Pacific Coast Building Products, Inc.

Trademark Trial and Appeal Board

Apr 24, 2009

No. 77196001 (T.T.A.B. Apr. 24, 2009)

Mailed:
April 24, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pacific Coast Building Products, Inc.
________

Serial No. 77196001
_______

R. Michael West of Law Offices of R. Michael West for
Pacific Coast Building Products, Inc.

Karen P. Severson, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney)
_______

Before Seeherman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Pacific Coast Building Products, Inc. has appealed
from the final refusal of the trademark examining attorney
to register CASCADE, in standard character format, as a
trademark for “building materials, namely, asphalt roofing
shingles.”1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C., §1052(d), on

1 Application Serial No. 77196001, filed June 1, 2007, based on
Section 1(b) of the Trademark Act (intent-to-use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77196001
2
the ground that applicant’s mark so resembles the mark
CASCADE, registered in typed drawing format for “vinyl
windows and patio doors,”2 that, if used on applicant’s
identified goods, it is likely to cause confusion or
mistake or to deceive.
Before reaching the substantive issue in this appeal
we must discuss objections raised by applicant. First,
applicant has objected to certain Internet hyperlinks
referenced by the examining attorney in her denial of
applicant’s request for reconsideration. The actual
material that could be accessed through the hyperlinks was
not submitted by the examining attorney, and therefore this
material is not of record and cannot be considered.
However, the webpages that are of record state that a
viewer may view videos on how to “Install a Window in Frame
Construction” and “Install a Window in Block Construction”
and that “Do-It-Yourselfers can view actual roof
installation videos,” indicating that one can click the
link to view them. This information, rather than the
webpages that can be accessed through the links, has been
considered.

2 Registration No. 1951104, issued January 23, 1996; Section 8 &
15 affidavits accepted and acknowledged; renewed.
Ser No. 77196001
3
Applicant also objects to the webpages submitted by
the examining attorney because they lack proper foundation
and authentication. These objections are not well-taken.
The webpages submitted by the examining attorney list both
the URL and the date that the printouts were obtained.
This is an ex parte proceeding, and therefore Internet
materials may be considered even without a declaration by
the examining attorney that formally authenticates them.
See TBMP §1208.03 and, in particular, note 182 to compare
the submission of Internet printouts in inter partes
proceedings. Applicant also objects that the webpages are
“potentially misleading” because they include only certain
pages from the website, and do “not include additional
related pages which may include statements and advice to
consumers that are damaging to the Examining Attorney’s
contentions.” Brief, p. 8. The Board recognizes that many
companies have websites consisting of numerous pages, and
we discourage examining attorneys and applicants from
submitting webpages that are not relevant to the issue at
hand. If there were relevant evidence that refuted or
qualified the evidence submitted by the examining attorney,
applicant should have submitted such evidence, rather than
Ser No. 77196001
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contending that the examining attorney’s evidence should
not be considered.3
We now turn to the substantive issue in this appeal,
namely, whether applicant’s mark CASCADE for asphalt
roofing shingles is likely to cause confusion with CASCADE
for vinyl windows and patio doors. Our determination of
this issue 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 (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/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie

3 The “selective” webpages that applicant complains of come from
the Owens-Corning and Certainteed websites. In its reply brief
applicant has cited hyperlinks from these websites that
purportedly provide information regarding installations of roofs
by professionals. No evidence as to these hyperlinks or the
webpages that could be accessed from them were made of record
prior to the filing of applicant’s appeal, as required by
Trademark Rule 2.142(d) nor, in fact, was such evidence ever
submitted. The examining attorney submitted the complained-of
webpages with the final Office action, and therefore applicant
could have submitted any additional webpages from these sites
with its request for reconsideration, along with the 23 exhibits
that it did submit. We also point out that even if the examining
attorney had made the webpages of record with the denial of the
request for reconsideration, applicant could have filed a request
for remand to make the additional webpages of record. Id.
Ser No. 77196001
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Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The marks are identical: CASCADE. This du Pont
factor of the similarity of the marks weighs heavily in
favor of a finding of a likelihood of confusion.
With respect to the goods, applicant has pointed out
that its goods are made of asphalt impregnated fiberglass
that is coated with a layer of outer surface granules,
while the registrant’s goods are manufactured from “vinyl,
glass, and presumably aluminum,” brief, p. 10, and that the
goods are used for different purposes. However, it is not
necessary that the goods or services of the applicant and
the registrant be similar or competitive, or even that they
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods or services are such that they would or
could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). See also
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Moreover, the greater the degree of similarity between the
applicant’s mark and the registered mark, the lesser the
Ser No. 77196001
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degree of similarity between the applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. In re Opus One, Inc., 60 USPQ2d
1812, 1815 (TTAB 2001); In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). Where, as
in this case, the applicant’s mark is identical to the
registrant’s mark, there need only be a viable relationship
between the goods to find that there is a likelihood of
confusion. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when the goods or
services are not competitive or intrinsically related, the
use of identical marks can lead to the assumption that
there is a common source”).
The examining attorney made of record third-party
registrations based on use in commerce identifying windows
or patio doors and roofing shingles, including Registration
No. 2736912 for, inter alia, non-metal windows, non-metal
patio doors, and roofing shingles; Registration No. 2448643
for, inter alia, roofing shingles and windows and doors,
all of non-metal; Registration No. 3371430 for, inter alia,
non-metal roof shingles, non-metal patio doors and non-
metal windows; and Registration No. 2351827 for, inter
alia, shingles and non-metal windows. Although third-party
registrations are not evidence that the marks are in use or
Ser No. 77196001
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that the public is familiar with them, such registrations
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In addition, the examining attorney has made of record
evidence taken from the Internet showing that the same
companies offer both shingles and windows. See, for
example, the statement on the CertainTeed webpage: “For
all your building needs, CertainTeed offers a complete line
of Vinyl and Fiber Cement Siding, Trim, Roofing, Windows,
Insulation, Fence, Railing, Deck, Walls, Ceilings, Pipe and
Foundation products.” www.certainteed.com. The Owens
Corning websites advertise shingles, www.owenscorning.com,
and windows, http://franchising.owenscorning.com. In
addition, the webpages from Home Depot, www.homedepot.com,
list, as products this company offers, windows, patio
doors, and shingles, while webpages from Lowe’s,
www.lowes.com, list windows and shingles. The website for
Shiner Roofing, Siding and Windows, www.shinerroofing.com,
advertises that it specializes in exterior home improvement
services, and specifically lists “Roof Replacement &
Repairs,” “Windows & Skylights” and “Doors Entry & Patio.”
(emphasis in original). Peak Roofing Contractors, Inc.
advertises itself as “Roofing, Gutter, Siding and Window
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Experts,” www.peakroofingcontractors.com, and the website
for Summit Roofing Contractors Inc., www.summitroofing.com,
lists “Roofing and Windows” as services it offers to
homeowners.
Based on the foregoing, we find that applicant’s
asphalt roofing shingles and the registrant’s vinyl windows
and patio doors are related. The third-party registrations
show that these goods may emanate from the same company and
be sold under a single mark; the Internet evidence confirms
that companies do, in fact, sell both roofing shingles and
windows and, in some cases, patio doors. These goods are
also sold in the same channels of trade, and the same
companies install all three products. Thus, someone who is
engaged in a home remodeling project may go to a single
store to pick out both the roofing shingles identified in
applicant’s application and the vinyl windows and patio
doors identified in the cited registration to use in that
project.
As the Board stated in finding likelihood of confusion
in a similar situation when the identical mark, WEATHER
KING, was used for doors and shingles:
In the instant case, building doors and
asphalt shingles, although obviously
different products, are construction
materials that could be employed in the
construction of a building; they could
Ser No. 77196001
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be distributed or obtained through a
building supplies company; and they
could be purchased by the same general
contractor responsible for the overall
construction of the building or
possibly in the case of a small
structure by the individual or
individuals who perform the actual
installation. Under these
circumstances, it is not unreasonable
to assume, in this day and age of
diversification and expansion, that if
these products were to be encountered
by customers and prospective customers
under the identical mark “WEATHER
KING”, they would mistakenly assume
that they originate from or are in some
way connected with the same producer.
While the average purchaser of goods of
these descriptions may be skilled
craftsmen, it does not necessarily
follow therefrom that they are equally
informed as to the source of the
products that they use and are, unlike
customers for other products, immune
from the likelihood of confusion or
deception that the statute is
attempting to preclude.

