TitanSeal, Inc.

Trademark Trial and Appeal Board

Mar 4, 2008

No. 78810102 (T.T.A.B. Mar. 4, 2008)

Mailed:
March 4, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TitanSeal, Inc.
________

Serial No. 78810102
_______

Joseph H. McGlynn of Patent & Trademark Services, Inc. for
TitanSeal, Inc.

Tracy Whittaker-Brown, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______

Before Hairston, Bucher and Zervas, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
TitanSeal, Inc. seeks registration on the Principal
Register of the mark TitanSeal (in standard character format)
for goods identified in the application as “non-metal seals
for use in mechanical shafts” in International Class 17.1
This case is now before the board on appeal from the
final refusal of the Trademark Examining Attorney to

1 Application Serial No. 78810102 was filed on February 8,
2006 based upon applicant’s allegation of first use anywhere at
least as early as November 2, 2002 and first use in commerce at
least as early as December 10, 2002.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78810102
- 2 -
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has found that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
TITAN (in typed format) for “metal and steel banding, closure
sleeves, seals, and buckles”2 in International Class 6, as
to be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney and applicant have
each filed a brief in the case.
We affirm the refusal to register.
In arguing for registrability, applicant contends that
extrinsic evidence drawn from registrant’s website
demonstrates that inasmuch as registrant makes machines and
banding materials for use in the strapping business,
registrant’s type of seals are not at all the type of seals
defined in the present application. Applicant touts this
significant difference in the functions of the respective
types of seals, in addition to the contrasting material
compositions and the difference in International
Classifications assigned to registrant’s and to applicant’s
seals. Applicant argues there are other “-Seal-” formative

2 Registration No. 0810357 issued on June 28, 1966; second
renewal.
Serial No. 78810102
- 3 -
marks in third-party registrations for goods in
International Class 6, indicating that the cited mark co-
exists in a crowded field. On the other hand, applicant
argues that none of the third-party registrations placed
into the record by the Trademark Examining Attorney listed
both types of these respective seals, namely, goods in the
nature of a tight closure around a mechanical shaft and
seals used in the strapping industry.
By contrast, the Trademark Examining Attorney contends
that the entirety of registrant’s mark is the dominant
portion of applicant’s mark; that applicant has failed to
demonstrate that the registered mark is weak for seals; that
both metal and non-metal seals are marketed under the same
trademark by third parties; that International
Classification within the United States trademark practice
is a purely administrative determination unrelated to the
determination of likelihood of confusion, and hence, that
the respective goods, as identified, are legally related,
and must be presumed to flow through overlapping channels of
trade to the same classes of consumers.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
Serial No. 78810102
- 4 -
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See In re E. I. du Pont 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); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Goods
As seen above, the goods in the cited registration are
identified as “metal and steel banding, closure sleeves,
seals, and buckles.” Applicant’s goods are identified as
“non-metal seals for use in mechanical shafts.”
Applicant argues that we should consider registrant’s
actual business practices in making our determination of
likelihood of confusion herein. Accordingly, applicant
contends that registrant’s website demonstrates that
registrant is in the business of providing machinery and
industrial steel banding or strapping for its clients for
Serial No. 78810102
- 5 -
their secure packaging and distribution of heavy-duty,
manufactured goods. Hence, the listing of “seals” within
the cited identification of goods is totally different than
applicant’s small rubber seals used around a rotor shaft.
It is true that registrant’s entire listing of goods,
identified as “metal and steel banding, closure sleeves,
seals, and buckles” involves a grouping of items consistent
with applicant’s allegations about registrant’s specialized,
industrial-gauge operations.
However, there are no explicit limitations placed on
the type of seals within registrant’s identification of
goods. Applicant misstates the issue before us in arguing
that “a consumer would be hard pressed to confuse a metal
seal used to connect ‘Metal and Steel Banding’ with a rubber
seal used to seal mechanical shafts.” Rather, the Trademark
Examining Attorney correctly makes the point that the issue
of likelihood of confusion between an applied-for mark and a
registered mark must be determined on the basis of the goods
as they are identified in the involved application and cited
registration, not on the basis of whatever the extrinsic
evidence may show. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992); Paula Payne Products Company v.
Serial No. 78810102
- 6 -
Johnson Publishing Company, 177 USPQ 76 (CCPA 1973); and In
re William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976). In
this regard, we cannot diminish the scope of registrant’s
registration based on extrinsic evidence that applicant may
have produced from registrant’s website. In the instant
case, without resort to extrinsic evidence, we must presume
that registrant’s goods include all kinds of “metal and
steel banding, … seals” intended for mechanical purposes,
perhaps even such seals used in connection with rotor
shafts.
Moreover, it is well settled that goods need not be
identical or even competitive in order to support a finding
of likelihood of confusion; it is sufficient that the goods
be related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978); and
In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992).
Among the use-based, third-party registrations covering
a variety of different types of seals, the Trademark
Examining Attorney has pointed to a representative sampling
of registrations, as follows:
Serial No. 78810102
- 7 -
COMETIC for “gaskets and seals made
entirely or primarily of metal for
internal combustion engines” in
International Class 6;
“gaskets and seals made entirely or
primarily of non-metallic materials
for internal combustion engines” in
International Class 17;3

