Test Your TTAB Judge-Ability: Is X-PRO for Insulation Confusable with X-PRO for Building Consultancy?

Atlas Roofing applied to register the mark X-PRO for foam insulation used in building construction, but Examining Attorney Maureen Dall Lott issued a Section 2(d) refusal in view of the identical mark registered for, inter alia, “consultancy in the fields of building construction and construction." On appeal, Atlas argued that the recitation of service in the cited registration is unclear, and that registrant's website shows that it operates only in the metallurgical industry. How do you think this came out? Post your comment here. In re Atlas Roofing Corporation, Serial No. 85024217 (November 28, 2012) [not precedential].

Because the marks are identical, the first du Pont "heavily favors" a finding of likely confusion. Moreover, the greater the similarity between the marks, the lesser the degree of relatedness between the involved goods/services that is needed to support a Section 2(d) refusal. And with the marks identical, there only need be a "viable relationship" between the involved goods and services to support the refusal.

The PTO relied on seven third-party registrations for marks covering both insulating materials and consulting services. Under Albert Trostel, these marks suggest that the involved goods and services are of a kind that may emanate from a single source under the same mark. The examining attorney also provided third-party website evidence showing that insulation products used in construction are sometimes offered in conjunction with consulting services.

Atlas shrugged. It argued that this evidence fails to show that any entity, such as registrant, that manufactures metallurgical machinery and metallurgical plants also provides consulting services relating to insulation. Atlas contended that the identification in the registration is "relatively unclear," and so one must consider these services "in the larger context of registrant's business." Registrant's website suggests that its services should be "defined with respect to the metallurgical industry."

The Board disagreed that registrant's recitation of services, "consultancy in the fields of business construction and construction," was unusual or unclear, and therefore it concluded that resort to extrinsic evidence was unnecessary. Applicant, the Board observed, is improperly seeking to limit the scope of registrant's broad identification, rather than provide clarity. Of course, it is black letter law that the Board must consider the issue of likely confusion based on the recitation of services in the cited registration, regardless of the actual nature of the services, classes of consumers, or channels of trade.

The Board further noted that Atlas's goods and registrant's services are both related to the building construction industry. In fact, looking at some of the goods in the cited (multi-class) registration, it is possible that some forms of insulation could be used by registrant to mitigate excessive heat or loud noise associated with steel mills.

Finally, Atlas urged that the consumers of registrant's services are sophisticated in the metallurgical industry, but the Board (putting aside the fact that registrant's recited services are not limited to the metallurgical industry) pointed out once again that even sophisticated purchasers are not immune to source confusion, especially when identical marks are involved. Furthermore, there was no evidence that Atlas's customers are sophisticated, which raises the possibility of reverse confusion.

The Board concluded that there is a likelihood of confusion as to source or sponsorship, and so it affirmed the refusal.

TTABlog comment: Suppose Atlas brought a claim under Section 18 for restriction or modification of the cited registration to narrow registrant's consulting service to the field of metallurgy. It would have to show that such a restriction would result in the "avoidance of a likelihood of confusion." For a recent discussion of Section 18, see Johnson & Johnson and Roc International S.A.R.L. v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS, Oppositions Nos. 91182207 and 91184467 (May 16, 2012) [precedential]. [TTABlogged here].

Text copyright John L. Welch 2012.