Simoniz USA, Inc.

Trademark Trial and Appeal Board

Nov 3, 2020

87865135 (T.T.A.B. Nov. 3, 2020)

This Opinion is Not a
Precedent of the TTAB

Hearing: October 14, 2020 Mailed: November 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Simoniz USA, Inc.
_____

Serial No. 87865135
_____

John C. Linderman of McCormick, Paulding & Huber, LLP, for Simoniz USA, Inc.

Lyal L. Fox III, Trademark Examining Attorney,1 Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Lykos, Larkin, and Lebow,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Simoniz USA, Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark SIMONIZ CERAMICSHIELD for “Paint sealant for
exterior surfaces of vehicles” in International Class 2.2

1 Trademark Examining Attorney Dana L. Dickson examined the involved application, issued
the final refusal to register from which this appeal was taken, and filed the appeal brief of
the United States Patent and Trademark Office (“USPTO”). Trademark Examining Attorney
Fox was assigned to the case following the completion of briefing and appeared on behalf of
the USPTO at the oral hearing. We will refer to them both as the “Examining Attorney.”
2 Application Serial No. 87865135 was filed on April 5, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark and
first use of the mark in commerce at least as early as March 14, 2018.
Serial No. 87865135
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The Examining Attorney refused registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it so resembles (1)
the registered standard character mark PLATINUM CERAMIC SHIELD (CERAMIC
disclaimed), and (2) the registered composite word-and-design mark shown below
(CERAMIC disclaimed)

both owned by the same registrant (“Registrant”) and both covering goods identified
as a “Clear coating protectant containing ceramic nanoparticles for use on vehicles”
in International Class 2,3 as to be likely, when used in connection with the goods
identified in the application, to cause confusion, to cause mistake, or to deceive.
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, which was denied. The appeal is fully briefed,4 and counsel

3 Registration No. 5470824 of the standard character mark issued on May 15, 2018, while
Registration No. 5476633 of the composite mark issued on May 22, 2018.
4 Citations in this opinion to the briefs and other materials on appeal, including the evidence
made of record by Applicant in connection with remand of the application to the Examining
Attorney following the completion of briefing, refer to TTABVUE, the Board’s online
docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
Specifically, the number preceding TTABVUE corresponds to the docket entry number, and
any numbers following TTABVUE refer to the page number(s) of the docket entry where the
cited materials appear.
Serial No. 87865135
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for Applicant and the Examining Attorney appeared at a video hearing before the
panel on October 14, 2020. We reverse the refusal to register.
I. Procedural Background and Record on Appeal5
A long and winding road leads to our door for final decision of this case. We
summarize its major twists and turns below because they provide useful background
for our analysis of the merits of the appeal.
In her first Office Action, the Examining Attorney refused registration of
Applicant’s mark on the basis of the cited registrations of PLATINUM CERAMIC
SHIELD and PLATINUM CERAMIC SHIELD and design.6 She made of record TSDR
pages regarding the cited registrations,7 an entry from the MERRIAM-WEBSTER
DICTIONARY showing no listing for the term “simonize,” and dictionary definitions of
the words “platinum,” “ceramic,” “shield,” “sealant,” and “protectant.”8
Applicant traversed the refusal in its response to the first Office Action,9 and made
of record pages from the USPTO’s Trademark Electronic Search System (“TESS”)
database regarding third-party registrations of, and applications to register,
SHIELD-formative marks for various goods in which the word had been disclaimed,

5 Citations in this opinion to the application record through the request for reconsideration
and its denial are to pages in the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) database.
6 June 11, 2018 Office Action at TSDR 1.
7 Id. at TSDR 2-7.
8 Id. at TSDR 8-13.
9 August 9. 2018 Response to Office Action at TSDR 23-25.
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either alone or in combination with other words.10 Applicant’s arguments succeeded,
as the application was approved for publication for opposition and scheduled for
publication in the USPTO’s Official Gazette.11
A few days before the scheduled date of publication, however, the Examining
Attorney and her Managing Attorney requested, pursuant to Trademark Rule
2.84(a), 37 C.F.R. § 2.84(a), that the USPTO Director restore the Examining
Attorney’s jurisdiction over the application for purposes of issuing a subsequent office
action.12 The request was granted by the Commissioner for Trademarks, and
jurisdiction over the application was restored to the Examining Attorney.
The Examining Attorney then issued an Office Action in which she reinstated and
made final the original refusal to register based on the cited registrations. She made
of record webpages that she claimed showed that the word “sealant” in the
identification of goods in the application was essentially synonymous with the word
“protectant” in the identifications of goods in the cited registrations,13 and webpages
that she claimed showed use of the word “platinum” to indicate products of superior
quality.14
Applicant appealed and requested reconsideration, making of record TESS
database pages regarding the same third-party registrations of, and applications to

