James Hardie Research Pty., Ltd.

Trademark Trial and Appeal Board

Nov 17, 2000

No. 75265610 (T.T.A.B. Nov. 17, 2000)

Hearing: 11/17/00 Paper No.
22
June 29, 2000 Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re James Hardie Research Pty., Limited
________
Serial No. 75/265,610
_______
William G. Lane, Esq. for James Hardie Research Pty.,
Limited.
Karen A. McGee, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney)
_______
Before Walters, Bottorff and Holtzman, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark FIRE X, in typed form, for “fire resistant
grade gypsum board for interior wall and ceiling
application.”1

1 Serial No. 75/265,610, filed March 28, 1997. The application
is based on use in commerce under Trademark Act Section 1(a), and
applicant has alleged July 1988 as the date of first use of the
mark anywhere and first use of the mark in commerce. Applicant
has asserted, and the Trademark Examining Attorney has accepted,
a claim of acquired distinctiveness under Trademark Act Section
2(f).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/265,610
2
The Trademark Examining Attorney has issued a final
refusal of registration on the ground that applicant’s
mark, as applied to its goods, so resembles the mark
depicted below,
which is registered on the Principal Register for “lumber
which has been impregnated with a fire-retardant chemical,”2
as to be likely to cause confusion, to cause mistake, or to
deceive. See Trademark Act Section 2(d), 15 U.S.C.
§1052(d).3
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney filed main briefs, and
applicant filed a reply brief. An oral hearing was held,

2 Registration No. 1,037,082, issued March 30, 1976. Affidavits
under Sections 8 and 15 accepted and acknowledged. Renewed under
Section 9 in 1996.
3 Initially, the Trademark Examining Attorney also issued two
additional refusals. The first was a Section 2(d) refusal based
on Registration No. 1,082,107, which is of the mark FIRE-X
GLASBORD for “glass fiber reinforced plastic panels.” That
refusal was withdrawn in the second office action. The second
additional refusal was on the ground of mere descriptiveness
under Trademark Act Section 2(e)(1). That refusal was withdrawn
upon the Trademark Examining Attorney’s acceptance of applicant’s
claim of acquired distinctiveness under Section 2(f). Neither of
those additional refusals is at issue in this appeal.
Ser. No. 75/265,610
3
at which the Trademark Examining Attorney and applicant’s
counsel presented arguments.
In reaching our decision herein, we have carefully
considered all of the rather extensive evidence which
applicant and the Trademark Examining Attorney properly
made of record during prosecution of the application,
including any evidence which is not specifically discussed
in this opinion. However, we sustain the Trademark
Examining Attorney’s timeliness objection to applicant’s
Exhibits G and H, which were attached to applicant’s appeal
brief, and we have not considered that evidence. See
Trademark Rule 2.142(d).4
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). In
considering the evidence of record on these factors, we
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

4 Exhibits G and H are essentially cumulative of the other
evidence applicant made of record, as applicant itself has
acknowledged. Our exclusion of this evidence has had no effect
on our decision herein.
Ser. No. 75/265,610
4
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to the issue of whether applicant’s mark
and registrant’s mark, when compared in their entireties in
terms of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
We find that applicant’s FIRE X mark and
registrant’s stylized FIRE-X mark are identical in terms of
sound and connotation, and that they are highly similar in
terms of appearance notwithstanding the slight stylization
of registrant’s mark. Overall, we find that the respective
marks present highly similar, if not identical, commercial
impressions, as applied to the goods identified in
Ser. No. 75/265,610
5
applicant’s application and registrant’s registration.5
This du Pont evidentiary factor weighs heavily in favor of
a finding of likelihood of confusion.
We consider next the relationship between the goods
identified in applicant’s application and those identified
in registrant’s registration. It is not necessary that
these respective goods be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods are related in some
manner or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association or connection between the producers of the
respective goods. See In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978). Moreover, the greater the

