Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SBS PRODUCTS, INC.
STERLING PLASTIC & RUBBER PRODUCTS, INC.
Cancellation No. 15,748
July 27, 1988
Hearing: May 19, 1988
Mercer L. Stockell, William G. Pecau and Pennie & Edmonds for SBS Products, Inc.
Leo C. Krazinski for Sterling Plastic & Rubber Products, Inc.
Before Simms, Krugman and Hanak
A petition has been filed to cancel the registration for the mark "S.B.S." and design as depicted below
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for stuffing box sealant. [FN1]
As grounds for cancellation, petitioner asserts that respondent's mark so resembles petitioner's previously used trade name "SBS" and so resembles petitioner's previously used and registered mark "SBS" alone and with other elements, for a variety of industrial skin cleansers, creams, lotions and the like as to be likely, when applied to respondent's goods, to cause confusion, mistake or to deceive.
Respondent, in its answer to the petition for cancellation, has denied the salient allegations therein. [FN2]
The record consists of the pleadings, the file of respondent's registration, status and title copies of eight registrations pleaded by petitioner made of record pursuant to Trademark Rule 2.122(d)(2), [FN3] respondent's answers to certain discovery requests propounded by and relied on by petitioner and the testimony deposition (and exhibits) taken by petitioner of Robert L. Blasko, petitioner's executive vice-president. Each party has filed a brief on the case and petitioner has filed a reply brief. Only petitioner attended an oral hearing held before this panel.
Petitioner has shown, through competent testimony, that it began use of the "SBS" mark in various forms in connection with industrial skin care products in the late 1920's. Petitioner began using the designation "SBS" as its trade name in 1957 in connection with its industrial skin care business. By the early 1970's, petitioner switched its marketing strategy from selling directly to customers as well as through distributors to selling only through distributors, although petitioner currently maintains a sales force of 18 people who work with distributors and call on customers jointly with the distributors. Petitioner currently has some 390 distributors who sell petitioner's line of industrial skin care products to factories and plants in many different industries. All petitioner's distributors are stocking distributors, that is, they stock products of many different industries. Typically, the person in the plant or factory having responsibility for purchasing petitioner's products would be the maintenance supervisor, tool crib foreman, plant engineer, plant manager, plant superintendent or equivalent.
Petitioner has averaged some $8 million-$10 million annually in sales of industrial skin care products under the various "SBS" marks for the period 1979 through the present. From 1975 through the present, petitioner has averaged $275,000-$400,000 annually in advertising expenditures of "SBS" skin care products. Petitioner advertises in various trade publications including New Equipment Digest and IMPO (Industrial Maintenance and Plant Operations).
*2 In addition to the line of skin care products marketed by petitioner, petitioner sells plastic and metal dispensers for the skin care products under the "SBS" trademark. Moreover, the record shows that petitioner presently markets a product unrelated to skin care products, specifically, a screw insert that is used for repairing damaged internal threads. This product is sold under the trademark "FORM-A-THREAD" but the "SBS" designation appears on the packaging. This product is sold to the maintenance department of an industrial plant and would be useful in all sorts of industries, including coal mines, machinery, electrical manufacturing, steel mills, plastic manufacturing, the aircraft industry, boat industry and the transportation industry. There is no testimony or evidence as to when petitioner began selling its screw inserts and there is no testimony or evidence as to how many have been sold, what the sales volume is or the extent of advertising expenditures, if any, in connection with this product.
While respondent has taken no testimony or offered any evidence, its answers to petitioner's discovery requests relied on herein by petitioner show that it makes a stuffing box sealant compound under the registered mark sought to be cancelled herein. The function of this product is to be a pump seal, that is, to prevent the pump from leaking sewage or liquids. Respondent sells its goods through stocking distributors and advertises in various trade publications, including at least two journals (New Equipment Digest and IMPO) in which petitioner has also advertised.
