Henry Co.

Trademark Trial and Appeal Board

May 16, 2001

No. 75578506 (T.T.A.B. May. 16, 2001)

5/16/01
Paper No. 8
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Henry Company
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Serial No. 75/578,506
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Marvin E. Jacobs of Koppel & Jacobs for Henry Company.
Won T. Oh, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
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Before Hairston, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Henry Company (applicant) has filed an application to
register the mark FLASHMASTER for goods ultimately
identified as “asphalt-based roofing mastic for sealing
flashing and patching roofs” in International Class 19.1
The Examining Attorney has refused to register the mark
under Section 2(d) because of the registration of the mark
1 Serial No. 75/578,506 filed on October 28, 1998, claiming a
date of first use and date of first use in commerce since July
31, 1988.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/578,506
2
MASTER FLASH for “non-metallic roof flashing including a
metal sheet portion” in International Class 19.2 Both
applicant’s and registrant’s marks are depicted in a typed
drawing.
After the Examining Attorney made the refusal final,
this appeal followed. Both applicant and the Examining
Attorney filed briefs. An oral hearing was not requested.
The Examining Attorney’s position is that the marks of
the parties, FLASHMASTER and MASTER FLASH, are highly
similar, with applicant’s mark being essentially a
transposition of the registrant’s mark. The Examining
Attorney determined that this transposition did little to
alter the commercial impression. As to the goods, the
Examining Attorney found them to be related.
The registrant’s goods are non-metallic roof flashing
including a metal sheet portion. The flashing itself
is not made of metal, but merely contains a metal
sheet. Applicant’s goods are mastic that are intended
to be used with flashing. Thus applicant’s goods are
complementary to the registrant’s goods and are
therefore in the same channels of trade. Office
Action dated March 23, 2000, p. 2.
Finding that the marks were highly similar and the
goods were related, the Examining Attorney refused to
2 Registration No. 1,497,753, issued July 26, 1988. A Section 8
affidavit has been accepted. The word “flash’ is disclaimed.
Ser. No. 75/578,506
3
register applicant’s mark for the goods identified in its
application.
Applicant responded to this refusal to register by
arguing that the goods are not related. Applicant
maintains that the identification of goods in the
registration is inconsistent and misleading. In addition,
with its Appeal Brief applicant submitted printouts from
its website and registrant’s website.3 Because applicant
believes it is famous for asphalt-based products for
products such as roof sealing and driveway coatings, it
argues that purchasers would not expect it to be marketing
a metal product, such as a roof flashing. In addition,
applicant submits that the marks have different
connotations. Finally, applicant claims ownership of a
registration for the mark FLASHMASTIC for non-metallic
building materials and other goods.4 Because the MASTER
FLASH mark did not prevent the registration of applicant’s
claimed registration, applicant argues that this supports
its position that there is no likelihood of confusion in
this case.
3 The Examining Attorney did not object to, and in fact
discussed, this evidence on the merits. Therefore, we will
consider this evidence to be of record.
4 Registration No. 2,050,456.
Ser. No. 75/578,506
4
After considering the arguments and evidence of the
applicant and the Examining Attorney, the Examining
Attorney’s refusal to register the mark FLASHMASTER for
asphalt-based roofing mastic for sealing flashing and
patching roofs, because it is confusingly similar to the
mark MASTER FLASH for non-metallic roof flashing including
a metallic sheet portion under Section 2(d), is affirmed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 1361, 177 USPQ 563, 567 (CCPA 1973). In considering
the evidence of record on these factors, we must keep in
mind that “[t]he fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The first question we address is whether applicant’s
and registrant’s marks, when compared in their entireties,
are similar in sound, appearance or meaning such that they
create a similar overall commercial impressions. The test
is not whether the marks can be distinguished in a side-by-
side comparison, but whether they are sufficiently similar
Ser. No. 75/578,506
5
in their overall commercial impression so that confusion as
to the source of the goods marketed under the respective
marks is likely to result. In this analysis, “there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of the mark, provided [that] the ultimate conclusion rests
on consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Regarding the marks, we find that they are very
similar. In fact, the only differences between the mark
FLASHMASTER and MASTER FLASH is the fact that the words are
transposed and applicant’s mark does not have a space
between the words. While the transposition of words may
create a different commercial impression, that is not the
case here. While applicant argues that “master” is used as
a verb in one mark and an adjective in another mark, it is
unlikely that prospective purchasers will make such a fine
distinction. Both marks contain the laudatory term
“master” and the highly descriptive term “flash.”
Regardless of the order of the words, they create the same
impression. Compare In re Akzona Inc., 219 USPQ 94 (TTAB
1983) (SILKY TOUCH creates a different commercial
impression than TOUCH O’ SILK) with In re Nationwide
Ser. No. 75/578,506
6
Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (Marks RUST
BUSTER and BUST RUST did not create distinctly different
commercial impressions).
Next, we must determine whether the goods are related.
To determine whether the goods are related, we look to the
identification of goods in the application and
registration. In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987); Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). While applicant has submitted evidence of how
registrant is currently marketing its goods, this does not
limit the identification of goods in the registration.
Both applicant’s and registrant’s goods are roofing
products. Applicant’s product is a mastic for sealing roof
flashing, and registrant’s product is a non-metallic roof
flashing. They would be sold through the same channels of
trade to the same purchasers. We agree with the Examining
Attorney that the goods are clearly complementary.
Purchasers familiar with registrant’s product are likely to
believe that applicant’s product sold under a very similar
mark comes from the same source.
Ser. No. 75/578,506
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While applicant argues that purchasers would not
expect that it is marketing a metal product such as a roof
flashing, even if this were true, this is not the complete
test. The question is also whether purchasers familiar
with registrant’s mark would likely believe that it is the
source of FLASHMASTER asphalt-based roofing mastic for
sealing flashing and patching roofs. Since we hold that
this is likely, we affirm the Examining Attorney’s refusal
to register.
Applicant’s final point is that it owns a registration
for the mark FLASHMASTIC for non-metallic building
materials. The registration of a different mark for
different goods does not indicate that there would not be a
likelihood of confusion in the present case. This
registration is not a simple transposition of words. It
involves different words, which does not create the
identical commercial impression as applicant’s present
mark. The registration of this mark does not mean that
confusion would not be likely when applicant takes
registrant’s identical mark and simply transposes the words
without a space.
Decision: The refusal to register is affirmed.