Ultra-Flex Moulding, Inc.

Trademark Trial and Appeal Board

Apr 9, 2003

No. 75699004 (T.T.A.B. Apr. 9, 2003)

Mailed:
April 9, 2003
Paper No. 14
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ultra-Flex Moulding, Inc.
________
Serial No. 75/699,004
_______
Marnie Wright Barnhorst of The Trademark Group for Ultra-
Flex Moulding, Inc.
Tonja M. Gaskins, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Hanak, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Ultra-Flex Moulding, Inc. seeks registration on the
Principal Register of the mark ULTRA-FLEX MOULDING as
applied to “construction materials, namely non-metal
molding” in International Class 19.1
1 Application Serial No. 75/699,004 was filed on May 6, 1999,
based upon applicant’s allegation of use in commerce since at
least as early as 1989. The word “Moulding” is disclaimed apart
from the mark as shown.
We take judicial notice (here and in later instances in
this decision) of a dictionary listing [University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)]
confirming that “molding” (taken from the identification of
goods) and “Moulding” (taken from the mark) are both acceptable
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/699,004
- 2 -
The Trademark Examining Attorney has 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 two previously
registered marks that are owned by two different entities:
ULTRA-FLEX for “metal edge molding for suspension ceilings”
in International Class 62 and ULTRAFLEX for “non-metal,
prefinished drywall trim” in International Class 19,3 as to
be likely to cause confusion, to cause mistake or to
deceive.
When the refusals were made final, applicant appealed.
Applicant and the Trademark Examining Attorney have fully
briefed the case. Applicant did not request an oral
hearing.
We affirm the refusals to register.
Applicant argues, in urging that the refusals be
reversed, that the cited mark is so weak in this field that
small distinctions like applicant’s hyphen (absent in the
‘318 registration) and the addition of the word “Moulding”
spellings for the same word: “molding or moulding: … 3b: a
decorative plane or curved strip (as of wood or metal) used for
ornamentation or finishing … … ” Webster’s Third New International Dictionary
of the English Language, Unabridged (1993).
2 Registration No. 1,863,049, issued on November 15, 1994,
Section 8 affidavit accepted, Section 15 affidavit acknowledged.
3 Registration No. 2,222,318, issued on February 9, 1999.
Serial No. 75/699,004
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to the end of applicant’s mark are significant; that the
purchasers of the involved goods are all sophisticated; and
that there is no evidence in the record that these goods
originate from the same source.
The Examining Attorney maintains that the word
“Moulding” is not significant enough to create a different
commercial impression from the cited marks; that the
various goods are all construction materials in the nature
of “trim”; that the goods are offered in connection with
each other through the same channels of trade; that there
is no actual showing in the file as to the sophistication
of the purchasers, as argued by applicant; that third-party
registrations showing a number of ULTRA and ULTRAFLEX
marks are accorded little probative weight in this context;
that applicant’s allegation of an absence of actual
confusion is not persuasive of a contrary result in this
ex parte context; and finally, that the Office must resolve
any doubt as to likelihood of confusion against applicant.
In the course of rendering this decision, we have
followed the guidance of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973).
The du Pont case sets forth the factors that should be
considered, if relevant, in determining likelihood of
confusion.
Serial No. 75/699,004
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Relatedness of the goods:
We turn first to the du Pont factor focusing on the
relatedness of the goods as described in the application
and cited registrations. One of the cited registrations
identifies the goods as “metal edge molding for suspension
ceilings,” while the second identifies the goods as “non-
metal, prefinished drywall trim.” Applicant’s goods are
identified as “construction materials, namely non-metal
molding.”
The first cited registration involves goods identified
as “metal edge molding for suspension ceilings.” Despite
the obvious fact that both goods involve “molding,”
applicant argues that this registrant’s product is “used to
structurally secure suspension ceilings,” and hence, “it
has a different use and would not be confused with
applicant’s decorative, non-metal moldings.”
We agree with applicant that registrant’s metal
molding is structural in nature, and would be used to hold
up ceilings made of drywall and/or acoustical tiles. This
metal edge molding for suspension ceilings might well
include all the suspended metal framing out into the very
center of the room, but as identified, would certainly
Serial No. 75/699,004
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include the room perimeter trim – out on the edges of the
ceiling, where the ceiling meets the walls.
As to applicant’s decorative molding, it would
certainly have to be read to include crown molding designed
to cover any gap between the wall and the ceiling.
Decorative crown molding would, by definition, not be used
for structural purposes, and is rarely seen with suspended
ceilings holding acoustical tiles. However, there is
nothing in this record that would support the conclusion
that decorative molding could not be combined with a
suspended ceiling finished with drywall materials.
