Reynolds Consumer Products, Inc.v.PRS Mediterranean Ltd.

Trademark Trial and Appeal BoardFeb 14, 2014

No. 91189669re (T.T.A.B. Feb. 14, 2014)

This Opinion is not a Precedent of the TTAB Mailed: February 14, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Reynolds Consumer Products, Inc. v. PRS Mediterranean Ltd. _____ Opposition No. 91189669 against Serial No. 77248825 _____ on Request for Reconsideration _____ James H. Donoian, Sarah Marks, Heidi Garfield and Daniel J. Navarro, of Greenberg Traurig LLP for Reynolds Consumer Products, Inc. Richard M. Klein and George P. Huang of Fay Sharpe LLP, for PRS Mediterranean Ltd. _____ Before Bucher, Kuhlke and Shaw, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: The Board, in a final decision dated September 27, 2013, sustained the opposition on the basis of likelihood of confusion brought by Reynolds Consumer Products, Inc., doing business as Presto Products Company (hereinafter “opposer”), to the mark Opposition No. 91189669 2 NEOWEB (in standard character format) as filed by PRS Mediterranean Ltd. (hereinafter “applicant”) for cellular confinement systems. On October 28, 2013, applicant filed a timely request for reconsideration (see Trademark Rule 2.129(c), 37 C.F.R. § 2.129(c)), based upon applicant’s assertion that the Board erred in applying the first du Pont factor, and in failing to consider certain third-party trademark registrations, and that these errors led to our incorrectly holding that the NEOWEB mark is likely to be confused with the GEOWEB mark under Section 2(d) of the Lanham Act. Applicant requests, therefore, that the Board reconsider its decision and dismiss the opposition. Opposer, on November 18, 2013, timely submitted its opposition to applicant’s request for reconsideration, arguing that the Board’s decision of September 27, 2013, was proper and that applicant’s request should be denied. In its motion for reconsideration, respondent asserts that our decision is in error for the following reasons: 1. The Board erred when considering the appearance and sound of the respective marks. 2. The Board erred when considering connotations and commercial impressions of the respective marks. 3. The Board erred in not considering certain third-party trademark registrations. The premise underlying a request for rehearing, reconsideration, or modification of a decision under Trademark Rule 2.129(c) is that, based upon the evidence of record and the prevailing authorities, the Board erred in reaching the decision it issued. See TBMP § 543 (June 2013) and the authorities cited therein. Opposition No. 91189669 3 The request may not be used to introduce additional evidence, nor should it be devoted simply to a re-argument of the points presented in the requesting party's brief on the case. See Amoco Oil Co. v. Amerco, Inc., 201 USPQ 126 (TTAB 1978). Rather, the request normally should be limited to a demonstration that based upon the evidence properly of record and the applicable law, the Board’s ruling is in error and requires appropriate change. See Steiger Tractor Inc. v. Steiner Corp., 221 USPQ 165 (TTAB 1984), different results reached on reh’g, 3 USPQ2d 1708 (TTAB 1984); cf. In re Kroger Co., 177 USPQ 715, 717 (TTAB 1973). Although much of respondent’s motion for reconsideration is nothing more than re-argument, in the interest of completeness, we will address each point in turn. I. The first du Pont factor As do many of our final decisions where the issue is likelihood of confusion, we started our likelihood of confusion analysis as follows: Our determination under Trademark Act Section 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 Opposition No. 91189669 4 (CCPA 1976); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). We noted in our decision of September 2013, that as to appearance, these two marks are identical except for the first letter (GEOWEB versus NEOWEB). Inasmuch as the terms “Geo-”and “Neo-” appear to be perfectly rhyming, two-syllable prefixes having the identical “e•o” vowel pair, we concluded that the terms “Geoweb” and “Neoweb” are “strikingly similar in sound.” Furthermore, in comparing these respective marks under the first du Pont factor, we noted that we must consider the marks in their entireties as to both connotation and commercial impression in determining the similarity or dissimilarity between them: As to connotation, the prefix “Geo-” has the suggestion of “earth,” while “Neo-” has a different meaning, often that of “new” or “revised.” While applicant suggests that this distinction should be the end of this inquiry, we agree with opposer that prospective customers might well view “Neo-” as an intentional play on the word “Geo” – the more so inasmuch as applicant consistently touts its NEOWEB product as a later generation of products that improves significantly upon GEOWEB products. This combination of identical pronunciations and structure, and an almost intuitive connection to the earlier product is significant in this case, works to create a close association between the overall commercial impressions of the two marks used in a marketplace of legally identical, competing products … . Throughout the prosecution of this proceeding, applicant has emphasized the difference in the connotations of the prefixes of these respective marks. We acknowledged that “Geo-” has the suggestion of “earth,” while “Neo-” means “new” or “revised.” Although applicant argued that this dissimilarity in meaning alone Opposition No. 91189669 5 should be determinative in resolving the question of likelihood of confusion in its favor and hence, dismissing the opposition, we found otherwise. We found, in addition to the fact that the terms “Geo-”and “Neo-” are strikingly similar in sound, that applicant’s efforts to show its bona fide credentials and long experience in the industry repeatedly resulted in advertisements that touted its New version of the Geoweb products. Hence, in making a determination about the all-important commercial impressions of the respective marks, we noted several different forces at work, each mutually reinforcing the impressions of a close relationship between the GEOWEB and NEOWEB as they appeared in the marketplace. Our case law has also set up a converse relationship between the first and second du Pont factors: when the goods and/or services are legally identical, as is the case herein, “the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992) (CENTURY 