Rutland Fire Clay Co.v.Joseph Enterprises and C.S.L.

Trademark Trial and Appeal Board

May 26, 2005

No. 91123898 (T.T.A.B. May. 26, 2005)

Hearing: Mailed:
December 21, 2004 May 26, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Rutland Fire Clay Company, dba Rutland Products
v.
Joseph Enterprises and C.S.L., LLC, joined as party defendant
_____

Opposition No. 91123898
_____

Donald S. Holland of Holland & Bonzagni, P.C. for Rutland Fire
Clay Company dba Rutland Products.

Paul Vapnek of Townsend and Townsend and Crew LLP for Joseph
Enterprises and C.S.L., LLC.
______

Before Hanak, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Joseph Enterprises and
C.S.L., LLC, joined as party defendant, (applicant) to register
the mark CHIMNEY SWEEPING LOG on the Principal Register ("LOG"
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91123898
2
disclaimed) for "fireplace logs made of compressed wood fiber and
being chemically treated" in International Class 4.1
Rutland Fire Clay Company, dba Rutland Products (opposer,
Rutland Products, or Rutland) filed an opposition to registration
of the mark in the above application. In the notice of
opposition, opposer alleges that it has previously used, through
its predecessor, CHIMNEY SWEEP in connection with repair,
installation and maintenance of stoves, fireplaces and other
heating systems since at least as early as August 7, 1941; that
opposer's "products bearing its registered 'CHIMNEY SWEEP'
trademark have been extensively and continuously offered to the
public (since before Applicant's application)..."; and that
opposer is the owner, by assignment, of Registration No. 405562
(issued February 8, 1944) for the mark shown below for "chemical
powder used as a fire scale and soot eradicator" in International
Class 6.

Opposer alleges that applicant's mark CHIMNEY SWEEPING LOG when
applied to applicant's goods so resembles opposer's previously
used and registered "CHIMNEY SWEEP" mark as to be likely to cause
confusion or mistake or to deceive.

1 Application Serial No. 76071935, filed on June 14, 2000, based on an
allegation of a bona fide intention to use the mark in commerce.