5 Applicant argues that the marks are distinguishable because
registrant’s FIRE-X mark, as actually used by registrant, is
always preceded by the term EXTERIOR. However, our determination
must be based on a comparison of the marks as they appear in
registrant’s registration and on applicant’s application drawing
page, respectively. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 at n.4 (Fed. Cir. 1993); Interstate Brands
Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000).
Ser. No. 75/265,610
6
degree of similarity between the parties’ marks, the lesser
the degree of similarity required in the parties’ goods to
support a finding of likelihood of confusion, and where the
parties’ marks are essentially identical, there need be
only a viable relationship between their respective goods
in order to find that a likelihood of confusion exists.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687
(Fed. Cir. 1993); In re Concordia International Forwarding
Corp., 222 USPQ 355 (TTAB 1983).
In support of her contention that applicant’s goods
are related to registrant’s goods, the Trademark Examining
Attorney has submitted printouts of eight subsisting use-
based registrations, owned by six different companies,6
which include both lumber and gypsum board in their
respective identifications of goods. These registrations
are evidence that the respective goods are of a type which
may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988). In further
support of this conclusion, the Trademark Examining
Attorney has submitted numerous excerpts of articles

6 The six owners of these registrations are: Temple-Inland Forest
Products Corporation; Georgia-Pacific Corporation; Domtar, Inc.;
Huttig Sash & Door Corporation; Republic Gypsum Company; and The
Wickes Corporation.
Ser. No. 75/265,610
7
obtained from the NEXIS automated database which refer to
companies that market both lumber and gypsum board.7 In
all, it appears from the Trademark Examining Attorney’s
evidence that at least nine companies market both lumber
and gypsum board.8
Applicant makes several arguments challenging the
relevance and probative value of the Trademark Examining
Attorney’s third-party registration and NEXIS evidence,
none of which is persuasive. First, applicant argues that
those registrations and articles cover a period extending
back over twenty years, that there has been a consolidation
of the gypsum board industry over that period, and that
many of the companies identified in the registrations and
articles no longer exist and/or no longer manufacture
gypsum board. However, we note that of the thirteen
“surviving” U.S. manufacturers of gypsum board identified

7 The companies to which various of the articles refer are
National Gypsum, Georgia-Pacific, Domtar, Inland, Alpine
International, and General-Pacific.
8 The NEXIS excerpts refer to three companies which are not
among the six owners of the third-party registrations, i.e.,
National Gypsum, Alpine International and General-Pacific. We
presume that the “Inland” referred to in one of the NEXIS
excerpts is Temple-Inland Forest Products Corporation, the owner
of two of the third-party registrations submitted by the
Trademark Examining Attorney.
Ser. No. 75/265,610
8
in applicant’s Exhibit D-3,9 four, i.e., National Gypsum,
Georgia-Pacific, Republic, and Temple-Inland, also are
identified in the Trademark Examining Attorney’s third-
party registration and NEXIS evidence as companies which
market both lumber and gypsum board.10 Moreover, even
assuming that applicant’s evidence proves that some of the
companies identified in the Trademark Examining Attorney’s
third-party registrations and NEXIS articles do not
manufacture gypsum board at this time, it does not prove
that those companies do not market gypsum board, as well as
lumber, under their respective marks.
Applicant also challenges the Trademark Examining
Attorney’s third-party registration and NEXIS evidence on