After all, it is sufficient that the goods are related
in some manner and/or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons under situations that would
give rise, because of the marks employed in connection
therewith, to the mistaken belief that they originate from
or are in some way associated with the same producer or
provider. See Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Hence,
from the perspective of those involved in the building
trades, these two types of moldings may well be used in the
same room and would be found on the same construction site
or large remodeling job.
Serial No. 75/699,004
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The second cited registration involves goods
identified as “non-metal, prefinished drywall trim4.”
Applicant argues as follows:
… [T]he Examining Attorney provides no evidence
that Applicant’s “non-metal moulding” could
include “prefinished drywall trim.” The Examining
Attorney seems to be basing her position in part
on the erroneously (sic) view that “moulding” and
“trim” are used interchangeably in the
construction industry. This is not the case.
Trim and molding are two different types of
constructions (sic) material and the Examining
Attorney’s records from the X-Search Trademark
Database support this fact in that these records
list “molding” and “trim” separately …
Furthermore, nothing in these records shows that
Applicant’s goods (moldings) and Registrant’s
goods (prefinished drywall trim) are likely to be
marketed under the same trademark and within the
same channels of trade.
(Applicant’s appeal brief, p. 6).
The Trademark Examining Attorney has introduced into
the record third-party registrations where molding and trim
are included in the same listing of goods, and often in a
compound manner. As seen in the dictionary definitions of
4 Trim … 2b: material used as adornment, ornament, or
trimming or fully or partly ornamental fixtures, (1) TRIMMING (2)
the lighter woodwork or metal in the finish of a building (as a
molded architrave around an opening to protect the plastering);
also: an ornamental or protective framing (as of wood, metal or
stone) around an opening or at a corner or eave … … Webster’s Third New International Dictionary of the
English Language, Unabridged (1993).
Trim: … 24. Building Trades. finished woodwork or the
like used to decorate or border openings or wall surfaces, as
cornices, baseboard or moldings … The Random House Dictionary of
the English Language, Unabridged, 2nd Edition (1987).
Serial No. 75/699,004
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“molding/moulding” and “trim,” there are clearly
similarities in the entries: (1) ornamental; (2)
finishing; (3) composed of a number of different materials,
including wood, metal, etc.; and (4) especially at
cornices, baseboards, edges, corners, walls, frames around
doors and windows, etc. While the range of adornments
included in the ambit of building “trim” is broader than
the more limited goods included in “molding,” the
definition of trim includes substantially all interior,
decorative molding.
Applicant’s earlier arguments as to how its goods do
not share the structural nature of the goods in the first
cited registration (‘049) appear to hurt its argument
herein related to the goods of the second registration.
That is, to the extent building or architectural “trim” has
no structural value, registrant’s non-metal trim (of the
‘318 registration) would appear to be very similar to
applicant’s non-metal decorative molding. On their faces,
the identifications of goods would both include, for
example, molding or trim made of wood or vinyl. Moreover,
the Internet evidence placed into the record by applicant
shows that both applicant’s and this registrant’s
construction trim products actually share the same material
Serial No. 75/699,004
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composition (vinyl) and general function (more easily and
securely finishing radial and other challenging spaces).
Registrant’s drywall finishing materials formed of
high impact plastic for the corners of walls and ceilings
are reviewed (in the Internet hits submitted by applicant)
as follows:
SBS stores statewide are now carrying the No-Coat™
Ultra Flex, which is a highly resilient plastic
copolymer that is sandwiched between superior
grade paper stock and joint tape paper that is hot
glued and fed through an extrusion die.
http://www.sbsalaska.com/Support/summer.html and
http://www.no-coat.com/products/ultraflex/index.htm
Joint trims:
…
•= Aluminum Shapes, Reveals and Trims by Gordon,
Fry and Pittcon
•= Flex-Bead, Strait Flex Corner Tape
•= Trims for Off Angles, Radius Walls and Arches
•= No Coat Ultra Flex and Ultra Flex Lite
http://gypsumproducts.com/joint.htm
[Registrant appears to be linked to SPECSIMPLE.com
through their manufacturer locator directory]
http://www.specsimple.com/manlocator/alphabet/uu.h
tml
Applicant’s goods are referenced as follows:
Producing the perfect curve has just gotten easier
with Ultra-Flex’s all new Ultimate Flex syntactic
polymer moulding.
http://www.ultraflexmoulding.com/
HOW TO USE ULTRA-FLEX MOULDING
ULTRA-FLEX MOULDING is designed to take the pain
out of those labor intense curved surfaces and
costly radius top openings.
http://www.ultraflexmoulding.com/use.htm
Serial No. 75/699,004
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Ultra-Flex Moulding: Do you have a radius wall
where you want to install crown moulding? … This
new material duplicates all the features of wood
plus a degree of flexibility to accommodate the
most demanding needs of the installer. Check out
their Catalog.
http://www.compoundmiter.com/links.html
Ultra-Flex Moulding -- Ultra-Flex Moulding has
developed a syntactic polymer formulation that is
superior to anything on the market. … .
http://www.mikesart.com/linksengine/Home_Improveme
nt/Materials/index.php?ID=3 and
http://www.mikesart.net/
linked to http://www.ultraflexmoulding.com/
Accordingly, both applicant’s and this registrant’s
goods include interior trimming and finishing materials
made of plastic (or vinyl PVC), particularly designed for
difficult joints, curved surfaces and radius top openings.
