The Valspar Corp.v.Sirius Products, Inc.

Trademark Trial and Appeal Board

Sep 15, 2000

No. 91107846 (T.T.A.B. Sep. 15, 2000)

Hearing: Paper No. 43
January 25, 2000 JQ
9/15/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Valspar Corporation
v.
Sirius Products, Inc.
_____
Opposition No. 107,846
to application Serial No. 74/626,831
filed on January 30, 1995
_____
John A. Clifford and Scott W. Johnston of Merchant & Gould
for The Valspar Corporation.
Antony J. McShane, Charles M. Stern, Edward L. Adams and
Kristin L. Holland of Katten Muchin & Zavis for Sirius
Products, Inc.
______
Before Sams, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Sirius Products, Inc.
to register the mark ZAP for “preparations for restoring and
cleaning porcelain, fiberglass, tile and grout.”1
Registration has been opposed by The Valspar
Corporation under Section 2(d) of the Trademark Act on the

1 Application Serial No. 74/626,831, filed January 30, 1995,
alleging a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
Opposition No. 107,846
2
ground that applicant’s mark, when applied to applicant’s
goods, so resembles opposer’s previously used and registered
mark ZAPZ for “paint primer and stain sealer”2 as to be
likely to cause confusion. Opposer also has claimed
likelihood of confusion with its common law mark ZAP for
stain sealing primer paint.
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; a declaration and
accompanying exhibits (by stipulation of the parties);
status and title copies of opposer’s pleaded registration,
as well as two other registrations owned by opposer, the
file history of its pleaded registration, applicant’s
responses to opposer’s interrogatories and requests for
admissions, and copies of third-party registrations, all
introduced by way of opposer’s notices of reliance; and
opposer’s responses (including supplemental responses) to
applicant’s interrogatories, and a discovery deposition,
with related exhibits, made of record by applicant’s notice
of reliance.3 The parties filed briefs, and both parties

2 Registration No. 1,744,184, issued January 5, 1993; combined
Sections 8 and 15 affidavit filed.
3 Applicant also has relied upon its registration of the mark
ZAP! for preparations for restoring and cleaning porcelain,
fiberglass, tile and grout. Opposer has pointed out that the
Opposition No. 107,846
3
were represented by counsel at an oral hearing before the
Board.
Opposer is engaged in the manufacture and sale of a
variety of products through its three divisions, namely the
industrial, packaging and specialties products and consumer
divisions. Opposer’s consumer products include paints and
cleaning preparations. The primer paints have been sold
under the mark ZAPZ through a licensee, and under the mark
ZAP by opposer itself. The ZAP mark is used in connection
with opposer’s primer paint sold only at Wal-Mart stores,
and these primers have been promoted in advertisements,
including free-standing inserts and in-store handouts.
Testimony of James Robellard, opposer’s director of
marketing, consumer division.
Applicant develops and markets cleaning preparations
under the mark ZAP. Since its first sales, applicant has
sold over one million bottles of its products, with 1998
sales revenues exceeding $7 million. Advertising
expenditures over the years have amounted to $4.7 million.
The products are promoted primarily through direct response

copy of the registration is not a status and title copy as
required by Trademark Rule 2.122(d)(2) and, on this basis, has
objected thereto. The objection is sustained. We would point
out, however, that this evidence is immaterial to the issues in
this proceeding. We also note that the registration is currently
the subject of Cancellation No. 28,259 brought by opposer. The
answer in that case includes a proposed counterclaim to cancel
opposer’s pleaded registration. Proceedings in that case were
suspended pending the outcome herein.
Opposition No. 107,846
4
television commercials and infomercials. Testimony of
Jeffrey Wycoff, applicant’s president.
Before turning to the merits of the likelihood of
confusion claim, we direct our attention to an interlocutory
matter which arose earlier in the proceeding. Applicant did
not file a request for reconsideration of the involved
ruling, nor did it formally request the Board at final
hearing to revisit the ruling. Nonetheless, after our
further review of the chronology surrounding applicant’s
motion to amend its answer to set forth a counterclaim, we
think it appropriate to discuss the matter in this opinion.
