The W.W. Henry Company, L.P.

Trademark Trial and Appeal Board

Jan 19, 2007

No. 78401595 (T.T.A.B. Jan. 19, 2007)

Mailed: January 19, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The W.W. Henry Company, L.P.
________

Serial No. 78401595
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Christine W. Trebilcock of Cohen & Grigsby, P.C. for The
W.W. Henry Company, L.P.

D. Beryl Gardner, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).

_______

Before Hairston, Holtzman and Taylor, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On April 4, 2004, The W.W. Henry Company, L.P. filed
an application, Serial No. 78401595, to register the mark
PATCH & GO in standard character form for goods ultimately
identified as “Portland cement based patch for use in
patching, repairing or smoothing wall and floor surfaces,
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 78401595
2
namely, wood, drywall, plaster, concrete, block wall, tile
and wood paneling prior to painting or wallpapering.”
The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, when
applied to applicant’s goods, so resembles the previously
registered mark PATCH ‘N GO for “chemical filler
preparations for use in the cosmetic repair of polyolefin
surfaces,”1 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Before turning to the refusal to register, we must
first discuss a preliminary matter. We note that applicant
filed its application under Trademark Act Section 1(a) and
has alleged November 1, 2004 as its date of first use
anywhere and date of first use in commerce. This date,
however, is subsequent to the April 4, 2004 filing date of
the application. In view thereof, if applicant ultimately
prevails herein, the application will be remanded to the
examining attorney to allow applicant time to

1 Registration No. 2403568 issued November 14, 2000; Section 8
and 15 declarations have been accepted and acknowledged,
respectively. The word PATCH is disclaimed apart from the mark
as shown.
Ser No. 78401595
3
file either an amendment to the application to allege a
date of first use anywhere and a date of first use in
commerce no later than the filing date of the application
or an amendment to assert Section 1(b) of the Trademark Act
as the basis for the application. See TMEP §903.05.
We turn then to the refusal to register that is based
on likelihood of confusion. Our likelihood of confusion
determination under Section 2(d) is based on an analysis of
all of the probative facts in evidence that are relevant to
the likelihood of confusion factors set forth in In re E.
I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we
keep in mind that “[t]he 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). See also,
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Turning first to the marks, they appear the same but
for the “&” in applicant’s mark PATCH & GO and the “‘N” in
the cited mark PATCH ‘N GO. The marks would be pronounced
Ser No. 78401595
4
virtually the same and would appear to have the same
connotation. Further, the commercial impressions created
by the marks are essentially identical. The virtual
identity of the marks makes it likely that, if such marks
were used in connection with related goods, confusion would
result.
Turning then to the respective goods, the examining
attorney argues that they are related because they are all
used to repair surfaces. Further, the examining attorney
maintains that in the absence of any restrictions in
applicant’s or registrant’s identification of goods, it
must be assumed that applicant’s and registrant’s goods may
be used to repair surfaces inside or outside a home, and
that such goods are offered in the same channels of trade
to the same classes of purchasers, namely, do-it-
yourselfers, handymen and contractors.2 In support of her
position with respect to the relatedness of the goods, the
examining attorney has submitted five third-party
registrations in order to show that goods of the type
identified in applicant’s application and goods of the type

2 Because the precise nature of registrant’s “chemical filler
preparations for use in the cosmetic repair of polyolefin
surfaces” is not readily apparent, the better practice would have
been for the examining attorney to submit information about this
type of product.
Ser No. 78401595
5
identified in the cited registration can emanate from a
single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The
registrations are as follows:
Registration No. 2388824 for the mark PAGEL for,
inter alia, concrete repairing mortars and cement
based polymer compounds for covering uneven
surfaces, filing holes, pores and cracks in
concrete.

Registration No. 2918812 for the mark SUPERIOR
and design for, inter alia, surface preparations
materials, namely, spackling paste, plaster,
stucco for use in residential and commercial
building construction.

Registration No. 2924644 for the mark PROFIN for,
inter alia, building products and drywall joint
cements and setting compounds, namely, drywall
joint compounds, drywall finishing compounds;
building products and drywall cements, plasters,
and setting compounds, namely, drywall patching
compounds, drywall repairing compounds, powder
drywall setting compounds in powder form for
heavy fill and sandable surfaces with established
setting times.
Registration No. 2902618 for the mark SILPRO for,
inter alia, portland cement to be applied as a
topping or for the leveling and smoothing of
floors as an underlayment, or to repair concrete
building elements; and cement plaster stucco for
application to wood, masonry and concrete
structures.
Registration No. 2896550 for the mark U.S.E.
HICKSON PRODUCTS LTD. for, inter alia, sealings,
coatings, resurfacers and fillers for coating and
repair of foundations, concrete, masonry,
horizontal surfaces and floors; wood fillers used
to fill and repair gaps, cracks and holes in wood
and prefinished wood surfaces; base coat and
prime coat cement wall and sealing finish
Ser No. 78401595
6
preparations for concrete, stucco, cement board
and masonry surfaces; patching and repairing
cement; and Portland cement.