Opposition No. 91123898
3
Applicant, in its answer, has denied the salient allegations
in the opposition.
The record includes the pleadings; the file of the
involved application; the testimony of opposer's president,
Thomas P. Martin, with exhibits that include a status and title
copy of opposer's pleaded registration, and, by stipulation of
the parties, two discovery depositions, with exhibits, of Mr.
Martin (taken on April 15, 2002 and June 26, 2002); and the
testimony of opposer's sales manager, Vicky Matteson, with
exhibits that include, by stipulation, the discovery deposition
of Ms. Matteson. Applicant's evidence consists of the testimony
of its vice president, Michael P. Hirsch, with exhibits
including, by stipulation, the discovery deposition of Mr.
Hirsch; and a notice of reliance on opposer's responses to
admission requests with attached documents including TARR
printouts of third-party registrations, printouts of Internet
search summaries and portions of third-party websites, and
articles from printed publications.
Both opposer and applicant filed briefs. An oral hearing
was held.
Before proceeding to the merits, some evidentiary issues
need to be addressed. Opposer has objected to applicant's notice
of reliance on TARR printouts of third-party registrations (Item
1, exhibits A, C, E, G and I) for marks that include "CHIMNEY
Opposition No. 91123898
4
SWEEP" arguing that the printouts are not complete records
because, according to opposer, they do not include a listing of
the goods and services and are not certified status and title
copies of the registrations. This objection is not well taken.
The printouts are indeed complete records and, moreover, third-
party registrations are not required to be certified or contain
status and title information in order to be considered properly
of record. See TBMP §704.03(b)(1)(B) (2d ed. rev. 2004). Of
course, though this evidence will be considered, it will be
accorded only the probative value to which it may be entitled.
On the other hand, opposer has properly objected to
applicant's notice of reliance on Internet search summaries and
pages from third-party websites (Item 1, exhibits C, D, F, H, J
and K). Such evidence is not proper subject matter for
introduction by notice of reliance and accordingly will not be
considered. See Alfacell Corp. v. Anticancer Inc., 71 USPQ2d
1301 (TTAB 2004); and Plyboo America Inc. v. Smith & Fong Co., 51
USPQ2d 1633 (TTAB 1999). See also TBMP §704.08 (2d ed. rev.
2004).
In addition, opposer has objected, on hearsay grounds, to
Item 1, exhibit B, and Item 3 of applicant's notice of reliance
which consists of articles from publications entitled Beacon and
Hearth and Home. Printed publications made of record by notice
of reliance under Trademark Rule §2.122(e) are admissible but
Opposition No. 91123898
5
probative only for what they show on their face, rather than the
truth of the matters discussed therein. To the extent that
applicant is relying on these articles for the truth of the
matters contained therein, the articles will not be accorded any
probative value. See TBMP §704.08 (2d ed. rev. 2004).
Applicant's objection to the introduction, during the
testimony of Mr. Martin, of opposer's responses to applicant's
document requests (exhibits 1-3) is sustained. Applicant's
objection to the introduction of responses to applicant's
interrogatories (exhibits 4-10) is overruled. See TBMP §704.10
(2d ed. rev. 2004) and West End Brewing Co. of Utica, N.Y. v.
South Australian Brewing Co., 2 USPQ2d 1306, 1308 n. 3 (TTAB
1987). Applicant's objections to exhibits 14-16 consisting of
the USPTO documents reflecting the recordation of assignment
documents relating to opposer's pleaded registration are
overruled as those documents were properly introduced through the
testimony of Mr. Martin. The documents were sufficiently
identified by Mr. Martin and, as official records of the USPTO,
are self-authenticating. See TBMP §704.07 (2d ed. rev. 2004).
Moreover, offering this evidence on the record during a testimony
deposition is the equivalent of offering it under a notice of
reliance.
We turn then to the merits of this case. Opposer
introduced, during the testimony deposition of Mr. Martin, a copy
Opposition No. 91123898
6
of its pleaded registration for CHMINEY SWEEP (stylized) showing
the status of the registration and ownership (by assignment) in
opposer.2 Therefore, opposer's standing has been established,
and its priority with respect to the registered mark for the
goods identified therein is not in issue. King Candy Co. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). In addition, the evidence shows, and there is no dispute,
that opposer has used the word mark CHIMNEY SWEEP in connection
with creosote remover and soot remover products since at least as
early as 1993 which predates applicant's June 14, 2000
constructive date of first use.
Opposer, Rutland Products, manufactures and sells a variety
of home repair and stove and fireplace products including lines
of products under the "RUTLAND" and "CHIMNEY SWEEP" brand names.
Two of opposer's products in the "CHIMNEY SWEEP" line are the
CHIMNEY SWEEP soot remover and CHIMNEY SWEEP creosote remover.
These products are used to clean chimneys and, specifically, to

2 The Board takes judicial notice of the current status of opposer’s
pleaded registration and specifically that the registration was renewed
for a third time on February 14, 2004. See TBMP §704.03(b)(1)(A) (2d
ed. rev. 2004) [when a registration owned by a party has been properly
made of record, and there are changes in the status of the registration
between the time it was made of record and the time the case is
decided, the Board will take judicial notice of, and rely upon, the
current status of the registration as shown by the records of the
USPTO].
Although applicant objected in its brief to opposer's introduction of
the registration in this manner, the objection is overruled inasmuch as
applicant had stipulated to its introduction during Mr. Martin's
testimony deposition. Moreover, applicant specifically withdrew the
objection at the oral hearing.
Opposition No. 91123898
7
remove the build-up of soot and creosote from the chimneys of
wood burning stoves and fireplaces. According to Mr. Martin, the
product labeled as a soot remover is actually used to remove
creosote as well as soot from the chimney, and it is a less
potent version of the product sold specifically as a creosote
remover.
The soot remover is available in 16-ounce and 38-ounce
containers. It is a powdered product that is measured out and
sprinkled on an active wood burning fire in a fireplace or in a
wood stove. Mr. Martin states that the soot removal product
should be used on a weekly basis.
The creosote remover is also a powdered product that is used
by sprinkling it onto a wood burning fire. It is available in a
one-pound and a two-pound container and is a higher strength
version of the product labeled as a soot remover. Mr. Martin
states that this product is used more for woodstoves, and where
creosote is a more serious problem.
Mr. Martin explains that these products work through a
chemical reaction; the heat from the fire carries the active
ingredients in the products up the chimney where they "attach to
the creosote and soot prevalent there and change it to a more
ashlike [sic] structure that can then be removed from the
chimney." Test. Dep., pp. 43-44.
Opposition No. 91123898
8
According to Mr. Martin, the CHIMNEY SWEEP soot and creosote
removal products are used primarily by homeowners who have wood
burning fireplaces or wood burning stoves in their homes. Test.
pp. 41-42. They are sold through sales representatives to retail
outlets including hardware stores, home centers, mass
merchandisers and fireplace specialty shops who in turn sell the
products to the general public. The products are often displayed
with other wood burning accessories, such as fireplace tools,
within the heating sections of the stores. We have no direct
evidence regarding the retail price of opposer's products but one
of opposer's advertising circulars shows that a 16 oz. container
of CHIMNEY SWEEP soot remover retails for under $3.00.
Opposer advertises its goods to the public through
retailers' print ads and direct mailings to consumers; and
promotes its products to the trade through annual catalogs and at
industry trade shows.
Like opposer's products, applicant's CHIMNEY SWEEPING LOG
product is used to eliminate creosote that lines the chimney of a
fireplace or the pipe of a wood stove.3 Mr. Hirsch explains that