Petitioner's priority in its various "SBS" marks for its line of skin cleansers, soaps, lotions, creams and the like has been established by the introduction into evidence of its pleaded registrations as well as by testimony and supporting documentary evidence. In addition, the testimony establishes petitioner's priority of use in the designation "SBS" as a trade name in connection with its business of selling industrial skin care products. [FN4] However, with respect to petitioner's screw inserts, the record is devoid of any evidence as to the first use of the mark "SBS" in connection with this product. Accordingly, petitioner can only claim superior rights in the "SBS" mark for the screw inserts if it is determined that use of the "SBS" mark on screw inserts is a natural expansion of petitioner's use of the mark on industrial skin care products. In this regard, we do not believe that such use on screw inserts in any way could be considered a natural expansion. The products are totally unrelated and petitioner's own witness, when asked if the screw inserts had anything to do with the skin care industry, replied: "no, doesn't have a thing to do with it." [FN5] Accordingly, we find that petitioner's superior rights in the "SBS" mark and name are limited to its line of industrial skin care products and petitioner can prevail only if its mark and/or name are found to be identical or similar to respondent's mark and if petitioner's industrial skin care products are found to be sufficiently related to respondent's stuffing box sealant, such that the contemporaneous use of the marks on the respective goods would be likely to result in confusion as to source or sponsorship.
*3 With respect to the marks, while respondent's mark is presented in a stylized form and further includes a design element, the commercial impression engendered by the mark essentially is that of the letters "SBS." These letters clearly stand out as the recognizable portion of the mark and the portion likely to be remembered by purchasers. While petitioner has used and registered the mark "SBS" with a number of other elements, including various words, numbers and designs, the designation "SBS" is the dominant portion of these marks. Moreover, petitioner, in any event, has used and registered "SBS" by itself for its industrial skin care products and petitioner has used "SBS" by itself as a trade name in connection with its business. We find, therefore, that, notwithstanding specific stylistic differences in the presentation of the respective marks, the marks of the parties clearly connote the identical impression, namely, that of the letters "SBS." [FN6] As such, we turn to the remaining issue, that is, whether the respective goods are sufficiently related such that their marketing under virtually identical trademarks would be likely to cause confusion for purposes of Section 2(d) of the Trademark Act.
Turning to the goods, essentially it is petitioner's position that its goods and those of respondent are all directed to the maintenance, repair and operation (M.R.O.) part of an industrial plant that keeps the plant going; that the products of both parties could very well be carried by the same stocking distributors and sold to the same industrial plants; that both lines of products would be stored in the same area of a plant where all maintenance products are stored; that the respective products are used in close proximity to each other in that petitioner's products are designed for use both in the production area of an industrial plant as well as in a washroom and some of petitioner's products are designed to go into the toolbox of a plant worker and that, conceivably, in installing a stuffing box sealant, a worker could get some on his hands and use a skin cleanser kept in his toolbox. Petitioner also points to the overlap in advertising of the marks of the parties in two trade publications as further evidence of the complementary nature of the products.
It is clear from the record presented in this case that respondent's stuffing box sealant and petitioner's industrial skin care products could very well be distributed by the same general industrial stocking distributors for use in factories or plants in various and diverse industries. However, while the trade channels may overlap, we cannot say that all products used in industrial plants are, per se, related goods. As in the cases involving food products sold in a modern supermarket environment (see: Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1109 (TTAB 1987) and cases cited therein), we believe the modern industrial plant environment is such that an enormous variety of products from sophisticated machinery and parts therefor to paper clips, toilet paper and mops are required to keep an operation running. In the present case, we believe that stuffing box sealant used to prevent leakage of fluids from a pump is so far removed in character and purpose from skin care products that they would not be expected to originate from the same entity, even when encountered by the same persons under virtually identical marks. See: Hi-Country Foods, supra, The Nestle Company, Inc. v. Nash-Finch Company, 4 USPQ2d 1085 (TTAB 1987); Safe-T Pacific Company v. Nabisco, Inc., 204 USPQ 307 (TTAB 1979); Federated Foods, Inc. v. Fort Howard Paper Company, 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) and cases cited therein.
*4 With respect to petitioner's testimony that the goods would be stored together in the same area in an industrial plant, said testimony is considered to be speculative in nature and not particularly credible. As for the scenarios presented by petitioner to demonstrate confusion (e.g. a worker getting his hands dirty from respondent's goods and cleaning his hands with petitioner's goods), while these occurrences are certainly possible, we do not believe such persons would be likely to believe the respective goods emanated from the same source because of the wide disparity in the characteristics and purposes of the goods.
