Quality Systems, Inc.v.Permacrete Systems Ltd.

Trademark Trial and Appeal Board

Sep 11, 2003

No. 92030464 (T.T.A.B. Sep. 11, 2003)

Mailed: 9/11/03
Paper No. 32
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Quality Systems, Inc.
v.
Permacrete Systems Limited
_____
Cancellation No. 30,464
_____
I.C. Waddey, Jr. of Waddey & Patterson, PC for Quality
Systems, Inc.
Lawrence E. Abelman and Stephen J. Quigley of Abelman,
Frayne & Schwab for Permacrete Systems Limited.
_____
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Quality Systems, Inc. has petitioned to cancel the
registration of Permacrete Systems Limited for the mark
PERMACRETE for the following services:
Construction, restoration and repair
services, namely concrete construction,
cleaning, sealing, sawcutting, core
drilling and grooving; preparation of
concrete admixtures and design mixes
formulated to customer specifications;
finishing and curing services relating
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE TTAB
Cancellation No. 30,464
2
to the restoration and repair of
concrete surfaces; namely, levelling and
polishing of the surfaces for finished
used and performing procedures for
hardening poured concrete; concrete pump
services for moving concrete by means of
an hydraulic pump; namely, wet
shotcreting prior to pumping,
slabjacking (for raising concrete
slabs), pressure grouting (to fill voids
and pressurize concrete slabs),
preparation of cellular foam concrete
(addition of foam agents to cement to
increase air entrainment in concrete),
levelling uneven floors using self
levelling concrete, fire proofing steel
and concrete pilings; brick and masonry
construction, restoration and repair
services; namely, pointing and
repointing (masonry joint repair) and
sealing; coating of concrete, steel and
asphalt surfaces; specialty construction
product services; namely, grout
application, epoxy application, sealer
application; construction, restoration
and repair of concrete surfaces using
hydrostatic pressure release systems
(Class 37); and
Preparation and cleaning of concrete,
steel and asphalt surfaces; namely,
sandblasting, wet sandblasting, high
pressure waterblasting, acid etching,
shot blasting, waterproofing services;
namely, water leakage control and shut-
off services to control water leakage
and run-off in a variety of commercial,
residential and industrial situations
(Class 40).1
1 Registration No. 1,891,361, issued on April 25, 1995, from an
application based on Section 44(e) of the Trademark Act, and
claiming a priority date of December 20, 1991, pursuant to
Section 44(d) of the Act. The petition to cancel was filed on
April 18, 2000, one week before the fifth anniversary of the
registration, as a result of which all grounds for cancellation
were available. See Section 14(1) of the Trademark Act, 15
U.S.C. 1064(1). On April 3, 2001, while this cancellation action
was pending, respondent filed a Section 8 affidavit, as required
to prevent the cancellation of the registration by operation of
Cancellation No. 30,464
3
As grounds for cancellation, petitioner has alleged
that since prior to December 20, 1991 (applicant's priority
date), petitioner has used the mark PERMA•CRETE2 in
conjunction with the advertisement, sale and installation of
its cementious products; that petitioner owns Registration
No. 1,701,795 for the mark PERMA•CRETE, and that the filing
date of the application which matured into this registration
is prior to the priority filing date of respondent's
registration; that respondent has only recently begun using
the mark PERMACRETE in connection with services in the
United States or in commerce within the United States; that
law. In that affidavit, respondent indicated that it was using
the mark only for some of the services recited in the
identification of services. Because the cancellation action was
pending, respondent could not remove those services from
consideration in the proceeding without the consent of
petitioner. To do so would be in the nature of an amendment of
the registration. See Trademark Rule 2.133(a). Accordingly,
although in acting on the Section 8 affidavit, on April 28, 2003,
the Post-Registration section of the Office deleted certain
services, for purposes of our decision herein on the ground of
likelihood of confusion, we must treat the registration as
encompassing the services in the registration as originally
issued. They are the services which were in the registration when
the petition to cancel was filed and throughout the entire trial
of this proceeding. For informational purposes, the
identification as amended after the Section 8 deletions reads as
follows:
construction, restoration, repair, finishing, curing, concrete
pump, brick and masonry construction and coating services (Class
37); preparation and cleaning of concrete, steel and asphalt
surfaces and waterproofing services (Class 40).
