United States: TTAB Reverses Section 2(d) Refusal: Goods Unrelated And Consumers Sophisticated

Last Updated: July 22 2019
Article by John L. Welch

On the average of twice per month, the Board reverses a Section 2(d) refusal. Here, the Board found the mark CMC for "Non-metallic underground columns for land stabilization and reinforcement that are fabricated and installed on site" not likely to cause confusion with the identical mark CMC for a "full line of metals in sheet, rod, bar, angle, round, beam, castellated beam, cellular beam, flat beam, joist, strip, tube, plate, billet, square, and wire form" and "retail store services and distributorships featuring ... construction products, and accessories." For once, a "sophisticated purchaser" argument carried some weight in the Board's du Pont analysis. In re Soletanche Freyssinet, Serial No. 79194724 (July 16, 2019) [not precedential] (Opinion by Judge Albert Zervas).

The Goods/Services: The examining attorney maintained that applicant's and registrant's goods are "pieces of construction equipment for building and/or support and thus, likely to be encountered by the same purchasers and found in the same channels of trade." The Board observed, however, that there may be hundreds of "pieces of construction equipment" used for construction projects and this alone is not a basis to find the goods related.

Next, the examining attorney argued that registrant's goods could be metal rods or beams for land stabilization and reinforcement, but the Board found no evidence in support of this "theoretical representation." 

The examining attorney also argued that the the goods have complementary uses and are purchased by the same purchasers. However, the examining attorney ignored the specific limitation that applicant's goods are fabricated and installed onsite, and thus they are not used for general construction of structures. Conversely, there was no evidence that registrant's goods are used in connection with land stabilization and reinforcement. Moreover, just because goods are within or support the same structure does not mean they are related.

As to registrant's retail store services, applicant's goods are not the type of goods that are sold in retail stores, and there was no evidence that they are so sold.

Purchasing Conditions: The Board found that applicant's goods, by their very nature, are necessarily selected with care by purchasers familiar with the source of the products. Buyers either know their specific products needs or obtain them through consultation with applicant; in either case, they would exercise significant care. And so this du Pont factor favored applicant.

Conclusion: The marks are identical, but the purchasers are sophisticated and the examining attorney has not established that the goods are related. Therefore the Board reversed the refusal to register.

The TTABlog

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