As to the potential overlap in distributors, we are of the view that this is not controlling. If, in fact, there are industrial stocking distributors who would handle products of both parties, they would necessarily be general industrial products distributors handling a wide-ranging variety of unrelated products. Petitioner's own testimony states that its industrial distributors could carry products from as many as a thousand different manufacturers. [FN7]
Similarly, while the record shows that the advertising of the respective parties has overlapped with respect to two publications, New Equipment Digest and IMPO, these publications feature all types of products for various industries and we do not believe the mere inclusion of both parties' products in these publications warrants a conclusion that these products are related or that readers would believe that such different goods originate in a single source.
In concluding herein that no confusion exists with respect to the contemporaneous use of the marks on the respective goods, we concede that our decision might differ if petitioner had demonstrated that the "SBS" mark was a famous one or that petitioner had superior rights in its mark in areas other than the skin care field. However, while petitioner has shown long use of the "SBS" mark for many years and has shown that it has enjoyed sales of $8 million-$10 million annually since 1979, it can hardly be said to have reached the status of a famous mark which could prevent another from adopting the same or similar mark in another field. Finally, petitioner has failed to show evidence of any recognition or success of "SBS" in the screw insert field and while we believe petitioner's screw inserts come a good deal closer to respondent's stuffing box sealant in terms of relatedness of goods than do petitioner's skin care products, petitioner, as we have earlier noted, has failed to demonstrate superior rights in its mark for these goods.
Decision: The petition for cancellation is dismissed with prejudice.
R. L. Simms
G. D. Krugman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,380,423 issued January 28, 1986.
FN2. Respondent, for the first time in its brief, has raised the affirmative defense of laches. This issue was neither pleaded by respondent nor tried by the express or implied consent of the parties for purposes of Rule 15(b) FRCP. Accordingly, no consideration will be given to this matter.
a) "S.B.S. No. 11" for hand soap (Registration No. 340,491 issued November 10, 1936. Renewed from November 10, 1976.
b) "S.B.S.-11" and design for skin cleaning compositions (Registration No. 541,107 issued April 17, 1951. Renewed).
c) "S.B.S." for medicated skin cream; soap powders, deodorant soap and waterless skin cleansers (Registration No. 827,017 issued April 4, 1967. Renewed).
d) "S.B.S." and design for cream deodorant soap, waterless skin cleansers, and soap powders for cleansing the hands and skin (Registration No 865,098 issued February 18, 1969. Section 8 affidavit accepted. Section 15 affidavit received).
e) "S.B.S." and design for hand soaps, skin cleansers, skin cleansers containing plastic scrubber, protective skin creams, deodorant soaps and deodorant skin cleansers (Registration No. 1,056,384 issued January 18, 1977. Section 8 affidavit accepted. Section 15 affidavit received).
f) "S.B.S. THE WASHWORD OF INDUSTRY" and design for hand soaps, skin cleansers, skin cleansers containing plastic scrubber, protection skin creams, deodorant soaps and deodorant skin cleansers. (Registration No. 1,056,385 issued January 18, 1977. Section 8 affidavit accepted. Section 15 affidavit received).
h) "S.B.S. THE WASHWORD OF INDUSTRY" and design for medicated skin creams and medicated skin lotions. (Registration No. 1,056,403 issued January 18, 1977. Section 8 affidavit accepted. Section 15 affidavit received).
FN4. Respondent, having taken no testimony and introduced no evidence regarding its date of first use is limited to the filing date of its application which matured into its registration, that is, September 6, 1984.
FN5. Blasko deposition p. 55.
FN6. Respondent, in its brief, argues that the marks are weak since the meanings of "SBS" are derived from the nature of the respective products in that respondent's mark is derived from the term "stuffing box sealant" while petitioner's mark is derived from the term "sugar beet soap." However, in the absence of a showing by respondent that these letters are recognized abbreviations for the product names or that purchasers would recognize the letters as such abbreviations, respondent's weak mark argument must fail. Moreover, respondent's reference to the results of a search report showing registration of "SBS" by others is irrelevant since: 1) the registrations are not evidence of use of the marks by the third parties and 2) even if evidence of such third-party use were submitted, it would be of no aid to respondent herein where the third-party usage was for goods unrelated to either petitioner's skin care products or respondent's stuffing box sealant.
FN7. Blasko deposition p. 72.