Peri GmbHDownload PDFTrademark Trial and Appeal BoardFeb 22, 2010No. 79031485 (T.T.A.B. Feb. 22, 2010) Copy Citation Mailed: 2/22/10 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Peri GmbH ________ Serial No. 79031485 _______ Friedrich Kueffner for Peri GmbH. Ellen J.G. Perkins, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen, Managing Attorney). _______ Before Quinn, Hairston and Holtzman, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Peri GmbH filed an application to register the mark shown below for goods identified as follows: metal formwork for concrete and structural parts thereof and reinforcements of metal therefor; structural scaffoldings, façade scaffoldings, and scaffolds, and structural parts therefor, all of metal; supports of metal for formwork and scaffolds and structural parts THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser. No. 79031485 2 therefor (in International Class 6); and non-metal formwork for concrete and structural parts thereof and reinforcements not of metal therefor; structural scaffoldings, façade scaffoldings, and scaffolds, and structural parts therefor, all of non- metal; supports of wood for formwork and scaffolds and structural parts thereof (in International Class 19).1 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when applied to applicant’s goods, so resembles the previously registered mark FLEXGRID (in standard characters) for “plastic geosynthetic reinforcement grids for use in building construction, road construction, landscape construction, environmental remediation, erosion control construction and public works construction”2 as to be likely to cause confusion. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs. 1 Application Serial No. 79031485, filed October 9, 2006, under the Madrid Protocol, Section 66(e) of the Trademark Act, 15 U.S.C. §1141(a), based on International Registration No. 0904978, issued October 9, 2006. Under Section 68(a) of the Trademark Act, 15 U.S.C. §1141(h), a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register. See TMEP §1904.02(a) (6th ed. 2009). 2 Registration No. 3381851, issued February 12, 2008. Ser. No. 79031485 3 Applicant concedes that its mark “is essentially a transposition” of registrant’s mark, but contends that the marks have different commercial impressions because the pronunciation of each mark is different. Applicant also argues that its goods are different from registrant’s building materials, and that the goods “are very sophisticated and are used only by experts in their fields.”3 The examining attorney maintains that the involved marks are merely transpositions of one another and, accordingly, are highly similar. According to the examining attorney, the marks convey similar commercial impressions, namely of a flexible grid. The examining attorney also contends that the goods are highly related, and that they travel in the same trade channels to the same 3 In its brief, applicant makes reference for the first time to a Wikipedia entry for the term “geosynthetic.” The examining attorney, in her brief, neither objected to the new evidence nor discussed the new evidence or otherwise treated it as being of record. See TBMP §1207.03 (2d ed. rev. 2004). Firstly, a copy of the pertinent entry was not submitted. Even if submitted, however, Trademark Rule 2.142(d) provides that the application should be complete prior to the filing of an appeal, and the Board will ordinarily not consider untimely evidence. Secondly, the Board does take judicial notice of online sources such as Wikipedia. See, e.g., In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). In view of the above, the Wikipedia reference has not been considered in reaching our decision. We hasten to add, however, that even if considered, the evidence would not change the result of this appeal on the merits. Ser. No. 79031485 4 purchasers. In support of the refusal, the examining attorney submitted an excerpt of applicant’s website. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). With respect to the involved marks, we examine the similarities and dissimilarities of the marks in their appearance, sound, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test, under the first du Pont factor, 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 overall commercial impression that confusion as to the source of Ser. No. 79031485 5 the goods offered under the respective marks is likely to result. The marks, when considered in their entireties as applied to the goods, engender substantially similar meanings and overall commercial impressions. The connotation of applicant’s mark GRIDFLEX is virtually identical to the connotation of registrant’s mark FLEXGRID, namely a flexible grid. The only real difference between the marks is that the two words comprising the marks are transposed. This difference is minor, however, as it relates to the overall commercial impressions conveyed by these marks. See, e.g., In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) [THE WINE SOCIETY OF AMERICA is substantially similar to AMERICAN WINE SOCIETY]; In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) [RUST BUSTER (“RUST” disclaimed) for rust-penetrating spray lubricant held likely to be confused with BUST RUST for penetrating oil]; and Bank of America National Trust and Savings Association v. American Bank of St. Joseph, 201 USPQ 842 (TTAB 1978) [confusion is likely where the sole significant difference between marks applied to similar goods or services is the transposition of the words which comprise those marks and where the transposition of words does not change the overall commercial impression]. Ser. No. 79031485 6 Although the transposition of the two terms comprising the marks results in differences in sound and appearance between the marks, these differences are easily outweighed by the similarities in meaning and overall commercial impression. Accordingly, the first du Pont factor weighs in favor of a finding of likelihood of confusion. In comparing the marks, we recognize their suggestiveness when applied to the goods, but, as indicated above, the marks convey the same suggestion. Notwithstanding any suggestiveness, the record is devoid of evidence of any third-party uses or registrations of the same or similar marks in the building construction field. We next turn to consider the goods. It is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-à-vis the goods identified in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in the application at issue and/or in the cited registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels Ser. No. 79031485 7 of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefore, and that they would be purchased by all potential buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Further, it is not necessary that the respective goods be identical or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The examining attorney contends that applicant’s and registrant’s goods involve reinforcements and other goods for use in the building construction trade. In connection with this argument, the examining attorney submitted an excerpt from applicant’s website showing that its flexible Ser. No. 79031485 8 slab formwork and other goods are utilized in building construction. Applicant’s goods are broadly identified, and, therefore, must be construed to encompass such reinforcing goods for use in the building construction field, one of the fields specifically set forth in the identification of goods in the cited registration. This use is confirmed by applicant’s website. Further, as shown by the website excerpt, applicant’s reinforcing formwork is in the nature of a grid, as is the case with registrant’s goods. Applicant’s and registrant’s reinforcement and support products, as well as applicant’s scaffolding, may be used together in the same project at the same building site. These goods are likely to travel in similar trade channels, namely distributors of building supplies and materials. The goods also are likely to be sold to the same classes of purchasers, namely builders and contractors in the construction trade. The relatedness of the goods and the overlap in trade channels and purchasers are du Pont factors that weigh in favor of a finding of likelihood of confusion. We will assume, as applicant argues, that some of the formwork and scaffolding products involved in this appeal may be relatively sophisticated goods in the construction Ser. No. 79031485 9 trade, and that the building professionals buying these products may exercise a certain degree of care in making their purchasing decisions.4 Nevertheless, even careful purchasers are likely to be confused when encountering similar goods sold under similar marks. As stated by our primary reviewing court, “[t]hat the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods. ‘Human memories even of discriminating purchasers ... are not infallible.’” In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) quoting Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970). The similarity between the marks and the similarity between the goods outweigh any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods]. 4 It should be noted, however, that applicant failed to introduce any evidence on this point. Ser. No. 79031485 10 In view of the above, when the relevant likelihood of confusion factors are considered, we find that, on balance, they weigh in favor of a finding of likelihood of confusion. Lastly, to the extent that any of the points raised by applicant raises a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation