Hyphen in Mark and Semicolon in Identification Sealed a Section 2(d) Refusal

Overview

The Trademark Trial and Appeal Board (TTAB) affirmed a refusal to register the mark ECOTONE for professional-grade concrete and masonry coatings. The refusal was based on a likelihood of confusion with the registered mark ECO-TONES, which covers various stains, sealers, and coatings. This case highlights how the Board interprets punctuation, specifically hyphens in a mark and semicolons within an identification of goods and services.

Background

The Applicant filed an application to register the mark ECOTONE in standard characters for coating compositions specifically formulated for application to concrete and masonry surfaces by professionals, not for retail sale or consumer use, and not for use on wood surfaces in International Class 2.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the registered mark ECO-TONES. The cited registration covers interior and exterior stains, sealers and coatings for roofs, siding and timber; wood preservatives; restorative preparations in the nature of stains for wood; and coatings for wood, namely, stains, coatings, sealers, preservatives and restoratives in the nature of stains.

When the refusal was made final, the Applicant appealed.

How the Board Analyzed the DuPont Factors

DuPont #1: Similarity of the Marks

The Examining Attorney argued that the marks were virtually identical. Both marks consisted of the component terms ECO and TONE or TONES in the exact same order. The only differences were that the registered mark is hyphenated and in plural form.

The Board dismissed the differences between the marks as legally insignificant. Regarding the hyphen in ECO-TONES, the Board cited multiple precedents (PIERCE ARROW vs. PIERCE-ARROW, MINI MELTS vs. MINI-MELTS, MAGNUM vs. MAG-NUM) to establish that the presence or absence of a hyphen does not distinguish marks. The Board concluded that consumers are not apt to place significance on a hyphen in a registered mark.

Similarly, the Board addressed the pluralization of the registered mark. The Board stated that there is no material difference, in a trademark sense, between singular and plural forms of a word. The plural nature of ECO-TONES did not change the fact that the marks were virtually identical to the singular ECOTONE.

The Board also addressed the Applicant's argument that ECO-TONES was descriptive wording used in marketing materials rather than a standalone source identifier. The Board rejected this argument, noting it ran counter to the presumption of validity afforded to registered marks under Section 7(b) of the Trademark Act. Because the cited mark was registered on the Principal Register without a claim of acquired distinctiveness under Section 2(f), it was entitled to the presumption of inherent distinctiveness. The Board characterized the mark as, at the very least, suggestive of ecologically apposite surface coatings.

The Board found that the first DuPont factor weighed heavily in favor of a likelihood of confusion.

DuPont #2: Relatedness of the Goods

In analyzing the second DuPont factor, the Board examined the similarity and nature of the goods as described in the application and the registration. The Applicant’s goods were clear and pigmented coatings specifically for concrete and masonry, used by professionals and explicitly not for use on wood. The Registrant’s goods included stains, sealers, and coatings for roofs, siding, and timber, as well as various wood-specific preservatives and restoratives.

The Applicant argued that the parties served entirely different substrates (wood versus concrete and masonry) and that the Registrant manufactured wood stains exclusively.

The Board corrected this perspective by stating that the relevant inquiry focuses on the goods as described in the application and registration, not the actual market activities of the parties. The Board focused on the Registrant’s identification: “interior and exterior stains, sealers and coatings for roofs, siding and timber.” Because the identification includes coatings for “roofs” and “siding” without limiting them to wood, the Board found that this language encompassed roofs and siding of any composition, including concrete and masonry.

Therefore, the Board found the goods to be legally identical in part. Because a finding of legal identity for even a portion of the goods is sufficient, the Board stated there was no need to further consider the relatedness of other goods. However, the Board did acknowledge evidence provided by the Examining Attorney showing that seven entities offer coatings for wood, concrete, and masonry under the same brand name. This evidence supported the conclusion that consumers would perceive the goods as related.

The second DuPont factor weighed in favor of a likelihood of confusion.

DuPont #3: Channels of Trade

The Applicant argued that its ECOTONE product was sold and applied exclusively by the Applicant in professional, non-retail settings to sophisticated architects and contractors. The Applicant contended that this controlled distribution and professional focus eliminated any realistic likelihood of confusion.

The Board rejected these arguments based on the lack of limitations in the cited registration. While the Applicant’s identification restricted its goods to professionals and excluded retail sale, the Registrant’s identification for “coatings for roofs, siding and timber” contained no such restrictions. As a result, the Registrant’s goods must be presumed to travel through all normal channels of trade to both professionals and the general public. Furthermore, when goods are legally identical in part, it must be presumed that they travel through the same trade channels and are offered to overlapping classes of purchasers.

DuPont #4: Sophistication of Customers

Regarding purchaser sophistication, the Board noted that the Applicant submitted no actual evidence to prove that its customers or the Registrant’s customers were sophisticated. The Board reiterated that even sophisticated buyers are not immune to source confusion when the marks involved are virtually identical. The Board observed that professional paint and coating crews include individuals of varying experience levels who could easily mistake one mark for another or assume a common source. Ultimately, the Board found that even if the Applicant's unsupported argument were credited, purchaser sophistication was insufficient to avert a likelihood of confusion.

Board’s Decision

The Board affirmed the refusal to register the Applicant’s mark ECOTONE. It found that the first DuPont factor weighed heavily toward confusion and that the identified goods were legally identical in part. Because the goods were legally identical, the Board presumed an overlap in trade channels and purchasers. Finally, the Board concluded that any potential purchaser sophistication was unsupported by evidence and would not prevent confusion between virtually identical marks. The refusal under Section 2(d) of the Trademark Act was sustained.

When reading this case, two other decisions come to mind: Seven Sterling and Adult Shop.

In Seven Sterling, the singular versus plural distinction also arose, but in a different context. There, the Board found that the grammatical inaccuracy of SEVEN STERLING (singular) added a unique connotation to the mark, helping distinguish it from STERLING PHYSICIANS.

Additionally, the broad identification in the cited registration that led to finding identical goods in this case mirrors the Board's approach in Adult Shop. In that case, the Board zoomed in and focused specifically on the "leather clothing" portion of the identification for retail store and online retail store services, effectively setting aside the "adult products" aspect of the mark.