FineLine Lakeshore Services, LLP and Dock & Lift, Inc.

Trademark Trial and Appeal Board

Aug 17, 2007

No. 76428109 (T.T.A.B. Aug. 17, 2007)

Mailed:
August 17, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re FineLine Lakeshore Services, LLP
and Dock & Lift, Inc.1
________

Serial No. 76428109
_______

Hugh D. Jaeger, Esq. for FineLine Lakeshore Services, LLP
and Dock & Lift, Inc.

William H. Dawe III, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On June 27, 2002, FineLine Lakeshore Services, LLP and
Dock & Lift, Inc. (“applicants”) applied as joint
applicants to register the mark POLYDECK in standard-
character form for goods now identified as “polyethylene
dock sections” in International Class 19. Applicants

1 On November 30, 2006, we vacated our earlier decision in this
case to schedule an oral hearing. Applicant had made a timely
request for a hearing approximately two years prior to our
decision. On June 27, 2007, after many attempts by the Board to
schedule the hearing, applicant waived its right to the hearing.
Accordingly, the case is ready for decision.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76428109
2
assert both first use anywhere and first use of the mark in
commerce on May 1, 2002.
The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with Reg. No. 2586508, which issued
on June 25, 2002, for the mark POLYDECK in standard-
character form for goods identified as “vinyl boards for
building products” in International Class 19. The
registration claims first use anywhere on April 1, 2001 and
first use of the mark in commerce on July 1, 2001. The
Examining Attorney has also refused registration under
Trademark Act Section 2(e)(1), 15 U.S.C. § 2(e)(1), on the
ground that applicants’ mark merely describes the goods.
Applicants responded to the refusals, and the Examining
Attorney made both refusals final. Applicants and the
Examining Attorney have filed briefs. For the reasons
stated below, we affirm the refusal under Section 2(d) and
reverse the refusal under Section 2(e)(1).
The Section 2(d) Refusal
Likelihood of Confusion

Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office … as to
be likely, when used on or in connection with the goods of
Ser No. 76428109
3
the applicant, to cause confusion …” 15 U.S.C. § 1052(d).
To determine whether there is a likelihood of confusion, we
must consider all evidence of record bearing on the factors
delineated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977). Here, as is
often the case, the crucial factors are the similarity of
the marks and the similarity of the goods of the applicants
and registrant. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Comparison of the Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
In this case the marks are identical. Both the mark
in the application and the mark in the cited registration
are POLYDECK, and both marks are in standard-character
form. Furthermore, as the Board observed in a similar
case, “… in a situation such as this, where both parties
are using the identical designation, … the relationship
between the goods on which the parties use their marks need
not be as great or as close as in the situation where the
Ser No. 76428109
4
marks are not identical or strikingly similar.” Amcor,
Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981).
Comparison of the Goods and Channels of Trade
To find goods related for the purposes of Trademark
Act Section 2(d), the goods need not be identical. The
goods need only be related in such a way that the
circumstances surrounding their marketing would result in
relevant consumers mistakenly believing that the goods
originate from the same source. On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000).
Applicants’ entire argument, not only as to the goods
but with regard to both grounds for refusal, is as follows:
The issue regarding refusal of registration is very
simple—the goods are not the same and the goods are
not sold in the same channels of commerce. There is
no confusion as to the source of the goods and there
never has been any confusion as to the source of the
goods.

The Examining Attorney argues that the goods of
applicants and the registrant are related in that both are
“building products that pass through the same trade
channels.” In support of his position that the goods are
related, the Examining Attorney has presented records of
third-party, use-based registrations, including the
following:
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Reg. No. 2488246 for the mark “21POLY” for goods
including “wood coated with protective polymer
coating, namely, … boards, … and beams for use in
waterfront walls, sea walls, retaining walls, piers,
bulkheads, docks and decks”;

Reg. No. 2048875 for the mark “PHOENIX” for goods
identified as “recycled plastic lumber, sheets, boards
and posts for use in building structures, such as, …
decks, docks, … fencing, outdoor furniture, plant
boxes and shipping pallets”;

Reg. No. 2504695 for the mark “YARDCRAFTERS” for goods
identified as “non-metal deck board and/or panels …
for the decks, docks …”;

Reg. No. 2159249 for the mark “YOU WILL NEVER GO BACK
TO WOOD!” for goods identified as “vinyl decks, docks,
fences and component parts thereof”; and

Reg. No. 1787500 for the mark “Vecor” and design for
goods identified as “vinyl panels for the construction
of docks, decks, … and accessories therefor”;