10 Id. at TSDR 2-22.
11 September 26, 2018 Notice of Publication at TSDR 1.
12 November 26, 2018 Administrative Response at TSDR 1.
13 December 14, 2018 Final Office Action at TSDR 14-18.
14 Id. at TSDR 2-13.
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register, SHIELD-formative marks for various types of coatings in which the word
had been disclaimed, either alone or in combination with other words.15
The Examining Attorney denied the request for reconsideration, making of record
additional webpages displaying the word “platinum” and other words in what she
asserted were product grade hierarchies,16 the registrations and applications
resulting from a search of the USPTO’s XSearch database that she claimed showed
that the combination of CERAMIC and SHIELD was extremely rare in registered
and applied-for marks,17 an entry from the COLLINS DICTIONARY defining the word
“simonize” as “to polish with or as with wax,”18 a definition of the word “polish” from
the MERRIAM-WEBSTER DICTIONARY,19 and a Wikipedia entry regarding “paint
sealant.”20
The appeal was resumed and was fully briefed. Applicant then requested an oral
hearing, 11 TTABVUE, but before the Board could schedule one, Applicant requested
that the Board remand the application to the Examining Attorney “so that Applicant
may introduce additional evidence in support of the Application,” 14 TTABVUE 2,
consisting of copies of registrations of marks comprising or including Applicant’s
house mark SIMONIZ, a declaration of Applicant’s President William Gorra (“Gorra

15 June 13, 2019 Request for Reconsideration at TSDR 12-32. It was unnecessary for
Applicant to make the same evidence of record twice.
16 July 10, 2019 Denial of Request for Reconsideration at TSDR 2-13, 49-52.
17 Id. at TSDR 14-23, 25-46.
18 Id. at TSDR 24.
19 Id. at TSDR 47.
20 Id. at TSDR 48.
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Decl.”),21 and a complete definition of the word “simonize” from the COLLINS
DICTIONARY, all attached as exhibits to the remand request. Id. at 7-42. The Board
granted the request, 15 TTABVUE 1, and the application was remanded to the newly-
assigned Examining Attorney for consideration of the new evidence. He found it
unconvincing, and continued and maintained the final refusal.22
The appeal was then resumed for the second time, 17 TTABVUE, and the panel
conducted the oral hearing, at which Applicant and the Examining Attorney argued
the merits, but also discussed the prosecution history, disagreeing about whether the
application was actually published in the USPTO’s Official Gazette prior to the
restoration of jurisdiction. Following the hearing, Applicant filed a document entitled
“Motion to Correct the Record,” 24 TTABVUE 1, in which Applicant summarized the
disagreement, and to which Applicant attached what it described as a copy of a page
from the October 16, 2018 edition of the Official Gazette purporting to show
publication on that date. Id. at 2-5. We need not resolve the dispute regarding
publication or consider Applicant’s self-styled motion because whether or not the
application was published is not germane to our disposition of the appeal, to which
we now turn.
II. Analysis of Likelihood of Confusion Refusal
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the

21 We will cite the Gorra Declaration by paragraph number (e.g., “Gorra Decl. ¶ 4”).
22 April 6, 2020 Final Office Action at TSDR 1.
Serial No. 87865135
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goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of the likelihood of confusion under Section 2(d) is based
on an analysis of all probative facts in the record that are relevant to the likelihood
of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for
which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
Two key DuPont factors in every Section 2(d) case are the first two factors
regarding the similarity or dissimilarity of the marks and the goods or services,
because the “fundamental inquiry mandated by § 2(d) goes to the cumulative effect
of differences in the essential characteristics of the goods and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976). Applicant focuses in its appeal brief almost exclusively on the
first DuPont factor, 7 TTABVUE 9-24, concluding that “‘SIMONIZ
CERAMICSHIELD’ is not likely to cause confusion with the marks of the Cited
Registrations since the marks are sufficiently dissimilar with respect to appearance,
sound, connotation, and commercial impression.” Id. at 24 (emphasis in original). The
Examining Attorney also devotes most of her brief to the first factor, 9 TTABVUE 6-
20, although she also briefly discusses the second factor. Id. at 20-21.23