2 Although petitioner has identified its mark as “PERMA-CRETE”
in the petition for cancellation, the evidence shows that the
mark as registered and as actually used is PERMA•CRETE, and we
will therefore use this format throughout this opinion.
Cancellation No. 30,464
4
respondent's mark as used in connection with its identified
services is likely to cause confusion with petitioner's mark
for its goods; and that petitioner has acknowledged the
likelihood of confusion by changing its mark from
PERMA•CRETE to POLAR CRETE when it began selling its
products in Canada.
In its answer, respondent has denied the salient
allegations of the petition to cancel, and has asserted, as
an affirmative defense, that petitioner has acquiesced to
the use and registration of respondent's mark and to certain
third—party marks.3
The record includes the pleadings; the file of the
registration sought to be cancelled; the discovery
deposition, with exhibits, of George A. Henderson, president
of petitioner, stipulated by the parties to be treated as a
testimony deposition; the discovery and testimony
depositions, with exhibits, of William G. Cole, president of
respondent; and the rebuttal testimony, with exhibits, of
Greg C. Hill and William G. Cole; certain documents,
submitted by stipulation of the parties; and petitioner's
and respondent's respective responses to the other's first
3 Respondent also included four additional paragraphs as
affirmative defenses, but these are not, in fact, affirmative
defenses, but assertions that relate to its position that there
is no likelihood of confusion.
Cancellation No. 30,464
5
set of interrogatories, the parties having stipulated that
each could rely on their own responses. Petitioner
submitted, under notice of reliance, the discovery
deposition, with exhibits, of William Cole; respondent's
answers to petitioner's first set of requests for admission;
and a status and title copy of petitioner's pleaded
registration. Petitioner also submitted, as part of its
rebuttal evidence, a notice of reliance on various third-
party registrations; website material, submitted with the
declaration of Charles Harvey, vice–president of Anchor
Technology, Inc., stipulated into the record by respondent;
and Internet materials, also treated as of record by
respondent.
The proceeding has been fully briefed,4 but an oral
hearing was not requested.
With its brief, petitioner has included a three—page
list of evidentiary objections. In view of the large number
of objections, and so as to not burden this opinion with an
extended discussion of each, we will deal with them in a
summary manner. These objections are all made with respect
4 Both parties, with their briefs, submitted as exhibits copies
of much of the material that had previously been made of record,
e.g., entire copies of deposition transcripts. The parties are
advised that this unnecessarily clutters the file, especially as
three copies of final briefs are required, and thus three sets of
exhibits to the briefs were also filed.
Cancellation No. 30,464
6
to the testimony and exhibits of William Cole in his
February 13, 2002 testimony deposition. With the exception
of objection 7 relating to the Tim Horton's franchises,
which testimony respondent acknowledges to be irrelevant, we
overrule the objections, although, insofar as the hearsay
objections to the exhibits, we have not considered the
exhibits as demonstrating the truth of the statements made
therein. Further, to the extent that Mr. Cole was unsure of
some of the information regarding the exhibits, this goes to
the weight which we have accorded to them.
We turn first to respondent's affirmative defense of
acquiescence. In its brief, respondent does not discuss the
affirmative defense of acquiescence. Rather, respondent has
discussed the affirmative defense of laches in connection
with the duPont factor5 of "the market interface between
applicant and the owner of a prior mark: laches and estoppel
attributable to owner of prior mark and indicative of lack
of confusion." Thus, we provide a limited discussion of the
defense of acquiescence.
Petitioner, a U.S. company located in Tennessee, and
respondent, a Canadian company, entered into a business
relationship in 1996. This arose because petitioner wanted
5 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Cancellation No. 30,464
7
to sell its PERMA•CRETE products in Canada, but respondent
owned a Canadian registration for this mark. As a result,
when respondent contacted petitioner about entering into a
relationship, petitioner decided to make respondent its
distributor in Canada. However, during the negotiations for
this agreement, there is no clear evidence that petitioner
was aware that respondent was selling its PERMACRETE
products in the United States. Mr. Cole testified that
during the negotiations Greg Hill, petitioner's vice
president, was asked if petitioner would have any problem
with respondent's continued promotion and sale of its
products to its dealers in the United States. Mr. Hill,
however, specifically contradicted Mr. Cole’s report of the
conversation; he testified that the negotiations were solely
about petitioner's marketing its products through respondent
in Canada; and that he did not know what kind of products
respondent was selling in the United States. In view of the
contradictory testimony, we cannot say that respondent has
established its defense of acquiescence.
