McTech Group, Inc.

Trademark Trial and Appeal Board

Apr 27, 2007

No. 76598838 (T.T.A.B. Apr. 27, 2007)

Oral Hearing: Mailed:
January 17, 2007 April 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re McTech Group, Inc.
________

Serial No. 76598838
_______

William A. Bonk, III of Emerging Strategies, PLLC for
McTech Group, Inc.

Aisha Clarke, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Drost, Kuhlke and Bergsman, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

McTech Group, Inc. seeks registration on the Principal
Register of the mark ULTRACURE NCF (in standard character
form) for goods ultimately identified as “slab-on grade
concrete curing blankets” in International Class 17.1
Registration has been refused under Section 2(d) of

1 Application Serial No. 76598838, filed June 23, 2004, alleging
first use and use in commerce on March 1, 2004 under Trademark
Act Section 1(a). 15 U.S.C. §1051(a).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76598838
2
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the registered mark ULTRACURE (in typed form)
for “elastomeric waterproofing and anti-fracture membrane”
in International Class 19 as to be likely to cause
confusion, mistake or deception.2
When the refusal was made final, applicant filed this
appeal. The appeal has been fully briefed and an oral
hearing was held on January 17, 2007. We affirm the
refusal to register.
As a preliminary matter, in her brief the examining
attorney did not object to the specification sheet attached
to applicant’s brief and confirmed at the hearing that she
did not object to this exhibit. In view thereof, we have
considered it as part of the record.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201

2 Registration No. 1713692, issued September 8, 1992; renewed.

Serial No. 76598838
3
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We begin with the first du Pont factor, i.e., whether
applicant’s mark ULTRACURE NCF and registrant’s mark
ULTRACURE are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression.
The examining attorney argues that ULTRACURE is the
dominant portion of applicant’s mark and is “identical to
the entire registered mark” (br. p. 3) because it is the
first part of the mark and NCF is an abbreviation for
natural cellulose fiber which is a component of the
“applicant’s goods and contributes to the product’s ability
to ‘wick and hold moisture for long periods of time on
concrete surfaces’” (br. p. 4) as shown on applicant’s
website. Applicant has presented no argument or evidence
to dispute the examining attorney’s contention.
Examining the marks in terms of their appearance,
sound, meaning, and commercial impression, we find the
Serial No. 76598838
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marks to be similar. The test of likelihood of confusion
is not whether the marks can be distinguished when
subjected to a side-by-side comparison. The question is
whether the marks create the same overall impression.
Visual Information Inst., Inc. v. Vicon Indus. Inc., 209
USPQ 179 (TTAB 1980).
We find that ULTRACURE is the dominant part of the
mark and that the addition of the abbreviation NCF is not
sufficient to distinguish the marks, particularly in view
of the meaning of NCF in relation to applicant’s goods. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (“That a particular feature is descriptive
[or otherwise lacking in distinctiveness] ... with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a
mark...”). In addition, the connotation of both marks
would be the same in the context of the respective goods.
We take judicial notice of the following definitions:3
Ultra- prefix 3. beyond what is ordinary, proper,
or moderate: excessively: extremely.

Cure n 4. a process or method of curing
vb 3. to prepare or alter esp. by chemical
or physical processing for keeping or use.