In re Johns-Manville Corporation, 180 USPQ 661, 662
(TTAB 1973).
Accordingly, the du Pont factors of the similarity of
the goods and the channels of trade favor a finding of
likelihood of confusion.
There has been a great deal of discussion with respect
to the factor of the conditions under which and buyers to
whom sales are made. Applicant contends that the goods
identified in its application and the cited registration
Ser No. 77196001
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are carefully selected, and takes issue with the examining
attorney’s scenario of a consumer shopping at a large
building supply store to replace either a broken window or
a missing roofing shingle. We need not engage in a
discussion of whether this particular scenario is likely to
occur. The evidence of record shows that building supply
stores at least contemplate that windows and patio doors
and roofs may be repaired or replaced by homeowners, as
they provide videos showing how this may be done. Further,
even applicant, in its response filed February 15, 2008,
stated that a consumer could install both a roof and vinyl
windows and patio doors himself (“whether the consumer is
installing the new or replacement roof himself, or whether
this work will be done by a contractor”; “Probably more
consumers install Vinyl Windows and Patio Doors themselves,
as installation of these items is a much smaller and more
straightforward job than installing a new roof or a
replacement roof”). Moreover, whether we consider
homeowners or contractors as the persons who make the
purchasing decisions, our conclusion on this du Pont factor
would be the same. That is, we accept that both do-it-
yourself homeowners and contractors would exercise care in
their purchasing decisions, and that contractors would also
have an expertise about the goods. However, “even careful
Ser No. 77196001
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purchasers are not immune from source confusion.” In re
Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).
In view of the fact that the marks are identical, even the
most careful purchaser would not be able to distinguish the
source of the goods based on the marks. See In re RSI
Systems LLC, 88 USPQ2d 1445, 1451 (TTAB 2008) (“Even
sophisticated purchasers of printing equipment and software
and related services would have little basis to distinguish
the marks of applicant and registrants when used on the
identified goods and services inasmuch as the marks contain
the same dominant term ‘RSI’ and the cited registrations
contain no other element”).
Accordingly, this du Pont factor must be treated as
neutral, or as slightly favoring a finding of likelihood of
confusion.
We next consider the du Pont factor of the strength
of the registered mark. Applicant has submitted certain
third-party registrations for CASCADE marks, as well as
evidence taken from the Internet regarding third-party use
of CASCADE either as a mark or a trade name. With respect
to the third-party registrations, absent evidence of actual
use, third-party registrations have little probative value
because they are not evidence that the marks are in use on
a commercial scale or that the public has become familiar
Ser No. 77196001
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with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing
public is not aware of registrations reposing in the U.S.
Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284, 286 (TTAB 1983) (“third
party (sic) registration evidence proves nothing about the
impact of the third-party marks on purchasers in terms of
dilution of the mark in question or conditioning of the
purchasers as to their weakness in distinguishing source”).
Third-party registrations can, however, be used in the
manner of dictionary definitions, to show, because of the
adoption by many parties, that a term has a particular
significance in an industry. See Mead Johnson & Company v.
Peter Eckes, 195 USPQ 187 (TTAB 1977). In the present
case, though, the goods in these registrations are so
diverse that they do not show that CASCADE has a particular
significance with respect to vinyl windows and patio doors,
the goods identified in the cited registration. The goods
identified in the third-party registrations are for
products that can be used in or for a house, e.g., faucet
aerators (No. 2160814); solid fuel-burning stoves (No.
2026036); and prefabricated floors for shower stalls (No.
1018433), but they are of a different nature from vinyl
windows and patio doors, which are part of the outside of a
Ser No. 77196001
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house, or at least protect the inner part of a house from
the outdoors. The registration with goods closest to that
of the registrant is the now-cancelled Registration No.
2079902 for door knobs, latches, levers and locksets, but
we cannot conclude on the basis of this single registration
that CASCADE has a particular meaning with respect to vinyl
windows and patio doors, let alone that the meaning is so
suggestive that the cited registration for CASCADE is
deserving of only a very restricted scope of protection.4
Applicant also points out that “the “Cascade Range” is
a major mountain range of western North America, and
suggests for this reason many businesses have adopted the
term CASCADE as part of their trade names or as a
trademark. To the extent that applicant is arguing that
the registered mark CASCADE has a geographic suggestion, we
are not persuaded. “Cascade” is a common English word with
a recognized dictionary meaning, and there is nothing about
the registrant’s windows and patio doors that would lead
consumers to associate the mark with the mountain range.

