Keystone Consolidated Industries, Inc. v. The Franklin Investment Corp. DBA Franklin Industries

This Opinion is a

Precedent of the TTAB

Mailed: August 12, 2024

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Keystone Consolidated Industries, Inc.

v.

The Franklin Investment Corp. DBA Franklin Industries

_____

Cancellation No. 92066927

_____

Jon O. Nelson, Banner & Witcoff Ltd. for

Keystone Consolidated Industries, Inc.

Cecilia R. Dickson, The Webb Law Firm for

The Franklin Investment Corp. DBA Franklin Industries.

_____

Before Zervas, Greenbaum and Goodman,

Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:

The Franklin Investment Corp., DBA Franklin Industries (“Respondent”), owns a

registration on the Supplemental Register for the following mark for

Cancellation No. 92066927

“Metal fence posts” in International Class 6 (“Red, White and Blue Fence Post Mark”).

The registration contains a color claim: “The color(s) blue, white and red is/are

claimed as a feature of the mark” and the following description of the mark: “The

mark consists of a metal fence post with a blue bottom, white middle, and red top.

The broken lines indicate the outline of the goods, which is not claimed as a part of

the mark.”1

Keystone Consolidated Industries, Inc. (“Petitioner”) seeks cancellation of

Respondent’s Red, White and Blue Fence Post Mark on the ground of likelihood of

confusion, Section 2(d), 15. U.S.C. § 1052(d). Petitioner has pleaded ownership of the

color mark for “metallic fence posts”2 in International Class 6 (“Red

Top Fence Post Mark”). Petitioner’s registration contains the following description:

1 Registration No. 4329586 issued April 30, 2013.

2 Registration No. 125561 issued May 27, 1919; renewed. A printout from the USPTO’s

Trademark Status and Document Retrieval (TSDR) database accompanied the petition to

cancel showing active status and Petitioner’s ownership thereof.

.

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Cancellation No. 92066927

“[the] mark consists in coloring a short portion of the upper end of the post red.”

Additionally, the following matter is disclaimed: “no claim being made to the

presentation of the post.”3 Petitioner also alleges prior use of a “mark consisting of

coloring a short portion of the upper end of a fence post red” for “metallic fence posts

and related products.”4

Respondent filed an answer denying the salient allegations in the petition to

cancel and asserting the affirmative defenses of laches and acquiescence.5

Respondent also filed a counterclaim asserting a claim of abandonment and a claim

for partial cancellation under Section 18 to narrow Petitioner’s red color claim to

3 “There was no statutory authority for disclaimer prior to 1946,” and the USPTO’s disclaimer

practice fluctuated based on “various court decisions” until the Supreme Court’s decision

Estate of P.D. Beckwith, Inc. v. Comm’r of Pats., 252 U.S. 538 (1920). TRADEMARK MANUAL

OF EXAMINING PROCEDURE (TMEP) § 1213.01 (May 2024). One of the early practices was

requiring, as the USPTO did here, “a statement in the application disclaiming the

unregistrable matter in the mark.” Id.

4 Petition to cancel, paragraph 6, 1 TTABVUE.

Citations to the record reference TTABVUE, the Board’s online docketing system. The

number preceding “TTABVUE” corresponds to the docket entry number, and any number(s)

following “TTABVUE” refer to the page number(s) of the docket entry where the cited

materials appear.

As part of an internal Board pilot citation program, the citation form in this opinion is in a

form provided in the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE

(“TBMP”) 101.03 (2024). This opinion cites decisions of the U.S. Court of Appeals for the

Federal Circuit and the U.S. Court of Customs and Patent Appeals only by the page(s) on

which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th). For decisions of the

Board, this opinion employs citation to the LEXIS database. Practitioners should adhere to

the citation forms set forth in TBMP § 101.03.

5 Respondent also included an amplification of its denial of likelihood of confusion as a

“defense,” and a reservation of rights to assert further affirmative defenses, neither of which

is an affirmative defense. Made in Nature, LLC v. Pharmavite LLC, Opp. No. 91223352, 2022

TTAB LEXIS 251, at *3-4 (TTAB 2022) (reservation of rights to add affirmative defenses is

improper under the federal rules because it does not give fair notice of the affirmative

defense); Shenzhen IVPS Tech. Co. Ltd. v. Fancy Pants Prods., LLC, Opp. No. 91263919, 2022

TTAB LEXIS 383, at *3 n.5 (TTAB 2022) (“amplifications [of denials] are not true affirmative

defenses”).

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Cancellation No. 92066927

“burgundy red.”6 Lastly, Respondent sought to amend the description of its color

claim for the color red to “candy apple red.”7 The Board noted the post-registration

request to amend the description of the color claim in Respondent’s registration was

filed without the required declaration or fee and deferred consideration of the request

to amend until final decision.8

As Petitioner points out, Respondent’s brief did not raise an acquiescence defense,

argue the claims alleged in the counterclaim, or address the post-registration

amendment to the description of the color claim.9 Therefore, we deem the

acquiescence defense, Respondent’s counterclaim, and its post-registration request to

amend its registration’s description of the color claim impliedly waived.10 See Harry

Winston, Inc. v. Bruce Winston Gem Corp., Opp. No. 91153147, 2014 TTAB LEXIS

284, at *4-5 (TTAB 2014) (pleaded affirmative defenses not pursued in the brief

6 22 TTABVUE. A Section 18 claim, if successful, would have modified the description of

Petitioner’s mark lined for the color “red” to the specific shade of red actually used in the

marketplace. Covidien LP v. Masimo Corp., Can. No. 92057336, 2014 TTAB LEXIS 31, at *9

(TTAB 2014); see generally In re Cook Med. Techs. LLC, Ser. No. 77882876, 2012 TTAB

LEXIS 496, at *26-29 (TTAB 2012).

7 22 TTABVUE.

8 21, 24 TTABVUE.

9 Petitioner has argued that both pleaded affirmative defenses, laches and acquiescence, are

waived. We do not deem the laches defense waived because Respondent addresses laches in

its brief.

10 We note the admonition of our primary reviewing court regarding the distinction between

waiver and forfeiture. See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.

2020) (“Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the

intentional relinquishment or abandonment of a known right.” (internal quotation marks

omitted)). Affirmative defenses that were asserted in an answer but then not pursued at trial

may be deemed impliedly waived, while affirmative defenses that were never asserted may

be deemed forfeited. See JNF LLC v. Harwood Int’l Inc., 2022 TTAB LEXIS 328, at *4 n.8

(TTAB 2022) (finding asserted defenses not pursued either waived or forfeited).

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Cancellation No. 92066927

considered waived); Corporacion Habanos S.A. v. Guantanamera Cigars Co., Opp.

No. 91152248, 2008 TTAB LEXIS 13, at *2 n.2 (TTAB 2008) (descriptiveness claim

waived because not discussed in brief); G. B. Kent & Sons, Ltd. v. Colonial Chem.

Corp., Can. No. 92009419, 1969 TTAB LEXIS 225, at *2 n.1 (TTAB 1969)

(counterclaim not addressed in the brief deemed waived).

Each party filed a trial brief and Petitioner filed a reply brief.11

I. Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b),

37 C.F.R. § 2.122(b), the file of the involved registration.

In addition, Petitioner submitted a notice of reliance (75-76 TTABVUE).

Petitioner also submitted the declaration testimony of Dain Rakestraw, Manager,

Marketing & Customer Service, for Liberty Steel & Wire – Red Brand Fence12 with

exhibits (70 TTABVUE (confidential declaration testimony of Mr. Rakestraw filed at

71 TTABVUE)); and the declaration testimony of Timothy Dillon, Senior Vice

President Sales and Marketing for Liberty Steel USA,13 with exhibits, (72 TTABVUE

(confidential declaration testimony of Mr. Dillon filed at 73 TTABVUE)).

11 Petitioner’s brief is at 82 TTABVUE and its reply brief is at 86 TTABVUE; Respondent’s

brief is at 84 TTABVUE.

12“Liberty Steel acquired Keystone Consolidated Industries in July 2019.” Rakestraw

declaration, paragraph 2, 70 TTABVUE 5; Dillon declaration, paragraph 2, 72 TTABVUE 5.

13 Petitioner’s witnesses have not explained the difference between Liberty Steel and Wire –

Red Brand Fence and Liberty Steel USA who are mentioned as the employers of Mr.

Rakestraw and Mr. Dillon, respectively. Rakestraw declaration, paragraph 1, 70 TTABVUE

5; Dillon declaration, paragraph 1, 72 TTABVUE 5.

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Cancellation No. 92066927

Petitioner also provided the testimony declaration of expert Jonathan Flombaum,

PhD., Associate Professor in the Department of Psychological and Brain Sciences in

the Krieger School of Arts & Sciences at Johns Hopkins University (74 TTABVUE).14

Professor Flombaum’s testimony relates generally to color constancy, color

perception, memory of color, and color as applied to natural and manmade objects,

with specific testimony in relation to the color red. 15

Respondent submitted a notice of reliance (80 TTABVUE (confidential filings for

the notice of reliance at 81 TTABVUE)). Respondent also submitted the testimony

declaration of Nathan Kovalchick, Chief Executive Officer of Franklin Industries,

with exhibits, (78 TTABVUE (confidential declaration testimony of Mr. Kovalchick

filed at 79 TTABVUE)).

14 A witness presented as an expert must demonstrate on the record that he or she is qualified

to offer opinion testimony “by knowledge, skill, experience, training, or education....” Fed. R.

Evid. 702. We find that Professor Flombaum’s specific research and teaching qualifies him

as an expert in the assessment of human vision, color perception, and visual memory of color

for purposes of this proceeding. See ProMark Brands Inc. v. GFA Brands, Inc., Opp. No.

91194974, 2015 TTAB LEXIS 67, at *50 (TTAB 2015) (finding expert witnesses qualified).

Respondent has not disputed Professor Flombaum’s status as an expert on these issues.

15 Professor Flombaum’s testimony is relevant to the visual appearance and commercial

impression of the color red claimed as a mark or a portion of a mark which is not limited to

any particular shade of red. Professor Flombaum also provided his opinion on likelihood of

confusion of the parties’ marks based on the color red. We note that although an opinion of

an asserted expert may have some probative value, it is not dispositive on the ultimate

determination of likelihood of confusion. See, e.g., Anheuser-Busch, Inc. v. Holt, Opp. No.

91180119, 2009 TTAB LEXIS 599, at *16-17 & 23 (TTAB 2009) (opinion of an expert in

linguistics may have some probative value; “credible expert testimony ... is no substitute for

evidence of how the purchasing public perceives a term ... in reaching the ultimate conclusion

on the issue of mere descriptiveness.”).

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Cancellation No. 92066927

II. Background of Petitioner’s Pleaded Registration

Petitioner’s pleaded Registration No. 125561 issued under the Trade-Mark Act of

1905,16 which retained the common law definition of a trademark. Qualitex Co. v.

Jacobson Prods. Co., 514 U.S. 159, 171 (1995); see also Meenaxi Enter., Inc. v. Coca-

Cola Co., 38 F.4th 1067, 1074 n.5 (Fed. Cir. 2022) quoting J. Thomas McCarthy, 4

MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 26:32 (“[R]egistration under

the federal act of 1905, for purposes of territorial protection, did not confer any

greater rights than exist at common law, under the TEA ROSE-Rectanus doctrine.

However, the 1946 federal Lanham Act changed all this.”); Minn. Pet Breeders, Inc.

v. Schell & Kampeter, Inc., 41 F.3d 1242, 1245 (8th Cir. 1994) (“Before passage of the

Lanham Act in 1946, federal trademark law did not confer greater rights than existed

at common law.”);W. Stove Co. v. Geo. D. Roper Corp., 82 F. Supp. 206, 216 (S.D. Cal.

1949) (discussing trademark rights under the common law, the Trade-mark Act of

1905, and the Lanham Act); Philco Corp. v. Phillips Mfg. Co., 133 F.2d 663, 669 (7th

Cir. 1943) (discussing substantive rights under the Trade-Mark Act of 1905); In re

Dixie Ins. Co., Ser. No. 73282622, 1984 TTAB LEXIS 65, at *5 (TTAB 1984)

(“However, the registrability standard established by the Trademark Act of 1946

represents a clear departure from the common law.”).

16 Trade-Mark Act of 1905, ch. 592, 33 Stat. 724, repealed by Lanham Act, ch. 540, § 46(a),

60 Stat. 427, 444 (1946) (“all Acts and parts of Acts inconsistent herewith are hereby

repealed … insofar as they are inconsistent herewith.”).

https://govtrackus.s3.amazonaws.com/legislink/pdf/stat/60/STATUTE-60-Pg427.pdf;

https://www.govinfo.gov/content/pkg/USCODE-2022-title15/pdf/USCODE-2022-title15-

chap22-subchapI-sec1051.pdf.

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Cancellation No. 92066927

The Supreme Court, “[i]n interpreting the Trademark Acts of 1881 and 1905,”

(which retained the common law definition of a trademark), “questioned ‘[w]hether

mere color can constitute a valid trade-mark,’ A. Leschen & Sons Rope Co. v.

