Polyflor Limited

Trademark Trial and Appeal BoardDec 26, 2012

No. 79083695 (T.T.A.B. Dec. 26, 2012)

Mailed: December 26, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Polyflor Limited ________ Serial No. 79083695 _______ Holly Pekowsky of Amster, Rothstein & Ebenstein LLP, for Polyflor Limited. Daniel Capshaw, Trademark Examining Attorney, Law Office 110 (Chris A.F. Pedersen, Managing Attorney). _______ Before Zervas, Ritchie, and Shaw, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Polyflor Limited (“applicant”) filed an application to register the mark shown below for goods identified as “floor coverings for existing floors for indoor use,” in International Class 271: 1 Serial No. 79083695, filed June 7, 2010, pursuant to Section 66(a) of the Trademark Act, and disclaiming the exclusive right to use the term “LIFETIME POLISH FREE” apart from the mark as shown. The application includes the following description: “The mark consists of a three part square like design with the top portion a rectangular shape in green with the white wording ‘POLYFLOR’, the middle portion a rectangular white shape with the green wording ‘PUR’, and the bottom portion a black rectangular shape with the white wording ‘LIFETIME POLISH FREE.’” The application also notes: “The color(s) green, black and white is/are claimed as a feature of the mark.” THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 79083695 2 The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the registered mark PUR,2 in standard character form, for “synthetic surfacing consisting of ribbons of synthetic fibers woven on a backing and partially covered by a particulate infill for the playing of soccer, American football, lacrosse, field hockey, cricket, golf and other athletic activities,” in International Class 27, that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed Serial No. 79083695 3 briefs, and applicant filed a reply brief. For the reasons discussed herein, the Board affirms the refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (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”). The Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, 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 2 Registration No. 3485761, issued August 12, 2008. Serial No. 79083695 4 sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The mark in the cited registration consists solely of the term “PUR,” in standard character form. Applicant’s mark incorporates this term in full, adding its housemark “POYLYFLOR,” (see Reply brief at 1). It is has been said that the addition of a housemark generally does not avoid likelihood of confusion. In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations omitted) (applicant’s LE CACHET DE DIOR confusingly similar to CACHET because applicant failed to prove that the word “cachet” was highly suggestive, descriptive or commonly used or registered) (Emphasis added). See also Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1201-1202 (TTAB 2007) (S and a star design for athletic bags and clothing is likely to cause confusion with S STARTER and star design for identical products despite that both may sometimes be used with housemarks, including one pleaded by opposer). Serial No. 79083695 5 Applicant’s mark also adds the term “LIFETIME POLISH FREE,” which is descriptive of a function of applicant’s floors. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750 (Fed. Cir. 1985) (descriptive or disclaimed matter is generally considered a less dominant portion of a mark). Accordingly, we find that when viewed in its entirety, the commercial impression of applicant’s mark, which is dominated visually by the large term “PUR,” is quite similar to the commercial impression of the mark in the cited registration. Applicant argues that the term “PUR” is a weak term for the goods at issue, arguing that the term is the phonetic equivalent of the word “pure” which is merely “laudatory.” (appl’s brief at 3). Applicant submitted a definition of the term “pure” as meaning “1. unmixed with any other matter; 2. free from dust, dirt, or taint; 3. spotless; stainless.” (Merriam-Webster 2011). Applicant also submitted six use-based registrations that contain the term “PURE” and one that contains “PUR,” for similar goods and services, as follows: PUR-COMFORT, PURE VINYL and design, PURE CONTRACT, PURE EXTRAVAGANCE, PUREGRASS PORTABLE, PURE ORGANIC, PUREGRASS. We find applicant’s argument unavailing for the following reasons. First, while it is settled that there is no correct pronunciation of a trademark, there is no evidence that consumers would pronounce the term “PUR” without an “E” the same as “PURE” but may just as well pronounce it as (a cat’s) “PURR.” In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984). Second, the term “pure,” by its dictionary definition is not Serial No. 79083695 6 particularly suggestive of the goods at issue in the cited registration nor in the application, and we do not find six or seven registrations sufficient in number to be convincing evidence that consumers would find it to be so. Compare Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005)(NORTON MCNAUGHTON ESSENTIALS for ladies’ sportswear not likely to cause confusion with ESSENTIALS for women’s clothing). Accordingly, on this record we find no weakness shown in the term. Rather, on the balance, we find the commercial impressions of the marks in their entireties to be quite similar, with applicant’s mark having as its dominant element registrant’s mark, and to outweigh dissimilarities in sight and sound, keeping in mind also that the mark in the cited registration is registered in standard character format and may be displayed in any number of formats. See Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If the