The Trademark Trial and Appeal Board in In re Shurtape Technologies, LLC decided whether SHURSTICK for “painters [sic] masking tape” in Class 17 was likely to cause confusion with SHUR-STIK for “adhesives for applying floor tiles, floor coverings, carpets and wall coverings and wall covering adhesive activator” in Class 1; “wall size; primers for preparing surfaces to be painted” in Class 2; “spackling compounds; mortar patch compounds; asphalt patching compound made of an asphalt base” in Class 19, and SHUR-STIK PERMANENT PATCH for “patching compounds for walls and ceilings” in Class 19. The Board found that the most relevant goods to Applicant’s “painter’s masking tape” were “primers for preparing surfaces to be painted” and “spackling compounds.”
In comparing the goods, the issue is not whether purchasers would confuse Applicant’s and Registrant’s goods, but rather whether there is a likelihood of confusion as to the source of those goods. In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB 2012). It is not necessary that they be identical or even competitive in nature in order to support a finding of likelihood of confusion. The goods need only be “related in some manner or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007).
Where the goods at issue have complementary uses, and therefore are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See, e.g., In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (finding bread and cheese to be related because they are often used in combination, and stating: “Such complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion.”); American Drill Bushing Co. v. Rockwell Mfg. Co., 342 F.2d 1019, 145 USPQ 144, 146 (CCPA 1965) (drill press and drill bushings/drill bushing liners are complementary products); In re Sela Products, LLC, 107 USPQ2d 1580, 1587 (TTAB 2013) (surge protectors, wall mounts and brackets complementary goods because purchasers are likely to encounter both during course of purchasing a television, audio or home theater system); Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (finding bath sponges and personal products such as bath oil and soap to be closely related because they are complementary goods that are likely to be purchased and used together by the same purchasers).
Based on the evidence of record, the Board found that Applicant’s painter’s masking tape was related to the Registrant’s spackling compound and primers. This decision demonstrates again that International Class Numbers are not what is important. Applicant’s goods were classified in Class 17 and the Registrant’s goods were classified in Classes 2 and 19. The heading for Class 19 is “building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.” The heading for Class 17 is “rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.”
If you rely on the headings to make your determination about relatedness, you would likely conclude that the goods in Class 17 are unrelated to the goods in Class 19. But as we see in this case, your intuition would be wrong. That is why it is important to look at prior case law when making the relatedness of goods decision, which is what BOB does.