Broderick & Bascom Rope Co., 201 U. S. 166, 171 (1906), and suggested that the

‘product including the coloring matter is free to all who make it, Coca-Cola Co. v. Koke

Co. of America, 254 U. S. 143, 147 (1920).’” Qualitex Co., 514 U.S. at 171. In addition,

at that time, under the common law, trade dress such as the use of color on a product

required a showing of acquired distinctiveness (or secondary meaning).17 Two Pesos,

Inc. v. Taco Cabana, Inc., 505 U.S. 763, 786 (1992) (Thomas, J., concurring). (“Trade

dress, which consists not of words or symbols, but of a product’s packaging (or ‘image,’

more broadly), seems at common law to have been thought incapable ever of being

inherently distinctive.”); see also MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION

§ 8:10 (5th ed. 2024 update) (“The old rule—All trade dress required proof of a

secondary meaning (prior to Taco Cabana)”).

“The proper time for measuring inherent distinctiveness is at the time of

registration.” In re Chippendales USA Inc., 622 F.3d 1346, 1354 (Fed. Cir. 2010).

17 “[A] mark has acquired distinctiveness, even if it is not inherently distinctive, if it has

developed secondary meaning, which occurs when, “in the minds of the public, the primary

significance of a [mark] is to identify the source of the product rather than the product itself.”

Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 211 (2000) (citing Inwood Labs., Inc.

v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982)). “[A]cquired distinctiveness ([is] also

commonly referred to as secondary meaning.” Perma Ceram Enters. Inc. v. Preco Indus. Ltd.,

Opp. No. 91085234, 1992 TTAB LEXIS 40, at *4 (TTAB 1992); see, e.g., In re Chamber of

Commerce of United States, 675 F.3d 1297, 1300 (Fed. Cir. 2012) (referring to secondary

meaning also as acquired distinctiveness).

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Cancellation No. 92066927

Petitioner submitted into the record the prosecution history of the underlying

application which matured into the pleaded color mark registration. During

successful appeal of the refusal to register the color mark, Petitioner (as applicant)

made statements as to the distinctiveness in trade (acquired

distinctiveness/secondary meaning) of its Red Top Fence Post Mark due to public

association; we find these statements equivalent to a Section 2(f) statement in an ex

parte application and a statement against interest as to the distinctiveness of its color

mark at the time. See Sunbeam Corp. v. Battle Creek Equip. Co., Opp. No. 91063070,

1982 TTAB LEXIS 199, at *3 (TTAB 1982) (applicant’s claim of distinctiveness in its

application is an admission by applicant that term is descriptive); see also Lia Jene

Inc. v. Vitabath, Inc., Can. No. 92009027, 1969 TTAB LEXIS 103, at *6 (TTAB 1969)

(“certain statements made by a party in an ex parte proceeding may, under particular

circumstances, be considered to be admissions against interest in a subsequent inter

partes proceeding”).

On July 6, 1948, Petitioner’s pleaded registration, Registration No. 125561, was

republished under Section 12(c) of the Trademark Act, 15 U.S.C. § 1062(c)

(Publication).18 The act of republication allowed Petitioner to claim the benefits of the

provisions of the Trademark Act as though registered on the Principal Register except

as limited under sections 8, 12, 14 and 15 of the Trademark Act.19

18 See Petitioner’s notice of reliance, 75 TTABVUE 71, 76-83 and the Rakestraw declaration,

Exhibits A-05 and A-06, 70 TTABVUE 51-60.

19 https://www.govinfo.gov/content/pkg/USCODE-2023-title15/html/USCODE-2023-

title15.htm. See Section 46(b) of the Trademark Act, 15 U.S.C. § 1051, Statutory Notes,

Pending Proceedings and Existing Registrations and Rights Under Prior Acts, which

provides that registrations “now existing under … the Act of February 20, 1905, shall

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Cancellation No. 92066927

Although Petitioner’s Red Top Fence Post Mark is entitled to the benefits of the

Principal Register, Petitioner’s product color mark cannot be inherently distinctive

because the Supreme Court has held that as a matter of law, color marks applied to

the product itself are not inherently distinctive. Wal-Mart Stores Inc., 529 U.S. at

206; Qualitex Co. 514 U.S. at 162-163; see also In re Integra Biosciences Corp., Ser.

No. 87484450, 2022 TTAB LEXIS 17, at *16 (TTAB 2022) (“Color can sometimes be

inherently distinctive on product packaging, but it can never be inherently distinctive

on a product itself.”) (citing In re Forney Indus., 955 F.3d 940, 946-947 (Fed. Cir.

2020)); TMEP § 1202.05(a).

III. Unpleaded Registrations

Petitioner submitted by notice of reliance six unpleaded registrations: four red

color marks applied to wire fencing, barbed wire, wire fence panels, and wire fence

stays, and two “Red Brand” word marks for wire fencing, wire fence posts, and wire

stockade panels to show “history and use of its marks” and “for priority and likelihood

of confusion purposes.”20 Petitioner also has relied on these unpleaded registrations

in its brief but does not assert that the petition to cancel should be amended under

Fed. R. Civ. P. 15(b) to plead these registrations.

continue in full force and effect for the unexpired terms thereof and may be renewed under

the provisions of section 9 of this Act. Such registrations and the renewals thereof shall be

subject to and shall be entitled to the benefits of the provisions of this Act to the same extent

and with the same force and effect as though registered on the principal register established

by this Act except as limited in sections 8, 12, 14, and 15 of this Act.” Sections 8, 12, 14 and

15 have no bearing on the issues presented herein.

20 Petitioner’s notice of reliance, Exhibits 3-5, 75 TTABVUE 223-887; Rakestraw declaration,

paragraph 7, 70 TTABVUE 7-9.

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Cancellation No. 92066927

Although Respondent did not object in its brief to Petitioner’s reliance on the six

unpleaded registrations, it did not affirmatively treat them as being of record either.

We find the unpleaded registrations have not been tried by implied consent of the

parties such that we can treat the pleadings amended to assert the registrations

under Fed. R. Civ. P. 15(b). See Harry Winston, Inc., 2014 TTAB LEXIS 284, at *9

n.14. We give no further consideration to the six unpleaded registrations.

Therefore, we only have considered Petitioner’s witness testimony and evidence

in the context of Petitioner’s “history and use” of offering fencing products, featuring

the color red as a mark, and offering fencing products under the unpleaded “Red

Brand” word mark, discussed infra.

IV. Entitlement to a Statutory Cause of Action

In every inter partes case, the plaintiff must establish its statutory entitlement to

bring an opposition or cancellation proceeding. To establish entitlement to a statutory

cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of

interests protected by the statute and (ii) proximate causation. Corcamore, LLC v.

SFM, LLC, 978 F.3d 1298, 1304-05 (Fed. Cir. 2020). Demonstrating a real interest in

cancelling registration of a mark satisfies the zone-of-interests requirement, and

demonstrating a reasonable belief in damage by the maintenance of a mark

demonstrates damage proximately caused by registration of the mark. Id. at 1306.

As noted at the beginning of this opinion, Petitioner has properly made its pleaded

registration of record by submitting a copy from the USPTO’s TSDR electronic

database, contemporaneous with the filing of the petition to cancel, and under its

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Cancellation No. 92066927

notice of reliance.21 Trademark Rule 2.122(d)(1)-(d)(2), 37 C.F.R. §§ 2.122(d)(1)-(d)(2).

The pleaded registration establishes Petitioner’s direct commercial interest and

Petitioner’s real interest in the proceeding and its reasonable belief in likely damage,

establishing its entitlement to petition to cancel Respondent’s registration.22 See

Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1161 (Fed. Cir. 2002) (direct

commercial interest satisfies “real interest test”) (citation omitted); Cunningham v.

Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000) (pleaded registrations “suffice to

establish …direct commercial interest” and entitlement; a belief in likely damage can

be shown by establishing a direct commercial interest) (citations omitted); Monster

Energy Co. v. Lo, Opp. No. 91225050, 2023 TTAB LEXIS 14, at *15 (TTAB 2023)

(pleaded registrations establish entitlement to oppose on the ground of likelihood of

confusion); Shenzhen IVPS Tech. Co., 2022 TTAB LEXIS 383, at *20 (valid and

subsisting pleaded registration establishes opposer’s direct commercial interest and

real interest in the proceeding and its reasonable belief in damage) (citation omitted).

V. Laches Affirmative Defense

The elements of a laches defense are: (1) unreasonable delay in assertion of one’s

rights against another; and (2) material prejudice to the latter attributable to the

delay. Lincoln Logs Ltd. v. Lincoln Pre-Cut Logs Homes Inc., 971 F.2d 732, 734 (Fed.

Cir. 1992). Respondent, as the party raising the affirmative defense, has the burden

21 1 TTABVUE; 75 TTABVUE 13-23.

22 Respondent did not address Petitioner’s entitlement in its brief.

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Cancellation No. 92066927

of proving it. See Bridgestone/Firestone Rsch. Inc. v. Automobile Club de l’Quest de

la France, 245 F.3d 1359, 1361 (Fed. Cir. 2001).

To determine whether Petitioner has unreasonably delayed in bringing this

cancellation proceeding, we begin by ascertaining the date Petitioner first had

knowledge that the involved Supplemental Registration issued. See TPI Holdings,

Can. No. 92064976, 2018 TTAB LEXIS 121, at *17 (TTAB 2018) (“[I]n the context of

a laches defense asserted in a cancellation proceeding involving a Supplemental

registration and in calculating the amount of any unreasonable delay, we calculate

notice by determining the date when the petitioner first had knowledge that the

registration issued.”). In this case, the involved Supplemental Registration issued on

April 30, 2013 and the parties identify dates in 2012 and 2017 for purposes of arguing

Petitioner’s knowledge of Respondent’s Supplemental Registration.

Respondent’s witness and CEO, Nathan Kovalchick, recounts that Respondent

received a cease and desist letter in September 2012 from Chicago Heights Steel, a

company Respondent asserts is in privity23 with Petitioner.24 Mr. Kovalchick states

that after the September 2012 letter, Respondent heard nothing from Petitioner itself

23 “In trademarks, the concept of privity generally includes, inter alia, the relationship of

successive owners of a mark (e.g., assignor and assignee, or survivor of a merger) and the

relationship shared by ‘related companies’ within the meaning of Sections 5 and 45 of the

Trademark Act, 15 U.S.C. §§ 1055 and 1127.” Warren Distrib., Inc. v. Royal Purple, LLC,

Opp. No. 91214792, 2015 TTAB LEXIS 243, at *3-4 (TTAB 2015).

24 Mr. Kovalchick responded to this letter stating “Chicago Heights is not the record owner of

the registration that you mentioned. In the event that Chicago Heights is the record owner,

then please provide proof of same.” Kovalchick declaration, Exhibit 4, 78 TTABVUE 23.

Petitioner points out that “the September 2012 letter that Franklin mentions also predates

Franklin’s Supplemental Registration which did not issue until April 30, 2013.” Petitioner’s

reply brief, 86 TTABVUE 21 n.5.

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Cancellation No. 92066927

(Keystone Consolidated Industries, Inc.) until May 2017,25 roughly five years after it

received the cease and desist letter from Chicago Heights Steel.26

Petitioner argues that “Franklin’s interactions with a third party [Chicago

Heights Steel] are not relevant.”27 Petitioner asserts that there was no unreasonable

delay, as it filed the petition to cancel “two months” after learning of Respondent’s

registration.28

We find that Respondent has not proven that Petitioner knew about Respondent’s

Supplemental Registration earlier than the May 30, 2017 letter of Petitioner’s outside

counsel. The Chicago Heights Steel cease and desist letter sent to Respondent in

September 2012 occurred before Respondent’s Supplemental Registration issued on

April 30, 2013. Since we find that Respondent has not established that Petitioner

knew of Respondent’s registration before May 30, 2017, the filing of the petition to

cancel in September 2017, a little more than three months later, is an insufficient

25 The record shows that On May 30, 2017, Petitioner’s outside counsel wrote to Respondent

on behalf of Petitioner Keystone Consolidated Industries, Inc. Kovalchick declaration,

Exhibit 5, 78 TTABVUE 26. Both the Chicago Heights Steel 2012 communication and the

Keystone Consolidated Industries Inc. 2017 communication were cease and desist letters that

asked Respondent to cease and desist from selling the Red, White and Blue Fence Post Mark,

and claiming Petitioner’s Registration No. 125561 was being infringed. Attached to Keystone

Consolidated Industries Inc.’s 2017 correspondence was a 1999 copy of the registration

certificate, showing Keystone Consolidated Industries, Inc. as owner.

26 Kovalchick declaration, paragraphs 12, 14-20, 78 TTABVUE 9-10.

27 Petitioner’s reply brief, 86 TTABVUE 21.

28 Petitioner’s reply brief, 86 TTABVUE 21. Petitioner references Exhibit 6 of the Kovalchick

declaration which consists of a June 12, 2017 email communication with letter attachment

from Respondent’s counsel writing on behalf of Respondent. Kovalchick declaration, Exhibit

6, 78 TTABVUE 35.

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Cancellation No. 92066927

period to be considered undue or unreasonable delay for laches to apply. We find

Respondent has failed to prove undue delay for purposes of its laches defense.

For the sake of completeness, we will determine whether Respondent showed

prejudice resulting from Petitioner’s delay.

To meet its burden of proving that laches bars Petitioner’s likelihood of confusion

claim, Respondent also must establish that it suffered harm as a result of the delay,

which here Respondent asserts as economic prejudice.29 See Bridgestone/Firestone

Rsch., 245 F.3d at 1362; Schiedmayer Celesta GmbH v. Piano Factory Grp., Inc., Can.

No. 92061215, 2019 TTAB LEXIS 334, at *32 (TTAB 2019) (citations omitted), aff’d,

11 F.4th 1363 (Fed. Cir. 2021) (citations omitted). Economic “[p]rejudice is generally

shown by the fact that in reliance on petitioner’s silence, respondent built up a

valuable business and goodwill around the mark during the time petitioner never

objected.” Kemi Organics, LLC v. Gupta, Can. No. 92065613, 2018 TTAB LEXIS 149,

at *41 (TTAB 2018) (quoting Turner v. Hops Grill & Bar Inc., Can. No. 92026674,

1999 TTAB LEXIS 416, at *7 (TTAB 1999)); see also Bridgestone/Firestone Rsch., 245

F.3d at 1362 (“economic prejudice [is] based on loss of time or money or foregone

opportunity”).

Respondent’s witness Mr. Kovalchick refers to Respondent’s use of the Red, White

and Blue Fence Post mark from 2012 through the filing of the petition to cancel, and

its witness confidentially provides its total unit and dollar sales during the period

29 Prejudice can also be in the form of evidentiary prejudice which is “prejudice at trial due

to loss of evidence or memory of witnesses.” Bridgestone/Firestone Rsch., 245 F.3d at 1362.

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Cancellation No. 92066927

“from 2014 through the present.”30 Based on this testimony, Respondent argues in its

brief that it has shown during this period – the delay period – it made “significant

inroads in the industry” and “substantial sales” and continued to invest in its Red,

White and Blue Fence Post Mark.31

However, the relevant period of delay is the approximately three-month period

between May 30, 2017 through September 22, 2017. See Gasser Chair Co. v. Infanti

Chair Mfg. Corp., 60 F.3d 770, 774 (Fed. Cir. 1995) (the relevant period for purposes

of economic prejudice is the delay period); see, e.g., TPI Holdings, 2018 TTAB LEXIS

121, at *17-18 (considering economic prejudice during the period of unreasonable

delay of over four years). There is no competent evidence in the record about

advertising expenditures during the relevant May-September period,32 and there is

30 Kovalchick declaration, paragraphs 11-12, 78 TTABVUE 9.

31 Respondent’s brief, 84 TTABVUE 12, 25-26 (referencing among other things, the

Kovalchick declaration, paragraphs 11-12, 78 TTABVUE 9). The parties are treating

Respondent’s advertising and sales figures as confidential; however, Petitioner did not file

Respondent’s interrogatory responses under seal or file redacted copies. The Board has

treated these responses as confidential for the present, but because it is the general policy of

the Board that all papers in a proceeding be public, at the end of this opinion, Petitioner will

be allowed time in which to submit a notice of reliance with a redacted version of this exhibit,

failing which, the exhibit will be treated as part of the public record.

32 “Except as otherwise provided, and wherever applicable and appropriate, procedure and

practice in inter partes proceedings shall be governed by the Federal Rules of Civil

Procedure.” Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a). Respondent’s interrogatory

responses as to promotional expenditures provided under Petitioner’s notice of reliance are

not verified or sworn; they are only signed by counsel. “[U]nsigned and unverified answers to

interrogatories do not qualify as answers under Fed. R. Civ. P. 33” and “unverified answers

to interrogatories are not competent evidence.” Daniel J. Quirk, Inc. v. Village Car Co., Can.

No. 92057667, 2016 TTAB LEXIS 474, at *19 n.28 (TTAB 2016) (citing Cabales v. U.S., 51

F.R.D. 498, 499 (S.D.N.Y. 1970), aff’d, 447 F.2d 1358 (2d Cir. 1971)). But even if we were able

to consider the response as competent evidence, this information is extremely limited,

referencing only two examples of expenditures, with one expenditure prior to registration of

the Red, White and Blue Fence Post mark. We also note that Petitioner’s responses to

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no testimony from Mr. Kovalchick regarding Respondent’s promotional efforts or

other efforts to build goodwill in its Red, White and Blue Fence Post Mark during this

period. In the absence of such testimony and evidence, it is impossible to assess the

economic prejudice, if any, suffered by Respondent during the relatively brief period

of delay. See Bridgestone/Firestone Rsch., 245 F.3d at 1363 (“Economic prejudice

arises from investment in and development of the trademark and the continued

commercial use and economic promotion of a mark over a prolonged period adds

weight to the evidence of prejudice.”); Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813,

824 (7th Cir.1999) (“[i]f only a short period of time has elapsed since the accrual of

the claim, the magnitude of prejudice require[d] before the suit should be barred is

great, whereas if the delay is lengthy, prejudice is more likely to have occurred and

less proof of prejudice will be required.”). Compare Alfacell Corp. v. Anticancer, Inc.,

Can. No. 92032202, 2004 TTAB LEXIS 441, at *23 (TTAB 2004) (evidence of economic

prejudice insufficiently specific because “it is difficult to gauge, in the absence of

dollar amounts or other specific information relative to its promotional efforts, the

degree to which there has been any detriment”) with Ava Ruha Corp. v. Mother’s

Nutritional Ctr., Inc., Can. No. 92056067, 2015 TTAB LEXIS 10, at *27-29 (TTAB

2015) (economic prejudice found based on a showing of tens of millions of dollars spent

growing the business, adding at least 15 stores, and spending over $7 million

promoting its marks during the three year and two month period of delay).

interrogatories submitted under Respondent’s notice of reliance are similarly unsworn by

Petitioner and only signed by counsel.

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Cancellation No. 92066927

We find Respondent has not sufficiently shown that it suffered economic prejudice

for laches to apply.

Accordingly, Respondent’s laches defense falls not just for failing to show undue

delay but also for failing to show prejudice resulting therefrom.

VI. Priority

Priority may arise from “a prior registration, prior trademark or service mark use,

prior use as a trade name, prior use analogous to trademark or service mark use, or

any other use sufficient to establish proprietary rights.” See Herbko Int’l, 308 F.3d at

1162. Petitioner must prove priority by a preponderance of the evidence.

A. Priority where Petitioner owns a Principal Registration and Respondent

Owns a Supplemental Registration

In a cancellation proceeding where a petitioner owns a Principal Register

registration (or can claim the benefits of a Principal Register registration, as is the

case here) and respondent owns a Supplemental Registration, the Section 7(b)

presumptions apply only to petitioner;33 therefore, a petitioner is entitled to rely on

its pleaded Principal Register registration for purposes of priority without having to

establish a prior use date either by relying on its application filing date or proving an

33 A registration on the Supplemental Register is not entitled to any statutory presumptions

under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), and is incompetent as evidence

of use. See Trademark Act Section 26, 15 U.S.C. § 1094; In re Bush Bros. & Co., 884 F.2d 569,

570 n. 2 (Fed. Cir. 1989). A registrant owning a registration on the Supplemental Register

also is not entitled to a constructive use date as of the application filing date. Trademark Act

Section 7, 15 U.S.C. § 1057.

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Cancellation No. 92066927

earlier use date.34 King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1402

(CCPA 1974).35

Accordingly, because Petitioner’s pleaded registration is of record such that

Petitioner can claim the benefits of a Principal Register registration, and because

Respondent has waived its counterclaims directed to Petitioner’s pleaded registration

and owns a Supplemental Register registration, Petitioner’s priority has been

established for the goods identified in its pleaded registration.

34 Respondent did not address priority in its brief.

35 In contrast, in a cancellation proceeding where both parties own Principal Register marks,

the Section 7(b) presumptions apply to both marks and the parties stand on equal footing.

Under such circumstances, “the doctrine of King Candy Company v. Eunice King’s Kitchen,

Inc., is not applicable … and … insofar as prior rights are concerned, [it] will be the party

who can prove priority of use rather than mere priority of registration.” SCOA Indus., Inc. v.

Kennedy & Cohen, Inc., 1975 TTAB LEXIS 117, at *6 (TTAB 1975) (proceeding number

unavailable); see also Brewski Beer Co. v. Brewski Bros. Inc., Can. No. 92021735, 1998 TTAB

LEXIS 116, at *9-10 (TTAB 1998) (in a cancellation proceeding against a Principal Register

registration where petitioner also owns a Principal Register registration, petitioner must

establish prior rights but can rely on its application filing date for priority purposes). A

plaintiff also must prove priority in a cancellation proceeding or in an opposition where a

counterclaim has been asserted against the plaintiff’s pleaded registration. Massey Junior

Coll., Inc. v. Fashion Inst. of Tech., 492 F.2d 1399, 1403 n.6 (CCPA 1974). As indicated,

Respondent waived its counterclaims to cancel Petitioner’s pleaded registration.

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Cancellation No. 92066927

B. Petitioner’s Prior Use of the “Red Top Fence Post Mark” and “Color Red”

for Related Fence Post Products36

As noted earlier, Petitioner also alleged in the petition to cancel prior use of the

Red Top Fence Post Mark and provided testimony and evidence regarding same. 37

Because we find priority based on Petitioner’s pleaded registration for its Red Top

Fence Post Mark, we need not separately consider Petitioner’s common law rights in

the Red Top Fence Post Mark. See Nkanginieme v. Appleton, Opp. No. 91256464, 2023

TTAB LEXIS 64, at *4-5 (TTAB 2023) (Board did not need to consider common law

priority because it found it sufficient to rely on the pleaded registration in analyzing

likelihood of confusion); Itel Corp. v. Ainslie, Opp. No. 91072956, 1988 TTAB LEXIS

36 Petitioner appears to argue in its brief recognition by consumers of a group of “Red Top”

fence product color marks (which include types of fencing and fence posts) and commercial

strength (fame) based on their combined use. To the extent that Petitioner is attempting to

rely on and argue ownership of a family of “Red Top” color marks, and commercial strength

of the “Red Top” color mark family (in addition to its arguments directed to commercial

strength of its Red Top Fence Post Mark alone, see, e.g., McDonald’s Corp. v. McSweet, LLC,

Opp. No. 91178758, 2014 TTAB LEXIS 351, at *13 & 19 (TTAB 2014) (family of marks claim

considered based on fame of the MC family of marks and also considering “the fame of the

mark MCDONALD’S because the ‘MC’ family was derived from and points back to the mark

and as such is integrally related to that mark”)), a family of marks is unpleaded in the

petition to cancel. Therefore, we need not consider the family of marks issue. Wise F&I, LLC

v. Allstate Ins. Co., Opp. No. 91226028, 2016 TTAB LEXIS 473, at *12 (TTAB 2016) (“A

plaintiff must plead ownership of a family of marks in its complaint in order to rely on the

marks as a family as a basis for sustaining the opposition at trial or in a motion for summary

judgment.”). We do however, consider Petitioner’s history and use of fencing with a red top

in connection with our discussion of the mark’s commercial strength, see infra.

We further note that (i) a family of marks requires establishing common law priority of the

family, in this case, priority based on acquired distinctiveness of the color red as applied to

Petitioner’s fence products, see discussion supra regarding the lack of inherent

distinctiveness of color marks, which Petitioner has not done; and (ii) Petitioner’s ownership

of a “Red Top” family of color marks was not tried by express or implied consent. In addition,

Petitioner does not plead ownership of a “Red Top” word mark used in conjunction with its

Red Top Fence Post Mark as part of a family of marks.

37 Petition to cancel paragraph 6, 1 TTABVUE.

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Cancellation No. 92066927

79, at *3 (TTAB 1988) (“[B]ecause of the existence of opposer’s valid and subsisting

registration, it need not prove prior use as to the services recited therein.”).

Petitioner also alleged in the petition to cancel prior use of the color red on

products related to metallic fence posts.38 Petitioner’s witness Dain Rakestraw

provided very limited testimony and evidence regarding agricultural fence products

that prominently feature the color red, namely, “the top wire strand of fencing” and

“individual bars in barbed wire [fence] products.”39

However, we need not consider whether Petitioner has established a proprietary

interest in use of the color red as applied to other fence products (i.e., fencing–“the

top wire strand of fencing” and “individual bars in barbed wire”) because Petitioner’s

pleaded registration for metallic fence posts, for which we have found priority, is

closest to Respondent’s goods.40 See Sock It To Me, Inc. v. Fan, Opp. No. 91230554,

2020 TTAB LEXIS 201, at *20-21 (TTAB 2020) (confining 2(d) analysis to most

38 Petition to cancel paragraph 6, 1 TTABVUE.

39 Rakestraw declaration, paragraphs 2, 3, 4, 5 and 7, 70 TTABVUE 5-7. Dillon declaration,

paragraph 5, 72 TTABVUE 6.

40 In any event, because color marks are not inherently distinctive as applied to products, see

discussion supra, Petitioner’s priority claim depends on establishing that the color marks

had acquired distinctiveness, which is a heavy burden. See Owens-Corning, 774 F.2d 1116,

1127 (Fed. Cir. 1985) (“By their nature color marks carry a difficult burden in demonstrating

distinctiveness and trademark character.”). Such evidence is lacking in this record, where

Mr. Rakestraw and Mr. Dillon did not provide a date by which the color marks applied to

wire fencing acquired distinctiveness nor sales figures for its wire fencing products (barbed

wire or wire fencing), provided only combined advertising figures for “Red Brand Products”

as a whole rather than for wire fence products separately, and relied mainly on Petitioner’s

long use. Rakestraw declaration, paragraphs 4-5, 13-14, 16, 70 TTABVUE 6, 12, 13 (combined

advertising for all fence products featuring the color red; long use); Dillon declaration, 72

TTABVUE (solely discussing fence post product sales and not providing any other sales data

for wire fence products).

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Cancellation No. 92066927

similar pleaded mark); Fiserv, Inc. v. Elec. Transaction Sys. Corp., Opp. No.

91214266, 2015 TTAB LEXIS 29, at *10 (TTAB 2015); In re Max Cap. Grp., Ltd., Ser.