21 for inter alia, insurance brokerage service confusingly similar to CENTURY LIFE OF AMERICA for insurance underwriting services); and Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1752 (TTAB 2006) (finding LESSBUCKS COFFEE similar in appearance, sound, and overall commercial impression to STARBUCKS and STARBUCKS COFFEE). Hence, the above cited language confirms our focus on the fact that these respective marks are indeed being “used in a marketplace of legally identical, competing products.” Opposition No. 91189669 6 Of course, in the larger scheme of applying the du Pont factors, after reviewing all the relevant factors from among the thirteen listed by the du Pont Court, the tribunal is then charged with carefully balancing all the relevant factors. At the time of this final balancing, the strength of the cited mark is certainly a relevant factor. II. Factoring in the Strength of the cited marks As suggested by applicant, we need to look to factors dealing with the strength of opposer’s prior mark, namely, both its “commercial strength” (the fifth du Pont factor) and its “conceptual strength (the sixth du Pont factor). As to the factor of commercial strength, while we found that opposer’s GEOWEB marks are not “famous,” we concluded that opposer’s predecessor-in- interest was the … first company to offer commercially cellular confinement systems, and continues to be a prominent player in this industry after more than thirty years. … [O]pposer’s GEOWEB marks have served as distinctive source indicators for its cellular confinement products for more than three decades.” Then, as to the sixth du Pont factor, we observed that while applicant had shown that both “geo-” and “-web” had been used by third-party competitors, no third party has been shown to have adopted or used a mark as similar to opposer’s marks as is applicant’s applied-for mark, and that absent a counterclaim to cancel these registrations, applicant could not collaterally attack these registrations. Opposition No. 91189669 7 Hence, as to the overall strength of opposer’s GEOWEB marks, we discussed our relative weighing of the fifth and sixth du Pont factors. Accordingly, we found that opposer’s GEOWEB mark represented a “well-established brand in this field sufficient to accord it a slightly wider scope of protection, despite any possible conceptual weakness,” and we concluded that [w]hatever arguable weaknesses may have been inherent in opposer’s selection in 1984 of the term “Geoweb” for geocells in the form of plastic “webbing,” under Section 7 of the Lanham Act, and in keeping with more than thirty years of usage in this field, we accord the pleaded marks the scope of protection to which they are rightly entitled. Then, finally in balancing together all the relevant du Pont factors, we found as follows: The goods, the channels of trade and classes of consumers herein are identical. Even if one concedes some inherent conceptual weakness in the trademark when opposer first adopted its mark in 1984, it has nonetheless become a widely-known and established brand, and the parties’ marks involved herein are quite similar in appearance, sound and overall commercial impression. These factors, going in favor of a finding of likelihood of confusion, outweigh that which goes in applicant’s favor, namely the care with which these goods will be purchased by fairly sophisticated professionals, and hence, we find that confusion is likely between opposer’s GEOWEB marks and applicant’s NEOWEB mark. To the extent we retain any doubt as to whether there is a likelihood of confusion, we resolve such doubt, as we must, in favor of opposer, the prior registrant. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993). Hence, contrary to applicant’s assertion in its request for reconsideration, the totality of our September 2013 decision shows that we did consider marketplace Opposition No. 91189669 8 conditions under several relevant du Pont factors in reaching our likelihood of confusion determination herein. III. Failure to consider certain third-party trademark registrations We turn then to applicant’s final complaint. In our earlier decision (at 24, footnotes 72 and 73), we noted that we had given no consideration to a number of third-party applications and registrations placed into the record by applicant that had been abandoned, cancelled or expired. We have long held that cancelled or expired registrations are not evidence of anything except that they issued. See TBMP § 704.03(b)(1)(A) (June 2013) and cases cited therein. Applicant cites, inter alia, to Henry Siegel Co. v. M & R International Mfg. Co., 4 USPQ2d 1154 (TTAB 1987) in support of its claim of a Board error herein. However, we note that the defendant (Respondent M&R International) in the Henry Siegel case counterclaimed for cancellation of petitioner’s registration for jeans, claiming that the CHIC mark claimed by plaintiff (petitioner Henry I. Siegel Co.) was merely descriptive of jeans. On this counterclaim, after reviewing respondent’s dictionary definitions and articles from periodicals where the word “chic” was used in its ordinary dictionary sense, the Board also identified seventeen third-party trademark registrations placed into the record by respondent that were among the “most relevant” (i.e., most similar to the marks at issue) of the many-more-than-seventeen third-party registrations offered in evidence. As noted by opposer, “[t]he Board [in Henry Siegel] did not, as Applicant argues, describe the [four] expired and cancelled registrations as ‘among the most relevant evidence of record to show that the term … Opposition No. 91189669 9 has a descriptive significance’.” Opposer’s brief at 4 n2. Finally, in making the decision on likelihood of confusion in Henry Siegel, the Board held that petitioner was entitled to preclude the registration of respondent’s mark L.A. CHIC, under § 2(d) of the Act, without citing back to any weakness in the term “Chic.” Accordingly, we find that the Board committed no errors in reaching our decision of September 27, 2013. Decision: After due consideration of all the issues raised in applicant’s motion for reconsideration, including any not specifically addressed herein, applicant’s request for reconsideration is denied, and the Board adheres to its decision of September 27, 2013, sustaining the opposition and denying the registration of applicant’s NEOWEB mark.