Applicants’ goods are “polyethylene dock sections”;
the goods in the cited registration are “vinyl boards for
building products.” In determining whether the goods are
related, we must consider the goods as identified in the
application and registration and, in the absence of any
restrictions, assume that the goods include all goods
identified and that those goods travel in all trade
channels appropriate for such goods. CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
The registrations provided by the Examining Attorney
have some probative value in this regard; specifically,
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they may indicate that the goods are the types of goods
which may emanate from the same source. In re TSI Brands
Inc., 67 USPQ2d 1657, 1659 (TTAB 2002); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
In this case the goods in the cited registration are vinyl
boards which could be component parts of applicants’
polyethylene dock sections. The third-party registrations
indicate that finished goods, such as applicant’s dock
sections, could include component parts, such as, the vinyl
boards identified in the registration. As such,
applicants’ goods and those identified in the cited
registration, as the Examining Attorney notes, are both
closely related building products. Accordingly, we
conclude that applicants’ goods and the goods identified in
the cited registration are related.
Although applicants state that the channels of trade
for the goods differ, applicants do not either explain how
they might differ or provide any evidence to show that they
differ. Neither the application nor the cited registration
specifies any restrictions as to trade channels.
Consequently, we must assume that the goods identified in
both the application and the cited registrations move in
the same trade channels, namely, trade channels which would
apply generally to building products. See In re Melville
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Corp., 18 USPQ2d at 1388. Accordingly, we conclude that
the trade channels for the goods of applicants and the
cited registrant could be overlapping or the same.
Actual Confusion
Applicants also argue that the absence of actual
confusion indicates no likelihood of confusion without
further explanation. However, there is no evidence that
there has been an opportunity for confusion to occur in
this case, for example, evidence that the applicants and
the registrant have sold their goods in the same territory.
Furthermore, particularly in an ex parte proceeding,
“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value.” In re Majestic
Distilling Co., 65 USPQ2d at 1205. See also In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Therefore, we find applicants’ argument regarding actual
confusion unpersuasive.
In sum, after considering all evidence of record
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion in this case. We conclude so
principally because applicants’ mark and the mark in the
cited registration are identical and because the goods
identified in the application and the cited registration
are related and could travel in the same trade channels.
Ser No. 76428109
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The Section 2(e)(1) Refusal
Descriptiveness

The Examining Attorney has also refused registration
on the ground that POLYDECK is merely descriptive of
“polyethylene dock sections.” The Examining Attorney
argues that PLOYDECK is a compound term with two merely
descriptive components: “deck” which is an alternative
generic term for “dock” and “poly” which is an abbreviation
for “polyethylene.” To support his position that “poly” is
an abbreviation for “polyethylene” the Examining Attorney
made the following definition of record: “pol-y noun 1.
polyester 2. polyethylene.” This definition is from the
electronic version of the American Heritage® Dictionary of
the English Language (3rd ed. 1992). Applicant has not
presented any evidence or arguments with regard to the
descriptiveness refusal.
A term is merely descriptive of goods within the
meaning of Trademark Act Section 2(e)(1) if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979).
Ser No. 76428109
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To determine whether a term is merely descriptive we
must consider the term not in the abstract, but in relation
to the goods for which registration is sought, the context
in which it is being used, and the possible significance
that the term would have to the average purchaser of the
goods in that context. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
When two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the goods, then the resulting combination is
also merely descriptive. See, e.g., In re Tower Tech,
Inc., 64 USPQ2d 1314 (TTAB 2002)(SMARTTOWER merely
descriptive of commercial and industrial cooling towers).
The definition for “poly” which the Examining Attorney
provided is for “poly” standing alone and includes two
alternative meanings. The same dictionary also includes a
definition for “poly-” when used as a prefix. We must
consider this additional definition in view of the fact
that, in this instance, relevant purchasers may also
perceive “poly” as a prefix. The definition for the prefix
“poly-” is as follows: “prefix 1. more than one; many;
much: polyatomic. 2. more than usual; excessive;
Ser No. 76428109
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abnormal: polydipsia 3. polymer; polymeric: polyethylene
[From Greek polus, many].”2 The dictionary also includes
scores of entries for terms indicating the common use of
“poly-“ as a prefix, for example: polychromatic, polygon,
polygamy, polysyllabic, etc.3 This evidence indicates that
relevant consumers may view POLYDECK as a coined term with
“poly-“ as a prefix suggesting, for example, that the
goods, dock sections, may be configured in many ways. In
re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002)(BIO-CD held
not merely descriptive for various scientific and medical
products and services). This indicates further that the
combination of “poly” and “deck” may have a suggestive
meaning which is more than the sum of its parts contrary to
the Examining Attorney’s position.
Accordingly, we conclude that POLYDECK is not merely
descriptive of “polyethylene dock sections.” In concluding
so we acknowledge that there is some doubt and that, in
such a case under Trademark Act Section 2(e)(1), we must
resolve doubt in favor of applicant. In re Rank
Organisation Ltd., 222 USPQ 324, 326 (TTAB 1984).

2 We take judicial notice of this dictionary definition.
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).
3 We take judicial notice of these examples from the Merriam-
Webster’s Collegiate Dictionary (11th ed. 2003). Id.
Ser No. 76428109
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Decision: The refusal under Section 2(d) is affirmed
and the refusal under Section 2(e)(1) is reversed.
Registration is refused.