3 We note applicant's contention that its goods, as identified, are
"fireplace logs," and that they should be compared with opposer's
products solely on that basis without regard to the actual function
they perform, i.e., creosote removal. However, applicant's fireplace
logs are also identified as "being chemically treated" which raises a
question, at least in our minds, as to the purpose and function of the
product. Thus, we find it necessary and appropriate to turn to
extrinsic evidence to make that determination. See In re Trackmobile,
Inc., 15 USPQ2d 1152, 1153-54 (TTAB 1990).
Opposition No. 91123898
9
this product is a pressed log made up of sawdust, wax and certain
chemicals that are melded together and that the chemicals in the
log act as a creosote remover. According to Mr. Hirsch, when the
log is burned, it produces an hour and a half fire in a fireplace
or wood stove, and at the end of the burning of the log, the
chemicals are released up into the chimney or stove flue, attach
themselves to creosote, dry the creosote out and allow the soot
to fall back into the chimney. There is no direct testimony as
to how often the log should be used but the package for the
product recommends use every 50 fires, or at least once a year.
Although the application was filed as an intent-to-use
application, the record shows that applicant actually began using
the mark CHIMNEY SWEEPING LOG in 2000 and that nearly four
million logs have been sold since that time. Applicant sells its
product to discount department stores, chain drugstores, home
centers, supermarkets and hardware stores which in turn sell the
products to the public. Applicant sells its fire log at retail
for $14.95, and the product is displayed either in the area of
the store where other chimney logs or fireplace logs are located,
or in the promotional aisle or near the checkout counter of the
stores.
Applicant markets its CHIMNEY SWEEPING LOG product through
advertisements on network television and promotes the product at
industry trade shows attended by its retailers. The log is
Opposition No. 91123898
10
promoted as an "As Seen on TV" product along with other such
products marketed by applicant including the CHIA PET and the
CLAPPER.
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,
including the similarities or dissimilarities between the marks
and the similarities or dissimilarities between the goods. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
Turning first to the goods, it is true that opposer's
powdered chemical product and applicant's chemically treated fire
log are distinctly different products. Applicant's product is a
log with embedded chemicals whereas opposer's product is a powder
that is sprinkled on burning wood logs. However, the question is
not whether purchasers can differentiate the goods themselves 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). Thus, it is not necessary that the
goods of the applicant and opposer be similar or even competitive
to support a finding of likelihood of confusion. It is
sufficient if the respective goods are related in some manner
and/or that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
Opposition No. 91123898
11
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
from or are associated with the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
We find that the products, if not competitive, are at least
closely related in the sense that they are used for precisely the
same purpose and perform precisely the same ultimate function.4
That is, they provide alternative methods for homeowners to clean
the inside of their fireplaces and wood burning stoves.5 Each
product may have perceived advantages and disadvantages.
Applicant's log performs a decorative as well as practical
function but is more expensive and is only good for a single use.
Opposer's powdered product, on the other hand, is less expensive
and is good for multiple uses. While these differences may
affect a consumer's decision to buy one product over the other,
they would not necessarily affect a consumer's perception that
the two products are related. See Recot Inc. v. M.C. Becton, 214
F.3d 1332, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) ("Even if the

4 Mr. Martin and Ms. Matteson testified that the respective products
are competitive. Ms. Matteson did state, however, that she did not
believe the products are "interchangeable" because in her view
opposer's product would be used for ongoing maintenance whereas her
perception of applicant's product is that it would only need to be used
once a year or one time per season. Disc. Dep. p. 67.