In November 1998, applicant moved for leave to amend
its answer to assert a counterclaim to cancel opposer’s
pleaded Registration No. 1,744,184. In moving to amend
applicant essentially asserted that it learned of grounds to
cancel the registration during a discovery deposition that
it conducted the previous month. As grounds for the
counterclaim, applicant alleged that the registered mark was
abandoned due to opposer’s failure to exercise control over
the nature and quality of the goods produced under the mark
by the licensee.
The Board, in a ruling dated July 6, 1999, denied the
motion to amend the answer to assert the counterclaim. The
Board found that the deposed witness did not provide any
specific information about the license agreement, but rather
Opposition No. 107,846
5
that applicant was aware of the facts surrounding the
license agreement long before the Fed. R. Civ. P. 30(b)(6)
deposition of Mr. Robellard took place. The Board
determined that “[t]he license agreement was set out in the
notice of opposition and the agreement itself was provided
to applicant in March, 1998” and “[n]o new information came
out in the October deposition and it was not until November
1998 when applicant filed its motion.” Another factor in
the ruling was that the parties continued to abide by the
trial schedule and that all testimony periods had closed by
the time of the Board’s decision. The Board stated that “to
reopen the time periods at this late stage in the proceeding
would prejudice opposer by having to virtually start the
proceeding over, and by the delay and additional cost
incurred as a result.”
Upon a closer review, it would appear that applicant
learned of the grounds for the proposed counterclaim only
after the discovery deposition of Mr. Robellard, and that it
promptly moved thereafter to amend its answer. Prior to the
deposition, the only information in applicant’s possession
constituted a copy of the license agreement and opposer’s
response to an interrogatory that it “maintains high quality
products and requires that any authorized user of ZAPZ use
high quality of ingredients and maintain performance
standards which are acceptable in the trade, pursuant to a
Opposition No. 107,846
6
license agreement.” Not surprisingly, Mr. Robellard’s lack
of knowledge at his October 1998 deposition concerning
opposer’s licensee’s activities, in and of itself, raised a
question for applicant about the licensing arrangement.
Moreover, it was not until after Mr. Robellard was unable to
provide sufficient information about the licensing
arrangement at his deposition on October 7, 1998 that
opposer, on October 23, 1998, supplemented its interrogatory
response pertaining thereto. Opposer’s three-pages long
supplemental response provides a much more detailed picture
of the activities surrounding the license agreement.
Applicant’s motion to amend was filed on November 13, 1998,
only 37 days after Mr. Robellard’s testimony, and a mere 21
days after opposer’s supplemental answer. Thus, we believe
that the proposed amended pleading should have been allowed.
Be that as it may, applicant never moved to suspend the
proceeding when it filed its motion to amend and, in
connection with its motion to amend, applicant never
indicated that it would need additional discovery bearing on
the license agreement. Rather, the parties moved ahead in
the proceeding, even going on to trial. In the course of
doing so, the parties introduced testimony regarding the
license agreement, acting as though the amended pleading to
include the counterclaim had been allowed. This course of
action indicates that the parties thought it appropriate to
Opposition No. 107,846
7
go forward to trial, including on the issue of abandonment
involving the license agreement. Indeed, the Board’s ruling
on the proposed counterclaim did not issue until after trial
had concluded and, thus, the Board’s decision had no effect
whatsoever on the parties’ conduct at trial.
Further, our reading of the record convinces us that
the ground raised by the proposed counterclaim was tried by
the parties by implied consent as contemplated by Fed. R.
Civ. P. 15(b). During its testimony-in-chief, opposer took
the testimony of Kenneth Arthur, group vice president-
architectural coatings for opposer. Mr. Arthur’s testimony
deals almost exclusively with opposer’s license agreement
which is at the heart of applicant’s abandonment claim.
Applicant took the opportunity to cross examine Mr. Arthur.
In addition, the abandonment issue is discussed at length by
the parties in their final briefs, and the issue was
addressed by the parties at the oral hearing. At no time
during trial did opposer object to the introduction of
evidence bearing on the license agreement; rather, as noted
above, opposer itself introduced pertinent testimony during
its case-in-chief. Clearly, opposer cannot claim surprise
that applicant continued to question the license.
In sum, notwithstanding the Board’s earlier denial of
applicant’s motion to amend, the totality of the
circumstances surrounding this matter demonstrates that the
Opposition No. 107,846
8
issue was tried and should be decided by the Board at final
hearing. Fed. R. Civ. P. 15(b).
Accordingly, we now turn to applicant’s claim that the
pleaded registered mark has been abandoned because opposer
has failed to exercise quality control over the products
produced by its licensee.
Opposer filed in June 1996 an application to register
the mark ZAP for a stain-blocking primer. Registration No.
1,744,184 for ZAPZ, then owned by Blue Ridge Talc Company,
Inc. (“Blue Ridge”), was cited under Section 2(d) as a bar
to registration of opposer’s mark. When opposer’s mark was
refused registration, opposer investigated the option of
changing its mark, with the attendant costs and write-offs
of such a decision. Given the high costs associated with
this course of action, opposer decided, in the winter of
1996-1997, to approach Blue Ridge to consider a mutually
beneficial business arrangement. Mr. Arthur testified that
he had known about Blue Ridge, a regional paint producer in
Virginia, for at least twenty years, and that he had never
heard any negative comments about them. Opposer reviewed a
Dun & Bradstreet report on Blue Ridge, and then placed its
initial call to Blue Ridge in February 1997. Blue Ridge
expressed an interest in working with opposer, depending on
“how we came to agreement on the value of the trademark and
how flexible we might be in not disrupting [Blue Ridge’s]
Opposition No. 107,846
9
business.” Mr. Arthur then traveled in March 1997 to
Virginia for a meeting with Blue Ridge, and a second meeting
was held in Virginia in April 1997. At the second meeting,
the principals discussed the valuation of Blue Ridge’s
trademark. Shortly thereafter, the amount of $250,000 was
agreed upon. After the second meeting, opposer undertook a
test of Blue Ridge’s product by purchasing the product in a
store and sending it to opposer’s lab. This way, according
to Mr. Arthur, opposer was assured that it was not testing a
“pre-prepared” or “pre-audited” sample. The blind testing
was done by opposer’s technical director, Paul Sara, on such
characteristics as thickness, gloss retention and adhesion.
The test results were verbally communicated to Mr. Arthur
who testified that opposer was satisfied that “the quality
of the product was in the acceptable range.” A final
meeting took place in Virginia in May 1997. Opposer paid
Blue Ridge $250,000, the cited registration was assigned to
opposer, and opposer licensed back to Blue Ridge the right
to use the mark in connection with its primer paint
products.
The royalty-free license agreement (ex. no. 25), dated
May 28, 1997, provided the following quality control
provision:
Blue Ridge will maintain the quality of
ingredients, performance, and overall
product quality at a level generally
acceptable to pass in the trade and not
Opposition No. 107,846
10
less than the quality of product sold by
Blue Ridge under the ZAPZ name on April
1, 1997. Blue Ridge will furnish
[opposer] a sample product, free of
charge, for quality evaluation when
reasonably requested by [opposer], to
occur not more than once annually.
The license also provided that Blue Ridge shall tender a
written report once a year on the anniversary of the
execution of the agreement indicating Blue Ridge’s
compliance with the terms of this agreement. According to
Mr. Arthur, the agreement was drafted to “keep [Blue
Ridge’s] selling product in the same manner of distribution
that had been historically evident.”
Blue Ridge, in a letter dated April 21, 1998, informed
opposer that “[it] has remained in compliance with all terms
of our May 15, 1997 Trademark License Agreement” and that
“[t]his report is being submitted as mandated on page 6,
item 8 of said agreement.” Mr. Arthur testified that he had
no reason to believe that the compliance statement was
incorrect. In the time since the agreement was executed,
opposer invited officers of Blue Ridge to visit one of
opposer’s manufacturing facilities for the purpose of
getting ideas in some manufacturing techniques. Although
the visit has not yet taken place, Mr. Arthur testified that
the offer stands.
As indicated above, opposer’s first test of Blue
Ridge’s product was conducted prior to their agreement.
Opposition No. 107,846
11
Second tests were ordered in the Fall of 1998 by Mr. Arthur.
These tests were again conducted by opposer’s lab, and the
results are memorialized in a memo dated November 24, 1998
from the lab’s technical director to Mr. Arthur. According
to Mr. Arthur, Blue Ridge samples were obtained in the field
to insure that the tests were performed on products in the
marketplace. The tests involved a double blind study
comparing several properties of opposer’s ZAP product and
Blue Ridge’s ZAPZ product. Two significant properties were
tested, namely contrast ratio and stain blocking. According
to the memo of the lab technical director, the products were
found to be “roughly equivalent.” Mr. Arthur testified that
the products performed “essentially equally” in the
properties most important to consumers. Mr. Arthur
testified that, based on the test results, opposer is
satisfied with the quality of Blue Ridge’s product sold
under the mark ZAPZ.
On cross examination of Mr. Arthur, applicant elicited
additional information surrounding opposer’s acquisition of
the registered mark and the license back to Blue Ridge.
Prior to the rejection of opposer’s application, Mr. Arthur,
although aware of Blue Ridge, was not aware of their use of
the mark ZAPZ. Mr. Arthur also testified that the sole
purpose of acquisition of the cited mark was to essentially
pave the way for the registration of opposer’s ZAP mark. In
Opposition No. 107,846
12
the process of negotiating the agreement, Mr. Arthur
requested information about Blue Ridge’s consumer base in an
effort to keep their market niches separate. Blue Ridge
made verbal representations to opposer regarding continuous
use of the registered mark since 1978, but opposer did not
review any sales records or otherwise undertake any
investigation concerning Blue Ridge’s use. According to Mr.
Arthur, the only documentation reviewed was Blue Ridge’s
registration. In responding to a line of questions, Mr.
Arthur indicated that he never toured Blue Ridge’s
production facilities, that opposer has not reviewed Blue
Ridge’s production of the ZAPZ brand product, and that
opposer has not reviewed Blue Ridge’s quality control
techniques for the manufacture of the ZAPZ product.
We find, based on the record before us, that the
assignment was valid and that opposer, as licensor, has
exercised adequate control over the nature and quality of
the goods such that there has been no abandonment.
A valid transfer of a mark does not require the
transfer of any physical or tangible assets. All that is
necessary is the transfer of the goodwill pertaining to the
mark. The assignment document here specifically provided
that the assignment involved “all right, title and interest
in and to the said mark, together with the good will [sic]
of the business symbolized by the mark, and the above-
Opposition No. 107,846
13
identified registration thereof.” Further, the simultaneous
license back of the assigned mark which enabled Blue Ridge
to conduct the same business under the mark was proper. A
license back is valid if it satisfies the conditions of
validity for trademark licenses generally. The principal
requirement is that the licensing agreement provides for
adequate control by the licensor over the quality of goods
produced under the mark by the licensee. VISA, U.S.A., Inc.
v. Birmingham Trust National Bank, 696 F.2d 1371, 216 USPQ
649, 652-53 (Fed. Cir. 1982). See generally: J. T.
McCarthy, McCarthy on Trademarks and Unfair Competition,
§18:9 (4th ed. 2000).
