Peri GmbH

Trademark Trial and Appeal Board

Feb 22, 2010

No. 79031485 (T.T.A.B. Feb. 22, 2010)

Mailed: 2/22/10

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Peri GmbH
________

Serial No. 79031485
_______

Friedrich Kueffner for Peri GmbH.

Ellen J.G. Perkins, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Hairston and Holtzman, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Peri GmbH filed an application to register the mark
shown below

for goods identified as follows:
metal formwork for concrete and
structural parts thereof and
reinforcements of metal therefor;
structural scaffoldings, façade
scaffoldings, and scaffolds, and
structural parts therefor, all of
metal; supports of metal for formwork
and scaffolds and structural parts
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 79031485
2
therefor (in International Class 6);
and

non-metal formwork for concrete and
structural parts thereof and
reinforcements not of metal therefor;
structural scaffoldings, façade
scaffoldings, and scaffolds, and
structural parts therefor, all of non-
metal; supports of wood for formwork
and scaffolds and structural parts
thereof (in International Class 19).1

The trademark examining attorney 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 the previously
registered mark FLEXGRID (in standard characters) for
“plastic geosynthetic reinforcement grids for use in
building construction, road construction, landscape
construction, environmental remediation, erosion control
construction and public works construction”2 as to be likely
to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.

1 Application Serial No. 79031485, filed October 9, 2006, under
the Madrid Protocol, Section 66(e) of the Trademark Act, 15
U.S.C. §1141(a), based on International Registration No. 0904978,
issued October 9, 2006. Under Section 68(a) of the Trademark
Act, 15 U.S.C. §1141(h), a request for extension of protection
will be examined under the same standards as any other
application for registration on the Principal Register. See TMEP
§1904.02(a) (6th ed. 2009).
2 Registration No. 3381851, issued February 12, 2008.
Ser. No. 79031485
3
Applicant concedes that its mark “is essentially a
transposition” of registrant’s mark, but contends that the
marks have different commercial impressions because the
pronunciation of each mark is different. Applicant also
argues that its goods are different from registrant’s
building materials, and that the goods “are very
sophisticated and are used only by experts in their
fields.”3
The examining attorney maintains that the involved
marks are merely transpositions of one another and,
accordingly, are highly similar. According to the
examining attorney, the marks convey similar commercial
impressions, namely of a flexible grid. The examining
attorney also contends that the goods are highly related,
and that they travel in the same trade channels to the same