It seems clear from the Internet hits, the third-party
registrations and the totality of the evidence in the file
that registrant’s goods fit the category of “moulding
drywall accessories,” that wallboards may be used with
ceiling (or crown) and baseboard molding (consistent with
applicant’s identification of goods), and that as a result,
drywall construction and repair are closely related
activities to that of applying finishing molding.
Hence, we find that applicant’s decorative molding is
clearly related to the molding for suspension ceilings and
the drywall trim of the cited registrations.
Serial No. 75/699,004
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Channels of trade:
As to the du Pont factor directed to the channels of
trade for these respective goods, absent any restrictions
in any of the identifications of goods involved herein, it
is clear that prospective consumers include contractors,
remodelers, do-it-yourselfers, professional drywall
finishers and suspended ceiling hangers. We assume all
these products would be available at home improvement
centers, larger lumber and construction supply houses,
through online purchases, and via professional contractors
and remodelers.
Sophistication of purchasers:
There is no evidence in the file as to the
sophistication of any of these groups of potential
consumers. Hence, because the population of potential
purchasers includes the do-it-yourselfers, we have to
assume an ordinary level of care by consumers in making
these purchasing decisions.
Similarities of the marks:
We turn now to the similarities or dissimilarities of
the marks in their entireties, as to appearance, sound and
connotation.
Serial No. 75/699,004
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Applicant argues that:
… its mark is distinguishable from both of the
registered marks. The addition of the word
“MOULDING” distinguishes it from both of the cited
marks and the addition of a hyphen further
distinguishes it from the second listed mark
above… .”
However, as the Trademark Examining Attorney has
correctly observed, applicant has disclaimed the generic
term, “Moulding.” While the Trademark Examining Attorney
cannot ignore the word “Moulding” when comparing the marks
in their entireties, disclaimed generic matter is less
significant than other components of composite trademarks.
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976).
While conceding that the ULTRA-FLEX portion of
applicant’s mark is identical to the ULTRA-FLEX mark of the
‘049 registration and nearly identical to the ULTRAFLEX
mark of the ‘318 registration, applicant argues that the
addition of the word MOULDING to the end of its mark
creates a noteworthy distinction herein. We disagree.
We acknowledge that applicant’s three-word mark looks
and sounds a bit different from each of the two cited two-
word marks. On the other hand, although applicant has
chosen to make the word “Moulding” a part of its mark, this
word in the context of this composite mark cannot provide
Serial No. 75/699,004
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the degree of distinctiveness that applicant contends.
Moreover, in actual practice, these components will
inevitably be separated, as seen in a sentence from
applicant’s own webpages: “Producing the perfect curve has
just gotten easier with Ultra-Flex’s all new … moulding.”
Moulding is the generic name of the goods, and in the
marketplace, the shortened form of its trade name, “Ultra-
Flex,” will get separated from the word “moulding.”
As to the connotation of these marks, the prefix
“Ultra” suggests something that surpasses the customary
norms.5 “Flex” is readily understood as a shortened form
suggesting “flexible.” Not surprisingly, applicant, like
the cited registrants, touts the “degree of flexibility” or
resiliency that characterize these three types of
construction trim. Hence, the connotation of all these
5 ultra adj. 1. going beyond what is usual or ordinary;
excessive; extreme …
ultra-, a prefix occurring originally in loanwords from
Latin, with the basic meaning "on the far aide of, beyond." In
relation to the base to which it is prefixed, ultra- has the
senses "located beyond, on the far aide of" (ultramontane;
ultraviolet), “carrying to the furthest degree possible, on the
fringe or” (ultraleft; ultramodern}, “extremely" (ultralight};
nouns to which it is added denote, in general, objects,
properties, phenomena, etc., that surpass customary norms, or
instruments designed to produce or deal with such things
(ultramicroscope; ultrasound; ultrastructure)…
The Random House Dictionary of the English Language,
Unabridged, 2nd Edition (1987).
Serial No. 75/699,004
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marks, as applied to the respective goods on which they are
used, is identical.