This brings us to the defense of laches. Although
this defense was not specifically pleaded in respondent's
answer, the parties have argued this defense in their
briefs, and there is evidence that relates to such a
Cancellation No. 30,464
8
defense. As a result, we deem the pleadings to be amended
under FRCP 15(b) to assert this defense.
To prevail on the affirmative defense of laches,
respondent had to establish that there was undue or
unreasonable delay by petitioner in asserting its rights,
and prejudice to respondent resulting from the delay.
Bridgestone/Firestone Research Inc. v. Automobile Club de
l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed.
Cir. 2001). There is evidence that in September 1992
petitioner's former attorney received a Trademark Watch
Service notice reporting the filing of respondent's
application for PERMACRETE in the United States. However,
because the application was based on Section 44(e) of the
Trademark Act, rather than on use in commerce, and because
petitioner was unaware of any use of the mark in the United
States, petitioner did not (and, indeed, could not) take any
action at that point. Thus, for purposes of determining
whether there has been undue delay, we look to the August
30, 1994 publication date and the April 25, 1995 issue date
of the subject registration. See National Cable Television
Ass'n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572,
1581, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (laches runs
from the time from which action could be taken against the
Cancellation No. 30,464
9
trademark rights inhering upon registration). Petitioner
brought this cancellation proceeding on April 18, 2000,
almost six years after the publication date and just one
week before likelihood of confusion would have been
unavailable as a ground for cancellation, i.e., one week
before the fifth anniversary of the registration. See 15
U.S.C. 1064(1).
The two factors of unreasonable delay and prejudice
must be considered together. On its face, the delay cannot
be viewed as unreasonable, since the Trademark Act provides
that a cancellation action may be brought on the ground of
likelihood of confusion up until the point that a
registration is five years old. We would also point out
that the registration date is only constructive notice of
respondent's registration; petitioner did not have actual
notice of respondent's use of the mark in the United States
until the year 2000, shortly before the petition for
cancellation was filed. As for prejudice resulting to
respondent from this delay in asserting its rights,
respondent states only that in reliance on petitioner s
silence, respondent continued to promote and open franchises
and dealers in the United States. According to the record,
though, the total number of dealers or franchisees that
Cancellation No. 30,464
10
respondent has ever had in the United States is less than
ten, and two franchises came into effect before respondent's
mark was published for opposition. Another franchise, which
began in November 1994, ended in 1996, while another
business was discontinued in March of 1999, and another,
which was established in October 1998, was discontinued in
2001. Thus, as of May 2000, respondent had only four
dealerships or franchises in the United States, and one was
for a company that became a dealer only as a way to get
products for its own personal use at a dealer's discount.
Respondent has not submitted any evidence as to the amount
of its sales in the United States or its advertising
expenditures. In fact, much of respondent's advertising has
been not for its services, but for franchisees, and the
publications in which respondent has advertised circulate in
Canada as well as the United States, where respondent has
found a greater number of franchisees. The advertisements
which were placed in U.S. newspapers were done in July and
early August of 1994, before the publication of respondent's
mark, and therefore could not have been made in reliance on
petitioner's inaction.
Accordingly, we find that respondent has not
demonstrated that petitioner's claim is barred by laches.
Cancellation No. 30,464
11
We turn now to the issue of priority, which is a
prerequisite for finding likelihood of confusion.
Petitioner's president has testified that the company began
using the mark PERMA•CRETE as of October 1990 for concrete
resurfacing products. The first of its dealerships opened
in November 1990, and four were open by the end of 1990. It
had 40 dealers by the end of 1991. Petitioner owns a
registration, which is of record, for PERMA•CRETE for
"cementious products for resurfacing concrete, masonary
[sic], aggregate, stucco, wood, steel, and other such
surfaces.”6 The application for such registration was filed
on February 20, 1991, and therefore petitioner may also rely
on this date for the use of its mark for these goods. See
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1428-29 (TTAB 1993) at n. 13.
