Urecon Ltd.

Trademark Trial and Appeal BoardJul 6, 2010

No. 78897746 (T.T.A.B. Jul. 6, 2010)

Mailed: July 6, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Urecon Ltd. ________ Serial No. 78897746 _______ Sherry H. Flax of Saul Ewing LLP for Urecon Ltd. Alicia P. Collins, Trademark Examining Attorney, Law Office 115 (Tomas Vlcek, Managing Attorney). _______ Before Kuhlke, Cataldo and Mermelstein, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Urecon Ltd. seeks registration on the Principal Register of the standard character mark PEX-FLEX for goods identified as “non-metal insulated flexible pipes for use in extreme temperature applications” in International Class 17.1 Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used on its identified goods, so 1 Application Serial No. 78897746, filed June 1, 2006, under Section 44 of the Trademark Act, 15 U.S.C. §1126. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 78897746 2 resembles the registered typed-form mark FLEXPEX for “flexible pipe for plumbing,” in International Class 17 (Registration No. 2114229), as to be likely to cause confusion, mistake or deception. 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). As written, the identification of goods in the application, “non-metal insulated flexible pipes for use in extreme temperature applications” includes the “flexible pipe for plumbing” identified in the registration. Similarly, applicant’s goods are encompassed by the identification of goods in the registration because registrant’s identification includes pipes for all plumbing applications, which include those for use in extreme temperatures. As such, the goods are legally identical. Further, because the application and cited registrations do not contain limitations and the goods are legally identical, we must presume that they travel in the same channels of trade and are available to the same classes of Serial No. 78897746 3 customers. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). Applicant argues that its: goods are pre-insulated specialty piping for use in extreme temperature applications. Registrant’s goods are non-insulated pipes for general use. The consumers of Applicant’s goods purchase its highly specialized products for very specific applications which are not covered by Registrant’s non-insulated piping for general use. ... Registrant is a plumbing supply business that sells pipes that are used for plumbing. Applicant, on the other hand, is not a plumbing supplier and its goods are not used for plumbing. Accordingly, the channels of trade for the goods are distinctive. Br. p. 3. Further, applicant argues that even assuming their goods travel in the same channels of trade, establishing that the goods are in the same general field is not enough to find a likelihood of confusion. However, we have to make our determination based on the identifications in the application and registration not based on applicant’s or registrant’s actual use. There is nothing in the record on which to base a finding that the wording in applicant’s identification of goods excludes pipes for use in plumbing. Pipes for plumbing include pipes suited for extreme temperatures. In any event, the record also shows that Serial No. 78897746 4 applicant’s pipes are used for central heating and cooling and the examining attorney has submitted evidence that shows that plumbing piping and cooling and heating piping are registered by the same owner under the same mark. See, e.g., Reg. No. 1768070 for the mark PROTOP for, inter alia, insulated pipes and fittings for use in the construction, plumbing, heating and cooling industries; Reg. No. 2296575 for the mark CAN PEX for plastic pipes used for plumbing and heating; and Reg. No. 2432209 for the mark INSULPEX for pre-insulated plastic pipes for plumbing and heating systems. Third-party registrations may serve to suggest that the goods listed therein are of a kind that may emanate from a single source. In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). In view of the above, we find that the goods are legally identical or, at a minimum, closely related, and travel in the same channels of trade. We turn then to an analysis of the similarity or dissimilarity of the marks when compared in their entireties in terms of appearance, sound, connotation and commercial impression, keeping in mind that “when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of Serial No. 78897746 5 likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). The test, under this 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 the goods offered under the respective marks is likely to result. The only difference in the marks is the transposition of terms and the hyphen in applicant’s mark. As noted by the examining attorney, the hyphen does not affect the pronunciation, connotation, or overall commercial impression of the mark, and is therefore not a basis on which to distinguish the marks. See Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.4 (TTAB 1978) (FAST-FINDER with hyphen is in legal contemplation substantially identical to FASTFINDER without hyphen). See also Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042 (TTAB 1989) (marks PRO-PRINT and PROPRINT identical but for hyphen and confusion likely). Cf. In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006) (presence of hyphen does not change descriptive nature of the term). Serial No. 78897746 6 The transposition of the terms PEX and FLEX does not affect the connotation or the overall commercial impression of the single syllable rhyming cadence. Compare In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA and AMERICA WINE SOCIETY 1967) and In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (RUST BUSTER and BUST RUST) with In re Best Products CO., Inc., 231 USPQ 988 (TTAB 1986) (BEST JEWELRY and JEWLERS’ BEST). We find the similarities in the marks to be much stronger than the minor dissimilarity in appearance and sound occasioned by the transposition. Applicant argues that the marks are composed of weak terms and by implication should be afforded a limited scope of protection. Both parts of applicant’s and registrant’s marks PEX and FLEX may be suggestive of their respective goods. PEX is defined as “a cross-linked polyethylene thermosetting material, which is widely used, in plumbing applications. P[ex] is a flexible, durable tubing that is used for hot and cold water supply.” Designbuild- network.com (Exhibit to Applicant’s Request for Reconsideration). The term “flex” is short for “flexible,” a feature of both registrant’s and applicant’s goods. However, as the examining attorney argues, there is no evidence that the combination of these terms is weak due to Serial No. 78897746 7 third-party use. In addition, the third-party registrations submitted by applicant, although relevant to show that the mark or a portion of the mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods, have limited probative value because none of them present the combination of these particular terms. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1285 (Fed. Cir. 1984) and AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406 177 USPQ 268, 269-70 (CCPA 1973). That being said, we recognize that each part of the marks may be suggestive of the respective goods, and these third-party registrations are in line with that finding. However, even weak marks are deserving of protection. King Kandy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Thus, despite the weak nature of the marks’ constituent parts, we find the marks to be highly similar and when used on identical or closely related goods likely to cause confusion as to source. Applicant’s unsupported argument that the involved goods would be purchased by sophisticated consumers is not persuasive. There is nothing in the identification of goods to indicate that these are purely custom-made Serial No. 78897746 8 products, offered at only very high prices and purchased only by consumers with specialized knowledge. However, even assuming the identification inherently conveys this meaning, there is nothing in the record to support a finding that the goods and purchasing process are of such a nature that purchasers could distinguish such similar marks for legally identical or closely related goods. See, e.g., Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992) (record confirms that opposer’s services are expensive and are purchased only by experienced corporate officials after significant study and contractual negotiation and that the evaluation process used in selecting applicant’s products requires significant knowledge and scrutiny). As is frequently stated, even if consumers are knowledgeable in a particular field that does not necessarily mean that they are immune from source confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Applicant’s argument that the record does not establish that registrant’s mark is famous is not persuasive of a different result, and we find that factor to be neutral. In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006) (fame is not normally a factor in ex parte proceedings). Serial No. 78897746 9 Finally, applicant asserts that there have been no known instances of actual confusion during a period of approximately eight years of concurrent use. First, there is nothing in the record to show that there has been a meaningful opportunity for such confusion to have occurred. More importantly, in the context of an ex parte proceeding, “the lack of evidence of actual confusion carries little weight.” Majestic Distilling, 65 USPQ2d at 1205. In conclusion, we find that because the marks are similar, the goods are legally identical or otherwise closely related, and the channels of trade and purchasers overlap, confusion is likely between applicant’s mark PEX- FLEX and the mark FLEXPEX in the cited registration. To the extent there is any doubt, we resolve it, as we must, in registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.