Polyflor Limited

Trademark Trial and Appeal Board

Dec 26, 2012

No. 79083695 (T.T.A.B. Dec. 26, 2012)

Mailed:
December 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Polyflor Limited
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Serial No. 79083695
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Holly Pekowsky of Amster, Rothstein & Ebenstein LLP, for
Polyflor Limited.

Daniel Capshaw, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Zervas, Ritchie, and Shaw, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Polyflor Limited (“applicant”) filed an application to
register the mark shown below for goods identified as “floor
coverings for existing floors for indoor use,” in International
Class 271:

1 Serial No. 79083695, filed June 7, 2010, pursuant to Section 66(a) of
the Trademark Act, and disclaiming the exclusive right to use the term
“LIFETIME POLISH FREE” apart from the mark as shown. The application
includes the following description: “The mark consists of a three part
square like design with the top portion a rectangular shape in green
with the white wording ‘POLYFLOR’, the middle portion a rectangular
white shape with the green wording ‘PUR’, and the bottom portion a
black rectangular shape with the white wording ‘LIFETIME POLISH
FREE.’” The application also notes: “The color(s) green, black and
white is/are claimed as a feature of the mark.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79083695
2

The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
so resembles the registered mark PUR,2 in standard character
form, for “synthetic surfacing consisting of ribbons of
synthetic fibers woven on a backing and partially covered by a
particulate infill for the playing of soccer, American football,
lacrosse, field hockey, cricket, golf and other athletic
activities,” in International Class 27, that when used on or in
connection with applicant’s identified goods, it is likely to
cause confusion or mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
Serial No. 79083695
3
briefs, and applicant filed a reply brief. For the reasons
discussed herein, the Board affirms the refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”).
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are

2 Registration No. 3485761, issued August 12, 2008.
Serial No. 79083695
4
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
and/or services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression
of the marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The mark in the cited registration consists solely of the
term “PUR,” in standard character form. Applicant’s mark
incorporates this term in full, adding its housemark
“POYLYFLOR,” (see Reply brief at 1). It is has been said that
the addition of a housemark generally does not avoid likelihood
of confusion. In re Christian Dior, S.A., 225 USPQ 533, 534
(TTAB 1985) (citations omitted) (applicant’s LE CACHET DE DIOR
confusingly similar to CACHET because applicant failed to prove
that the word “cachet” was highly suggestive, descriptive or
commonly used or registered) (Emphasis added). See also Nike
Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1201-1202 (TTAB
2007) (S and a star design for athletic bags and clothing is
likely to cause confusion with S STARTER and star design for
identical products despite that both may sometimes be used with
housemarks, including one pleaded by opposer).
Serial No. 79083695
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Applicant’s mark also adds the term “LIFETIME POLISH FREE,”
which is descriptive of a function of applicant’s floors. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750 (Fed. Cir.
1985) (descriptive or disclaimed matter is generally considered
a less dominant portion of a mark). Accordingly, we find that
when viewed in its entirety, the commercial impression of
applicant’s mark, which is dominated visually by the large term
“PUR,” is quite similar to the commercial impression of the mark
in the cited registration.
Applicant argues that the term “PUR” is a weak term for the
goods at issue, arguing that the term is the phonetic equivalent
of the word “pure” which is merely “laudatory.” (appl’s brief
at 3). Applicant submitted a definition of the term “pure” as
meaning “1. unmixed with any other matter; 2. free from dust,
dirt, or taint; 3. spotless; stainless.” (Merriam-Webster 2011).
Applicant also submitted six use-based registrations that
contain the term “PURE” and one that contains “PUR,” for similar
goods and services, as follows: PUR-COMFORT, PURE VINYL and
design, PURE CONTRACT, PURE EXTRAVAGANCE, PUREGRASS PORTABLE,
PURE ORGANIC, PUREGRASS.
We find applicant’s argument unavailing for the following
reasons. First, while it is settled that there is no correct
pronunciation of a trademark, there is no evidence that
consumers would pronounce the term “PUR” without an “E” the same
as “PURE” but may just as well pronounce it as (a cat’s) “PURR.”
In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984). Second,
the term “pure,” by its dictionary definition is not
Serial No. 79083695
6
particularly suggestive of the goods at issue in the cited
registration nor in the application, and we do not find six or
seven registrations sufficient in number to be convincing
evidence that consumers would find it to be so. Compare Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005)(NORTON MCNAUGHTON ESSENTIALS for ladies’ sportswear not
likely to cause confusion with ESSENTIALS for women’s clothing).
Accordingly, on this record we find no weakness shown in the
term.
Rather, on the balance, we find the commercial impressions
of the marks in their entireties to be quite similar, with
applicant’s mark having as its dominant element registrant’s
mark, and to outweigh dissimilarities in sight and sound,
keeping in mind also that the mark in the cited registration is
registered in standard character format and may be displayed in
any number of formats. See Citigroup Inc. v. Capital City Bank
Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If the
registrant ... obtains a standard character mark without claim
to ‘any particular font style, size or color,’ the registrant is
entitled to depictions of the standard character mark regardless
of font, style, size, or color.”). Accordingly, we find this du
Pont factor to weigh in favor of finding a likelihood of
consumer confusion.