Respondent has acknowledged that, except for use made
by the father and brother of respondent's president and
owner, respondent made no sales of products or services
under the mark PERMACRETE in the United States prior to
February 20, 1991. Also, because the application from which
respondent’s registration issued claimed a right of priority
under Section 44 of the Act, respondent may rely on the
6 Registration No. 1,701,795, issued July 21, 1992; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
Cancellation No. 30,464
12
December 20, 1991 filing date of its Canadian application.
Petitioner discussed at length in its brief the
reasons why the use by Mr. Cole’s father and brother does
not inure to the benefit of respondent. Perhaps respondent
was persuaded by petitioner’s arguments; in any event,
respondent has evidently decided not to pursue a claim of
priority based on this use, because its brief does not
discuss the issue of priority, but only that of likelihood
of confusion.
We agree that respondent has not demonstrated that it
has priority. Mr. Cole testified that in 1985-86 his father
started a business located in Mobile, Alabama which did
high-pressure washing of buildings, parking lots and tractor
trailers. Mr. Cole agreed to his father using the name
PERMACRETE for this business. Mr. Cole stated that the
company had some interest in expanding into restoration of
concrete buildings, brick buildings and so forth, but there
is no evidence that this ever occurred. Mr. Cole did not
have an active role in this business; he did not oversee the
work that was performed, or provide any guidelines or
requirements that the company had to satisfy. Mr. Cole
submitted a flyer for "Perm-a-Crete" which advertised
"Pressure Cleaning," and a business card for Kenneth Cole
Cancellation No. 30,464
13
with the copy "Perm-a-Crete," "WE DON'T WASH, WE CLEAN" and
"Hot High Pressure Cleaning." There is nothing in the
materials which respondent submitted that shows Mr. Cole's
father's company actually did any concrete restoration work.
Further, Mr. Cole did not have any knowledge as to the
distribution of any promotional materials. The company
ceased doing business in 1990 or 1991.
Thus, it is not clear that any use by Mr. Cole's
father would inure to the benefit of respondent. To the
extent that this informal arrangement was in the nature of a
license, it was a license without any quality control. More
importantly, even if we accept that Mr. Cole's testimony
established that he, through his father's company, made use
of the mark PERMACRETE (or PERM-A-CRETE) in the United
States in the latter half of the 1980's, such use was for
power washing services. There is no support in this record
that concrete restoration services are a natural expansion
of power washing services, and therefore respondent cannot
show priority of use of PERMACRETE for concrete restoration
services. Similarly, although respondent’s registration in
Class 40 includes “high pressure waterblasting,” this
service is part of “preparation of concrete”, and there is
no evidence that Mr. Cole’s father’s power-washing
Cancellation No. 30,464
14
activities were for the preparation of concrete.
This brings us to the issue of likelihood of
confusion. 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., supra. The parties have discussed many, but
not all of the factors listed in the duPont decision.
Although we have considered the evidence as it pertains to
all the relevant factors, we, too, will focus our opinion on
those factors which the parties have deemed to be most
relevant.
With respect to the marks, they are virtually
identical. Respondent asserts that there is a "prominent
dot" between the elements "Perma" and "Crete" in
petitioner's mark which is not present in respondent's mark.
Although we cannot ignore this dot in our consideration of
the two marks, we do not find that it distinguishes the
marks. The marks are identical in pronunciation and in
connotation, despite the presence or absence of the dot.
This similarity is particularly important because both
parties market their products through radio advertising. As
for appearance, although one mark has a dot and the other
does not, it does not significantly affect the overall
Cancellation No. 30,464
15
appearance of either mark. While the dot in petitioner's
mark emphasizes the two elements which make up the mark, we
think that these elements are readily apparent in
respondent's mark, even though they are not physically
separated. Thus, we find that the marks are virtually
identical in commercial impression, and this factor strongly
favors petitioner.
The next duPont factor relates to the parties' goods
and services. Petitioner and its dealers provide concrete
resurfacing services, using PERMA•CRETE products to perform
the services. These dealers include home builders, pool
builders, contractors and entrepreneurs, as well as
institutions such as colleges that purchase the products for
their own use. Homeowners having a resurfacing product done
see the containers bearing the PERMA•CRETE mark. Dealers
also indicate that they are "Permacrete Dealers,” such as by
using the mark PERMA•CRETE as part of a logo on letterhead,
business cards and door signage. Petitioner does not sell
its products to a non-dealer, so if a homeowner wants his
contractor to use the products, the contractor would have to
become a dealer.
