Hild Chemical, Inc.

Trademark Trial and Appeal Board

Nov 21, 2008

No. 78530152 (T.T.A.B. Nov. 21, 2008)

Mailed: November 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hild Chemical, Inc.
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Serial No. 78530152
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Robert D. Buyan of Stout, Uxa, Buyan & Mullins for Hild
Chemical, Inc.

Katherine S. Chang, Trademark Examining Attorney, Law Office
115 (J. Brett Golden, Acting Managing Attorney).
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Before Quinn, Walters and Holtzman, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Hild Chemical, Inc. has filed an application to
register the mark HILD on the Principal Register for
“chemicals for use in cleaning floors and carpets,” in
International Class 3.1 The application includes a claim of
acquired distinctiveness under Section 2(f).

1 Serial No. 78530152, filed December 9, 2004, based on use of the mark
in commerce, alleging first use and use in commerce as of December 1,
1991.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78530152

2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark HILD, previously registered for “vacuum cleaners,
rug and carpet beaters, scrubbers and polishers,” in
International Class 21,”2 that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive. The cited registration
includes a claim of acquired distinctiveness under Section
2(f).
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
As a preliminary matter, applicant attached evidence to
its supplemental brief and the examining attorney objected
to consideration of this evidence, correctly noting that the
record must be complete prior to appeal. This evidence has
been given no consideration.
Our determination under Section 2(d) 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. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm

2 Registration No. 0756744, issued September 17, 1963. The registration
is owned by Mytee Products, Inc. [Section 15 affidavit acknowledged;
second renewal.]
Serial No. 78530152

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Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We turn, first, to a comparison of the marks and note
that the marks are identical, which applicant does not
dispute. This du Pont factor weighs strongly against
applicant.
We thus begin our analysis of the respective goods with
the premise that, because the marks at issue are identical,
the extent to which the applicant’s and registrant’s goods
must be similar or related to support a finding of
likelihood of confusion is lessened. See In re Opus One
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is only
necessary that there be a viable relationship between the

Serial No. 78530152

4
two to support a finding of likelihood of confusion. See In
re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
The question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
party’s goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein; and Time Warner
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Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
In support of her position that the goods are
complementary and will, by definition, be used together, the
examining attorney submitted excerpts from Internet websites
offering for sale vacuum cleaners and combination rug
shampooers and floor polishers, e.g., the Koblenz Cleaning
Machine, and websites offering multi-purpose floor and
carpet cleaning and polishing machines and chemical cleaners
for use in connection therewith under the same brands, e.g.,
Oreck, Bissell, Eureka, Dirt Devil, Hoover, and Kenmore.
Applicant argues that the goods are different and are
classified in different classes; that there has been no
actual confusion despite many years of coexistence; and that
the registered mark is not famous. None of these arguments
is well taken. Classification is merely for the
administrative convenience of the U.S. Patent and Trademark
Office and is irrelevant to the issue of likelihood of
confusion. While the fame of a mark may be a factor in
determining likelihood of confusion, it is not a necessary
showing and the determination of likelihood of confusion is
based on only those du Pont factors that are relevant in the
case at hand. Similarly, while actual confusion is a factor
to be considered, the absence or presence of actual
confusion is of little probative value where we have little
Serial No. 78530152

