Liberty Hardware Mfg. Corp.

Trademark Trial and Appeal Board

Sep 4, 2007

No. 78611644 (T.T.A.B. Sep. 4, 2007)

Mailed: September 4, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Liberty Hardware Mfg. Corp.
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Serial No. 78611644
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Edgar A. Zarins of Masco Corporation for Liberty Hardware
Mfg. Corp.

Michelle E. Dubois, Trademark Examining Attorney, Law Office
107 (Joan Leslie Bishop, Managing Attorney).
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Before Walters, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Liberty Hardware Mfg. Corp. has filed an application to
register the mark DURAGUARD (in standard character form) on
the Principal Register for “coatings in the nature of a
protective finish for metal hardware,” in International
Class 2.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Serial No. 78611644, filed April 19, 2005, based on an allegation of a
bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
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1052(d), on the ground that applicant’s mark so resembles
the mark DURAGUARD, previously registered for “protective
polymer coating for application to laminates for furniture
products,” in International Class 2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.2
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
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
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

2 Registration No. 2099812 issued September, 23, 1997, and renewed on
January 18, 2007 for a period of ten years.
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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 consideration of the marks. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). As applicant concedes in its brief, applicant’s
mark and registrant’s mark are identical. We also note that
both marks consist entirely of the term DURAGUARD, which is
likely to be perceived as suggestive of a durable finish
which will “guard” the surface of the product from damage.
We turn next to consider the goods involved in this
case. 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
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
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein; and Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
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The examining attorney argues that the goods are
confusingly similar because “both parties provide a coating
that functions to protect” and many all-purpose coatings are
sold together in the marketplace. Examining Attorney’s
Brief at 4.
The applicant argues that because it applies its
coatings to hardware during manufacture and it believes the
registrant sells furniture already treated with a coating,
the “true comparison of the respective goods is between
metal hardware and wood furniture.” Applicant’s response to
office action 1. This argument is not well taken. It is
well-settled that the likelihood of confusion analysis must
be based on the goods or services as they are identified in
the application and cited registration, rather than what a
party believes the goods or services to be. 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). Thus,
in the instant case the primary issue is whether protective
coatings for metal hardware would travel in the same
channels of trade and be encountered by the same consumers
as protective polymer coatings for laminates for furniture
products. To the extent that polymer coatings may be used
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on metal hardware, applicant’s coatings could include
polymer coatings; and applicant’s identified goods encompass
coatings used by metal hardware manufacturers as well as
metal hardware coatings sold at retail. Registrant’s
identification specifies “polymer coating for application to
laminates for furniture,” which suggests a coating that is
used only during the manufacturing process of either the
laminate alone or the laminated furniture. The purchasers
of coatings for use in the manufacturing process are likely
to be discriminating, knowledgeable purchasers.
In support of her refusal to register, the examining
attorney has attached excerpts from six websites to show
that a number of articles such as metal fasteners, car
parts, floors, crafts, and furniture are often treated or
covered with polymer coatings. For example:
• An excerpt from the EMPIGARD.COM web site entitled
“Eliminate the high cost of corrosion!” describes
a third party coating and states, “EMPIGARD 10
polymer coating is a versatile new clear
thermosetting coating which provides outstanding
corrosion resistance to metal parts. This
improved coating material has been developed in
our research laboratories especially to meet the
requirements of the automotive, appliance hardware
and fastener industries.” Examining Attorney’s
Office Action No. 1, Attachment.

• An excerpt from the HOWSTUFFWORKS.COM website
entitled “Plastic Coating Extends Car’s Life”
states “Cars and other metal structures will last
up to 10 times longer with the use of a new
plastic coating.” Id.

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• An excerpt from the UNIQUEPOLYMERSYSTEMS.COM
website entitled “Advanced Polymers” describes a
“superior high gloss polymer coating” and states
“This is an EXTREMELY TOUGH, decorative floor
coating. For use in High Traffic Areas, workshop
floors, warehouse, showrooms, storage areas where
fork lift trucks are operating etc.” Id.

• An excerpt from the DELVIESPLASTICS.COM website
advertises two polymer coatings; and a multi-
purpose clear sealer (all under different
trademarks) for use on wood, prints, photographs,
plastics, fabrics, silk flowers, puzzles, and
other goods. Regarding the polymer coating, the
website states: “Polytex, a versatile product, may
be applied over almost any surface, rough or
smooth. It may be applied over leather, wood,
varnish, ceramics, rocks, dried flowers, shells,
and many other items.” Examining Attorney’s
Office Action No. 2, Attachment.

• An excerpt from the INDOBASE.COM website titled
“Cleaning Furniture Upholstery & Hardware” states:
“Furniture sometimes has metal hardware as part of
it. The metal used is usually brass, bronze or
silver. Hardware in modern furniture has a clear
lacquer finish that gives them a lustrous
appearance.” Id.

This evidence shows not only that some polymer coatings
are used to coat a wide variety of products and surfaces but
also that other polymer coatings are only used in highly
specialized applications such as on metal auto parts or
concrete floors. The evidence further indicates that
specialized coatings often are applied by manufacturers
during the product manufacturing stage and these coatings
may not be used by or even seen by end consumers of the
products to which the coatings are applied. Lastly, the
evidence shows that furniture may include coated metal
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hardware but there is no evidence to show that furniture
manufacturers make their own hardware or apply the same
coating to both laminates and metal hardware used in
manufacturing furniture.
Thus, while it appears that coated metal hardware may
be used on coated laminated furniture, these are not the
goods for which registration is sought. The problem with
the evidence is that it does not show that consumers of one
kind of highly specialized coating such as for furniture
laminates are likely to come across another kind of highly
specialized coating for other products such as metal
hardware, even if marketed under the same or similar marks.
Nor is it enough, as the examining attorney states in her
brief, merely that “[b]oth [parties] provide a type of
coating for application to a product.” This is not a case
where one party’s broadly-worded identification of goods
could logically be presumed to include another party’s more
narrowly-worded identification of goods. Instead, both
applicant’s and registrant’s identification of goods are
narrowly worded and do not overlap. The goods in the
instant case have different uses and are used by different
consumers. There is simply no evidence in the record that
these specialized coatings travel in the same channels of
trade and that their respective users would encounter the
respective goods or be confused as to their source.
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We also note that, although applicant's and the cited
registrant's marks are the same, they also are suggestive.
Thus, the cited registration is not entitled to as broad a
scope of protection as an arbitrary mark. In re W.W. Henry
Co., 82 USPQ2nd 1213, 1216 (TTAB 2007). Purchasers are not
likely to assume that any specialized coating offered under
these suggestive marks must emanate from the same source.
Given the difference in the specialized coatings
particularly the different uses to which they are directed,
and the suggestive nature of the marks, we find that the
record does not support a finding of likelihood of
confusion.
Decision: The refusal under Section 2(d) of the Act is
reversed.