23 The Examining Attorney also states that the “similarity of the trade channels for the goods”
is among the factors that “are most relevant,” 9 TTABVUE 6, but she does not discuss the
third DuPont factor in her brief.
Serial No. 87865135
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“[W]e confine our analysis of the issue of likelihood of confusion to that between
Applicant’s mark and Registrant’s [PLATINUM CERAMIC SHIELD] mark in
standard characters” in Registration No. 5470824 (the “’824 Registration”). In re
Allegiance Staffing, 115 USPQ2d 1319, 1325 (TTAB 2015). “If confusion is likely
between these marks, there is no need for us to consider the likelihood of confusion
with [Registrant’s composite] mark[ ],” but “if there is no likelihood of confusion
between Applicant’s mark and [PLATINUM CERAMIC SHIELD] in standard
characters, then there would be no likelihood of confusion with” the composite mark.
Id. (citing In re Max Capital Grp., Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
A. Similarity or Dissimilarity of the Goods
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration.’” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir 2018) (quoting DuPont,
177 USPQ at 567); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). The goods need not be
identical but “need only be related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
“Apparently conceding the issue, Applicant did not address th[is] du Pont factor[ ] in
Serial No. 87865135
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its brief, so we offer only a brief explanation of our conclusion” on it. In re Morinaga
K.K., 120 USPQ2d 1738, 1740 (TTAB 2016).
“We begin with the identifications of goods and services in the registration and
application under consideration.” In re Country Oven, Inc., 2019 USPQ2d 443903, *5
(TTAB 2019). The goods identified in the application are “paint sealant for exterior
surfaces of vehicles,” while the goods identified in the registrations are a “clear
coating protectant containing ceramic nanoparticles for use on vehicles.” The
Examining Attorney argues that the goods “are overlapping and used for the same
purpose (protective use on exteriors of vehicles),” 9 TTABVUE 21, because both are
applied to the exteriors of vehicles, and the word “‘[s]ealant means ‘a substance that
is put on a surface in order to protect it from air, water, etc.’; and ‘protectant’ means
‘a protecting agent.’” Id.24 Applicant implicitly agrees, as it describes both sets of the
identified goods as “protective coatings in Class 2” in several places in its appeal brief.
7 TTABVUE 11-14. We find that the second DuPont factor supports a finding of a
likelihood of confusion.
B. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “Similarity in any one of these

24 June 11, 2018 Office Action at TSDR 12-13 (MERRIAM-WEBSTER DICTIONARY). The
Examining Attorney also made of record a few webpages showing that vehicle “sealants” and
“protectants” have similar purposes. December 14, 2018 Final Office Action at TSDR 14-18.
Serial No. 87865135
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elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019).
The proper test regarding similarity “is not a side-by-side comparison of the
marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d
at 1721 (internal quotation marks and citation omitted)). “The proper perspective on
which the analysis must focus is on the recollection of the average customer, who
retains a general rather than specific impression of marks.” In re i.am.symbolic, llc,
127 USPQ2d 1627, 1630 (TTAB 2018) (citations omitted).25
1. Summary of Arguments26
Because Applicant and the Examining Attorney essentially agree that the first
DuPont factor is dispositive of the issue of likelihood of confusion, we summarize their
key respective arguments below.