3 In its brief, applicant makes reference for the first time to a
Wikipedia entry for the term “geosynthetic.” The examining
attorney, in her brief, neither objected to the new evidence nor
discussed the new evidence or otherwise treated it as being of
record. See TBMP §1207.03 (2d ed. rev. 2004). Firstly, a copy
of the pertinent entry was not submitted. Even if submitted,
however, Trademark Rule 2.142(d) provides that the application
should be complete prior to the filing of an appeal, and the
Board will ordinarily not consider untimely evidence. Secondly,
the Board does take judicial notice of online sources such as
Wikipedia. See, e.g., In re Total Quality Group Inc., 51 USPQ2d
1474, 1476 (TTAB 1999). In view of the above, the Wikipedia
reference has not been considered in reaching our decision. We
hasten to add, however, that even if considered, the evidence
would not change the result of this appeal on the merits.
Ser. No. 79031485
4
purchasers. In support of the refusal, the examining
attorney submitted an excerpt of applicant’s website.
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). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). The test, under the first 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
Ser. No. 79031485
5
the goods offered under the respective marks is likely to
result.
The marks, when considered in their entireties as
applied to the goods, engender substantially similar
meanings and overall commercial impressions. The
connotation of applicant’s mark GRIDFLEX is virtually
identical to the connotation of registrant’s mark FLEXGRID,
namely a flexible grid. The only real difference between
the marks is that the two words comprising the marks are
transposed. This difference is minor, however, as it
relates to the overall commercial impressions conveyed by
these marks. See, e.g., In re Wine Society of America
Inc., 12 USPQ2d 1139 (TTAB 1989) [THE WINE SOCIETY OF
AMERICA is substantially similar to AMERICAN WINE SOCIETY];
In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988)
[RUST BUSTER (“RUST” disclaimed) for rust-penetrating spray
lubricant held likely to be confused with BUST RUST for
penetrating oil]; and Bank of America National Trust and
Savings Association v. American Bank of St. Joseph, 201
USPQ 842 (TTAB 1978) [confusion is likely where the sole
significant difference between marks applied to similar
goods or services is the transposition of the words which
comprise those marks and where the transposition of words
does not change the overall commercial impression].
Ser. No. 79031485
6
Although the transposition of the two terms comprising
the marks results in differences in sound and appearance
between the marks, these differences are easily outweighed
by the similarities in meaning and overall commercial
impression.
Accordingly, the first du Pont factor weighs in favor
of a finding of likelihood of confusion.
In comparing the marks, we recognize their
suggestiveness when applied to the goods, but, as indicated
above, the marks convey the same suggestion.
Notwithstanding any suggestiveness, the record is devoid of
evidence of any third-party uses or registrations of the
same or similar marks in the building construction field.
We next turn to consider the goods. It is well
settled that the question of likelihood of confusion must
be determined based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods identified in
the cited registration. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in the
application at issue and/or in the cited registration are
broadly identified as to their nature and type, such that
there is an absence of any restrictions as to the channels
Ser. No. 79031485
7
of trade and no limitation as to the classes of purchasers,
it is presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefore, and that they would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Further, it is not necessary that the
respective goods be identical or competitive, or even that
they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods are related in some manner, and/or
that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originated from the same
producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
The examining attorney contends that applicant’s and
registrant’s goods involve reinforcements and other goods
for use in the building construction trade. In connection
with this argument, the examining attorney submitted an
excerpt from applicant’s website showing that its flexible
Ser. No. 79031485
8
slab formwork and other goods are utilized in building
construction.
Applicant’s goods are broadly identified, and,
therefore, must be construed to encompass such reinforcing
goods for use in the building construction field, one of
the fields specifically set forth in the identification of
goods in the cited registration. This use is confirmed by
applicant’s website. Further, as shown by the website
excerpt, applicant’s reinforcing formwork is in the nature
of a grid, as is the case with registrant’s goods.
Applicant’s and registrant’s reinforcement and support
products, as well as applicant’s scaffolding, may be used
together in the same project at the same building site.
These goods are likely to travel in similar trade channels,
namely distributors of building supplies and materials.
The goods also are likely to be sold to the same classes of
purchasers, namely builders and contractors in the
construction trade.
The relatedness of the goods and the overlap in trade
channels and purchasers are du Pont factors that weigh in
favor of a finding of likelihood of confusion.
We will assume, as applicant argues, that some of the
formwork and scaffolding products involved in this appeal
may be relatively sophisticated goods in the construction
Ser. No. 79031485
9
trade, and that the building professionals buying these
products may exercise a certain degree of care in making
their purchasing decisions.4 Nevertheless, even careful
purchasers are likely to be confused when encountering
similar goods sold under similar marks. As stated by our
primary reviewing court, “[t]hat the relevant class of
buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods. ‘Human memories even
of discriminating purchasers ... are not infallible.’” In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986) quoting Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970). The similarity between the marks and the
similarity between the goods outweigh any sophisticated
purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing
decision, and expensive goods].

4 It should be noted, however, that applicant failed to introduce
any evidence on this point.
Ser. No. 79031485
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In view of the above, when the relevant likelihood of
confusion factors are considered, we find that, on balance,
they weigh in favor of a finding of likelihood of
confusion.
Lastly, to the extent that any of the points raised by
applicant raises a doubt about likelihood of confusion,
that doubt is required to be resolved in favor of the prior
registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.