As indicated above, the license agreement specifically
provided for quality control in paragraph 4. Further, since
execution of the agreement, steps have been undertaken to
ensure that the quality of Blue Ridge’s product sold under
the mark ZAPZ has been maintained. As Mr. Arthur testified,
the intent of opposer and Blue Ridge in drafting the
agreement was to minimize any disruption to Blue Ridge’s
business, and it appears that there has been no disruption
in the continuity of the quality of Blue Ridge’s product
sold under the mark ZAPZ. E. & J. Gallo Winery v. Gallo
Cattle Co., 955 F.2d 1327, 21 USPQ2d 1824, 1830-31 (9th Cir.
1992).
Opposition No. 107,846
14
Moreover, in order to avoid abandonment of its mark, a
licensor need not show that its quality control efforts are
comprehensive or extensive. Woodstock’s Enterprises Inc.
(California) v. Woodstock’s Enterprises Inc. (Oregon), 43
USPQ2d 1440, 1446 (TTAB 1997), aff’d in unpublished opinion,
(Appeal No. 97-1580, Federal Circuit, March 5, 1998).
Control may be adequate where the licensor justifiably
relies on the integrity of the licensee to ensure the
consistent quality of the goods produced under the mark.
Taco Cabana International Inc. v. Two Pesos Inc., 19 USPQ2d
1253, 1259 (5th Cir. 1991), aff’d, 505 U.S. 763, 23 USPQ2d
1081 (1993). The rationale behind quality control is that
the public has a right to expect a consistent quality of
goods associated with a trademark. Again, the record is
devoid of any evidence that the quality of Blue Ridge’s
product has changed. Rather, what evidence is of record
indicates that Blue Ridge’s business operations have been
status quo, and that the ZAPZ product has remained the same,
that is, of a quality comparable to opposer’s ZAP product.
We recognize that opposer’s tests of the quality of
Blue Ridge’s product in November 1998 occurred shortly after
it looked as though applicant was raising the lack of
quality control as an issue by way of its proposed
counterclaim. Applicant has questioned the timing of
opposer’s efforts. We would point out, however, that the
Opposition No. 107,846
15
license was not executed until May 28, 1997 and, pursuant to
the license agreement, Blue Ridge notified opposer in April
1998 that it remained in compliance. The November 1998
tests confirmed Blue Ridge’s compliance. Moreover, there is
no indication that in the short period of time that elapsed
between the signing of the license agreement and the testing
of the product that there was any slippage in the quality of
Blue Ridge’s product.
In sum, the registered mark has not been abandoned
because opposer’s mark has not ceased to function as an
indication of origin and the quality of the goods has,
according to Blue Ridge’s statements and opposer’s testing,
remained at a consistently acceptable level. Stockpot, Inc.
v. Stock Pot Restaurant, Inc., 220 USPQ 52, 59 (TTAB 1983),
aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984).
We next turn to the issue of priority. Inasmuch as we
have determined that opposer owns a valid and subsisting
registration, there is no issue regarding opposer’s priority
at least with respect to the mark ZAPZ for paint primers and
stain sealers. King Candy, Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Opposer also urges, however, that it has priority of
use of the mark ZAP by virtue of tacking. Opposer did not
commence use of its ZAP mark on paint primers and stain
sealers until 1996. On the other hand, Mr. Wycoff testified
Opposition No. 107,846
16
that applicant first used its mark ZAP on its product
“around June 5, 1995.” Thus, the only way for opposer to
prevail on its claim of priority of the ZAP mark is by
tacking on its use of the ZAPZ mark to use of the ZAP mark.
We find that opposer cannot succeed on this claim.
The issue is whether the mark ZAPZ for paint primers
and paint sealers is the legal equivalent of ZAP for the
same products. The standard of legal equivalence for the
purpose of tacking the prior use of one mark onto that of
another is higher than that used in evaluating two competing
marks. The previously used mark must be the legal
equivalent of the mark in question or indistinguishable
therefrom, and the consumer should consider both as the same
mark. For the purposes of tacking, even if the two marks
are confusingly similar, they still may not be legal
equivalents. Instead, the marks must create the same,
continuing commercial impression, and the later mark should
not materially differ from or alter the character of the
mark attempted to be tacked. Tacking in general should be
allowed only in rare instances. Van Dyne-Crotty Inc. v.
Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir.
1991); and American Paging Inc. v. American Mobilphone Inc.,
13 USPQ2d 2036 (TTAB 1990), aff’d, 17 USPQ2d 1726 (Fed. Cir.
1990).
Opposition No. 107,846
17
Based on the record before us, we find that the marks
ZAPZ and ZAP are not legal equivalents. Although the marks
differ by only one letter, the difference in this case is
sufficient to render the marks not legally equivalent.
Opposer has presented no evidence to show that consumers
would view the marks ZAPZ and ZAP as the same mark. Based
on a visual comparison of the two marks, our view is that
they are not the same.
Inasmuch as opposer does not have priority with its ZAP
mark, it cannot prevail on the basis of this mark, and no
further consideration need be given thereto. In sum,
opposer’s priority rests with its ZAPZ mark only, and our
consideration of likelihood of confusion will be based
solely on this mark.
We now turn to the issue of likelihood of confusion.
Our determination under Section 2(d) of the Act is based on
an analysis of all of the facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). As dictated by the
evidence, different factors may play dominant roles in
determining likelihood of confusion. Kenner Parker Toys v.
Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456
(Fed. Cir. 1992). The factors deemed pertinent in the
proceeding now before us are discussed below.
Opposition No. 107,846
18
Although we have found, as indicated above, that the
marks ZAPZ and ZAP are not legal equivalents, we
nevertheless conclude that the marks are similar. The marks
differ only by the letter “Z” appearing in opposer’s mark.
The marks sound similar. Further, the marks have the same
meaning, connoting that opposer’s stain blocking primers and
applicant’s cleaners stun or defeat stains or dirt with
quick action. In this connection, we grant applicant’s
request that we take judicial notice of Webster’s New World
Dictionary listing for the word “zap”: “to move, strike,
smash, kill, etc. with sudden speed.”
Given the meaning of the term “zap,” we agree with
applicant that, when applied to the parties’ goods, the
marks are suggestive. We view the marks, however, as being
only slightly suggestive. In any event, even suggestive
marks are worthy of protection and, in the present case, the
marks convey the same suggestion. In spite of this
suggestiveness, we also point out that the record fails to
show what applicant characterizes as a “crowded” field of
ZAP marks.4
Opposer argues that its mark ZAPZ is a strong, well
known mark entitled to broad protection. To the extent that

4 During the prosecution of the involved application, applicant
listed third-party registrations which it discovered by way of a
search report. Applicant failed to submit copies of these
registrations during trial and, therefore, the cited
registrations cannot be considered. TBMP §§703.01 and 703.02.
Opposition No. 107,846
19
opposer is suggesting that its mark is famous, the evidence
clearly falls short. Simply put, we cannot conclude, based
on the evidence of record on this point, that the ZAPZ mark
has achieved the status of a famous mark. Compare: Kenner
Parker Toys v. Rose Art Industries, supra at 1456.
Applicant argues that the trade dress of the marks is
different, and that opposer’s mark is used with a house
mark. Suffice it to say, the marks which we must compare do
not involve either the use of trade dress (both marks are in
typed form) or the use of a house mark. Thus, applicant’s
arguments are to no avail.
We next turn to a comparison of the goods. Opposer’s
goods are identified as “paint primer and stain sealer” and
applicant’s goods as “preparations for restoring and
cleaning porcelain, fiberglass, tile and grout.” The
question of registrability of applicant’s mark must be
decided on the bases of these identifications. Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990).
Opposer’s stain-blocking primer is an intermediate coat
applied between the surface and the final coat of paint.
Mr. Robellard testified that consumers often use a cleaner
to remove stains from a surface to be painted. With
troublesome stains, a primer is applied to put an
Opposition No. 107,846
20
impermeable barrier between the stain and the paint. This
way, the stain will not bleed through the paint.