5 Although, as applicant points out, there is no mention of creosote
removal on the front of the package for its goods, we note that the
creosote removal function is fully described on the back of the package
in the instructions for use.
Opposition No. 91123898
12
goods in question are different from, and thus not related to,
one another in kind, the same goods can be related in the mind of
the consuming public as to the origin of the goods").
The evidence also shows that the respective products are
sold in directly overlapping channels of trade to the same
ultimate consumers, i.e., homeowners who have fireplaces and wood
stoves. Contrary to applicant's contention, the overlap is
significant. The parties sell their products to the same types
of retail outlets, including home centers and hardware store
chains and, in fact, to some of the very same hardware store
chains. Mr. Martin and Ms. Matteson identified at least three
hardware store chains that carry both the CHIMNEY SWEEP and
CHIMNEY SWEEPING LOG products.6 The two products may even be
displayed in the same sections or aisles of those stores, such as
the area where other logs or cleaners are located. In any event,
both products might very well be encountered by the same
purchasers in the same retail outlets, regardless of the specific
location of each product in a particular store. Those consumers
who had previously purchased opposer's powdered product and used
it to remove creosote from the chimney, upon later encountering
applicant’s fireplace log which performs the identical function,
regardless of where or when they found it, are likely to believe,

6 The identity of the particular stores is the subject of a stipulated
protective order and thus is confidential.

Opposition No. 91123898
13
if these products are sold under similar marks, that they emanate
from the same source or that there is otherwise some connection
or sponsorship.
Applicant contends that opposer's product, as a chemical,
requires more expertise by the user and that as a result,
opposer's soot and creosote remover are used more by professional
chimney sweeps than the everyday consumers that purchase
applicant's product. However, the evidence clearly shows that
opposer's products are marketed to precisely the same purchasers
as applicant's product,7 and there is no evidence whatsoever that
use of opposer's product requires any particular expertise or, in
any event, any more expertise than any other chemical cleaning
product used by consumers in the home. Furthermore, there is no
evidence that either product would be purchased by such consumers
with anything more than ordinary care.
We turn next to a consideration of the marks. We find that
the marks, when considered in their entireties, are substantially
similar in sound, appearance and meaning. Opposer's entire mark
is the phrase CHIMNEY SWEEP.8 A slight variation of that phrase,

7 Applicant incorrectly asserts, based on statements made by Mr. Martin
during his discovery deposition, that opposer's CHIMNEY SWEEP products
are marketed primarily to professional chimney sweeps. Mr. Martin was
specifically referring to a creosote remover sold by opposer under a
different mark, not the creosote remover sold under the CHIMNEY SWEEP
mark. Disc. Dep., p. 19.

8 In comparing the marks, neither party addressed the stylized version
of opposer's mark as it appears in its pleaded registration. In view
Opposition No. 91123898
14
"CHIMNEY SWEEPING," is visually and aurally the most significant
portion of applicant's mark. Applicant's use of SWEEPING instead
of SWEEP in its mark and its addition of the disclaimed and
descriptive, if not generic, term "LOG" are insufficient
differences on which to distinguish the marks as a whole.
The differences in sound and appearance between the two
marks become even less significant when we consider that, in
relation to the goods, the marks convey very similar, if not the
same, meanings. As described by applicant, CHIMNEY SWEEPING LOG
suggests the activity of cleaning or "sweeping" a chimney and
CHIMNEY SWEEP suggests the person, a "chimney sweep," who
performs this activity. Keeping in mind that the comparison of
the marks is not made on a side-by-side basis and that recall of
purchasers is often hazy and imperfect, it is the overall
"chimney sweep" concept that purchasers are likely to remember
when seeing these marks at separate times on closely related
goods, not the slight difference in meaning. Moreover, applicant
acknowledges in its brief that CHIMNEY SWEEP also suggests a
product that cleans or "sweeps" a chimney, thus making the
meaning of the two marks virtually the same. Brief, p. 12.
Applicant argues that opposer's mark is used in a manner on
its containers, i.e., in varying colors, sizes, and placement,