No. 77186166, 2010 TTAB LEXIS 1, at *4-5 (TTAB 2010). Accordingly, we consider

likelihood of confusion only based on Petitioner’s pleaded registration for the Red Top

Fence Post Mark.

VII. Likelihood of Confusion

Our determination under Trademark Act Section 2(d) is based on an analysis of

all of the facts in evidence that are relevant to the factors bearing on the issue of

likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361

(CCPA 1973) (“DuPont factors”). Petitioner must establish that there is a likelihood

of confusion by a preponderance of the evidence. Cerveceria Centroamericana, S.A. v.

Cerveceria India, Inc., 892 F.2d 1021, 1023 (Fed. Cir. 1989) (citing cases involving

likelihood of confusion).

In any likelihood of confusion analysis, two key considerations are the similarities

between the marks and the similarities between the goods. See Federated Foods, Inc.

v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (CCPA 1976) (“The 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.”). We discuss the DuPont

factors for which there is relevant argument and evidence. See In re Guild Mortg. Co.,

912 F.3d 1376, 1379-80 (Fed. Cir. 2019) (the Board considers each DuPont factor for

which there is evidence and argument).

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Cancellation No. 92066927

“Not all DuPont factors are relevant in each case, and the weight afforded to each

factor depends on the circumstances. … Any single factor may control a particular

case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998 (Fed.

Cir. 2020) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07 (Fed. Cir. 1997)).

A. Similarity or Dissimilarity of the Parties’ Goods

The second DuPont factor considers “the similarity or dissimilarity and nature of

the goods or services as described in an application or registration.” DuPont, 476 F.2d

at 1361. We analyze the second DuPont factor “on the basis of the identification of

goods or services set forth in defendant’s involved registration vis-à-vis the

identification of goods or services in plaintiff’s registration.” Mattel, Inc. v. Funline

Merch. Co., Can. No. 92040128, 2006 TTAB LEXIS 478, at *6 (TTAB 2006) (citing

Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990);

and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493 (Fed. Cir.

1987)).

Respondent’s goods are “Metal fence posts” and Petitioner’s goods are “metallic

fence posts.” The goods are identical.

The second DuPont factor weighs in favor of a finding of likelihood of confusion.

B. Similarity or Dissimilarity of the Parties’ Trade Channels, Classes of

Consumers, and Conditions of Sale

The third DuPont factor considers “the similarity or dissimilarity of established,

likely-to-continue trade channels,” while the fourth DuPont factor considers the

“conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful,

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Cancellation No. 92066927

sophisticated purchasing.” DuPont, 476 F.2d at 1361. In analyzing the third and

fourth Dupont factors, just as we do with the second DuPont factor, we look to the

identification of goods in Petitioner’s pleaded registration and the identification of

goods in Respondent’s involved registration. Stone Lion Cap. Partners v. Lion Cap.

LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014) (quoting Octocom Sys., 918 F.2d at 942);

Sock It To Me, 2020 TTAB LEXIS 201, at *24 (“our decision, [under the fourth Dupont

factor] however, must be based on the identification of goods in the pleaded

Registration and subject [registration] as that determines the scope of the benefit of

registration.”) (citations omitted).

Because the goods described in Petitioner’s and Respondent’s registrations are

identical, we presume that the channels of trade and classes of purchasers for those

goods are the same. In re Optica Int’l, 1977 TTAB LEXIS 119, at *6-7 (TTAB 1977)41

(applying presumption of identical trade channels for identical goods in connection

with an application seeking registration on Principal Register where the cited

registration issued on the Supplemental Register) (citations omitted); see also In re

Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (identical goods are presumed to

travel in same channels of trade to same class of purchasers). 42

We find, at a minimum, the channels of trade and classes of purchasers are the

same and this weighs in favor of a finding of likelihood of confusion.

41 Serial number unavailable.

42 Respondent does not address this DuPont factor in its brief.

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Cancellation No. 92066927

As to conditions of sale under the fourth DuPont factor, Respondent argues that

fence posts are meant to be permanent structures and are not an impulse purchase

because purchasers use the fence posts primarily for farm land where it is important

to keep farm animals from straying.43 Petitioner submits that Respondent’s

assertions that purchasers of their fence posts are sophisticated should be given little

weight and that the least sophisticated purchasers of fence posts should be

considered.44

The purchasers of the parties’ fence posts are those seeking to build or repair a

fence. Respondent’s witness Mr. Kovalchick states that its fence product is for

property owners “for their farms, gardens or other properties.”45 Petitioner’s

witnesses have identified its “metallic fence posts” as an agricultural fence product,46

and one of the advertisements provided by Petitioner’s witness Mr. Rakestraw (most

without specific testimony discussing them) states on its face: “being prepared is

essential when planning a fence installation … several factors need to be

considered.”47 Petitioner’s website excerpts, also provided by Mr. Rakestraw as

43Respondent’s brief, 84 TTABVUE 21 (referencing Respondent’s unsworn supplemental

response to interrogatories 6 and 42, Petitioner’s notice of reliance, 75 TTABUVE).

44 Petitioner’s reply brief, 86 TTABVUE 16. Petitioner argues that Respondent’s

interrogatory responses do not support a finding of sophisticated purchasers. We find little

weight can be given to Respondent’s statement because it is conclusory, and the interrogatory

response referenced is not competent evidence as Respondent’s interrogatory responses are

unsworn. See supra n.32 regarding unsworn interrogatories.

45 Kovalchick declaration, paragraph 5, 78 TTABVUE 6.

46 Petitioner alleged in the petition to cancel that “Petitioner is a leader in the agricultural

fencing industry.” Petition to cancel paragraph 1, 1 TTABVUE.

47 Rakestraw declaration, paragraph 11, Exhibit A-08, 70 TTABVUE 11, 67.

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Cancellation No. 92066927

exhibits, show on their face a fence calculator for “how much you’ll need” and

“estimated budget.”48 A blogpost provided under notice of reliance at

blog.redbrand.com asks “which fence is right for you?” and states: “Talk to your dealer

today for more information which material is best for your farm.”49 A Facebook post

provided by Petitioner under notice of reliance states:

WHAT ARE YOU FENCING IN? Red Brand offers a variety of spacing,

heights and wire gauges for various applications. Consider how much

animal pressure will be present; the higher the number of animals, the

more stress the fence will incur. In addition, fences near a barn or

feeding area will sustain more pressure than other regions.50

We find that buying metal fence posts which, based on the record, are generally

used for agricultural properties, would not be an impulse purchase. However, because

there is no specific testimony in the record about purchasing conditions, pricing, and

all types of purchasers who would purchase such metallic or metal fence post

products,51 we find the sophistication of purchasers neutral in the DuPont analysis.

See, e.g., Double Coin Holdings Ltd. v. Tru Dev., Can. No. 92063808, 2019 TTAB

LEXIS 347, at *25-26 (TTAB 2019) (finding the fourth Dupont factor neutral because

even if the parties’ goods are not subject to impulse buying, there was a lack of

48 Rakestraw declaration, paragraph 11, and Exhibit A-08, 70 TTABVUE 11, 68.

49 Petitioner’s notice of reliance Exhibit D-17, 76 TTABVUE 13-14.

50 Petitioner’s notice of reliance Exhibit D-19, 76 TTABVUE 114.

51 Petitioner’s social media pages do evidence some pricing information for its wire fencing

products, but absent specific witness testimony, this information is hearsay. See WeaponX

Performance Prods. Ltd. v. Weapon X Motorsports, Inc., Opp. No. 91221553, 2018 TTAB

LEXIS 72, at *18-19 (TTAB 2018) (factual assertions on webpages were hearsay because they

were not supported by any statement from a competent witness).

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Cancellation No. 92066927

evidence in the record showing “consumers will exercise a higher than ordinary

degree of purchasing care”).

C. Strength of the Mark

We now turn our consideration to the strength of Petitioner’s mark under the fifth

and sixth Dupont factors in order to evaluate the scope of protection to which

Petitioner is entitled. DuPont, 476 F.2d at 1361. See Spireon, Inc. v. Flex Ltd., 71

F.4th 1355, 1362 (Fed. Cir. 2023) (“Two of the DuPont factors (the fifth and sixth)

consider strength.”). The fifth DuPont factor enables Petitioner to prove that its

pleaded mark is entitled to an expanded scope of protection by adducing evidence of

“[t]he fame of the prior mark (sales, advertising, length of use);” the sixth DuPont

factor allows Respondent to contract that scope of protection by adducing evidence of

“[t]he number and nature of similar marks in use on similar goods.” DuPont, 476 F.2d

at 1361.

In determining the strength of a mark, we consider both inherent strength, based

on the nature of the mark itself, and if there is probative evidence in the record, its

commercial strength or fame, based on marketplace recognition of the mark. See In

re Chippendales USA, Inc., 622 F.3d at 1353-54 (“A mark’s strength is measured both

by its conceptual strength … and its marketplace strength”); Top Tobacco, L.P. v.

North Atl. Operating Co., Inc., Opp. No. 91157248, 2011 TTAB LEXIS 367, at *25

(TTAB 2011) (the strength of a mark is determined by assessing its inherent strength

and its commercial strength). We also consider, if there is evidence in the record,

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Cancellation No. 92066927

whether the mark has commercial weakness in the marketplace. DuPont, 476 F.2d

at 1361.

Conceptual Strength52

Considering the conceptual strength of Petitioner’s mark, we evaluate its intrinsic

nature, which here is a single-color mark applied to portion of a fence post. As

previously discussed, marks consisting of color applied to a product or a portion of a

product as a matter of law are not inherently distinctive and can only be registered

upon a showing of acquired distinctiveness (or secondary meaning). Wal-Mart Stores,

529 U.S. at 211-212 (citing Qualitex Co., 514 U.S. at 162-163 explaining that “a

product’s color is unlike ‘fanciful,’ ‘arbitrary,’ or ‘suggestive’ words or designs, which

almost automatically tell a customer that they refer to a brand”).

Because color marks applied to products or portions of products such as

Petitioner’s Red Top Fence Post Mark are not generally distinctive, (and can never

be inherently distinctive either under common law, under pre-Lanham Trade-mark

Acts, or under the Lanham Act), we find that Petitioner’s mark is inherently weak.

See Wal-Mart Stores, 529 U.S. at 213 (“In the case of product design, as in the case of

color, we think consumer predisposition to equate the feature with the source does

not exist”; consumers are aware that product features such as color or shape are

“intended not to identify the source, but to render the product itself more useful or

52 Petitioner did not address conceptual strength. See Brooklyn Brewery Corp. v. Brooklyn

Brew Shop, LLC, Opp. No. 91223982, 2020 TTAB LEXIS 269, at *52 (TTAB 2020) (although

plaintiff did not address conceptual strength of its BROOKLYN marks, the Board found the

BROOKLYN marks conceptually and inherently weak), aff’d in part, rev’d in part, 17 F.4th

129 (Fed. Cir. 2021).

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Cancellation No. 92066927

more appealing”). In view of the foregoing, Petitioner’s single-color mark applied to a

portion of its product is not a conceptually strong mark.

Fame or Commercial Strength

We now consider Petitioner’s testimony and evidence of commercial strength or

fame of the Red Top Fence Post Mark.

“Fame for purposes of likelihood of confusion is a matter of degree that ‘varies

along a spectrum from very strong to very weak.’” Coach Servs., Inc. v. Triumph

Learning LLC, 668 F.3d 1356, 1367 (Fed. Cir. 2012) (citations omitted). Fame for

likelihood of confusion purposes may be measured indirectly by, for example, “the

volume of sales and advertising expenditures of the goods sold under the mark” “and

other factors such as length of time of use of the mark; wide-spread critical

assessments; notice by independent sources of the products identified by the marks;

and the general reputation of the products and services.” Weider Publ’ns, LLC v. D &

D Beauty Care Co., Opp. No. 91199352, 2014 TTAB LEXIS 2, at *18-19 (TTAB 2014).

Because fame plays a dominant role in the likelihood of confusion analysis and

famous marks are entitled to a wide scope of protection, a plaintiff is obligated to

clearly prove the fame of its mark. Coach Servs., 668 F.3d at 1367 (holding that it is

the opposer’s burden to prove fame of its mark); Blue Man Prods., Inc. v. Tarmann,

Opp. No. 91154055, 2005 TTAB LEXIS 338, at *32 (TTAB 2005) (same) rev’d on other

grounds, slip. op. 05-2037, (D.D.C. Apr. 3, 2008).

Petitioner asserts that its registered Red Top Fence Post Mark is a strong mark

in the relevant market, which Petitioner defines as the “agricultural property”

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Cancellation No. 92066927

market,53 pointing to its sales of fence posts bearing the mark for over a “hundred

year plus period”54 and its “evidence of advertising and use of the red color mark” as

demonstrating “that it has had widespread exposure in the United States.”55

Respondent responds to these assertions by arguing that “Petitioner has failed to

demonstrate that any ‘fame’ or ‘strength’ of its mark extends to a red top on any fence

post,” while acknowledging “significant evidence surrounding [Petitioner’s] long-term

sale of ‘red-top’ products.”56

Mr. Rakestraw discusses Petitioner’s history of marketing and selling its

agricultural fence post products featuring the color red “prominently at the top” for

over a century.57 Petitioner participates in trade shows and uses varied marketing

53 Petitioner’s brief 82 TTABVUE 35. It appears that Petitioner is asserting niche market

commercial strength in the agricultural fencing market. See ProQuest Info. and Learning Co.

v. Island, Opp. No. 91158016, 2007 TTAB LEXIS 33, at *26 (TTAB 2007) (finding opposer’s

mark strong based on “widespread recognition and renown of the its mark, particularly

among those in the academic, research, and education fields and characterizing this as “niche

fame”). See Rakestraw declaration, paragraphs 4 and 5, 70 TTABVUE 6, and supported by

an advertisement, Exhibit A-08, which states on its face:

Red Brand is a line of premium agricultural fencing products and reigns as the

most recognized brand of farm fence in the United States. The Red Brand logo

represents l30 years of making top quality, fence products for a wide variety of

applications. Whether you’re a full-time farmer or rancher, horse or property

owner, Red Brand stands as the product of choice when selecting the best.