Having found the marks substantially the same as to
meaning, sound and appearance, we conclude that these marks
all create significantly similar overall commercial
impressions.
Third party use and registration of ULTRAFLEX marks
The most compelling argument made by applicant relates
to the du Pont factor focusing on the number and nature of
similar marks in use on similar goods. In this regard,
applicant has shown from the federal trademark register
that ULTRA serves as a prefix to hundreds of registered
marks, that there are more than a dozen variations on the
ULTRAFLEX mark “in the construction and building industry,”
and that searches of the Internet demonstrate frequent
usage of ULTRAFLEX as a trademark for a plethora of goods
and as a trade name for a variety of businesses.
Consistent with the observation that applicant’s TESS
search revealed more than three-hundred active marks
containing some variation on ULTRA in merely three
international classes of building materials and fabrics
(International Classes 6, 19 and 24) selected by applicant,
it seems unlikely consumers accord much distinguishing
Serial No. 75/699,004
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power to the word ULTRA alone. Hence, we look to the
examples of a dozen marks for variations on ULTRAFLEX on
what applicant has characterized as being “in the
construction and building industry.”
The marks shown in some of these third-party ULTRAFLEX
registrations would appear to be in use as they comport
exactly with some of the hits applicant pulled from the
Internet. However, whether one looks to the
identifications of goods from these registrations and/or
learns what one can from a cursory review of the relevant
Internet hit summaries, we find that applicant’s goods are
closely related to the goods of the cited registrations,
while being more distantly related to specialized items
like phosphor bronze metal strips, supply hoses for hand-
held showerheads, fire-protective fabrics, exterior
flashing, ceramic mortar, automotive fuel hoses, wood
veneer, fiberglass fabrics, rubber hoses, environmental
lining materials, vehicle body sealants, etc.
In short, we agree with applicant’s general
observation that a number of different manufacturers and
merchants who have adopted and are using ULTRAFLEX marks
appear to be coexisting in the marketplace. This du Pont
factor appears to favor applicant, and it is important that
we narrow appropriately the scope of protection accorded to
Serial No. 75/699,004
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the cited registrations. However, we find that where the
goods are as closely related as applicant’s goods are to
those of the two cited registrations, the existence of
these third-party registrations listing quite different
goods is not sufficient to overcome a conclusion of a
likelihood of confusion herein based upon our weighing of
the other relevant du Pont factors.
Absence of Actual Confusion
Finally, applicant has submitted an affidavit of Keith
Beasley, its operations manager for the past five years,
who declares that he knows of no instances of actual
confusion with the cited marks. He would appear to be
someone directly associated with applicant who has
firsthand knowledge of whether there have been any
incidents of actual confusion as a result of the
contemporaneous use of the marks at issue. On yet the
other hand, there is no evidence of record as to the nature
and extent of the use of the respective marks. Moreover,
as the Trademark Examining Attorney points out in her
brief, it is unnecessary to show actual confusion inasmuch
as the test under Section 2(d) of the Trademark Act is
whether there is a likelihood of confusion. See Weiss
Serial No. 75/699,004
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Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840, 1842-43 (Fed. Cir. 1990).
In any event, while the absence of any instances of
actual confusion over a significant period of time is a
du Pont factor which is indicative of no likelihood of
confusion, it is less meaningful herein where the
evidentiary record is silent as to whether there has been
appreciable and continuous use by applicant of its mark in
the same markets as those served by registrants under their
respective marks. See Gillette Canada Inc. v. Ranir Corp.,
23 USPQ2d 1768, 1774 (TTAB 1992). In particular, there
must be evidence showing that there has been an opportunity
for incidents of actual confusion to occur. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847
(Fed. Cir. 2000). Here, there is simply no evidence in the
record (i.e., information concerning details of the nature
and extent of the sales and marketing activities of
applicant and registrants under their respective marks)
from which it could be concluded that the asserted absence
of any incidents of actual confusion is indeed a mitigating
factor. Compare In re General Motors Corp., 23 USPQ2d
1465, 1470-71 (TTAB 1992).
Serial No. 75/699,004
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Resolving any doubt against applicant
We find that when purchasers of ULTRA-FLEX MOULDING
non-metal molding encounter the marks ULTRA-FLEX for
molding for suspension ceilings or ULTRAFLEX for drywall
trim, they would likely believe that applicant’s goods
originated with or were associated with or sponsored by one
of the registrants. Hence, our analysis of all the
relevant du Pont factors leads us to conclude that there is
a likelihood of confusion herein. To the extent that this
conclusion is not free from doubt, in this proceeding, we
must resolve any doubt in favor of the registrants and
against applicant. In re Hyper Shoppes (Ohio) Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988), and In re
Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is hereby affirmed.