Petitioner’s PERMA•CRETE products can be used to
waterproof concrete basements and foundations. They are
Cancellation No. 30,464
16
also used to repair cracks. To resurface an area, it would
first be cleaned, then repaired, and then resurfaced.
Petitioner advertises for dealers in newspapers such
as the "Wall Street Journal" and "Atlanta Constitution";
trade journals such as "Pool and Spa News" and "Concrete
Repair Digest"; trade shows such as World of Concrete, the
National Association of Home Builders, National Remodelers
Show, and other construction shows; and direct mail to
contractors and other industry groups. These advertisements
both advertise petitioner’s PERMA•CRETE surface and
resurfacing products and urge readers to become dealers.
Petitioner also advertises its PERMA•CRETE products in
consumer publications such as "Home Building", which is sold
through such establishments as Home Depot and Lowe's, as
well as at newsstands; direct mail flyers; home shows;
radio; and billboards. In addition, petitioner participates
in co-op advertising done by its dealers.
Petitioner maintains a website at
http://www.permacrete.com which attracts inquiries from
entities that want to become PERMA•CRETE dealers, and also
inquiries from consumers that want to have PERMA•CRETE
products installed.
Respondent and its dealers offer various concrete
Cancellation No. 30,464
17
restoration and repair services, including waterproofing
services, although not all the services listed in its
registration are offered in the United States. Respondent
also manufactures products used in connection with its
services, and sells them under the name PERMACRETE.
It markets its products through radio, television,
newspapers, trade magazines, dealers and franchisees. With
the exception of one company which became a dealer to obtain
the products, respondent's PERMACRETE products are not sold
directly to consumers, but are normally applied by an
authorized dealer. Respondent's Kansas City dealer, in
addition to using respondent's products to fix leaky
basements, also does resurfacing work.
The relatedness of petitioner's products and
respondent's services is clear. The record shows that
petitioner’s PERMA•CRETE products are used in connection
with concrete resurfacing services; respondent uses its
various PERMACRETE products in connection with its
PERMACRETE concrete restoration and repair services. The
goods and services are, thus, complementary, and as the
marketing activities of these parties show, they are
intertwined. Respondent has argued that concrete
resurfacing services and concrete repair and restoration
Cancellation No. 30,464
18
services are different, although it appears to us that this
difference is largely a matter of semantics. Resurfacing a
surface involves repair of cracks, as do repair services.
Further, as petitioner points out, respondent’s service of
“leveling uneven floors using self leveling concrete” is, in
effect, a resurfacing. However, to the extent that there is
a distinction between concrete resurfacing services and
concrete repair and restoration services (largely due to the
amount of area that is being treated), the record shows that
both concrete repair and concrete resurfacing can be done by
the same entities. In fact, some of respondent’s own
franchisees or dealers in Canada perform both types of
services, using PERMACRETE products, and one of respondent’s
dealers in the United States performs both services,
although it does not use respondent’s PERMACRETE resurfacing
products. Respondent has also entered into an agreement
with petitioner to sell petitioner’s products in Canada. In
addition, the website material from www.dynafloor.com lists,
inter alia, “resurfacing systems,” “concrete cleaning-
shotblasting and scarifying,” “joint and crack repairs,” and
“concrete patching,” while the website of E.L.S. Products
Corp. is headed “Concrete Repair & Resurfacing”, and lists
“resurfacing, crack filling, slip proofing, anchoring and
Cancellation No. 30,464
19
sealing.” www.elsproducts.com. Finally, the declaration of
Charles Harvey, vice president of Anchor Technology, Inc.,
testifies that his company sells products used for concrete
coating and resurfacing, and for waterproofing basement and
other concrete areas.
Petitioner’s goods and respondent’s services in Class
37 are also related, in that the “preparation and cleaning
of concrete” identified in respondent’s registration is
generally the first step in the concrete resurfacing in
which petitioner’s products are used.
The factor of the similarity of the goods and services
favors petitioner.
With respect to the factor of trade channels,
petitioner’s products are applied by its authorized dealers,
while respondent’s services are rendered by its dealers or
franchisees. The ultimate consumers for these products and
services include homeowners as well as businesses and
institutions. The dealers for both parties can include
contractors. Moreover, although the ultimate consumers may
not directly purchase petitioner’s products, they would be
aware that the particular contractor or dealer of petitioner
uses PERMA•CRETE products in performing resurfacing work.
As previously discussed, petitioner’s dealers indicate to
Cancellation No. 30,464
20
their ultimate customers that they use PERMA•CRETE products.
Petitioner even makes available to its dealers a sales
portfolio of materials featuring the PERMA•CRETE mark, which
is designed to show these customers the benefits of the
PERMA•CRETE products. As for respondent, the majority of
the products it uses in rendering its services have the term
PERMACRETE on them. Thus, although the specific dealers the
parties use may be different, both the products and services
are offered to homeowners and other building owners through
contractors and others who do concrete work. A homeowner
who has had concrete resurfacing work performed using
PERMA•CRETE products is likely to assume, upon encountering
concrete restoration and repair services rendered under the
mark PERMACRETE, that the goods and services emanate from or
are sponsored by the same source.
Respondent has argued that the parties do not attend
the same trade shows and that they advertise in different
publications. Even if this were true, this does not prove
that the parties’ goods and services travel in different
channels of trade. Respondent has a relatively limited
presence in the United States, and its advertising in this
country also appears to be relatively limited. In point of
fact, however, both parties have attended the World of
Cancellation No. 30,464
21
Concrete trade show, and both advertise in newspapers and
other publications, as well as on radio. That respondent
may not advertise in the identical newspapers and
publications or on the same radio stations or programs that
petitioner does is of no moment; we must consider the goods
and services as they are identified in the respective
registrations, and assume that they can travel in all
appropriate channels of trade for those goods and services
(and can be advertised in all media that are appropriate to
those channels of trade). See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, NA, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Thus, this factor favors petitioner.
The fourth duPont factor is the conditions under which
and buyers to whom sales are made. It can be presumed that
homeowners and building owners who would be the ultimate
purchasers of the parties’ goods and services would exercise
a degree of care. However, because the marks are virtually
identical, even careful purchasers are likely to be
confused. Thus, this factor is at best neutral.
With respect to the factor of fame, petitioner has
used its mark since 1991, and has over 600 dealers, located
in virtually every state of the United States. It has also
Cancellation No. 30,464
22
spent over $900,000 on advertising in the United States
between 1996 and 2001.7 However, based on the evidence of
record, we cannot say that petitioner has established that
its mark is famous. Petitioner contends in its reply brief
that its advertising expenditures are “a substantial
investment in promoting Petitioner’s trademark and name,” p.
11, but it has not provided any information as to how this
sum might compare with the advertising of other such
companies, or of how successful the advertising has been in
terms of petitioner’s market share.
Thus, the factor of fame does not favor petitioner.
The sixth duPont factor is the number and nature of
similar marks in use on similar goods. In connection with
this factor, respondent has pointed to several third-party
applications and registrations, including a registration
which has expired. Third-party registrations are not
evidence that the marks shown therein are in use (and third-
party applications are evidence only of the fact that they
have been filed). However, the registrations can be used to
show that a term has a certain significance within an
industry. In this case, even without the evidence of the
third-party registrations, petitioner’s mark PERMA•CRETE
7 Although petitioner had submitted its advertising figures
under seal, it listed them in its brief, and therefore we have
not treated them as confidential.
Cancellation No. 30,464
23
must be considered suggestive. Petitioner’s president
testified that the mark was chosen because “perma” indicates
permanence and “crete” is for concrete. We think the mark
would suggest this meaning to anyone viewing it.8
Suggestive marks are not entitled to the broad scope of
protection that would be accorded an arbitrary mark.
As for actual third-party use, the evidence as to this
is very limited. During his deposition petitioner’s
president, Mr. Henderson, was asked whether the use of
PERMACRETE for goods identified in various registrations and
other documents would be of concern to petitioner. Mr.
Henderson was not aware of whether most of the third-party
trademarks were in use. Mr. Henderson was asked about a
brochure which petitioner produced during discovery from a
company offering “PermaCrete Pool Systems” pools. Mr.