for “gaskets and seals made
entirely or primarily of metal for
internal combustion engines” in
International Class 6;
“gaskets and seals made entirely or
primarily of non-metallic materials
for internal combustion engines” in
International Class 17;4
TTK for, inter alia, “metal seals and
gaskets for use in land vehicle
transmission” in Int. Class 6;
“non-metal seals and gaskets for
use in land vehicle transmissions”
in Int. Class 17;5
ESSENTIAL SEALING
PRODUCTS
for “metal seals” in International
Class 6;
“non-metal seals; non-metal
gaskets; waterproof packings for
pumps, gaskets and valves; and
insulation covers for industrial
machines, namely, fiberglass
industrial welding blankets and
curtains” in Int. Class 17;6

3 Registration No. 2490904 issued on September 18, 2001;
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

4 Registration No. 2590948 issued on July 9, 2002; Section 8
affidavit (six-year) accepted.

5 Registration No. 2617455 issued on September 10, 2002.

6 Registration No. 2707539 issued on April 15, 2003. No claim
is made to the words “Sealing Products” apart from the mark as
shown.

Serial No. 78810102
- 8 -

for “oil seals of metal, packings
of metal, shims of metal, washers
of metal, seal rings of metal,
protecting oil rings of metal” in
International Class 6;
“plastic oil seals, rubber oil
seals, plastic packings, rubber
packings, plastic washers, rubber
washers, plastic seal rings, rubber
seal rings, plastic protecting oil
rings, rubber protecting oil rings,
plastic strips, rubber strips,
plastic tubes, rubber tubes” in
International Class 17;7

for “cable and pipe penetration
seals made of metal” in
International Class 6;
“non-metallic cable and pipe
penetration seals” in International
Class 17;8
FIREFIGHTER for, inter alia, metal loading dock
seals and metal loading dock
shelters” in Int. Class 6;
“non-metal loading dock seals” in
International Class 17;9
QUICKIT for “metal gasket kits consisting
of gaskets, seals and o-rings” in
International Class 6;
“non-metal and elastomeric gasket
kits consisting of gaskets, seals,
and o-rings” in International Class
17;10

7 Registration No. 2766803 issued on September 23, 2003.

8 Registration No. 2769854 issued on September 30, 2003.

9 Registration No. 2864240 issued on July 20, 2004.

10 Registration No. 2904160 issued on November 23, 2004.
Serial No. 78810102
- 9 -

XTRU-THERM for “metal insulated pipes; metal
accessories, namely, end seals, end
caps, sealing mechanisms for end of
pipes, anchors, and expansion
pillows; and metal fittings,
namely, tees, reducers, elbows, and
couplings” in Int. Class 6;
“non-metal insulated pipes; non-
metal accessories, namely, jackets,
end seals, and sealing mechanisms
for pipe ends; and non-metal
fittings, namely, tees, reducers,
elbows, and couplings” in
International Class 17;11
YOUR SEAL OF APPROVAL for “metal reinforced seals” in
International Class 6;
“all non-metal or primarily non-
metal goods and all for use in the
telephone, electrical, aerospace,
manufacturing, steel, business
machine, pulp and paper,
petrochemical, and power generating
industries, namely, oil seals;
fluid seals; insulating seals;
reinforced seals; elastomeric
seals; low friction seals, namely,
graphite seals and
polytetrafluoroethylene seals;
aramid reinforced seals; wall
penetrating seals; seals for
pistons and rods, namely, cups,
rings, packing and gaskets; high
temperature sheet gasket material;
high strength sheet gasket
material; solvent resistant sheet
gasket material; flexible sheet
gasket material; gasketing tapes
and sleeves; adhesive and
nonadhesive insulating tapes and
sleeves; organic fiber packings for
pumps, valves and rod, piston and
door service; insulating ropes,
tapes, cloth and tubing; sheet
packing for industrial use in
severe chemical conditions; sheet
packing; sheet packing material for
gaskets, seals, and the like for

11 Registration No. 2967475 issued on July 12, 2005.
Serial No. 78810102
- 10 -
general industrial, refining and
chemical processes to form a tight
seal against air, gas, oil and
other fluids and gases; sheet
packing for packing flanges and
joints; refractory ropes; and joint
valve packings, non-metal or
primarily non-metal sealing
expansion joints for fluid conduit
and non-automotive gaskets; sealing
plugs” in International Class 17;12
WINDEROSA for, inter alia, “metal gaskets and
metal seals for engines” in
International Class 6;
“non-metal gaskets and non-metal
seals for engines” in International
Class 17;13

for, inter alia, “metal oil seals,
metal gaskets for use in preventing
the escape of a gas or fluid, metal
junctions for use with pipes in
vehicles” in International Class 6;
“non-metal seals for use in
preventing the leak of fluids in
motors or machines; non-metal seals
and gaskets for use with automotive
components; non-metal junctions
with use with pipes in vehicles” in
International Class 17;14
NVENT for “metal pipe couplings, metal
pipe fittings, manually-operated
metal valves, metal gaskets and
seals for use with pipe couplings,
pipe fittings and pipe valves” in
International Class 6;
“nonmetal gaskets and seals for use
with pipe couplings, pipe fittings
and pipe valves” in International
Class 17;15