Id. at 66.

54 Petitioner’s reply brief, 86 TTABVUE 17.

55 Petitioner’s brief, 82 TTABVUE 35.

56 Respondent’s brief, 84 TTABVUE 22. We consider Respondent’s statements in its brief that

there is “significant evidence” relating to the sales of Petitioner’s fence products as too

nebulous to be deemed a concession that the Red Top Fence Post Mark is a strong mark.

Petitioner’s reply brief, 86 TTABVUE 18; Respondent’s brief, 84 TTABVUE 22.

57 Rakestraw declaration, paragraph 5, 70 TTABVUE 6.

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Cancellation No. 92066927

and advertising media including internet (website and social media), print, radio,

television, and celebrity endorsements to promote its fencing and fence post products

which feature red tops.58 Petitioner advertises the Red Top Fence Post Mark and its

other red topped fencing products in conjunction with Petitioner’s unpleaded “Red

Brand” word mark such as this example shown below.59

Petitioner “does not track advertising and marketing expenses at the product

level” and has provided combined advertising expenditures for the period of 2011

58 Rakestraw declaration, paragraph 12, 70 TTABVUE 11.

59 Rakestraw declaration, paragraphs 5, 6, 12, 70 TTABVUE 6, 11. Advertisement embedded

in the Rakestraw declaration from Petitioner’s website redbrand.com. Id. at paragraph 6. As

indicated in n.36 supra, Petitioner does not plead ownership of a “Red Top” word mark.

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Cancellation No. 92066927

through mid-2021 for multiple red topped fence products together: the Red Top Fence

Post Mark, related red topped fencing products that feature the color red, and

Petitioner’s unpleaded “Red Brand” word mark.60 Therefore, there are no separate

advertising figures for the Red Top Fence Post Mark alone.

Petitioner’s evidence of advertising and promotion of its fence post product

includes “look for” type advertising showing promotion of the red topped portion of its

fence post. Mr. Rakestraw testified about one advertisement from the 1950s featuring

the “red top” shown below.61

60 Rakestraw declaration, paragraph 16, 70 TTABVUE 16.

61 Rakestraw declaration, paragraph 12, 70 TTABVUE 12.

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Cancellation No. 92066927

Also in the record and provided by Mr. Rakestraw is what appears to be a more

current undated advertisement that references the red topped portion of Petitioner’s

fence post, shown below. Mr. Rakestraw describes the advertisement as marketing

material, but does not specifically discuss it.

62

62 Rakestraw Declaration, Exhibit A-12 (marketing material), 70 TTABVUE 144.

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Additional advertisements provided by Mr. Rakestraw as exhibits to his

declaration testimony are undated, and described by him as various types of

advertising. But, again, the advertisements are not specifically discussed. Many of

these advertisements do not include “look for advertising” for the Red Top Fence Post

Mark, and the fence post goods are frequently advertised with other red topped

fencing products and alongside the unpleaded “Red Brand” word mark. Petitioner’s

social media and blog post advertising provided under notice of reliance shows on its

face that Petitioner promotes all of its products together, often advertising the Red

Top Fence Post Mark with Petitioner’s unpleaded “Red Brand” word mark and other

red topped fencing products, and even advertising them with other non-“Red Brand”

or non-red topped products.

The product guide, provided as an exhibit with Mr. Rakestraw’s declaration

testimony, and shown below, is one example where Petitioner advertises its various

fencing products under different marks together.63

63 Petitioner’s notice of reliance, Exhibits D19, D20, D21, 76 TTABVUE 16-276; Rakestraw

declaration, Exhibit A-12 (product guide), 70 TTABVUE 122.

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The documentary evidence suggests that in present day advertising, the

unpleaded “Red Brand” word mark is generally featured and more prominent than

the Red Top Fence Post Mark. Although the “Red Brand” word mark does call

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attention to the color red used as a feature on these products, it does not call attention

to the Red Top Fence Post Mark, which is displayed as just one of many products,

and sometimes, only some of the goods shown have a red-colored top.

As to sales, Petitioner’s witness, Timothy Dillon, confidentially provided a

combined figure of the number of units sold for six different types of fence posts

featuring the red top from 2011 through 2016 (no dollar sales figure provided) and

confidentially provided for the separate years 2017, 2018, 2019, 2020, and 2021,

separate unit and dollar sales figures64 for the six different types of fence posts offered

featuring a red top.65 Mr. Dillon also testified that Petitioner offers its fencing

products through its website, www.redbrandstore.com, and at over 4,500 retail

locations throughout the United States, including various farm supply stores,

hardware stores, and building supply stores.66

As to Petitioner’s advertising figures provided by Mr. Rakestraw, because they are

not broken down by product, or by mark, (e.g., Red Top Fence Post Mark, other red

topped fence products, and the unpleaded “Red Brand” word mark), we cannot

64 At least some of these figures include Canadian sales, which diminishes the probative value

of this evidence.

65 Dillon declaration, paragraph 5, 72 TTABVUE 6. We note that the sales figures from 2017

through 2021 fluctuate, showing both increases and decreases in those years with no specific

upward trend; diminished sales would reflect less consumer exposure.

66 Mr. Dillon’s testimony identified some of the specific retailers: Tractor Supply Company,

Lowe’s, Home Depot, and Ace Hardware. Dillon declaration, paragraph 4, 72 TTABVUE 6.

The accompanying exhibit, submitted confidentially, shows that some of these sales to these

national retailers are limited to a specific location, or low in volume. The exhibit also shows

many of the other sales appear to be to local retailers, with significant sales to a retailer

located in Canada. Thus, the lack of detail and explanation from Mr. Dillon limits the

probative value of this testimony.

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Cancellation No. 92066927

attribute the advertising figures solely to Petitioner’s Red Top Fence Post Mark. We

therefore cannot determine the consumer exposure to the Red Top Fence Post Mark

alone. In addition, Petitioner’s frequent advertising of the Red Top Fence Post Mark

with its unpleaded “Red Brand” word mark and other red topped fence products

diminishes the significance of Petitioner’s advertising evidence in proving the

strength of the Red Top Fence Post Mark. See Promark Brands, 2015 TTAB LEXIS

67, at *43 (“where a party’s advertising and sales data is based on materials and

packaging in which the mark at issue is almost always displayed with another mark,

such data does not prove that the mark at issue possesses the requisite degree of

consumer recognition”). Further, although Mr. Rakestraw generally explained the

nature of the advertising, the explanation lacks specifics. For example, there is no

testimony about the frequency, extent of distribution or reach of such advertising to

provide sufficient context which would allow an inference of exposure to consumers.67

See Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1320 (Fed.

67 The confidential Fed. R. Civ. P. 33(d) documentary evidence relating to Petitioner’s

advertising from 2011 through 2021 (submitted under Respondent’s notice of reliance) suffers

because much of it identifies general categories (e.g., internet advertising, print advertising)

but does not identify the exact nature of the advertising (magazine, mailer etc.), the reach of

the advertising, and the marks under which the fence products are advertised. Respondent’s

notice of reliance, Exhibit C-2, (confidential), 81 TTABVUE. See Turdin, Jr. v. Trilobite, Ltd.,

Con. Use. No. 94002505, 2014 TTAB LEXIS 17, at *8 (TTAB 2014) (“However, because the

interrogatory response provides virtually no information about the documents, and because

Trilobite did not provide context and other information about the documents through

testimony, their probative value is limited”); Kohler Co. v. Baldwin Hardware Corp., Can.

No. 92041434, 2007 TTAB LEXIS 3, at *5-6 (TTAB 2007) (introduction of documents

responsive to interrogatories pursuant to Fed. R. Civ. P. 33(d) permissible under notice of

reliance).

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Cancellation No. 92066927

Cir. 2018) (contextual evidence needed to arrive at a “proper understanding” of

whether customers would recognize the mark).

As to Petitioner’s sales figures, the information provided by Mr. Dillon lacks

context as to how these sales unit and dollar figures compare with other fence post

manufacturers making the information less probative. “Raw numbers of product sales

and advertising expenses may have sufficed in the past to prove fame of a mark, but

raw numbers alone in today’s world may be misleading.” Bose Corp. v. QSC Audio

Prods., Inc., 293 F.3d 1367, 1375 (Fed. Cir. 2002). It is difficult to accurately gauge

the level of this success in the fence post industry in the absence of additional

information, such as Petitioner’s market share or how Petitioner’s Red Top Fence

Post product ranks in terms of sales in the trade. That is, we lack sufficient

information as to how these sales numbers compare to other manufacturers of fence

posts.68 See Mini Melts, Inc. v. Reckitt Benckiser LLC, Opp. No. 91173963, 2016 TTAB

LEXIS 151, at *58 (TTAB 2016) (“The probative value of this evidence is diminished

by the fact that the amount is just a raw number in the vast pharmaceutical industry,

providing no context showing Applicant’s market share and whether the stated

amount of doses sold is significant in the industry.”).

68 We do have a confidentially provided total unit and dollar sales figure from Mr. Kovalchick

for the period from “2014 to the present,” although Respondent stopped selling the fence posts

during the course of this litigation. Kovalchick declaration, paragraph 12, 78 TTABVUE;

Petitioner’s notice of reliance, Respondent’s response to request for admission 10-12, 75

TTABVUE. Mr. Kovalchick did not testify as to the separate annual sales information figures

Respondent provided in the unsworn interrogatories, which as indicated, are not competent

evidence. Respondent’s total sales appear greater than Petitioner’s total sales (from 2017

through 2021), but the time periods do not completely overlap.

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Cancellation No. 92066927

Overall, we lack sufficient context about the advertising as well as comparative

advertising and sales numbers of competitors and/or market share percentages for

the sale of fence posts. This makes it difficult to make inferences about this indirect

evidence.69 Bose Corp., 293 F.3d at 1375.

Mr. Rakestraw also provided testimony relating to the “history and use” of

Petitioner offering to consumers for over one hundred years “red topped individual

wire strand fencing, or barbed wire fencing” featuring the color red.70 See Bose Corp.,

293 F.3d at 1376 (“Large market shares of product sales or large percentages of

advertising expenditures in a product line would buttress claims to fame.”). As

reflected by historical advertising in the record, Petitioner “has marketed and sold its

agricultural fencing products featuring the color red prominently at the top of its

products.”71 Also, in the present day, the evidence shows that Petitioner markets its

agricultural fencing featuring the color red under the separate unpleaded “Red

Brand” word mark.72

Mr. Rakestraw relies on the same advertising figures that are not broken down

by product category or mark for fencing products featuring the color red. As discussed,

we lack sufficient context for the advertising monies spent. There also is no specific

69 There is no evidence in the record of unsolicited media mentions of the Red Top Fence Post

Mark.

70 Rakestraw declaration, paragraphs 4-5, 10, 14, 70 TTABVUE 6, 12.

71 Rakestraw declaration, paragraphs 4-5, 10-13, 70 TTABVUE 6.

72 Rakestraw declaration, paragraphs 5-6, 12-13, 70 TTABVUE 6, 11-12.

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Cancellation No. 92066927

information in the record as to the sales of “red topped individual wire strand fencing,

or barbed wire fencing” featuring the color red.

We find this evidence based on long use and combined advertising figures with no

sales information is insufficient to support a finding of commercial strength of

Petitioner’s product line of fencing and fence posts featuring the color red.73 See Bose

Corp. 293 F.3d at 1375; Edwards Lifesciences Corp. v. VigiLanz Corp., Opp. No.

91154210, 2010 TTAB LEXIS 84, at *31 (TTAB 2009) (opposer’s advertising figures

were “not particularly impressive” and “the problem that we have in assessing the

effectiveness of the advertising expenditures is that there is no testimony or evidence

regarding whether opposer’s advertising expenditures are large or small vis-à-vis

other comparable medical products.”).

It is Petitioner’s burden to prove fame or commercial strength of a mark. Coach

Servs., 668 F.3d at 1367. Although we have over a hundred years of use of the Red

Top Fence Post Mark, and wire fencing with a red topped color feature, we lack

sufficient evidence of the extent of consumer exposure to or recognition of the Red

Top Fence Post Mark or the red topped fencing product line. Long use is not sufficient

by itself to prove fame or commercial strength. Wet Seal Inc. v. FD Mgmt. Inc., Opp.

No. 91157022, 2007 TTAB LEXIS 21, at *19 (TTAB 2007); Genesco Inc. v. Martz, Opp.

No. 91121296, 2003 TTAB LEXIS 123, at *35 (TTAB 2003) (“Even accepting that

opposer’s mark which was registered in 1918 … mere length of time that a mark is

73 There is no evidence in the record of unsolicited media mentions of the fencing product line

featuring the color red.

