sand, by
weight, are used to one unit of metal.
Opposition No. 90,496
9
careful decision. Therefore, all purchasers, no matter the
level of formal education thereof, would be informed about
the specifics of binders appropriate for use in the
purchasers' foundries.
We next turn to consider the marks ECOLOTEC and ECOSET.
The witnesses of both parties acknowledged that the presence
of "ECO--" in the marks suggests "ecology" or "environment",
that is, that the binders are ecologically or
environmentally friendly. Mr. Penko testified that the "--
TEC" portion of opposer's mark signifies "technical" (or
"technology"). James Elwood, applicant's supervisor of
training in environmental and regulatory affairs, won a
contest to name applicant's new binder. He created the name
ECOSET, drawing from the meanings of "eco" and "set."
According to Mr. Elwood, the term "set" is commonly used in
the foundry trade, connoting curing of the binder.7 Mr.
Elwood was aware of the prior "--SET" marks already used by
applicant,8 thus choosing the "SET" suffix over others for
the mark ECOSET.
The record includes several third-party registrations
of marks with an "ECO--" prefix for various chemical
products.9 In addition, a dictionary listing of "eco" is of

7In this connection, applicant also introduced four third-party
registrations of marks comprising "--SET" for binders, as well
as a dictionary definition.
8Applicant introduced copies of its registrations for the marks
PEP SET, ISOSET, NOVASET, INOSET, LINOSET and ACCOSET, all for
chemicals used in the foundry industry.
9The record also includes two third-party registrations of a "--
TEC" mark and a "--TECH" mark, both for foundry products.
Opposition No. 90,496
10
record showing that the prefix means "a habitat or
environment esp. as a factor significantly influencing the
mode of life or the course of development." Although the
third-party registrations are not evidence of use of the
involved marks to the extent that the public is necessarily
aware of them, this evidence has probative value to the
extent that it adds to the dictionary listing. That is, the
third-party registrations are "competent to establish that a
portion common to the marks involved in a proceeding has a
normally understood and well-known meaning; that this has
been recognized by the Patent and Trademark Office by
registering marks containing such a common feature for the
same or closely related goods where the remaining portions
of the marks are sufficient to distinguish the marks as a
whole; and that therefore the inclusion of [the common
element] in each mark may be an insufficient basis upon
which to predicate a holding of confusion similarity." Red
Carpet Corp. v. Johnstown American Enterprises Inc., 7
USPQ2d 1404, 1406 (TTAB 1988).
We find that the record establishes the suggestiveness
of both marks. Opposer's mark ECOLOTEC conveys the idea
that its binder employs ecologically friendly technology,
whereas applicant's mark ECOSET connotes a binder that cures
(i.e., sets) castings in an ecologically friendly process.
The mere presence of the highly suggestive term "eco" in the
marks is insufficient upon which to base a finding of a
likelihood of confusion. Tektronix, Inc. v. Daktronics,
Opposition No. 90,496
11
Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976). The
suggestive "eco" portion of each of the marks is followed by
a different suggestive term. When the marks are considered
in their entireties, the dissimilarities between the marks,
on balance, outweigh the similarities. The marks as a whole
look different, sound different and have different,
suggestive connotations.
Applicant directs our attention to the absence of
evidence of any instances of actual confusion. The absence
of actual confusion is a factor to be considered inasmuch as
the parties are direct competitors and the goods are
substantially identical. Nonetheless, this factor is not
significant here. This insignificance is due to the facts
that applicant only has, at best, a few years of use of its
mark ECOSET and, according to Mr. Sturtz, it can take
several years to establish the sale of a new binder.
Moreover, as often stated, evidence of actual confusion is
very difficult to obtain. And, in any event, the applicable
test is likelihood of confusion.
Finally, opposer places significance on the fact that
applicant knew about opposer's use prior to the filing of
applicant's application. While this may be true, given our
view that the marks are different, we see no bad faith
adoption by applicant.
Based on the record before us, we see the likelihood of
confusion claim asserted by opposer as amounting to only a
speculative, theoretical possibility in a purchase conducted
Opposition No. 90,496
12
with care. Language by our primary reviewing court is
helpful in resolving the likelihood of confusion controversy
in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g
153 USPQ 412 (TTAB 1967).
In sum, we find that, in light of the differences
between the suggestive marks and the conditions under which
the goods are purchased, confusion is not likely to occur
when foundries are making a thoughtful and careful purchase
of binders.
Decision: The opposition is dismissed.
R. F. Cissel
T. J. Quinn
G. D. Hohein
Opposition No. 90,496
13
Administrative Trademark Judges
Trademark Trial and Appeal Board