25 The Examining Attorney argues that “[n]otably, when, as here, the goods of an
applicant and registrant are identical or virtually identical, the degree of
similarity between the marks required to support a finding that confusion is likely
decreases.” 9 TTABVUE 7 (emphasis in original) (citing Cai, 127 USPQ2d at 1801).
Although we find above that the goods are related, the record does not support a finding that
they are “identical or virtually identical,” so we do not find that the degree of similarity
between the marks required for confusion to be likely is reduced.
26 Because we focus solely on Registrant’s standard character mark, we do not summarize
arguments specific to the composite word-and-design mark in the other cited registration.
Serial No. 87865135
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a. Applicant’s Arguments
With respect to the words CERAMIC and SHIELD in the cited mark and the
compound word CERAMICSHIELD in its mark, Applicant argues that
the common wording between the marks that the
Examining Attorney focuses on in determining the marks
are confusingly similar, is wording that is either: (1)
disclaimed as being merely descriptive (“CERAMIC”); or
(2) commonly used, and disclaimed in a number of third
party marks . . . for similar goods to those covered by
Applicant’s marks and the marks of the Cited
Registrations, i.e., protective coating in Class 2, and, thus,
descriptive or, at the very least, highly suggestive
(“SHIELD”).
7 TTABVUE 11-12. Applicant also argues that a dictionary definition of “shield” made
of record by the Examining Attorney shows that “shield” is descriptive. Id. at 14-15.
Applicant contends that “the Examining Attorney minimizes the significance of
the wording ‘PLATINUM’ and ‘SIMONIZ’ appearing at the beginning of the marks of
the Cited Registrations and Applicant’s marks, respectively,” id. at 12, and that the
marks are not confusingly similar because “the common element of the marks, i.e.,
‘CERAMIC SHIELD,’ is weak because it is descriptive of the named goods, thus, it is
unlikely that consumers will be confused, as the overall combinations have no other
commonality.” Id. Applicant claims that “because the shared wording is weak and
descriptive, consumers recognize the wording ‘SIMONIZ’ and ‘PLATINUM,’ notably
appearing at the beginning of the marks, as the dominant portions of the marks and
are able to distinguish between the marks,” id. at 16, and that “the words
‘PLATINUM’ and ‘SIMONIZ,’ appearing at the beginning of the marks are the
Serial No. 87865135
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dominant portions of the respective marks, and bear no similarity to one another in
meaning, appearance, or connotation.” Id. at 18.
Applicant objects to the Examining Attorney’s “new evidence purported [sic] to
show that the word ‘SIMONIZE’ which, notably, is not the wording in Applicant’s
mark, is a verb meaning ‘to polish with or as with wax,’” id., incorrectly arguing that
such evidence was not properly made of record when the Examining Attorney denied
Applicant’s Request for Reconsideration, id. at 22-23, and arguing alternatively that
a full page from the cited dictionary “notably indicates, just after where the
Examining Attorney’s printout ends, that the ‘Word origin of ‘simonize’ is ‘SIMONIZ,
a trademark for a metal polish’ referring to Applicant’s trademark.” Id. at 23.27
Applicant devotes much of its reply brief to a discussion of the dictionary evidence
regarding the word “simonize.” 10 TTABVUE 4-7. Applicant’s reply brief concludes
as follows:
In the present case, the common element of the marks, i.e.,
“CERAMIC SHIELD,” is weak because it is descriptive of
the named goods, thus, it is unlikely that consumers will
be confused, because the overall combinations have no
other commonality. More importantly, the non-common
element SIMONIZ in Applicant’s mark is a trademark and
serves as a source identifier as the Examining Attorney
originally stated. The non-common element PLATINUM in
the cited marks is not a source identifier, but is a grading
term as Examining Attorney’s multiple citations prove.

27 The Examining Attorney was entitled to make evidence of record in denying Applicant’s
request for reconsideration. See generally TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) Section 715.03 (Oct. 2018). The Examining Attorney objected to the materials
attached to Applicant’s brief in response to the alleged untimely evidence, 9 TTABVUE 15,
and requested that the Board disregard them. That objection is moot because Applicant
subsequently secured a remand of the application to make the referenced materials of record.
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Lest it be overlooked SIMONIZ will never be confused with
PLATINUM.”
Id. at 9.
b. The Examining Attorney’s Arguments
The Examining Attorney argues that “because the word portions of these marks
all consist of a sequence of three words, the last two of which are ‘CERAMIC’ and
‘SHIELD’ appearing either with or without a space between them, the marks,
overall, appear and sound very similar.” 9 TTABVUE 7.28 She claims that “[w]ith
respect to this shared wording, the marks are identical in sound and virtually
identical in appearance, and are thus confusingly similar for the purposes of
determining likelihood of confusion.” Id. at 9. She further argues that because of the
meanings of the words CERAMIC and SHIELD that are common to the marks, the
“marks are very similar in meaning” because they “evoke a nonmetallic mineral that
provides a protective cover.” Id. at 8.
The Examining Attorney claims that the words CERAMICSHIELD and
CERMAIC SHIELD are the dominant portions of the both marks because “the more
distinctive phrase in the applied-for and registered marks is ‘CERAMIC SHIELD’
and ‘CERAMICSHIELD’ notwithstanding the fact that registrant disclaimed the
word ‘CERAMIC’,” id. at 13, and Applicant’s “arguments ignore the inherent
weakness of the first elements of the applied-for and registered marks which are, at
best suggestive.” Id. at 14. According to the Examining Attorney, “the wording