12 Registration No. 2978651 issued on July 26, 2005.

13 Registration No. 3076261 issued on April 4, 2006.

14 Registration No. 3089184 issued on May 9, 2006.

15 Registration No. 3098883 issued on May 30, 2006.

Serial No. 78810102
- 11 -

for, inter alia, “rings, namely
metal seal rings for aircraft,
aerospace, power generation,
nuclear, industrial and rocket
propulsion equipment” in
International Class 6; and
“seals, rings, sealing rings,
namely, seals, rings and sealing
rings made of polymers for use in
aircraft, aerospace, power
generation, nuclear, industrial and
rocket propulsion equipment” in
International Class 17.16

As acknowledged by the Trademark Examining Attorney,
third-party registrations are not evidence of commercial use
of the marks shown therein, or if in use, that the public is
familiar with them. Nevertheless, such registrations that
individually cover a number of different items and that are
based on use in commerce have some probative value to the
extent they suggest that the listed goods emanate from a
single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988).
Furthermore, as noted by the Trademark Examining Attorney,
International Classification within the United States
trademark practice is a purely administrative determination
unrelated to the determination of likelihood of confusion.

16 Registration No. 3105493 issued on June 20, 2006.

Serial No. 78810102
- 12 -
Based on the record before us, we readily conclude that
applicant’s “non-metal seals for use in mechanical shafts”
are legally related to the cited registrant’s “metal and
steel banding, … seals,” and that this du Pont factor favors
the position of the Trademark Examining Attorney that there
is a likelihood of confusion herein.
As to the Trademark Examining Attorney’s argument that
even if the seals are different in function and application,
purchasers would believe that applicant’s seals are within
registrant’s “logical zone of expansion,” it is neither
necessary nor possible to determine that from this record.
Inasmuch as some manufacturers and merchants make and market
products known simply as “seals,” some composed of metal and
others of non-metal materials, we find that these respective
goods are related for purposes of this du Pont factor
without deciding the question of zones of expansion.
Trade Channels and Conditions of Sales
Regarding the related du Pont factors focusing on the
respective trade channels and classes of purchasers, we must
presume that the applicant’s and registrant’s respective
goods could be offered and sold to the same classes of
purchasers through all the normal channels of trade. See
Octocom Systems Inc. v. Houston Computers Services Inc.,
Serial No. 78810102
- 13 -
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); In re Smith
and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and In re Elbaum,
211 USPQ 639 (TTAB 1981). As to the relevant classes of
prospective consumers, we find that the purchasers of these
respective goods overlap in that the purchasers of
registrant’s type of seals could also be the purchasers for
applicant’s type of seals. Hence, these two related du Pont
factors also support a finding of likelihood of confusion.
The Marks
We turn next to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005).
While we must consider the similarity or dissimilarity
of the marks when viewed in their entireties, “there is
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of the
mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Serial No. 78810102
- 14 -
The Trademark Examining Attorney points out that
applicant has appropriated registrant’s mark in its
entirety, and has simply added as a suffix thereto the
generic name of its goods. While there are situations where
the addition of a new term to a registered mark does obviate
the similarity between the marks such that it can overcome a
likelihood of confusion under Section 2(d), generally this
is not the case with the addition of a generic term.
Moreover, the first word of applicant’s TitanSeal mark is
the registered mark TITAN. In short, when used in connection
with seals, the addition of the term “-Seal” to the end of
registrant’s mark is certainly insufficient to obviate the
likelihood of confusion.
The number and nature of similar marks in use on similar goods
Applicant has argued that inasmuch as the term “Seal”
has been registered by third parties for goods seemingly
related to registrant’s goods, issuing a registration to
applicant for its mark should not be a problem. However, as
noted above, it is the dominant and distinctive “Titan”
portion of applicant’s mark creating the likelihood of
confusion herein, not the generic “-Seal” portion.
Consequently, we have to agree with the Trademark Examining
Serial No. 78810102
- 15 -
Attorney that based on this record, it appears that the
cited TITAN mark is strong when used in connection with
seals.
Conclusion
In summary, we find that applicant’s goods are legally
related to registrant’s goods under Section 2(d) of the Act;
that applicant’s and registrant’s respective goods could be
offered and sold to the same classes of purchasers through
the same channels of distribution; that the marks are
similar as to appearance, sound, connotation and commercial
impression; and that on this record, the term “Titan” is a
strong source indicator when used in connection with seals.
Decision: The refusal to register this mark under
Section 2(d) of the Lanham Act is hereby affirmed.