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evidence pertaining to the nature and extent of the use by
applicant and registrant. Moreover, the test under Section
2(d) is not actual confusion but likelihood of confusion.
See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003)(“uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.”). See also, In re General Motors Corp., 23 USPQ2d
1465 (TTAB 1992); and In re Kangaroos U.S.A., 223 USPQ 1025
(TTAB 1984).
Based on the record herein, we agree with the examining
attorney that the respective goods are complementary
products that prospective purchasers are likely to believe
come from the same source when identified by identical
marks.
Further, inasmuch as the identifications of goods in
both the involved application and the cited registration are
not limited to any specific channels of trade, we presume
that the goods would be offered in all ordinary trade
channels for these goods and to all usual classes of
purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). In view of the complementary nature of the goods, it
is likely that they will travel in identical, or at least
overlapping, trade channels to both commercial and
residential consumers. These du Pont factors and, in
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particular, the factor of the relatedness of the goods,
weigh strongly against applicant.
Applicant contends that its adoption and use of its
mark is with the permission and knowledge of the original
registrant herein and, as discussed below, applicant
submitted a declaration and agreement in support thereof.
In its January 17, 2006, response, applicant contends that
“[a]pplicant’s family members effectively own [the cited
registration].”
The examining attorney contends that the agreement is
not persuasive because it was signed by a predecessor of
registrant; and it does not state why confusion is unlikely
and what steps the parties will take to avoid confusion.
The examining attorney contends, further that, if the
agreement was intended as an assignment, it is an invalid
assignment in gross with no transfer of goodwill; and if it
is intended as a license, then applicant is not the owner of
the mark herein.
In support of its position, applicant submitted the
declaration of James V. Roti attesting to the history of
applicant’s and registrant’s companies. Mr. Roti recounted
that registrant’s predecessor, Hild Floor Machine Company,
Inc., was “owned” by his father, James P. Roti; that in
1991, with the knowledge and consent of Hild Floor Machine
Company, Inc., Joseph E. Roti, James V. Roti’s brother,
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started a business selling floor maintenance chemicals under
the HILD trademark and this business became applicant
herein, Hild Chemical, Inc. Attached to the declaration is
a purported agreement dated August 21, 1999, between James
V. Roti and Joseph E. Roti recounting that James V. Roti
purchased the assets of Hild Floor Machine Company, Inc. at
its bankruptcy auction in April, 1998; transferring to
Joseph E. Roti “title to the name ‘Hild’ for the purposes of
selling maintenance chemicals”; and retaining to James V.
Roti “the right to use the name ‘Hild’ for any and all other
purposes.”
Additionally, the USPTO assignment records pertaining
to the cited registration show that the registration was
originally owned by Hild Machine Company, Inc.; include an
April 1998 bankruptcy order that resulted in the sale of
Hild Machine Company, Inc.’s assets, including its
trademarks, at a bankruptcy auction to James V. Roti; and
include a subsequent “Agreement for Purchase and Sale of
Assets,” dated March 8, 2001, between James V. Roti (Seller)
and the current registrant, Mytee Products, Inc. (Buyer).
This latter agreement states Buyer’s desire to purchase the
“assets of Seller related to the now-bankrupt Hild Floor
Machine Company” and notes that Seller “purchased said
assets at a bankruptcy auction held for the Hild Floor
Machine Company.” The sale includes “the name Hild and/or
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Hild Floor Machine Company and any and all related,
derivative or associated trademarks” and the goodwill
associated therewith; and the document contains Seller’s
agreement not to compete in the same business for three
years, although it expressly permits Seller to sell
janitorial equipment and supplies. Finally, the purchase
and sale agreement contains the statement that it and the
accompanying letter of intent constitute the entire
agreement between the parties and any waiver must be in
writing.
The plain language of the aforementioned purchase and
sale agreement contemplates the sale to Mytee Products, Inc.
of all of the assets acquired by James V. Roti at the
bankruptcy auction. This agreement is inconsistent with a
transfer of certain rights in the mark HILD by James V. Roti
to applicant subsequent to the bankruptcy auction and prior
to the sale of the mark and registration to Mytee Products,
Inc. Moreover, as noted by the examining attorney, the 1999
document submitted by applicant does not include a transfer
of goodwill and, as such, is an invalid trademark
assignment. Nor is it an agreement from registrant
consenting to applicant’s registration of the mark herein.
Therefore, the documents and declaration submitted by
applicant do not effectively counterbalance the other du
Pont factors discussed herein.
Serial No. 78530152

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When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the identity
of the marks, their contemporaneous use on the complementary
goods involved in this case is likely to cause confusion as
to the source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.