28 All bolding in the Examining Attorney’s discussion of the marks or their components was
supplied by the Examining Attorney.
Serial No. 87865135
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‘PLATINUM’ in the registered marks is suggestive of a certain level of quality, and
the wording ‘SIMONIZE’ means ‘to polish with or as with wax.’” Id. She contends
that
Although applicant spells the word “SIMONIZE” in the
applied-for mark as “SIMONIZ,” consumers will still
perceive the wording “SIMONIZ” as suggesting
“SIMONIZE.” Because the word “SIMONIZ” has no
dictionary definition but is the phonetic equivalent of the
word “SIMONIZE,” consumers will likely perceive the
word “SIMONIZ” as suggesting “SIMONIZE.” The word
“SIMONIZ” is therefore suggestive of the intended
purpose of applicant’s goods.
Id.
The Examining Attorney argues in the alternative that even if Applicant holds
rights in the mark SIMONIZ, this “does not mean that SIMONIZE has no dictionary
definition,” or “bar it from becoming a term with a meaning that is generally
understood by the public and defined in English language dictionaries, as established
by the inclusion of the term SIMONIZE in Collins Dictionary online.” Id. at 17.
The Examining Attorney concludes that “[b]ecause the wording ‘CERAMIC
SHIELD’ within the registered mark is wholly encompassed within applicant’s mark,
purchasers are likely to believe that SIMONIZ CERAMICSHIELD and
PLATINUM CERAMIC SHIELD identify two product lines that both emanate from
CERAMIC SHIELD,” id. at 18, “because the wording ‘PLATINUM’ is often used in
the marketplace to indicate within a line of similar services or products those which
are of superior quality (and which are also commonly more expensive).” Id. at 18-19.
She claims that “[a]lthough the additional wording in the applied-for and registered
marks (specifically, SIMONIZ and PLATINUM), is non-descriptive, consumers
Serial No. 87865135
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might still be confused and conclude that SIMONIZ CERAMICSHIELD and
PLATINUM CERAMIC SHIELD identify two product lines that both emanate from
CERAMIC SHIELD.” Id. at 19.
2. Analysis of Similarity or Dissimilarity of the Marks
The marks must be considered in their entireties, but “in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on consideration of the marks in
their entireties.” Detroit Athletic Co., 128 USPQ2d at 1051 (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). Because Applicant and
the Examining Attorney disagree sharply regarding the dominant portions of the
involved marks, and because the Examining Attorney’s arguments under the first
DuPont factor rely heavily on the premise that CERAMIC SHIELD is the dominant
portion of each mark, we will begin by determining the marks’ dominant portions.
Applicant’s mark SIMONIZ CERAMICSHIELD begins with Applicant’s house
mark SIMONIZ, which the record shows is the subject of several registrations for
various coating products for automobiles, and related goods, 14 TTABVUE 7-9, 15,
21-22, has been in use in connection with paint sealants, polishes, and cleaners for
over 100 years, is the oldest brand of car-care products and services in the United
States, and has been associated with substantial sales revenues over the past 20
years. Gorra Decl. ¶¶ 4-5, 9. As the first part of Applicant’s mark, the SIMONIZ house
mark is presumptively the portion “which is most likely to be impressed upon the
mind of a purchaser and remembered,” Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9
Serial No. 87865135
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USPQ2d 1895, 1897 (TTAB 1988), particularly given its long and extensive use for
the sort of goods identified in the application, and the Examining Attorney did not
show otherwise.
We are not persuaded by the Examining Attorney’s argument that Applicant’s
house mark SIMONIZ “is suggestive of the intended purpose of applicant’s goods,” 9
TTABVUE 14, because it “is the phonetic equivalent of the word ‘SIMONIZE,” id.,
which the Examining Attorney claims “means to polish with or as with wax.’” Id.
(citing the COLLINS DICTIONARY). The Examining Attorney’s claim is based on that
single dictionary entry, which also states that the origin of the putative verb
“simonize” is “SIMONIZ, a trademark for a metal polish.” 14 TTABVUE 34. We note
in that regard that the Examining Attorney also made of record the results of a search
for the word “simoniz” in the MERRIAM-WEBSTER DICTIONARY, which stated that “[t]he
word you’ve entered isn’t in the dictionary.”29 In any event, the issue before us is not
whether “simonize” is the generic name of any goods or services, but rather whether
SIMONIZ CERAMICSHIELD is confusingly similar to PLATINUM CERAMIC
SHIELD. For purposes of that issue, the record does not support a finding that when
SIMONIZ appears in Applicant’s mark, it has any non-source identifying
significance.
The record shows that the compound word CERAMICSHIELD in Applicant’s
mark is highly suggestive, if not descriptive, in connection with the identified goods.
The Examining Attorney made of record a definition of “ceramic” as “of or relating to