9 Exhibit D-3, which is attached to and identified in paragraph
12 of the second declaration of applicant’s Technical Services
Manager Rob Davies, is a copy of an unidentified document which
sets out the logos or marks of the following “Gypsum Association
Member Companies”: American Gypsum; Atlantic Group Limited;
Celotex; Continental Gypsum Company; G-P Gypsum Corporation [this
logo contains the stylized “G-P” mark registered by Georgia-
Pacific Corporation – see supra at footnote 7]; James Hardie
Gypsum [the applicant]; Lafarge Gypsum; National Gypsum Company;
PABCO Gypsum; Republic Gypsum Company; Temple [this logo includes
the stylized mark registered by Temple-Inland Forest Products
Corporation, see supra at footnote 7, and includes the words “A
Temple-Inland Company”]; United States Gypsum Company; and BPB
Westroc.
10 See supra at footnotes 6-9. Moreover, one of the companies
identified in the Trademark Examining Attorney’s evidence as a
marketer of both lumber and gypsum board in the United States is
Domtar, Inc., a Canadian company which presumably would not be
included in applicant’s list of the thirteen U.S. manufacturers
of gypsum board.
Ser. No. 75/265,610
9
the ground that, although the registrations and articles
refer to companies which market both lumber and gypsum
board, they do not refer specifically to the “specialty”
goods involved in this case, i.e., fire-resistant gypsum
board and lumber treated with a fire-retardant chemical.
However, we presume that the broad terms used in the third-
party registrations’ identifications of goods, i.e.,
“lumber” and “gypsum board,” include and thus are legally
identical to, respectively, registrant’s “lumber treated
with a fire-retardant chemical” and applicant’s “fire-
resistant grade gypsum board for interior wall and ceiling
application.” Cf. In re Diet Center Inc., 4 USPQ2d 1975
(TTAB 1987); cf. also Shunk Manufacturing Company v.
Tarrant Manufacturing Company, 137 USPQ 881 (CCPA 1963).
Applicant has presented no evidence to the contrary.
Likewise, there is nothing in the record which suggests
that the “lumber” and “gypsum board” to which the NEXIS
articles refer should not be presumed to include fire-
retardant lumber and fire-resistant gypsum board.
In sum, we are not persuaded by applicant’s challenges
to the Trademark Examining Attorney’s third-party
registration and NEXIS evidence. That evidence suggests
that there are at least nine companies which market both
lumber and gypsum board in commerce under their respective
Ser. No. 75/265,610
10
marks, and it supports a finding, under the second du Pont
factor, that these goods are similar. See In Re Albert
Trostel, supra, and In re Mucky Duck Mustard, supra.
In addition to the third-party registrations and
NEXIS evidence of record, which establishes the source-
relatedness of lumber and gypsum board, the record also
includes evidence which shows that fire-resistant gypsum
board such as applicant’s and fire-retardant-treated lumber
such as registrant’s are complementary products which may
be used in direct conjunction with each other in
construction projects requiring a specific degree of fire
resistance. First, applicant’s Exhibit D-2 (to the Davies
II declaration) consists of excerpts from the Uniform
Building Code. At pages 1-81 and 1-82, in the Code’s Table
7-B, “Rated Fire-Resistive Periods for Various Walls and
Partitions,” Item Nos. 17-1.4, 17-1.6 and 18-1.6
specifically provide for the use of “fire-retardant-treated
wood studs” in conjunction with “Type-X gypsum wallboard.”11
Second, on registrant’s web page, made of record as Exhibit
E to applicant’s request for reconsideration, registrant
states that its FIRE-X lumber “is frequently used in