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Cancellation No. 92066927

in use does not by itself establish consumer awareness of the mark, such that the

mark can be found to be famous.”) (citing General Mills Inc. v. Health Valley Foods,

Opp. No. 91076303, 1992 TTAB LEXIS 37, at *22-23 (TTAB 1992)). We conclude on

this record that Petitioner has not established that its Red Top Fence Post Mark or

its red topped fencing product line is commercially strong.

Although Petitioner has not established commercial strength, there also is no

evidence in the record of third-party registrations or third-party use of the color red,

as a single-color mark, for fence post tops. Therefore, we have no evidence to show co-

existence of similar marks in the field that demonstrates weakness in the

marketplace.

Conclusion as to Strength of the Mark

While we have no evidence in the record as to the existence of third-party

registrations or third-party use for red color marks for fence posts, particularly red

color marks for fence post tops, that would affect the commercial strength of

Petitioner’s Red Top Fence Post mark, we also have insufficient evidence in the record

of commercial strength or fame.74 These findings counterbalance each other as we

74 Numerous third-party uses or registrations of red color marks for fence posts would affect

the scope of protection. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005) (“Evidence of third-party use of similar

marks on similar goods is relevant to show that a mark is relatively weak and entitled to only

a narrow scope of protection.”). The common use as a mark of a particular color in a particular

field would show customers are accustomed to distinguishing between color marks based on

color and particularly subtle differences in color, while a lack of such evidence would indicate

that the color mark is unique or at least not coexisting with other marks in the field. In re

Cook Med. Techs., 2012 TTAB LEXIS 496, at *22-23.

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Cancellation No. 92066927

have no evidence or insufficient evidence to expand or contract the scope of the

protection to which Petitioner’s Red Top Fence Post mark is entitled.

On the other hand, Petitioner’s Red Top Fence Post Mark is conceptually weak

due to its nature–color applied to a portion of its fence post product.

Given the Red Top Fence Post Mark’s conceptual weakness and lack of sufficient

record evidence that the Red Top Fence Post Mark is commercially strong, we

conclude that Petitioner’s mark is entitled to a narrow scope of protection.

Nonetheless, such protection is broad enough to protect from registration of a

confusingly similar mark for identical or related goods. See King Candy Co., 496 F.2d

at 1401 (likelihood of confusion is to be avoided as much between weak marks as

between strong marks); In re Colonial Stores, Inc., Ser. No. 209079, 1982 TTAB

LEXIS 116, at *7-8 (TTAB 1982)75 (“likelihood of confusion, mistake or deception is

to be avoided as much between weak marks as between strong marks”).

We find the fifth and sixth DuPont factors are neutral.

D. Similarity or Dissimilarity of the Parties’ Marks

We now turn to the first DuPont factor, “similarity or dissimilarity of the marks.”

DuPont, 476 F.2d at 1361.

Color marks, by their nature, do not lend themselves to the sort of comparison

that is possible in the case of word marks, whose similarity or dissimilarity in

appearance can be analyzed and articulated based on objective factors. When the

75 Complete serial number unavailable.

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Cancellation No. 92066927

marks at issue are color marks, the similarity of the marks must be decided primarily

on the basis of visual similarity, which has been described as a “subjective eyeball

test.” In re Cook Med. Techs., 2012 TTAB LEXIS 496, at *12-13 (citing General Foods

Corp. v. Ito Yokado Co., Opp. No. 91063721, 1983 TTAB LEXIS 70, at *16 (TTAB

1983)); see also In re Medline Indus., Inc., Ser. No. 87680078, 2020 TTAB LEXIS 16,

at *40 (TTAB 2020) (discussing comparison of color marks) (citing cases and treatise).

Cf. Volkswagenwerk AG v. Rose’vear Enters., Inc., 592 F.2d 1180, 1183 (CCPA 1979)

(the similarity of two design-only marks is “decided primarily on the basis of [their]

visual similarity” and “is a subjective determination”) (citations omitted).

“[W]hen comparing the color marks at issue, we are mindful that the test is not

whether the marks can be distinguished when subjected to a side-by-side

comparison,” but “rather whether the marks are sufficiently similar in terms of their

appearance and overall commercial impression so that confusion as to the source of

the goods offered under the respective marks is likely to result.” In re Cook Med.

Techs., 2012 TTAB LEXIS 496 at *13 (citation omitted). “The proper focus is on the

recollection of the average customer, who retains a general rather than specific

impression of the marks.” Inter IKEA Systems B.V. v. Akea, LLC, Opp. No. 91196527,

2014 TTAB LEXIS 166, at *17-18 (TTAB 2014) (citations omitted); see also

Volkswagenwerk AG, 592 F.2d at 1183 (the determination “must take into account

the commercial impressions of the marks on casual purchasers”) (emphasis in

original).

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Cancellation No. 92066927

We keep in mind that “[w]hen marks would appear on virtually identical goods or

services, the degree of similarity necessary to support a conclusion of likely confusion

declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed.

Cir. 1992).

Defining the Marks

In analyzing the marks, we of course must compare them as they appear in the

drawings. See Trademark Rule 2.52, 37 C.F.R. § 2.52 (“A drawing depicts the mark

sought to be registered.”). The record also includes descriptions of Petitioner’s and

Respondent’s marks, and we consider them as well. See In re Medline Indus., Inc.,

2020 TTAB LEXIS 16, at *37 (“because the drawings of the marks at issue here show

the particular shades of green and both descriptions [of the marks] use Pantone

designations to identify a specific shade of green, in comparing the claimed marks,

we cannot simply read one color claim to encompass the other claimed color”); In re

Cook Med. Techs., 2012 TTAB LEXIS 496, at *18-19 (considering the description of

the marks describing Registrant’s mark as lined for the color blue and consisting of

the color blue and Applicant’s mark, a color drawing, described as “a translucent,

iridescent teal color.”). But if there is any inconsistency between the drawing and the

color claimed in the description, the drawing controls. See In re Medline Indus., Inc.,

2020 TTAB LEXIS 16, at *37 n.36 (citing by analogy TMEP § 807.07(a)(1)); see also

In re Water Gremlin Co., 635 F.2d 841, 843, (CCPA 1980) (evaluating design based

on drawing, not on appellant’s characterization of the design); In re Change Wind

Corp., Ser. No. 86046590, 2017 TTAB LEXIS 233, at *15 n.6 (TTAB 2017) (“the

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Cancellation No. 92066927

drawing of the mark, not the words an applicant uses to describe it, controls what the

mark is”) (citations omitted).

Petitioner’s Red Top Fence Post Mark includes a color statement that reflects the

color red applied to the top of the fence post drawing with a disclaimer of the fence

post itself.76 Respondent’s Red, White and Blue Fence Post Mark is a color drawing

and includes a color claim of the colors, red, white, and blue, with the application of

the color to the mark described as “a blue bottom, white middle, and red top.” 77

Respondent makes no claim to the fence post itself.

76 Prior to November 2, 2003, the USPTO did not accept color drawings. TMEP § 1902.02(e)

(Note). An applicant who wanted to show color in a mark was required to submit a black-

and-white drawing with a statement identifying the color(s) and describing where it/they

appeared in the mark or submit a drawing that was lined for color. Id.

77 After November 2, 2003, the USPTO accepted color drawings accompanied by: (1) a claim

naming the color(s) that are a feature of the mark; and a statement naming the color(s) and

describing where the color(s) appear on the mark. Trademark Rules 2.37 and 2.52(b)(1), 37

CFR §§ 2.37 and 2.52(b). In order to comply with Trademark Rule 2.52(b)(1) the USPTO

requires as follows with respect to descriptions of color marks:

The color claim must include the generic name of the color(s) claimed. It is

usually not necessary to indicate shades of a color, but the examining attorney

has the discretion to require that the applicant do so, if necessary to accurately

describe the mark. The color claim may also include a reference to a

commercial color identification system. TMEP §807.07(a)(i).

The description of the mark must be clear and specific, use ordinary language,

and identify the mark as consisting of the particular color as applied to the

goods or services. If the color is applied only to a portion of the goods, the

description must indicate the specific portion. Similarly, if the mark includes

gradations of color, the description should so indicate. If the applicant is

claiming a shade of color, the shade must be described in ordinary language,

for example, “maroon,” “turquoise,” “navy blue,” “reddish orange.” This is

required even if the applicant also describes the color using a commercial

coloring system. TMEP § 1202.05(e).

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Cancellation No. 92066927

Petitioner’s pleaded Red Top Fence Post Mark is presumed to encompass any

shade of red because the drawing is lined for the color red. In re Cook Med. Techs.,

2012 TTAB LEXIS 496, at *19 (where the mark was lined for the color blue,

registrant’s ‘“blue’ mark is not limited to a certain shade of blue and thus covers all

shades of blue, including greenish blue”; applicant’s mark was a color drawing and

the color teal was claimed); Amsted Indus. Inc. v. W. Coast Wire Rope & Rigging Inc.,

Opp. No. 91070015, 1987 TTAB LEXIS 69, at *15 (TTAB 1987) (with respect to

drawings lined for color, “there is no provision in our [trademark] rules for indicating

particular color shades or hues”; lining in opposer’s mark includes all shades of

yellow) (citing Youngstown Sheet & Tube Co. v. Mo. Rolling Mill Corp., 1962 TTAB

LEXIS 58, at *5 (TTAB 1962)).78 On the other hand, Respondent’s Red, White and

Blue Fence Post Mark, is controlled by the drawing page displaying the multi-color

mark; the shades of color covered for the color combination red, white and blue are

that shown in the color drawing. In re Medline Indus., Inc., 2020 TTAB LEXIS 16, at

*37, *39 & nn.36 & 38 (“we note, in any event, that the drawing page controls and

the only shade of green covered by the registration is that shown in the color

drawing”; where two color drawing marks are compared, “we thus must compare the

shades as they appear in the respective drawings, not as they are described”).

We may also consider the placement of the color marks. See In re Medline Indus.,

Inc., 2020 TTAB LEXIS 16, at *43 (“the claimed marks here are not used on only one

part of the goods. … the respective drawings show that both marks cover the entire

78 Proceeding number unavailable.

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Cancellation No. 92066927

surface of the goods.”); In re Cook Med. Techs., 2012 TTAB LEXIS 496, at *19 (“The

colors run the length of the products, which are narrow in shape.”). Here,

Respondent’s color mark covers the entire length of the fence post, with the colors in

different proportions; from bottom to top, the color blue covers the largest portion of

the fence post, with the colors white and red proportionally smaller (the color white

is approximately twice the size of the color red, and approximately one quarter the

size of the color blue). Petitioner’s red color mark covers only the top portion of the

fence post.

We also can “take into account the conditions surrounding the marks’ exposure to

consumers, including ‘replicating, if necessary, lighting conditions under which a

colored product is normally sold.’” In re Medline Indus., Inc., 2020 TTAB LEXIS 16,

at *43-44 (“The gloves are frequently exposed, both at the point of sale of the goods

and post-sale while in use, in a manner that make their surfaces clearly visible, and

the resulting prominence of the claimed marks reduces the risk that lighting

conditions or other factors may affect the ability of consumers to distinguish between

the respective shades of green”) (quoting Qualitex Co., 514 U.S. at 167 and discussing

In re Cook Med. Techs., 2012 TTAB LEXIS 496, at *19 & n.4 (referencing the Board’s

consideration of lighting conditions and the color as applied to the goods where the

Board stated “the translucence [of the applicant’s teal mark] may not be perceptible

and the iridescence may result in the teal being perceived as more blue than green”)).

In this case, we do not consider lighting conditions because the expert testimony

was limited to consumers’ color perception of the color red, and not the entirety of

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Cancellation No. 92066927

Respondent’s Red, White and Blue Fence Post Mark.79 We also find, based on the

advertising material and the most common manner of their display, concerns

regarding lighting visibility of the marks are not present in this case. We note that

the advertising material submitted by the parties shows that consumers are exposed

to the entirety of the fence posts, their colored surfaces are visible, and the posts are

at least several feet in height.

80

79 Mr. Flombaum states: “I have been asked to supply an opinion on consumer perception of

the shading of red used on the defendant’s metal fence post product.” Flombaum declaration,

paragraph 1, 74 TTABVUE 4. Respondent submitted website evidence relating “to color/ color

schemes and their effect on individual and/or consumer psychology” to counter this expert

testimony, Respondent’s notice of reliance, Exhibits H1-H5, 80 TTABVUE 5-6, 769-806, but

this evidence is hearsay, because it is unaccompanied by any witness testimony. See

Shenzhen IVPS Tech. Co., 2022 TTAB LEXIS 383, at *64 (news articles provided under notice

of reliance hearsay); Calypso Tech., Inc. v. Calypso Cap. Mgmt., LP, Opp. No. 91184576, 2011

TTAB LEXIS 259, at *21 (TTAB 2011) (“In particular, with respect to articles and other

material published on websites or in publications, we have considered them only for the fact

that they have been published and may have been viewed, but not for the truth of the

statements made in them.”).