Serial No. 79083695
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The Goods and Channels of Trade
The identification of goods in the application includes
“floor coverings for existing floors for indoor use,”3 while the
recital of services in the cited registration includes
“synthetic surfacing consisting of ribbons of synthetic fibers
woven on a backing and partially covered by a particulate infill
for the playing of soccer, American football, lacrosse, field
hockey, cricket, golf and other athletic activities.” In
analyzing their similarities and dissimilarities, we keep in
mind that the test is not whether consumers would be likely to
confuse the goods, but rather would be likely to be confused
into believing that they emanate from a single source. San
Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants,
Inc. v. Morrison Inc., 23 USPQ2d at 1741.
To show that consumers may expect to see goods of the sort
included in both the application and the cited registration
offered under the same mark, the examining attorney submitted a
number of use-based third party registrations that include goods
from both. Examples are Registration No. 3994907 (“artificial
turf” and “floor coverings”), Registration No. 3992574
(“artificial turf” and “hard surface coverings for floors;

3 Applicant submitted a Request for Remand on March 20, 2012, after the
examining attorney filed his brief, noting that it was willing to
amend its identification to specify that its goods are “not intended
for sports or athletic activity.” This request was untimely and no
good cause was shown as to the delay in the requested amendment. TBMP
§ 1205. Accordingly, although the request was initially granted, it
was later rescinded by Board order of April 12, 2012 after which time
applicant timely filed its reply brief.
Serial No. 79083695
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protective floor coverings”) Registration No. 3702896
(“artificial turf, namely, synthetic turf and synthetic turf
woven backing” and “flooring products, namely, rugs, carpets,
woven backings for rugs and carpets and mats and mattings”),
Registration No. 3705952 (“artificial turf” and “recreational
mats, used in connection with exercise and sports; carpets and
rugs”), Registration No. 3271186 (“artificial turf” and
“carpeting; carpets”), Registration No. 3134942 (“multipurpose
athletic recreational flooring” and “rubber shock absorption
pads for use with floor covering”), and Registration No. 2723075
(“synthetic turf systems consisting of layers of man-made
grasses of fibers and filaments and surface coverings of fibers
or filaments;” and “carpets, rugs, and rubber mats”). Copies of
use-based, third-party registrations may serve to suggest that
the services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785 (TTAB 1993). Indeed we find that while the “use” is
limited in both (the application includes only “floor coverings
. . . for indoor use” while the cited registration includes only
“synthetic surfacing . . . for the playing of [various sports]
and other athletic activities”), these are not necessarily
mutually exclusive. Both may be used together in a
complementary fashion at an indoor sports arena with applicant’s
“floor coverings” used as the “synthetic surfacing” of the
athletic floors identified in the cited registration. Indeed,
despite its proposed amendment, one of the uses touted in
applicant’s own website for its floors is “Sport.” See printout
Serial No. 79083695
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of www.polyflor.com, attached to March 22, 2011 Response to
Office Action, p2.
Regarding channels of trade, we note that, despite the
limitations on use of the goods, there are no limitations with
regard to the channels through which they may be sold as to
either the goods in the cited registration, nor those in the
application. Squirtco v. Tomy Corporation, 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983); see also In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations
as to channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
services in the registration and the application move in all
channels of trade normal for those services, and that the
services are available to all classes of purchasers for the
listed services). Since the goods are similar and potentially
complementary, they may be purchased by the same consumers
seeking materials for their athletic facilities. Accordingly,
we find that these du Pont factors also weigh in favor of
finding a likelihood of consumer confusion.
Conditions of Sale Consumer Sophistication
Applicant urges us to consider the sophistication of its
consumers. There is nothing in the record that would give us
insight as to the possible sophistication of consumers of the
relevant services. See Alfacell Corp. v. Anticancer, Inc., 71
USPQ2d 1301, 1306 (TTAB 2004) (the applicable standard of care
is that of the least sophisticated consumer). With similar
goods being marketed under similar marks, without further
Serial No. 79083695
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information about the conditions of sale in the record, we must
consider this factor to be neutral.
Conclusion
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent du
Pont likelihood of confusion factors. We conclude that with
similar goods travelling in the same or similar channels of
trade, and similar marks with similar commercial impressions,
there is a likelihood of confusion between applicant’s mark for
the applied-for goods and the mark PUR as registered.
Decision: The refusal to register is affirmed.