11 As applicant has acknowledged, applicant’s “fire-resistant
grade” gypsum board is Type-X gypsum wallboard. See the evidence
attached to the Trademark Examining Attorney’s first office
action, and applicant’s response thereto.
Ser. No. 75/265,610
11
combination with other materials for applications requiring
fire resistive and non-combustible construction, and to
reduce insurance rates.” The Board reasonably presumes
that such “other materials” include Type-X gypsum board
such as applicant’s. Finally, applicant’s declarant John
L. Mulder acknowledged that although lumber such as
registrant’s is not interchangeable with gypsum board such
as applicant’s, “the lumber might be used over gypsum board
for a decorative finish.”
This evidence of the complementary nature of
applicant’s and registrant’s respective “fire-resistive” or
“fire-retardant” building products further supports a
finding that these goods are related, for purposes of the
second du Pont evidentiary factor. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984)(“[s]uch complementary use has long
been recognized as a relevant consideration in determining
a likelihood of confusion”).
Applicant’s primary and repeatedly emphasized
contention on the issue of the relatedness of the
respective goods is that lumber and gypsum board are
different products which would never be confused for each
other by any purchaser. According to applicant, the two
products are of completely different material composition;
Ser. No. 75/265,610
12
they have different properties, uses and functions; they
accordingly are not interchangeable and, under building and
fire codes, they would not and cannot legally be
substituted for each other; and they are installed by
different craftspersons employing different and specialized
skills, tools and installation methods. In paragraph 8 of
his second declaration, applicant’s employee Rob Davies
states:
Architects select and specify materials of
construction, and contractors and developers
order such materials. These professionals know
that lumber is used for one purpose and gypsum
board for another. They know that one cannot
be substituted for the other. I find it
inconceivable that anyone in the building
trades would specify lumber impregnated with a
fire-retardant chemical for fire-resistant
grade gypsum board because of building code
requirements and because the materials are so
different and have different characteristics,
functions, and purposes.
Applicant’s argument misses the point. The issue is
not whether lumber and gypsum board are different and
distinguishable from each other, or whether purchasers are
likely to be confused into mistakenly purchasing or
ordering applicant’s gypsum board instead of registrant’s
lumber, or vice versa. Rather, the issue is whether lumber
and gypsum board are sufficiently commercially related
that, when they are marketed under the essentially
Ser. No. 75/265,610
13
identical marks involved herein, purchasers are likely to
assume that the two products originate from a single
source. See In re Melville Corp., supra, and In re
International Telephone & Telegraph Corp., supra.
Based on the evidence in the record which shows that
lumber and gypsum board can be and are marketed by a single
source under a single mark, and that applicant’s and
registrant’s goods are complementary products, we find that
the requisite commercial relationship between the
respective products exists. Furthermore, the presence of
this evidence regarding the commercial relationship between
applicant’s and registrant’s goods suffices to distinguish
the present case from the case relied on by applicant, In
re American Olean Tile Company Inc., 1 USPQ2d 1823 (TTAB
1986), in which the Board expressly noted that no such
evidence was of record.
For the reasons discussed above, we find that
applicant’s goods and registrant’s goods are similar rather
than dissimilar, for purposes of the second du Pont
evidentiary factor. These goods are sufficiently
commercially related that confusion is likely to result
from the concurrent use thereon of applicant’s and
registrant’s essentially identical marks.
Ser. No. 75/265,610
14
The next du Pont evidentiary factor to consider is the
similarity or dissimilarity of the trade channels for goods
of the types identified in the application and in the cited
registration. Applicant’s declarant Mr. Davies stated that
gypsum board and lumber are “for the most part” advertised
in different trade journals and trade shows. (Davies II,
paragraph 11.) However, he also acknowledged that lumber
such as registrant’s and gypsum board such as applicant’s
both are offered for sale at, inter alia, lumberyards and
at home improvement centers such as Home Depot. (Davies II,
paragraph 10.) We find that this evidence of the existence
of an overlap in the distribution channels and retail
outlets for the respective goods weighs in favor of a
finding of likelihood of confusion under the third du Pont
evidentiary factor.
As for the next evidentiary factor, i.e., the
conditions under which and the buyers to whom sales of
these respective products are made, applicant argues that
the goods are expensive and that the bulk of purchasers of
these goods are sophisticated professionals. However,
there is no evidence in the record as to exactly how
expensive these goods are, and applicant acknowledges that
ordinary consumers are among the purchasers and users of
these goods. (Davies II, paragraph 10.) Moreover, even
Ser. No. 75/265,610
15
assuming that the purchasers of these goods are primarily
professionals, we cannot conclude from this record that
these purchasers are particularly sophisticated when it
comes to the trademarks for such goods. There is no
evidence to that effect; the evidence of record as to the
sophistication of purchasers suggests only that purchasers
are aware of the differences between lumber and gypsum
board, per se, and would not confuse the two products. In
sum, the evidence of record as to this du Pont factor is
neutral, at best, and it does not weigh heavily in our
analysis.
In addition to applicant’s lengthy and detailed
arguments and evidentiary submissions regarding the
differences between lumber and gypsum board, applicant’s
other primary argument in this case pertains to the issue
of actual confusion. Applicant asserts that it is aware of
no instances of actual confusion between applicant’s and
registrant’s marks despite the applicant’s and registrant’s
twelve years of concurrent use of their respective marks on
their respective goods, and argues that the absence of such
evidence of actual confusion strongly indicates that no
likelihood of confusion exists. We are not persuaded.
The evidence of record shows that applicant has
marketed its FIRE X product in all states west of the Rocky
Ser. No. 75/265,610
16
Mountains (including Colorado and New Mexico) since 1988,
and, since February 1997, in all states of the United
States except for the Dakotas, Minnesota, Wisconsin, the
Upper Peninsula of Michigan, and the New England states.
(Davies II, paragraph 14.) Since 1988, applicant has sold
40 million sheets of its FIRE X gypsum board, upon which
the mark has been prominently displayed. (Davies II,
paragraphs 13 and 14.)
It also appears from the record that registrant has
headquarters in Thomson, Georgia, and has three
manufacturing plants, in Georgia, Arkansas and Virginia.
See the 1981 specimens submitted with registrant’s Section
8 affidavit (Exhibit A to applicant’s request for
reconsideration). It also appears from registrant’s 1998
catalog (Exhibit C to reconsideration request; Exhibit D-5
to Davies II declaration) that as of 1998, at least,
registrant’s “fire retardant formulations are licensed to a
select group of licensee treating plants” in Michigan,
Quebec, Oregon and Utah. Finally, it appears that one of
the Oregon licensees (in Jasper, Oregon) was identified as
using registrant’s FIRE-X mark in January 1988. (Exhibit
D-4 to Davies II declaration.)
We cannot determine from this evidence that there has
been any substantial geographic overlap in the parties’ use
Ser. No. 75/265,610
17
of their respective marks. Applicant relies on an asserted
twelve years of concurrent use by the parties, but
applicant’s use during the majority of that time (from 1988
to 1997) was solely in the states west of the Rocky
Mountains. There is no evidence as to the extent of use,
if any, of the registered mark in that region, during that
time period, by registrant or its licensee(s).12 Likewise,
we cannot determine from the record what percentage, if
any, of applicant’s asserted sales since 1988 of 40 million
sheets of gypsum board have occurred in states east of the
Rocky Mountains. Thus, we cannot conclude from this record
that the opportunity for actual confusion has been so
significant that its asserted absence is of particular
probative value in our likelihood of confusion analysis.
We also have considered applicant’s arguments as to
two additional du Pont factors, i.e., the extent to which
it has the right to exclude others from the use of its mark