Applicant’s product is a consumer cleaning preparation
or restorer which removes stains and restores underlying
surfaces. Mr. Wycoff testified that applicant’s product
destroys paint, and that it is not used in conjunction with
paints.
It is clear that opposer’s paint primers and
applicant’s cleaners are specifically different products.
The issue to be determined here, however, is not whether the
goods in question are likely to be confused, but rather
whether there is a likelihood that purchasers or potential
purchasers thereof will be misled into the mistaken belief
that they emanate from the same source. In considering the
goods, we start with the premise that they need not be
identical or even competitive to support a holding of
likelihood of confusion. It is sufficient that the goods
are so related or that conditions surrounding their
marketing are such that they are encountered by the same
persons who, because of the relatedness of the goods and the
similarities between the marks, would believe mistakenly
that the goods originate from or are in some way associated
with the same producer. Hercules Inc. v. National Starch
and Chemical Corp., 223 USPQ 1244, 1247 (TTAB 1984).
Opposition No. 107,846
21
We find that the record establishes a sufficient
relationship between the parties’ products that, when sold
under the marks ZAPZ and ZAP, consumers in the marketplace
are likely to be confused as to source. The products are
broadly related in that, as pointed out by opposer, they
both eliminate unwanted stains on a surface, albeit in
different ways. Opposer’s stain-blocking primers are used
to cover and block stains for which cleaning was not
entirely effective, and applicant’s product removes and
cleans stains, among other things. Mr. Robellard testified
that a consumer wishing to remove a stain is likely to first
try to clean the stained surface with a cleaner. In this
manner, Mr. Robellard testified that the products may be
viewed as complementary. Opposer’s product labels instruct
consumers to clean the surface before painting.
Opposer has introduced copies of third-party
registrations showing that in at least eleven instances an
entity has registered the same mark for both types of goods
involved in this proceeding. As pointed out by applicant,
these registrations are not evidence that the marks shown
therein are in use or that the public is familiar with them.
Further, some of the registrations appear to be for house
marks covering a variety of products. Nevertheless, at
least four of the registrations have probative value to the
extent that they serve to suggest that the goods listed
Opposition No. 107,846
22
therein are of a kind which may emanate from a single
source. See, e.g., In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988).
Indeed, opposer itself has registered the mark PREP STEP for
both “interior and exterior primer paints” and “concrete,
masonry and asphalt surface cleaning solution.”5
Although applicant argues that the goods are sold in
different channels of distribution, we again note that the
goods are compared in terms of the identifications of goods
in the involved registration and application. Neither
includes any limitations bearing on channels of trade or
classes of consumers. Thus, we must assume that the
parties’ products move through all the ordinary and usual
channels of trade for such goods to all the usual customers
for these products. Saab-Scania Aktiebolag v. Sparkomatic
Corp., 26 USPQ2d 1709, 1711 (TTAB 1993). When compared in
such fashion, the goods are assumed to move through similar
channels of trade, such as hardware and home improvement
stores, to the same classes of purchasers. Indeed, the
record shows that the goods are purchased by the same
classes of consumers.
Those customers include the public at large, who would
not be considered sophisticated purchasers. Further, the

5 Registration Nos. 2,025,918 and 2,022,235, respectively.
Opposition No. 107,846
23
parties’ products are relatively inexpensive, both selling
for under twenty dollars. See: Moore v. The Proctor &
Gamble Co., 193 F.2d 194, 92 USPQ 137, 140 (CCPA
1951)[Purchasers of inexpensive goods such as washing and
cleaning compounds are not expected to exercise the degree
of care and discrimination in making their purchases as
would be exercised in the selection by them of more
expensive and rarely purchased articles].
Lastly, to the extent that there is any doubt on the
issue of likelihood of confusion, such doubt must be
resolved in favor of opposer as the prior registrant.
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1285 (Fed. Cir. 1984).
Decision: The opposition is sustained and registration
to applicant is refused.
J. D. Sams
E. J. Seeherman
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board