4 Applicant also points to Registration No. 2633871 for CASCADE
for “coating used as water repellant for log homes.” We
acknowledge that this product is used as an exterior protective
product for a home, but its nature as a coating is so different
from windows and patio doors, which are actual building
components, that it does not show that CASCADE has a particular
meaning with respect to these goods.

Ser No. 77196001
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Applicant has also submitted 22 exhibits of Internet
evidence that indicate companies have adopted trade names
or trademarks containing the word CASCADE. Evidence of
third-party use of a term may show that the public is so
accustomed to marks containing this term that they look to
other elements of a trademark to distinguish among them, or
that they distinguish them on the basis of the goods; in
other words, the marks containing this term are not
entitled to a broad scope of protection. However, in the
present case the third-party uses are for goods and
services so different from those of applicant and the
registrant that they have virtually no probative value.
For example, the exhibits reference Cascade Business News,
Cascade Mountain Winery, Cascade College, Cascade General
Shipyard, Cascade Yachts, Cascade Mountain resort, Cascade
Corp. truck attachment makers, and Cascade dishwasher
detergent. The two closest third-party uses, according to
applicant, reply brief, p. 5, are for Boise Cascade
(Exhibit 12), whose website states it “manufactures
engineered wood products, plywood, lumber, and
particleboard and distributes a broad line of building
materials, including wood products manufactured by the
company’s wood products division.” The second use, exhibit
22, is for Cascade Coil Drapery, Inc., which lists what
Ser No. 77196001
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appears to be the trademark CASCADE COIL and design for
architectural drapery and firescreens. There is no further
information given regarding the architectural drapery, and
we therefore cannot determine the nature or extent of the
use of the mark for goods. There are, however, additional
webpages for CASCADE COIL FIRESCREENS, one of which
includes the statement that “Cascade Coil can custom
fabricate a mesh to fit your fireplace.” Applicant itself
does not appear to claim that this use is for goods similar
to those in the cited registration, see brief, p. 17, but
in any event firescreens, which are used in the interior of
a house, are not in the same category as the registrant’s
vinyl windows and patio doors and applicant’s roofing
shingles. As for the trade name use of Boise Cascade for a
company that manufactures wood products, we do not have
evidence as to whether BOISE CASCADE is used as a trademark
for such products, or the extent of such use. In any
event, we are not persuaded by the use of a trade name that
contains the word CASCADE along with the word BOISE that
consumers would distinguish the source of applicant’s
asphalt roofing shingles from registrant’s vinyl windows
and patio doors when they are both sold under the identical
mark CASCADE, without any additional distinguishing
element.
Ser No. 77196001
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Applicant has also pointed out that there was a third-
party registration for CASCADE, No. 2333174, for fiberglass
laminated shingles, which issued on March 21, 2000, and was
cancelled on December 23, 2006. This registration for
goods that are similar to applicant’s asphalt roofing
shingles issued despite the fact that the registration that
has been cited against applicant’s mark was on the Register
at that time, having issued in 1996. We cannot speculate
on why the now-cancelled registration was allowed to
register. We can only say that the Office’s allowance of
prior registrations does not bind the Board. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001). We must decide the issue of likelihood
of confusion on the record before us. On this record the
evidence adequately demonstrates that the marks are
identical and the goods are related and are sold in the
same channels of trade to the same classes of customers,
while there is no significant evidence of third-party use
of CASCADE marks for similar goods, nor is there evidence
that the registrant’s mark is so weak that the scope of
protection to which it is entitled does not extend to
prevent the registration of the identical mark for the
related goods at issue herein.
Ser No. 77196001
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Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, we must follow the well-
established principle that such doubt must be resolved in
favor of the registrant and prior user. In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.