Henderson was not familiar with this company. It appears
from the brochure that the company installs swimming pools
which have concrete walls. Petitioner also produced an
undated letter with the salutation “Dear Neighbor” from
Arthur Edwards Pool & Spa Centre which includes, on the
8 Respondent states in its brief that PERMA•CRETE may have a
descriptive significance as applied to cement based goods. We
find such a statement curious in view of respondent’s own
registration for PERMACRETE. In any event, respondent cannot
attack petitioner’s registration, which is more than five years
old, on the ground that it is merely descriptive.
Cancellation No. 30,464
24
stationery, the phrase “PC PermaCrete Pool Systems.” In
1994, petitioner received a letter from a law firm
representing C.L. Industries, Inc. which stated that the
company supplies aggregate cement finish used for swimming
pools in Florida since 1975 and in Georgia since 1990. Mr.
Henderson did not recall what action petitioner may have
taken in response to that letter, but he did know that
petitioner does not advertise in Florida or Georgia, and he
did not think it had any dealers in Florida. In 2001
petitioner’s attorneys wrote a cease and desist letter to a
company using the phrase PERMA BRUSH CRETE for masonry
waterproofing products. Mr. Henderson did not have any
knowledge as to how this company markets and sells its
products.
Mr. Henderson was aware of use by Flaherty-Wick, Inc.,
a use to which petitioner objected, and as a result of which
that company changed its product name. There was also
evidence of use of PERMA-CRETE by a company called Courtalds
Coating, Inc., but Mr. Henderson explained that its product
was different in application, composition and purpose from
petitioner’s, that essentially it was just a paint.
Petitioner entered into an agreement with this company
consenting to Courtland’s registration of PERMA-CRETE. The
Cancellation No. 30,464
25
agreement explains that there are differences in the
parties’ products, their application, and in the channels of
trade through which they are sold.
This evidence of third-party use, like the suggestive
significance of the term PERMA•CRETE, demonstrates that
petitioner’s mark is not entitled to a broad scope of
protection. In this respect, this factor favors respondent,
although, as we noted above, the evidence about the extent
of third-party use is limited. We also disagree with
respondent’s contention that consumers are so used to seeing
PERMACRETE marks in the marketplace that they would look to
the dot in petitioner’s mark, and the absence of the dot in
respondent’s, as a way to distinguish the marks. As we have
already discussed, the dot does not change the commercial
impressions of the marks. Further, even though petitioner’s
mark is entitled to a limited scope of protection, we find
that this protection extends to the use of the virtually
identical mark PERMACRETE for concrete restoration and
repair services and preparation and cleaning of concrete.
The next duPont factor that has been discussed is that
of actual confusion. Petitioner points to several incidents
of what it contends is actual confusion. However, two of
the incidents involved emails that were sent to petitioner,
Cancellation No. 30,464
26
rather than respondent, and it appears to us that the
confusion was as to respondent’s address, rather than to a
belief that petitioner was the source of respondent’s goods.
The third group of incidents resulted from radio advertising
done by petitioner at NASCAR race events, as part of which
listeners were told to call for a free T-shirt. Respondent
received many of these phone calls. However, the giveaway
was not limited to potential dealers or purchasers of
petitioner’s products, and we cannot say that this confusion
was as to the source of petitioner’s products. At most,
these incidents show that it is difficult, if not
impossible, to distinguish between petitioner’s and
respondent’s marks. We treat this factor as neutral.
Related to this factor is the length of time and
conditions under which there has been concurrent use without
evidence of actual confusion. Because of the limited nature
of respondent’s activities in the United States, e.g., the
limited number of dealers that it has had, the lack of
information about sales of its identified services in this
country, and the limited information about advertising of
its identified services (as opposed to its advertising for
dealers) in this country, the lack of evidence of actual
confusion does not favor respondent.
Cancellation No. 30,464
27
After reviewing the evidence regarding the various
duPont factors, we conclude that, although petitioner’s mark
is not entitled to a broad scope of protection and the goods
and services are purchased with care, the similarity of the
marks and the closely related nature of the goods and
services outweigh the duPont factors that favor respondent.
We find that respondent’s mark PERMACRETE used on the
services identified in respondent’s registration is likely
to cause confusion with petitioner’s mark PERMA•CRETE for
its identified goods.
Decision: The petition for cancellation is granted.