80 Respondent’s notice of reliance Exhibit D-1 (Facebook post), 80 TTABVUE 381.

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Cancellation No. 92066927

81

The Parties’ Arguments

Petitioner argues that the “dominant feature of … both marks is the red, top

portion[,] of the metal fence post, and consumers recognize the top color of fence posts

as a source identifier.”82 In particular, Petitioner contends that “the relevant public

associates [with Petitioner] a particular color (red) in a particular location on [sic]

fence post (the top)” and that Respondent’s Red, White and Blue Fence Post Mark

adopts “the dominant feature of the Red Top Fence Post Mark by using the exact

same color in the exact same prominent location on the exact same goods.”83

81 Rakestraw declaration, Exhibit A-12 (marketing material), 70 TTABVUE 123.

82 Petitioner’s brief, 82 TTABVUE 32.

83 Petitioner’s reply brief, 86 TTABVUE 7.

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Cancellation No. 92066927

Petitioner argues that “in the fencing industry, manufacturers use coloring on the top

of products as a source identifier as evidenced by Franklin’s and Petitioner’s

commercial products.”84 Petitioner also argues that both marks include a color claim

for the color red of no specific shade.85 Petitioner submits that both parties’ color

marks have the same commercial impression.86

Respondent counters that Petitioner “fails to compare its Red Mark to Registrant’s

‘red, white and blue’ Mark as a whole,” and improperly ignores the white and blue

portion of Respondent’s mark by focusing “only on the red top aspect.”87 Respondent

asserts that Petitioner’s arguments relating to similarity of the marks is conclusory

and that its position that “red” is the dominant feature of Respondent’s Red, White

and Blue Fence Post Mark is unsupported.88 Respondent asserts that the color red is

a small portion of its Red, White and Blue Fence Post Mark and can hardly be

considered dominant, and that the parties’ marks have different commercial

impressions.89 In particular, Respondent argues:

as a whole Registrant’s “red, white and blue” Mark conveys the overall

commercial impression of America and patriotism, given the whole color

combination red, white and blue, and the well-established significance

that red, white and blue as a color combination has in the United States.

84 Petitioner’s brief, 82 TTABVUE 30, 36.

85 Petitioner’s brief, 82 TTABVUE 31. As already discussed supra, Respondent’s multi-color

mark actually is limited to the specific shades of colors as shown in the drawing.

86 Petitioner’s brief, 82 TTABVUE 32.

87 Respondent’s brief, 84 TTABVUE 16.

88 Respondent’s brief, 84 TTABVUE 16.

89 Respondent’s brief, 84 TTABVUE 16.

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Cancellation No. 92066927

… The American consuming public readily recognizes the red, white and

blue color combination as distinct from red only color presentations.90

Respondent submits that “the public expects a ‘red top’ on Petitioner’s gray or

metallic goods91 – not multi-color product themes, let alone a red, white and blue

patriotic one,” and that “extending Petitioner’s registration to cover all variations of

a ‘red top’ on a fence post, no matter the overall connotation of the other elements of

the fence post at issue, would result in Petitioner being awarded a scope of protection

that extends well beyond” what it is entitled.92

Comparing the Marks

Respondent’s Red, White and Blue Fence Post Mark is the claimed combination of

the colors red, white and blue; thus, the commercial impression is engendered by the

use of all three colors and not just the color red. In comparing the parties’ marks, the

proper analysis requires us to consider the visual similarity and commercial

impression of Respondent’s Red, White and Blue Fence Post Mark as a whole, and

not just the “red top” portion of Respondent’s mark as Petitioner contends.93 See Juice

Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338 (Fed. Cir. 2015) (Board erred

in in analyzing the similarity of the three-word combination PEACE LOVE AND

90 Respondent’s brief, 84 TTABVUE 16.

91 Respondent states it “does not challenge that conclusion, [from Petitioner] because it does

not need to do so to prevail.” Respondent’s brief, 84 TTABVUE 23.

92 Respondent’s brief, 84 TTABVUE 19.

93 Petitioner did not submit any evidence that persuades us that the color red is dominant in

Respondent’s Red, White and Blue Fence Post Mark. See Amsted Indus. Inc. v. W. Coast Wire

Rope & Rigging Inc., 1987 TTAB LEXIS 69, at *18 (“Whereas opposer may consider yellow

to be dominant as compared to green there is no objective evidence that this is the fact in the

record before us and the argument seems only to be based a natural bias of opposer that,

since it uses yellow, yellow must be the most noticeable color in any other setting.”).

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Cancellation No. 92066927

JUICE with the two-word combination PEACE & LOVE by comparing “PEACE

LOVE” (as the “dominant” portion of the three-word combination) with PEACE &

LOVE without considering “how the three-word phrase” PEACE LOVE AND JUICE

“may convey a distinct meaning—including by having different connotations in

consumers’ minds—from the two-word phrase” PEACE & LOVE); Rockwood

Chocolate Co. v. Hoffman Candy Co., 372 F.2d 552, 555 (CCPA 1967) (“each case

requires consideration of the effect of the entire mark including any term in addition

to that which closely resembles the opposing mark”; entire marks considered on basis

of confusing similarity); Federal Bureau of Investigation v. Societe: “M. Bril & Co.”,

Ser. No. 72287174, 1971 TTAB LEXIS 292, at *18 (TTAB 1971) (in considering

similarity of the marks, we must assume that purchasers will encounter the unitary

mark F.B.I. Fabrication Bril International as a whole on the garments rather than

F.B.I. alone; the commercial impression is created by the mark as a whole).

Petitioner supports its arguments regarding the fence post top being a source

indicator and the dominant portion of the parties’ marks with advertisements in the

record for Petitioner’s and Respondent’s fence posts.94

94Petitioner’s brief, 82 TTABVUE 32. Respondent’s notice of reliance, Exhibit B-2, 80

TTABVUE 209. According to the statement in the notice of reliance, this mark is owned by

an affiliate of Respondent’s. Respondent’s notice of reliance 80 TTABVUE 2; Rakestraw

declaration, Exhibit A-11, 70 TTABVUE 120.

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Although Petitioner’s and Respondent’s use of color applied to the top of fence

posts as source indicators is some evidence of industry practice of use of color as a

trademark rather than a decorative feature of the goods, it is limited because it does

not include evidence of other competitors’ use,95 and there is no testimony or evidence

in the record that Petitioner and Respondent control 100 percent of the market. As a

95 Petitioner also argues industry practice based on case law, citing In re Pollak Steel Co., 314

F.2d 566, 568 (CCPA 1963) (affidavits provided that stated in the fence post business it had

become customary to identify the producers by color on the tops of the posts). Petitioner’s

reply brief, 86 TTABVUE 7. Prior decisions in trademark cases, however, are of little help in

deciding cases involving different marks and different facts. We are assessing registrability

today, and what was considered industry practice sixty years ago may have changed. “Each

case must be decided on its own facts and the differences are often subtle ones.” Indus.

Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973).

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result, we cannot conclude based on this record that consumers would treat the red

portion of Respondent’s mark as the dominant portion of the color mark, and we will

not employ a per se rule. 96 Therefore, we consider Respondent’s multi-color mark in

its entirety in our comparison of the marks, and do not discount any colored portion

of the mark.

a. Visual and Commercial impression of Petitioner’s and Respondent’s

marks

In visual appearance, Petitioner’s mark is a single color—red—applied to a fence

post top, while Respondent’s mark is the combination of the colors red, white and blue

applied to a fence post in its entirety. The color marks are visually similar to the

extent that Petitioner’s registration is lined for the color red and covers all shades of

the color red, including the shade of red used at the top of the fence post in

Respondent’s multi-color mark. But the marks also are visually dissimilar because

Respondent’s mark is a multi-color mark that also uses the colors white and blue

applied to the remainder of the fence post.

The commercial impression of Petitioner’s Red Top Fence Post Mark, is a “red

top,” and the color red.

96 As previously mentioned, Mr. Flombaum’s expert opinion was based on whether consumers

would distinguish between Petitioner’s and Respondent’s two fence posts solely on the basis

of a red coloring applied to the top of each product; his opinion did not consider the other

colors in Respondent’s mark. Flombaum declaration, 74 TTABVUE. Mr. Flombaum’s opinion

indicates that human perception of color is inconstant and hazy as to hue and could result in

misperception of the shade of red applied to each product. Flombaum declaration, paragraph

18, 74 TTABVUE. However, the opinion is not probative of consumers’ perception of

Respondent’s multi-color mark as a whole.

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As to Respondent’s mark, we find the visual impact of the color combination red,

white and blue in Respondent’s Red, White and Blue Fence Post Mark creates a single

commercial impression. Cf. In re Chem. Dynamics, Inc., 839 F.2d 1569, 1571 (Fed.

Cir. 1988) (the three elements of the background–the dropper, the droplet, and the

watering can–are interrelated elements of a single unified design and cannot be

registered separately); In re E. J. Brach & Sons, 256 F.2d 325, 328 (CCPA 1958)

(where the background material plus the word marks so blend together that they are

inherently incapable of creating more than a single commercial impression, and non-

distinctive background not separately registrable).

A consumer encountering Respondent’s Red, White and Blue Fence Post Mark in

the marketplace would understand the mark as a whole to refer to the national colors

of the United States of America, or the flag of the United States of America. See T.

W. Samuels Distillery, Inc. v. Schenley Distillers, Inc., 458 F.2d 1403, 1404 (CCPA

1972). (By “commercial impression” we mean “what the probable impact will be on

the ordinary purchaser in the market place ….”).

Our finding as to the single commercial impression of Respondent’s Red, White

and Blue Fence Post Mark is consistent with Respondent’s advertisements that are

in the record. See Specialty Brands, Inc. v. Coffee Bean Distribs, Inc., 748 F.2d 669,

674 (Fed. Cir. 1984) (“trade dress may nevertheless provide evidence of whether the

word mark projects a confusingly similar commercial impression”); N. Face Apparel

Corp., Opp. No. 91187593, 2015 TTAB LEXIS 328, at *27 (TTAB 2015) (with respect

to the connotation and commercial impression of the marks, the Board considered

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Cancellation No. 92066927

opposers’ advertising that may result in recognition by the consumer of its design

element not just as an abstract “S” but also an abstract design of a mountain peak);

see also Am. Rice, Inc. v. H.I.T. Corp., Opp. No. 91067497, 1986 TTAB LEXIS 35, at

*13-14 (TTAB 1986) (“we may take into account whether the trade dress of packages

or labels in the application file as specimens, or otherwise in evidence, may

demonstrate that the trademark projects a confusingly similar commercial

impression.”); Nw. Golf Co. v. Acushnet Co., Opp. No. 91066474, 1985 TTAB LEXIS

86, at *15 (TTAB 1985) (“Evidence of the context in which a particular mark is used

on labels, packaging, etc., or in advertising is probative of the significance which the

mark is likely to project to purchasers.”).

Respondent’s Facebook post and advertisements include the following:

97

97 Respondent’s notice of reliance, Exhibit D-4, (Facebook “Patriot Posts”) 80 TTABVUE

385.

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Cancellation No. 92066927

98

98 Kovalchick declaration, Exhibit 1, 78 TTABVUE 14.

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Cancellation No. 92066927

99

Overall, the marks are dissimilar in appearance. When we visually compare the

marks in their entireties, we cannot agree with Petitioner’s contention that the

presence of the color red in both marks suffices to make the marks similar. Instead,

we find that the parties’ marks evoke different commercial impressions which results

from the additional colors in Respondent’s mark. Even if the red portion of

Respondent’s Red, White, and Blue Fence Post Mark is considered visually the same

color red by consumers as the color red in Petitioner’s Red Top Fence Post Mark, we

find that consumers encountering the parties’ marks are not likely to perceive

Petitioner’s Red Top Fence Post Mark and Respondent’s Red, White and Blue Fence

Post Mark as the same or similar. Consumers will perceive Respondent’s three-color

mark in its entirety as creating a different commercial impression than Petitioner’s

single-color mark which is the color red alone.

99 Respondent’s notice of reliance, Exhibit D-1, 80 TTABVUE 379.

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In view of the foregoing, we find the claimed color marks are distinct and

dissimilar. See Truescents LLC v. Ride Skin Care, L.L.C., Opp. No. 91158556, 2006

TTAB LEXIS 477, at *25 (TTAB 2006) (“nowithstanding identical and related goods”

the Board found that although there was a point of similarity in applicant’s and

opposer’s marks, this similarity was “not sufficient to overcome the basic dissimilarity

between the marks”).

The first DuPont factor weighs against a finding of likelihood of confusion.

E. Absence of Actual Confusion

Under the seventh and eighth DuPont factors, we consider the nature and extent

of any actual confusion in light of the length of time and conditions under which there

has been contemporaneous use of Petitioner’s and Respondent’s color marks. DuPont,

476 F.2d at 1361. The seventh and eighth DuPont factors are interrelated; the

absence of evidence of actual confusion, under the seventh DuPont factor, by itself is

entitled to little weight in our likelihood of confusion analysis unless there also is

evidence, under the eighth DuPont factor, that there has been a significant

opportunity for actual confusion to have occurred. See In re Cont’l Graphics Corp.,

Ser. No. 75033628, 1999 TTAB LEXIS 500, at *9 (TTAB 1999); Gillette Can. Inc. v.