12 The evidence suggests that registrant had a licensee using the
mark in Jasper, Oregon in January 1988. That licensee also is
named in registrant’s 1998 catalog. Even if we assume, arguendo,
that use of the mark by that licensee was continuous from 1988 to
1998, there is no evidence regarding the dollar amount and
geographic extent of the licensee’s use. As for the other
licensees identified in registrant’s 1998 catalog, there is
nothing in the record which establishes that they had been using
registrant’s mark prior to 1998. Indeed, it is not clear from
the record that those licensees are even using the registered
mark. Registrant’s catalog states only that they are licensees
of registrant’s “fire retardant formulations.”
Ser. No. 75/265,610
18
and the extent of potential confusion, but we are not
persuaded that those factors are entitled to significant
weight, vis-à-vis the other factors of record, in our
likelihood of confusion analysis.
We have carefully considered all of the evidence of
record pertaining to the du Pont evidentiary factors, as
well as applicant’s arguments with respect thereto, and we
conclude that the evidence warrants a finding that
confusion is likely. The marks are essentially identical.
The goods, although not identical or interchangeable, are
complementary goods of the type which may be sold by a
single source under a single mark. The goods move in the
same trade channels and are sold to the same classes of
customers, including to ordinary consumers. The purchasers
of these goods have not been shown to be so sophisticated
as to trademarks or so careful in their purchasing
decisions that they are unlikely to be confused as to the
source of the products, even assuming, as applicant
contends, that they would not confuse the products
themselves. In these circumstances, the absence of actual
confusion is not dispositive, especially inasmuch as it
does not appear that there has been a significant
opportunity for actual confusion to have occurred.
Ser. No. 75/265,610
19
In summary, we find that a likelihood of confusion
exists. To the extent that applicant, by its evidence or
arguments, may have raised any doubts as to this
conclusion, such doubts must be resolved in favor of the
prior registrant. In re Hyper Shoppes (Ohio) Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register is affirmed.
C. E. Walters
C. M. Bottorff
T. E. Holtzman
Administrative Trademark Judges
Trademark Trial and Appeal Board