29 June 11, 2018 Office Action at TSDR 8.
Serial No. 87865135
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the manufacture of any product (such as earthenware, porcelain, or brick) made
essentially from a nonmetallic mineral (such as clay) by firing at a high temperature;
also: of or relating to such a product,”30 and the word was disclaimed in both of the
cited registrations because it describes an ingredient of a “clear coating protectant
containing ceramic nanoparticles for use on vehicles.”31
Applicant’s specimen of use states that Applicant’s “paint sealant for exterior
surfaces of vehicles” is a “Proprietary Glass/Ceramic Compound Mixture”:
32
The word CERAMIC is not disclaimed in Applicant’s mark even though it appears to
describe an ingredient of the goods, presumably because it is part of the compound
word CERAMICSHIELD, and the TMEP provides that “[i]f a compound word mark
consists of an unregistrable component and a registrable component combined into a
single word, no disclaimer of the unregistrable component of the compound word will
be required.” TMEP Section 1213.05(a). Nevertheless, the dictionary definition and

30 June 11, 2018 Office Action at TSDR 10 (MERRIAM-WEBSTER DICTIONARY).
31 Id. at TSDR 2-7.
32 April 5, 2018 Application at TSDR 3. A specimen of use may be evidence that a term is
descriptive of the relevant goods or services. See, e.g., In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1710 (Fed. Cir. 2017).
Serial No. 87865135
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Applicant’s specimen show that CERAMIC has little, if any, ability to identify source
when used in connection with Applicant’s goods.
With respect to SHIELD, the Examining Attorney also made of record a definition
of the word in its verb form as “to protect with or as if with a shield: provide with a
protective cover or shelter,”33 and we take judicial notice that in its noun form,
“shield” means, among other things, “something or someone that protects or defends”
and “a device or a device or part that serves as a protective cover or barrier.”34 When
CERAMIC and SHIELD are joined in the compound word CERAMICSHIELD in
Applicant’s mark, the combination strongly suggests that Applicant’s “paint sealant
for exterior surfaces of vehicles” provides a protective cover for the exterior vehicle
surfaces through the use of a ceramic-based mixture.
The position of the word SIMONIZ at the beginning of Applicant’s mark, its status
as Applicant’s longstanding house mark, and the fact that it modifies the weak
compound word CERAMICSHIELD that follows it, collectively provide rational
reasons to find that SIMONIZ, not CERAMICSHIELD, is the dominant portion of
Applicant’s mark. Detroit Athletic Co., 128 USPQ2d at 1049.
Within the mark PLATINUM CERAMIC SHIELD in the ’824 Registration, the
first word PLATINUM modifies the words CERAMIC SHIELD in essentially the
same way in which Applicant’s house mark SIMONIZ modifies the compound word

33 June 11, 2018 Office Action at TSDR 11 (MERRIAM-WEBSTER DICTIONARY).
34 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed on November 3,
2020). “The Board may take judicial notice of dictionary definitions, including online
dictionaries, definitions in technical dictionaries and translation dictionaries that exist in
printed format,” In re Omniome, Inc., 2020 USPQ2d 3222, *2 n.17 (TTAB 2019).
Serial No. 87865135
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CERAMICSHIELD in Applicant’s mark. The Examining Attorney made of record
evidence that the word “platinum” may suggest a higher or premium level of quality
when it is used in connection with motor oils, bleaches, liquid gels, carwashes,
painter’s tape, dish soaps and detergents, basketball backboards, software plugins,
carpet cleaning solutions, carpet and upholstery detergent, trash bags and garbage
can liners, flooring, and mattresses,35 but no evidence that PLATINUM has such a
laudatory meaning for a “clear coating protectant containing ceramic nanoparticles
for use on vehicles.” In its reply brief, however, Applicant stated that “PLATINUM in
the cited marks is not a source identifier, but is a grading term as Examining
Attorney’s multiple citations prove,” 10 TTABVUE 9, and at the oral hearing
Applicant’s counsel characterized PLATINUM as a grade designation.
In the mark in the ’824 Registration, the word CERAMIC has been disclaimed as
descriptive of an ingredient of the registrant’s “clear coating protectant containing
ceramic nanoparticles for use on vehicles,” and, as in Applicant’s mark, when
CERAMIC appears before SHIELD, the resulting phrase strongly suggests that the
registrant’s goods, like Applicant’s, will provide a ceramic-based protective cover for
vehicles.36 Indeed, the Examining Attorney acknowledges that in view of the