Applicant, in urging reversal of the refusal to
register, argues that the respective goods are not related
because they are used to repair different types of
surfaces, and travel in different channels of trade to
different classes of purchasers. In support of its
position, applicant submitted Internet printouts from the
cited registrant’s homepage which show that plastic
manufacturers mold or form polyolefin products and that the
cited registrant’s particular product is used by such
manufacturers for the cosmetic repair of poorly molded or
damaged polyolefin plastic parts. (Applicant’s Exhibit B).
Further, applicant submitted information that describes its
own product as, inter alia:
-Versatile - use over wood, concrete, plaster,
block wall, masonry, brick, drywall, paneling,
ceramic tile, metal & stucco
-Indoor & Outdoor Usage – for almost any surface
(Applicant’s Exhibit A).
Applicant maintains that its product is not for use by
plastic manufacturers, but rather by do-it-yourselfers,
handymen, and contractors.
It is true that applicant’s goods, as identified,
include a Portland cement based patch for use in repairing
Ser No. 78401595
7
wall and floor surfaces, while the cited registration
covers a chemical filler for use in the cosmetic repair of
polyolefin surfaces, and therefore they can both be broadly
described as preparations for repairing surfaces. However,
to demonstrate that goods are related, it is not sufficient
that a particular term may be found which may broadly
describe the goods. See General Electric Co. v. Graham
Magnetics Inc., 197 USPQ 690 (TTAB 1977); Harvey Hubbell
Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975).
When we examine the specific items in the identifications,
they do not appear to be related in a manner that would be
likely to cause confusion. Applicant’s application is for
a Portland cement based patch for use in patching,
repairing or smoothing wall and floor surfaces, namely,
wood, drywall, plaster, concrete, block wall, tile and wood
paneling prior to painting or wallpapering. This is the
type of product that would be offered to do-it-yourselfers,
handymen, and contractors through hardware and home
improvement stores. On the other hand, the chemical filler
preparations identified in the cited registration are
specifically limited to use in the cosmetic repair of
“polyolefin surfaces.” Applicant has submitted extrinsic
evidence which shows that polyolefin products are molded by
Ser No. 78401595
8
plastic manufacturers and that its goods are used by such
manufacturers. See, In re Trackmobile, Inc.,
15 USPQ2d 1152 (TTAB 1990) [when the Board is somewhat
uncertain as to what the goods identified in the
registration are, it is appropriate to consider extrinsic
evidence to determine the nature of the registrant’s
particular goods]. Additionally, we take judicial notice
of the following definition of the word “polyolefin” in The
Random House Dictionary of the English Language (2nd ed.
1987):
any of a group of thermoplastic, stiff, light,
and hard polymers obtained from the
polymerization of simple olefins like propylene,
used for injection molding, mostly in the
automotive and appliance industries.”3

In view of the above evidence, we cannot accept the
examining attorney’s unsupported conclusion that the
registrant’s goods are of a type that would be purchased by
do-it-yourselfers, handymen, and contractors for use inside
or outside a home. Rather, it appears that registrant’s
goods are of a type used by plastic manufacturers. It
seems to us that, because of the nature of the respective
goods, they would be offered to different classes of

3 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 78401595
9
purchasers through different channels of trade. As such,
it is unlikely that there would be any opportunity for
confusion to occur. See Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1992).
Further, there are problems with the five third-party
registrations relied on by the examining attorney. Third-
party registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods are of a type which
may emanate from a single source. In re Albert Trostel &
Sons Co., supra. However, in this case, only two of the
third-party registrations are based on use. Moreover, upon
review, we find that none of the registrations appear to
include goods of the type listed in applicant’s application
and the cited registration. In particular, none of the
registrations cover preparations for the repair of
polyolefin surfaces. Thus, the third-party registrations
are insufficient to show that applicant’s and registrant’s
goods are of a type that may emanate from a single source.
We also note that, although applicant’s and the cited
registrant’s mark are very similar, they are also highly
suggestive. Thus, the cited registration is not entitled
to a broad scope of protection. Purchasers are simply
Ser No. 78401595
10
unlikely to assume that all surface repair preparations
offered under these highly suggestive marks emanate from
the same source.
In view of the differences in the respective goods,
and particularly the different purchasers to which they are
directed and the different channels of trade through which
they are sold, and the highly suggestive nature of the
marks, we find that the record does not support a finding
of likelihood of confusion.
Decision: The refusal to register under Section 2(d)
is reversed. The application is hereby remanded to the
examining attorney to allow the applicant time to file
either an amendment to the application to allege dates of
first use no later than the filing date of the application
or an amendment to assert Section 1(b) of the Trademark Act
as the basis for the application.