registrant ... obtains a standard character mark without claim to ‘any particular font style, size or color,’ the registrant is entitled to depictions of the standard character mark regardless of font, style, size, or color.”). Accordingly, we find this du Pont factor to weigh in favor of finding a likelihood of consumer confusion. Serial No. 79083695 7 The Goods and Channels of Trade The identification of goods in the application includes “floor coverings for existing floors for indoor use,”3 while the recital of services in the cited registration includes “synthetic surfacing consisting of ribbons of synthetic fibers woven on a backing and partially covered by a particulate infill for the playing of soccer, American football, lacrosse, field hockey, cricket, golf and other athletic activities.” In analyzing their similarities and dissimilarities, we keep in mind that the test is not whether consumers would be likely to confuse the goods, but rather would be likely to be confused into believing that they emanate from a single source. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants, Inc. v. Morrison Inc., 23 USPQ2d at 1741. To show that consumers may expect to see goods of the sort included in both the application and the cited registration offered under the same mark, the examining attorney submitted a number of use-based third party registrations that include goods from both. Examples are Registration No. 3994907 (“artificial turf” and “floor coverings”), Registration No. 3992574 (“artificial turf” and “hard surface coverings for floors; 3 Applicant submitted a Request for Remand on March 20, 2012, after the examining attorney filed his brief, noting that it was willing to amend its identification to specify that its goods are “not intended for sports or athletic activity.” This request was untimely and no good cause was shown as to the delay in the requested amendment. TBMP § 1205. Accordingly, although the request was initially granted, it was later rescinded by Board order of April 12, 2012 after which time applicant timely filed its reply brief. Serial No. 79083695 8 protective floor coverings”) Registration No. 3702896 (“artificial turf, namely, synthetic turf and synthetic turf woven backing” and “flooring products, namely, rugs, carpets, woven backings for rugs and carpets and mats and mattings”), Registration No. 3705952 (“artificial turf” and “recreational mats, used in connection with exercise and sports; carpets and rugs”), Registration No. 3271186 (“artificial turf” and “carpeting; carpets”), Registration No. 3134942 (“multipurpose athletic recreational flooring” and “rubber shock absorption pads for use with floor covering”), and Registration No. 2723075 (“synthetic turf systems consisting of layers of man-made grasses of fibers and filaments and surface coverings of fibers or filaments;” and “carpets, rugs, and rubber mats”). Copies of use-based, third-party registrations may serve to suggest that the services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). Indeed we find that while the “use” is limited in both (the application includes only “floor coverings . . . for indoor use” while the cited registration includes only “synthetic surfacing . . . for the playing of [various sports] and other athletic activities”), these are not necessarily mutually exclusive. Both may be used together in a complementary fashion at an indoor sports arena with applicant’s “floor coverings” used as the “synthetic surfacing” of the athletic floors identified in the cited registration. Indeed, despite its proposed amendment, one of the uses touted in applicant’s own website for its floors is “Sport.” See printout Serial No. 79083695 9 of www.polyflor.com, attached to March 22, 2011 Response to Office Action, p2. Regarding channels of trade, we note that, despite the limitations on use of the goods, there are no limitations with regard to the channels through which they may be sold as to either the goods in the cited registration, nor those in the application. Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); see also In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations as to channels of trade or classes of purchasers in either the application or the cited registration, it is presumed that the services in the registration and the application move in all channels of trade normal for those services, and that the services are available to all classes of purchasers for the listed services). Since the goods are similar and potentially complementary, they may be purchased by the same consumers seeking materials for their athletic facilities. Accordingly, we find that these du Pont factors also weigh in favor of finding a likelihood of consumer confusion. Conditions of Sale Consumer Sophistication Applicant urges us to consider the sophistication of its consumers. There is nothing in the record that would give us insight as to the possible sophistication of consumers of the relevant services. See Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004) (the applicable standard of care is that of the least sophisticated consumer). With similar goods being marketed under similar marks, without further Serial No. 79083695 10 information about the conditions of sale in the record, we must consider this factor to be neutral. Conclusion In summary, we have carefully considered all of the evidence and arguments of record relevant to the pertinent du Pont likelihood of confusion factors. We conclude that with similar goods travelling in the same or similar channels of trade, and similar marks with similar commercial impressions, there is a likelihood of confusion between applicant’s mark for the applied-for goods and the mark PUR as registered. Decision: The refusal to register is affirmed.