35 December 14, 2018 Office Action at TSDR 2-13; July 10, 2019 Denial of Request for
Reconsideration at TSDR 2-13, 49-52.
36 In their briefs, Applicant and the Examining Attorney dispute the impact of third-party
registrations of marks containing the words CERAMIC and SHIELD. We need not resolve
their dispute because we find that the other materials in the record discussed above establish
the highly suggestive, if not descriptive, meaning of the combination of those words in
connection with the involved goods.
Serial No. 87865135
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dictionary definitions of “ceramic” and “shield,” both marks “evoke a nonmetallic
mineral that provides a protective cover.” 9 TTABVUE 8.
In the context of Applicant’s argument as a whole, its characterization of
PLATINUM as a “grading term,” 10 TTABVUE 9, or a grade designation, is
effectively a concession that it is not as distinctive as SIMONIZ. The word
PLATINUM has not been disclaimed in either of the cited registrations, however,
and, as noted above, the Examining Attorney acknowledges that PLATINUM is “non-
descriptive,” 9 TTABVUE 19, when used in connection with the goods in the ’824
Registration. Accordingly, we find that the word PLATINUM is inherently distinctive
when it appears in the PLATINUM CERAMIC SHIELD mark in the ’824
Registration, and that it is, at most, highly suggestive of the identified goods, such
that it has source-identifying significance in its lead-off position in the mark because
it modifies the weaker phrase CERAMIC SHIELD, which we have found above to be
highly suggestive, if not descriptive, of the goods. The position of the suggestive word
PLATINUM at the beginning of the mark in the ’824 Registration, its inherent
distinctiveness, and the relatively weaker nature of the phrase CERAMIC SHIELD
that it modifies, provide rational reasons to find that PLATINUM, not CERAMIC
SHIELD, is the dominant portion of the mark in the ’824 Registration. See Detroit
Athletic Co., 128 USPQ2d at 1049-50.
We turn now to the required comparison of the SIMONIZ CERAMICSHIELD and
PLATINUM CERAMIC SHIELD marks in their entireties, giving more weight in the
comparison of the marks to their respective dominant lead words SIMONIZ and
Serial No. 87865135
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PLATINUM than to their weaker common elements, the words CERAMIC and
SHIELD.
The marks have some similarities in appearance, sound, and connotation and
commercial impression because of the common presence of the words CERAMIC
SHIELD. The Examining Attorney argues that “[w]ith respect to this shared wording,
the marks are identical in sound and virtually identical in appearance, and are thus
confusingly similar for the purposes of determining likelihood of confusion.” 9
TTABVUE 9. We disagree that the presence of these common elements, and the
resulting similarities in sound and appearance, are sufficient to make the marks
confusingly similar when they are considered in their entireties and greater weight
is given to the marks’ respective dominant portions. The cases cited by the Examining
Attorney in support of this argument all involved marks that contained only identical
common elements, not marks whose common elements were accompanied by other
elements,37 and they do not support a claim that the marks, in their entireties, are
confusingly similar because they contain common elements that are identical in
appearance and sound.
The Examining Attorney similarly argues that the marks have very similar
commercial impressions because “consumers are likely to perceive SIMONIZ as the
previously anonymous source of the CERAMIC SHIELD goods offered at different

37 Seaguard Corp. v. Seaward Int’l, Inc., 222 USPQ 48, 51 (TTAB 1984) (finding that SEA
GUARD and SEAGUARD were “in contemplation of law, identical.”); In re Best W. Family
Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (finding that BEEFMASTER and BEEF
MASTER were “practically identical”); Stock Pot, Inc. v. Stockpot Rest., Inc. 220 USPQ 52, 52
(TTAB 1983) (finding that there was “no question” that the marks STOCK POT and
STOCKPOT were confusingly similar), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984).
Serial No. 87865135
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levels of quality, including a PLATINUM level of quality,” id. at 17, and that
“[a]lthough the additional wording in the applied-for and registered marks
(specifically, SIMONIZ and PLATINUM), is non-descriptive, consumers might still
be confused and conclude that SIMONIZ CERAMICSHIELD and PLATINUM
CERAMIC SHIELD identify two product lines that both emanate from CERAMIC
SHIELD.” Id. at 19. The Examining Attorney cites a non-precedential decision of the
Board, In re My Other Bag Inc., Serial No. 85521133 (TTAB Nov. 16, 2015), in support
of the latter argument. Id. We are not bound by that decision, see, e.g., Stawski v.
Lawson, 129 USPQ2d 1036, 1048 (TTAB 2018), but it does not support the Examining
Attorney’s position in any event.
In My Other Bag, the Board affirmed a refusal to register MY OTHER BAG . . .
for tote bags based on a likelihood of confusion with the mark THE OTHER BAG BY
ALDO for similar goods. The Board found the “initial phrase ‘THE OTHER BAG’ to
be the dominant feature of” the cited mark, 14 TTABVUE 6 (Serial No. 85521133),
and further found that the “remaining wording ‘BY ALDO’ is more likely to be
perceived by consumers as a tag line or house mark, and as such, fails to obviate the
likelihood of confusion,” id., and that “[w]hile the possessive determiner ‘MY’ in
Applicant’s mark and the definite article ‘THE’ in Registrant’s mark may sound
different and have different meanings, their significance is minimized by the
subsequent, identical and more distinctive phrase ‘OTHER BAG,’ notwithstanding
Applicant’s and Registrant’s disclaimers of the word ‘bag.’” Id. at 7. The Board cited
a line of cases holding that the addition of a house mark to another mark may not
Serial No. 87865135
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make confusion unlikely. Id. at 6-7 (citing In re Fiesta Palms LLC, 85 USPQ2d 1360,
1366-67 (TTAB 2007); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985);
In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007)). The instant case is not
analogous to either My Other Bag or the cases that it cited.
The Chica case, which was discussed by the Examining Attorney at the oral
hearing and by Applicant in its appeal brief, 9 TTABVUE 19-21, illustrates why. In
Chica, the Board affirmed a refusal to register the mark shown below for jewelry

over the registered mark shown below for the same goods

The Board found that the marks were confusingly similar because both marks
contain the identical word CORAZON, which is translated
as ‘Heart.’ It is the only word in registrant’s mark and it is
the first word in applicant’s mark. The only other words in
applicant’s mark are the phrase ‘BY CHICA.’ These words
are translated as ‘By Girl.’ Applicant’s corporate name is
Chica, Inc. As such, to many consumers, applicant’s mark
for the identical word ‘Corazon’ followed by the phrase ‘BY
CHICA’ will simply be viewed as the identification of the
previously anonymous source of the goods sold under the
mark CORAZON.
Serial No. 87865135
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Chica, 84 USPQ2d at 1848-49. The Board noted that in a similar case, it had “held
that: ‘those familiar with only applicant’s mark [SPARKS BY SASSAFRAS and
design] would, upon encountering the registered mark [SPARKS] on related goods,
assume that all ‘SPARKS’ products come from a single source, and that that source
was in some instances further identified with the words ‘by sassafras.’” Id. at 1849
(quoting In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986)).
Here, Applicant has added its house mark SIMONIZ to the compound word
CERAMICSHIELD, but to fall within the line of cases discussed in My Other Bag,
including Chica and Apparel Ventures, the cited mark would have to consist solely
of CERAMICSHIELD or its equivalent CERAMIC SHIELD, and the PLATINUM
CERAMIC SHIELD mark in the ’824 Registration consists of more than just the
words CERAMIC SHIELD that also appear as a compound word in Applicant’s mark.
Given the nature of the cited mark, and our finding that the words CERAMIC
SHIELD in the cited mark are highly suggestive, if not descriptive, of the goods, we
reject the Examining Attorney’s arguments that consumers might “conclude that
SIMONIZ CERAMICSHIELD and PLATINUM CERAMIC SHIELD identify two
product lines that both emanate from CERAMIC SHIELD,” 9 TTABVUE 19, and
that “consumers are likely to perceive SIMONIZ as the previously anonymous source
of the CERAMIC SHIELD goods offered at different levels of quality, including a
PLATINUM level of quality.” Id. at 17.
The lead words PLATINUM and SIMONIZ in the marks “are their dominant
portion and are likely to make the greatest impression on consumers,” Detroit Athletic
Serial No. 87865135
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Co., 128 USPQ2d at 1049, and they are entirely dissimilar in appearance, sound, and
connotation and commercial impression. Given the weakness of the terms CERAMIC
SHIELD and CERAMICSHIELD, the similarities between the marks engendered by
the common presence of the terms are outweighed by the dissimilarities driven by the
dominant lead elements SIMONIZ and PLATINUM, which, as the first portions of
the marks when they are viewed, heard, and recalled, are the portions “’which may
make the greatest impression on the ordinary buyer’” regarding the source of the
respective goods. Id. (quoting 4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION § 23:42, at 23-245 (5th ed. 2018)). We find that the first
DuPont factor does not support a finding of a likelihood of confusion.
C. Conclusion
Although the goods are related, the marks are sufficiently different when
considered in their entireties to make confusion unlikely. See In re Medline Indus.,
Inc., 2020 USPQ2d 10237, *13 (TTAB 2020) (citing Champagne Louis Roederer S.A.
v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998); Kellogg
Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1144-45 (Fed. Cir. 1991)).
We find that a consumer with a general recollection of the cited standard character
mark PLATINUM CERAMIC SHIELD who subsequently encounters Applicant’s
mark SIMONIZ CERAMICSHIELD is not likely to believe that Applicant’s goods
originate with, or are authorized or sponsored by, the owner of the cited mark.
Decision: The refusal to register is reversed.