thereof, we will focus solely on opposer's typed version of the mark,
which is, in any event, the closer of opposer's marks to the challenged
mark.
Opposition No. 91123898
15
that is completely different in appearance and commercial
impression from the manner of use on the packaging for
applicant's product. The actual manner of use is not relevant to
our determination because both opposer and applicant are
asserting rights to their marks in typed form. As such, the
parties are not limited to a depiction of their marks in a
particular color or form nor, in any event, to any particular
size or placement of the marks on the packaging. See, e.g.,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1847-48 (Fed. Cir. 2000) (typed drawings are not limited to any
particular rendition of the mark and, in particular, are not
limited to the mark as it is used in commerce).
To the extent, if any, that opposer is claiming that its
CHIMNEY SWEEP mark is strong and well-recognized by the public,
we do not find opposer's evidence persuasive in this regard.
Long use alone is insufficient to show public recognition of the
mark, and opposer's evidence of the extent of exposure is not
particularly significant. Opposer refers to Mr. Martin's
statement in his discovery deposition that opposer has a large
market share for creosote removing compounds (Brief, p. 10; Disc.
Dep., p. 51) but opposer also sells creosote removal products
under other marks including its house mark "RUTLAND," and there
is no indication that Mr. Martin is specifically referring to the
size of the market for opposer's CHIMNEY SWEEP line of products.
Opposition No. 91123898
16
Opposer provided an estimate of advertising expenditures for only
a one-year period and moreover could not identify what portion of
the total amount was spent on products sold under the CHIMNEY
SWEEP mark. With regard to sales, Mr. Martin indicated that half
of opposer's business is in the stove and fireplace product line
(Disc. Dep., p. 14) but based on Mr. Martin's testimony, it
appears that only a very small percentage of that line is CHIMNEY
SWEEP products. In addition, the sales figures for its CHIMNEY
SWEEP products for the years 1999 through 2001 do not seem
particularly impressive on their face and we have no context for
these figures.9
On the other hand, applicant's contention, based on the
appearance of "CHIMNEY SWEEP" in a number of third-party
registrations, that the mark is so highly suggestive and commonly
used that, in effect, it is entitled to virtually no protection
is not convincing either.
To begin with, third-party registrations are not evidence of
use. They may, of course, may be used to indicate that a
commonly registered element has a suggestive meaning for
particular goods or services such that differences in other
portions of the marks may be sufficient to render the marks as a
whole distinguishable. See, e.g., Tektronix, Inc. v. Daktronics,

9 Opposer's exact sales and advertising figures are the subject of a
stipulated protective order.
Opposition No. 91123898
17
Inc., 187 USPQ 588, 592 (TTAB 1975), aff'd, 534 F.2d 915, 189
USPQ 693, 694-95 (CCPA 1976). However, none of the third-party
registrations submitted by applicant is for similar products.
They are all for chimney sweeping services. In fact, neither Mr.
Martin nor Mr. Hirsch could identify a single third-party use of
CHIMNEY SWEEP or variations thereof for similar products.
We accordingly find that the additional elements in applicant's
mark are not sufficient to adequately distinguish the parties'
marks.
We recognize that the mark CHIMNEY SWEEP is suggestive of
opposer's goods, and therefore not entitled to a broad scope of
protection. However, the mark is at least entitled to protection
from registration of applicant's very similar mark for closely
related goods. See, e.g., King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between weak
marks as between strong marks).
Finally, we note opposer's claim that it has encountered a
number of instances of actual confusion since applicant began use
of its mark in 2000, but we find the evidence unpersuasive. Ms.
Matteson testified that during at least six different trade shows
potential customers approached the Rutland Products' booth either
to inquire about or to try to purchase the CHIMNEY SWEEPING LOG.
Rutland Products sells a wide variety of stove and fireplace
Opposition No. 91123898
18
products, and these products are produced not only under the
CHIMNEY SWEEP mark, but also under other marks including
opposer's "RUTLAND" house mark. The problem is that it is not
clear from Ms. Matteson's testimony, and the evidence is not
sufficient to infer, that these individuals were even aware of
opposer's CHIMNEY SWEEP mark and products when they inquired
about or asked to purchase the CHIMNEY SWEEPING LOG. Therefore,
we cannot determine whether they were actually confused as to the
source of the products or whether their confusion was based
simply on a mistaken assumption that opposer, as a stove and
fireplace supply company, would naturally be expected to sell
such products.
Nevertheless, it is not necessary to show actual confusion
in order to establish a likelihood of confusion, and we find, in
view of the similarity of the marks, and because the marks are
used in connection with at least closely related goods that are
sold in the same channels of trade to the same ultimate
consumers, that confusion is likely.10
Decision: The opposition is sustained and registration to
applicant is refused.

10 To the extent that opposer is arguing in its brief that the Board
should presume bad faith merely on the basis of applicant's prior
knowledge of opposer's mark, that argument is not well taken.
Moreover, opposer confirmed at the oral hearing that it is making no
such claim.