Ranir Corp., Opp. No. 91082769, 1992 TTAB LEXIS 24, at *19 (TTAB 1992). Under

the eighth DuPont factor, we “look at actual market conditions, to the extent there is

evidence of such conditions of record.” See In re Guild Mortg. Co., Ser. No. 86709944,

2020 TTAB LEXIS 17, at *19 (TTAB 2020).

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Cancellation No. 92066927

Respondent’s witness testified that he is not aware of any confusion between the

parties’ marks, and that “prior to the filing of the cancellation petition, no notification

of actual instances of confusion were received by Franklin from Keystone or Chicago

Heights Steel.”100

Petitioner concedes that there has been no submission of evidence of actual

confusion in this case,101 but submits that there has been limited opportunity for

confusion, relying on the evidence in the record of Respondent’s confidential sales

volume between 2014 through 2018.102 Petitioner also points out that Respondent

stopped selling the fence post product in 2019, due to the parties’ litigation.103

As to promotional expenses, there is no competent evidence in the record, and

Respondent did not provide witness testimony on this point showing appreciable

advertising that would be probative to a finding of no actual confusion.104 See, e.g.,

Sales Analysis Inst., Inc. v. Sales Training, Inc., Opp. No. 91052147, 1973 TTAB

LEXIS 313, at *15-16 (TTAB 1973) (overlapping services offered concurrently and

nationwide to the same potential consumers and extensively advertised through

radio, television, business publications and local newspapers for sixteen years

supported a finding of no actual confusion since the “conditions and circumstances

100 Nathan Kovalchick declaration, paragraph 19, 79 TTABVUE 10.

101 Petitioner’s reply brief, 86 TTABVUE 19.

102 Petitioner’s reply brief, 86 TTABVUE 19.

103 Petitioner’s reply brief, 86 TTABVUE 19; Respondent’s brief, 84 TTABVUE 27;

Petitioner’s notice of reliance, Respondent’s response to requests for admission 10-12, 75

TTABVUE.

104 See supra n.32 regarding unsworn interrogatories.

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appear to have been such that if confusion were likely to occur, it would have occurred

over this length of time”).

We also do not have testimony or competent evidence about the actual market and

distribution channels, and we lack testimony from the parties’ witnesses as to

whether there is sufficient overlap geographically of the actual marketing and

distribution channels such that we could infer that there has been a reasonable

opportunity for confusion to occur. See In re Guild Mortg., 2020 TTAB LEXIS 17, at

*25 (“there is a lack of evidence that in the actual marketplace, the same consumers

have been exposed to both marks for the respective services, such that we could make

a finding as to the “length of time during and conditions under which there has been

concurrent use without evidence of actual confusion”); Time Warner Enter. Co. v.

Jones, Opp. No. 91112409, 2002 TTAB LEXIS 462, at *35-36 (TTAB 2002) (although

parties used their marks concurrently for over thirteen years “we cannot conclude

that applicant’s sales and advertising of her maps have been so substantial that the

absence of actual confusion is surprising or legally significant”); Nordica di Franco e

Giovanni Vaccari & C. s.a.s. v. Nordic Sport Ltd. AB, Opp. No. 91058199, 1979 TTAB

LEXIS 30, at *11 (TTAB 1979) (lack of evidence of actual confusion is not significant

in view of the relatively short time of the coexistence of both marks in the

marketplace, and also in view of the limited sales of applicant’s goods as evidenced

by the record).

Because of the more limited nature of Respondent’s activities (e.g., sales activities

for a limited period and cessation of sales activities of the fence post goods pending

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Cancellation No. 92066927

this litigation), we find the evidence of concurrent use based on actual market

conditions does not indicate a significant opportunity for confusion to occur. See, e.g.,

Lebanon Seaboard Corp. v. R & R Turf Supply, Inc., Opp. No. 91197241, 2012 TTAB

LEXIS 29, at *26-27 (TTAB 2012) (concurrent use did not support no actual confusion

because of limited period of concurrent use and limited advertising and sales); Kraft,

Inc. v. Country Club Food Indus., Inc., Can. No. 92013549, 1986 TTAB LEXIS 84, at

*11 (TTAB 1986) (limited opportunity for evidence of actual confusion in view of

limited scope of registrant’s distribution and the relatively small promotional effort

put forth on behalf of registrant’s goods).

We find the seventh and eighth DuPont factors are neutral.

F. Laches Attributable to Owner of Prior Mark and Indicative of Lack of

Confusion

For the tenth DuPont factor, which deals generally with “the market interface

between [respondent] and the owner of a prior mark,” Respondent focuses on

subsection 10(d), “laches and estoppel attributable to owner of prior mark and

indicative of lack of confusion.” DuPont, 476 F.2d at 1361; see In re Opus One Inc.,

Ser. No. 75722593, 2001 TTAB LEXIS 707, at *33-34 (TTAB 2001) (under 10(d) of the

tenth DuPont factor, laches and estoppel may be “indicative of a lack of confusion,” to

the extent that it shows that a registrant believes that confusion is not likely to result

from applicant’s use of the mark applicant seeks to register); see, e.g., In re Wilson,

Ser. No. 75285881, 2001 TTAB LEXIS 53, at *14-15 (TTAB 2001) (finding tenth

DuPont factor under 10(d) relating to laches and estoppel neutral “where evidentiary

record does not support applicant’s contention that registrant, when it filed its

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application in 1925, was aware of Highland Orange Association’s PINE CONE label,

much less that registrant’s filing of the application in 1925 operates as an estoppel or

otherwise is evidence that registrant believed that confusion was unlikely.”) In this

case, Respondent argues laches, but not estoppel, under DuPont factor 10(d).

We find the evidentiary record in this case as previously discussed in connection

with Respondent’s laches affirmative defense does not support Respondent’s

contention that Petitioner was aware of Respondent’s registration when it issued on

April 30, 2013 on the Supplemental Register. Nor is there evidence establishing that

Petitioner’s lack of contact with Respondent after its Red, White and Blue Fence Post

Mark registered and its lack of action towards Respondent’s registration prior to May

30, 2017 was because Petitioner assumed or believed that confusion was unlikely to

result (as such facts, if proven, would weigh against a finding of likelihood of

confusion in this case).

We find the tenth DuPont factor is neutral.

G. Any Other Established Fact Probative of the Effect of Use

The thirteenth DuPont factor examines “any other established fact probative of

the effect of use.” DuPont, 476 F.2d at 1361.

Petitioner argues that Respondent registered its Red, White and Blue Fence Post

Mark “despite knowing about Keystone’s Red Top Fence Post Mark and registration”

and despite “also knowing about the significance of color on the top of fence products

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as a source identifier, …. [i]n the fencing industry.”105 Petitioner submits that

Respondent knows “about the significance of color on the top of fence products as a

source identifier” as “evidenced by Franklin’s and Petitioner’s commercial products

which include colored tops on fence post[s]” (i.e., Petitioner’s use of the color red and

Respondent’s use of the color yellow on fence post tops), see discussion supra.106

Respondent counters that Petitioner has failed to meet its burden on this issue

because awareness or knowledge of Petitioner’s Red Top Fence Post Mark is not

evidence of intent to confuse, and Petitioner’s mention that Respondent offers other

fence posts with a yellow top is “hardly indicative of an industry as a whole.”107

Bad faith, or intent to confuse, falls under the thirteenth DuPont factor. L.C.

Licensing Inc. v. Berman, Opp. No. 91162330, 2008 TTAB LEXIS 756, at *20 (TTAB

2008). An inference of bad faith “requires something more than mere knowledge of a

prior similar mark.” Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560,

1565 (Fed. Cir. 1987) (awareness of plaintiff’s mark through trademark search and

opinion of counsel that the mark was available notwithstanding plaintiff’s mark was

not sufficient for an inference of bad faith). A finding of bad faith must be supported

by evidence of an intent to confuse, rather than mere knowledge of another’s mark or

even an intent to copy. See, e.g., Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588

F.3d 97, 117 (2d Cir. 2009) (“[T]he ‘only relevant intent is intent to confuse. There is

105Petitioner’s brief, 82 TTABVUE 36 (referencing Petitioner’s notice of reliance,

Respondent’s response to request for admission no. 28, 75 TTABVUE).

106 Petitioner’s brief, 82 TTABVUE 35-36.

107 Respondent’s brief, 84 TTABVUE 26.

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Cancellation No. 92066927

a considerable difference between an intent to copy and an intent to deceive.’”)

(citation omitted).

We find that Respondent’s knowledge of Petitioner’s Red Top Fence Post Mark,

and Respondent’s use of a separate mark comprising the color yellow on fence post

tops, is not enough to constitute bad faith. As indicated, no testimony was provided

by the parties as to third parties in the industry applying color to fence posts or fence

post tops as trademarks, or that Petitioner and Respondent control 100 percent of the

market such that Petitioner’s and Respondent’s use of color on fence post tops in this

manner is indicative of the fence industry as a whole. Therefore, because we know

nothing more about the industry other than Petitioner’s and Respondent’s use of color

as marks on fence post tops, Petitioner’s assertions related to third-party industry

practice as to use of color as marks on fence posts are merely attorney argument.

Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney

argument is no substitute for evidence.”).

Petitioner has not shown based on the evidence of record that Respondent

intentionally sought to trade on Petitioner’s goodwill by coloring the top of its fence

post red in combination with the colors white and blue. This lack of evidence is

unsurprising in view of our finding that a consumer encountering Respondent’s Red,

White and Blue Fence Post Mark in the marketplace would understand the mark as

a whole to refer to the national colors of the United States of America, or the flag of

the United States of America and not to Petitioner’s Red Top Fence Post Mark.

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Petitioner also argues that Respondent acted in bad faith when it submitted its

Section 8 declaration of use (filed on April 29, 2019) because Respondent has admitted

that it did not use the mark in 2019, 2020, and 2021.108 Respondent counters that

there is a lack of bad faith since “cessation of sales was due to Registrant’s desire to

demonstrate good faith cooperation with Petitioner in resolving this matter” and that

Respondent was waiting to resume manufacturing when this matter is resolved.109

Respondent’s 2019 Section 8 declaration of use did indicate continued use of its

fence post product under the involved mark. But Respondent’s April 23, 2023

combined Section 8 declaration of excusable nonuse and Section 9 renewal application

makes reference to the present cancellation proceeding and Respondent’s agreement

not to sell its fence post product displaying the colors red, white and blue until a

determination in this case is made.

We find that Respondent’s interrupted use of its Red, White and Blue Fence Post

Mark does not reflect bad faith in filing the Section 8 declaration of continued use, or

the combined Section 8/9 declaration of excusable nonuse and application for renewal,

particularly when the basis for the excusable nonuse is the parties’ litigation.

Respondent has explained its nonuse in its most recent filing with the USPTO, and

108 Petitioner’s brief, 82 TTABVUE 37 (referencing Petitioner’s notice of reliance, 75

TTABVUE, Respondent’s responses to request for admission 10-12 and Respondent’s Section

8 declaration of use, 75 TTABVUE 1018-24).

109 Respondent’s brief, 84 TTABVUE 27, (referencing Petitioner’s notice of reliance,

Respondent’s response to request for admission 10-12, 75 TTABVUE). Respondent states in

its brief, 84 TTABVUE 27, that “Petitioner has cited to no evidence and nothing is in the

record suggesting retailers or wholesalers had no inventory of Registrant’s Patriot Posts, or

were not otherwise selling through inventory in 2019.”

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Cancellation No. 92066927

has engaged in “vigorous efforts” to defend itself in this case, by filing testimony,

other evidence, and a brief. See Penthouse Int’l. Ltd. v. Dyn Elecs., Inc., Opp. No.

91055448, 1977 TTAB LEXIS 72, at *17 (TTAB 1977) (“nonuse of a mark pending the

outcome of litigation to determine the right to such use or pending the outcome of a

party’s protest to such use constitutes excusable nonuse sufficient to overcome any

inference of abandonment.”).

We find the thirteenth DuPont factor is neutral.

VIII. Conclusion

When we consider and weigh the evidence of record and the relevant likelihood of

confusion factors, In re Charger Ventures LLC, 64 F.4th 1375, 1381 (Fed. Cir. 2023),

we conclude that confusion is unlikely.

The relatedness of the goods, channels of trade, and class of consumers weigh in

favor of a likelihood of confusion. The conditions of sale and the fifth, sixth, seventh,

eighth, tenth, and thirteenth DuPont factors are neutral. The conceptual weakness

implicates only similar marks, but here the dissimilarity of the marks weighs heavily

against likelihood of confusion.

Although as noted, the degree of similarity between the marks which is required

to support a finding of likelihood of confusion is less than it would be if the goods were

not identical, we find that the parties’ marks are distinct and dissimilar. The point of

similarity between the marks is not sufficient to overcome the basic dissimilarity in

appearance and commercial impression when Respondent’s and Petitioner’s marks

are considered and compared in their entireties.

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Cancellation No. 92066927

In this case, the dissimilarity of the marks is the most important and pivotal

factor, outweighing the other DuPont factors. See Kellogg Co. v. Pack-Em Enters. Inc.,

951 F.2d 330, 333 (Fed. Cir. 1991) (“We know of no reason why, in a particular case,

a single duPont factor may not be dispostive. ... ‘each [of the thirteen elements] may

from case to case play a dominant role.’”); see also Quiktrip West, Inc. v. Weigel Stores,

Inc., 984 F.3d 1031, 1037 (Fed. Cir. 2021); Oakville Hills Cellar, Inc. v. Georgallis

Holdings, LLC, 826 F.3d 1376, 1381-82 (Fed. Cir. 2016); Odom’s Tennessee Pride

Sausage, Inc. v. FF Acquisition, LLC, 600 F.3d 1343, 1346-47 (Fed. Cir. 2010);

Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed.

Cir. 1998).

.

Accordingly, we find that Respondent’s Red White and Blue Fence

Post Mark is not likely to cause confusion with Petitioner’s Red Top Fence

Post Mark.

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Cancellation No. 92066927

Decision:

Cancellation No. 92066927 on the ground of likelihood of confusion is denied.

As noted herein, Petitioner is allowed until thirty (30) days from the mailing

date of this decision to submit and serve on Respondent a redacted version of the

notice of reliance with respect to certain confidential exhibits, failing which, these

exhibits will be treated in their entirety as part of the public record.

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