3 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Serial No. 76598838
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Merriam-Webster’s Collegiate Dictionary (10th ed. 1999).
Thus, as to connotation in relation to the respective
goods and services, both marks have a similar meaning,
beyond what is ordinary processing or curing.
In view of the above, the factor of the similarity of
the marks weighs in favor of a finding of likelihood of
confusion.
We now turn to a consideration of the goods identified
in the application and the cited registration. It is well
settled that goods need not be similar or competitive in
nature to support a finding of likelihood of confusion.
The question is not whether purchasers can differentiate
the goods, but rather whether purchasers are likely to
confuse the source of the goods. See Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB
1989). Further, we must consider the applicant’s goods and
the cited registration’s goods as they are described in the
application and registration. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987). Finally, “the greater degree of similarity between
the applicant’s mark and the cited registered mark, the
lesser the degree of similarity between the applicant’s
Serial No. 76598838
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goods or services and the registrant’s goods or services
that is required to support a finding of likelihood of
confusion.” In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001). See also In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
The examining attorney argues that the goods are
related because “they are both used on cement and can be
used together in one job” and both “are used to treat
concrete: one for curing concrete and the other for
prepping cured concrete for tiling.” Br. p. 5. She
further states that “[a]s described by the applicant, in a
typical commercial building project, the applicant’s goods
curing blankets would [be] applied to a concrete slab, and
the registrant’s waterproofing would follow.” Id. She
states that the goods would be used in sequence in a single
building project. Br. p. 6. In support of her position,
the examining attorney submitted excerpts from registrant’s
website and she also relies on excerpts from applicant’s
website submitted by applicant.
In response, applicant essentially argues that its
goods are not sold in stores and are only specified or
purchased by building designers or contractors, i.e.,
professional buyers, who are sophisticated and exercise a
high degree of care in their purchasing decision.
Serial No. 76598838
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As noted above, it is not necessary that the goods
compete, simply that they be related in some manner that
confusion as to source is likely to result. Applicant
states that its goods are “intended and configured
for...commercial building construction.” Applicant further
states that registrant’s goods are also used in commercial
building construction and is “trowled over, for example,
cured concrete slabs” to form a “tilesetting adhesive
specially developed for the installation of all types of
tile, marble and stone.” Br. p. 7.
Inasmuch as these goods are used sequentially in
preparing slab concrete flooring we find that they are
related. Therefore, the du Pont factor of the similarity
of the goods favors a finding of likelihood of confusion.
Considering the channels of trade and class of
purchasers, the examining attorney correctly states that
absent limitations in the identifications we must consider
all normal channels of trade. Registrant’s goods would
include both professional and general consumers and could
be offered in stores. There is nothing in the record or
the identification to infer otherwise. As for applicant’s
goods, the identification does not explicitly limit the
trade channels or class of purchasers and it is not clear
from the record if the normal channels of trade and class
Serial No. 76598838
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of purchasers would be limited to professional buyers for
commercial use. Thus, based on the identifications both
goods could be found in stores and purchased by general
consumers.
Applicant’s arguments seek to impermissibly limit the
trade channels for its goods by asserting that they are
“intended and configured for, and exclusively utilized by
professional contractors for slab-on-grade installations
for commercial building construction.” Br. p. 6.
Applicant indicates that “‘slab on grade’ refers to a type
of foundation with a concrete floor which is placed
directly on soil.” Br. p. 6. Further, applicant states
that “curing blankets for slab-on-grade work, come[] on a
very large roll that is approximately eight feet wide and
holds about 200 feet of material length.” Id. Applicant
states that its goods “are not available in stores, rather
[they] must be specially ordered according to the
specifications of a building construction contract” and
“qualify to become listed in a building specification only
after the building designer deems them appropriate for a
particular application based on properties learned from
lengthy evaluation.” Br. pp. 9-10. Finally, applicant
states that it goods are very expensive and that “it is not
Serial No. 76598838
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unusual for a job to require on the order of $100,000 of
concrete curing blanket materials.” Br. p. 11.
As noted above, these limitations are not in the
identification of goods in the application and it is not
entirely clear from the record that applicant’s goods would
never be available in a store. However, if we infer some
limitation in applicant’s goods based on the wording “slab
on grade,” then at a minimum, applicant and registrant
share the same professional purchasers, designers who
specify applicant’s product or builders and contractors who
chose and purchase non-specified goods for a particular
project, and the same commercial channel of trade.
In view thereof, the overlap in the channels of trade
and class of customers favors a finding of likelihood of
confusion.
Applicant argues that registrant’s purchasers would be
sophisticated in view of the expensive nature of those
goods. Applicant contends that “[b]uilders and contractors
must understand every aspect of the job undertaken, thus
are virtually certain to be informed, deliberative buyers
of the products they use, such as Applicants concrete
curing blankets or Registrant’s waterproof membrane, to get
the job done. This is because, even if the materials that
may be used are not specified in a building design or
Serial No. 76598838
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contract, the end result is. Since the contractor or
builder must obtain results, the contractor or builder must
be very confident in the materials used to obtain those
results. Because arbitrary substitutions of non-proven
materials could have disastrous, expensive consequences, a
contractor or builder takes great care to employ only the
appropriate materials to complete a job correctly.” Br. p.
14.
It is not clear from the record that a builder or
contractor would test registrant’s types of goods prior to
purchase, particularly if they share the same trademark as
the curing blankets that have been specified or are already
familiar to the contractor/purchaser. We point out, again,
that there is no such limitation in the broad
identification of goods in the registration or application.
However, even if we infer from applicant’s identification
that it is not sold in stores and only purchased by
professional buyers based on an evaluation by building
designers, the goods could still be confused by a
contractor having seen the two products together on a
specification sheet in a prior project and making a
purchasing decision on another project where the curing
blankets and/or waterproofing agent have not been specified
based on the false premise that these products originate
Serial No. 76598838
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from the same source. Even sophisticated purchasers are
not necessarily immune from source confusion. In re
Decombe, 9 USP2d 1812 (TTAB 1998). Thus, even limiting our
analysis to the professional buyers, builders or
contractors purchasing non-specified materials, because the
goods are related to a specific part of the building
project, i.e., the curing and preparation of concrete
flooring, and are used sequentially, despite the higher
level of care, we believe confusion is still likely to
result. However, to the extent this factor may favor
applicant it does not outweigh the other factors.
Finally, applicant also submitted an affidavit from
Mr. Stephen F. McDonald, applicant’s president, stating
that applicant has used its mark since March 1, 2004 and
there have been no known instances of actual confusion. We
do not accord significant weight to applicant’s contention
that there have been no instances of actual confusion
despite contemporaneous use of the respective marks. While
a showing of actual confusion may be highly probative, the
lack of evidence of actual confusion carries little weight,
particularly in an ex parte proceeding. Majestic
Distilling, 65 USPQ2d at 1205.
In conclusion, we find that because of the close
similarities in the marks, the relatedness of the goods,
Serial No. 76598838
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and the overlap in trade channels, confusion is likely
between applicant’s mark and the mark in the cited
registration. To the extent there are any doubts, we
resolve them, as we must, in registrant’s favor. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.