Progressive Foam Technologies, Inc.

Trademark Trial and Appeal Board

Sep 17, 2014

No. 85738691 (T.T.A.B. Sep. 17, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 17, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Progressive Foam Technologies, Inc.
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Serial No. 85738691
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Richard M. Klein of Fay Sharpe LLP for Progressive Foam Technologies, Inc.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
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Before Zervas, Cataldo, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Progressive Foam Technologies, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark:

for “cconstruction materials, namely, exterior building insulation made of
polystyrene, expanded polystyrene, or other foamed thermoplastic, shaped to
Serial No. 85738691
conform with other building products such as siding, roofing, decking, or fencing” in
International Class 17.1 Applicant has disclaimed exclusive use of the term FOAM.
The Trademark Examining Attorney has refused registration of Applicant’s
mark on the ground of a likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), in view of the registered mark:

for “home energy assessments leading to and including installation of advanced
insulation systems to create a more energy efficient home thermal envelope” in
International Class 37.2 The registration contains a disclaimer of exclusive use of
the wording INSULATION & WINDOWS.
Applicant filed a request for reconsideration and appealed and the final refusal.
The Examining Attorney denied the request for reconsideration.3 The refusal has
been fully briefed by Applicant and the Examining Attorney, including a reply brief
from Applicant.
1 Application Serial No. 85738691 was filed on September 26, 2012, based upon Applicant’s
allegation of first use of the mark anywhere and in commerce on March 13, 2002, under
Section 1(a) of the Trademark Act.
2 Registration No. 3647161 issued June 30, 2009.
3 Applicant filed a proposed amendment to its identification of goods with the request for
reconsideration which the Examining Attorney found improperly exceeded the scope of the
identification previously accepted. In its appeal brief, Applicant does not raise the issue of
the proposed amendment to the identification of goods. Accordingly, the issue is not before
us and we give it no further consideration.
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Serial No. 85738691
Based upon the record and the arguments made, we affirm the likelihood of
confusion refusal.
Likelihood of Confusion
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 or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
Similarity of the Marks
We begin by comparing the two marks in their entireties and, in doing so, look to
their appearance, sound, connotation 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). We keep in mind that, under this factor,
the test is not whether the marks can be distinguished when subjected to a side-by-
side comparison; “[i]nstead, it is the similarity of the general overall commercial
impression engendered by the marks which must determine, due to the fallibility of
memory and the consequent lack of perfect recall, whether confusion as to source or
sponsorship is likely.” Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
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Serial No. 85738691
1741 (TTAB 1991); see also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Thus, although we
place the marks alongside each other in the following paragraph for purposes of this
decision, consumers will rarely have the luxury of viewing the marks in such a
manner.
Here, upon evaluating the following two marks:
and

we agree with the Examining Attorney that the dominant feature of each mark is
the term “Progressive.” Because this term appears first in each mark, it is most
likely to be impressed in purchasers’ memories. Presto Products, Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a
mark which is most likely to be impressed upon the mind of a purchaser and
remembered”). Moreover, for source-identifying purposes, consumers will likely
focus on the PROGRESSIVE element in each mark in view of the fact that the
additional literal portions in the marks are descriptive of the goods and services and
thus disclaimed. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 752 (Fed. Cir. 1983) (“Regarding descriptive terms, this court has noted
that the descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105 F.3d 1405,
1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60
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Serial No. 85738691
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark's commercial impression”). As explained by the Examining
Attorney and not contradicted by Applicant, “FOAM describes the composition/type
of Applicant’s goods and INSULATION & WINDOWS describes the goods installed
and the field of services provided by Registrant.”4
Applicant argues that the respective design elements in the marks suffice for
purposes of avoiding a likelihood of confusion. Specifically, it argues the design
elements are “notably different” and that “[t]hese visual differences cannot be
confused with each other, so that there is no likelihood of confusion between [the
marks].”5 There is certainly no dispute that the design elements are different from
each other; however, we disagree with Applicant’s ultimate conclusion regarding
whether this difference avoids a likelihood of confusion. None of the design portions
in either mark is so unique or overwhelming to make a substantial impact on the
overall commercial impression of either mark. The roof design in Registrant’s mark
perhaps may be understood by consumers as being suggestive of homes or home
construction when considered in the context of the services and the stylized letter
“O” appears to be nothing more than a stylized O. Likewise, the “sunburst” design
in Applicant’s mark has little meaning other than that of a stylized sun separating
the words PROGRESSIVE and FOAM. Thus, as mentioned and for the foregoing
4 Examining Attorney’s Brief at (unnumbered) p. 5. In its Reply Brief, Applicant
acknowledges that “the word ‘Foam’ emphasizes what the product is made of, whereas the
phrase ‘Insulation & Windows’ emphasizes what the product is used for.” Reply Brief at p. 4
5 Reply Brief at p. 4
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Serial No. 85738691
reasons, we remain convinced that the source-identifying essence of both marks is
the literal term PROGRESSIVE.
In sum, we view the marks in their entireties and find them to be very similar.
The fact that each mark is dominated by the same term PROGRESSIVE simply
outweighs the points of dissimilarity. In re National Data Corp., 224 USPQ 749, 751
(Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in their entireties.”). Thus,
this du Pont factor weighs in favor of finding a likelihood of confusion.
Similarity of the Goods and Services Described in the Application and Registration
We turn now to the du Pont factor involving the relatedness of Applicant’s goods
and Registrant’s services. It is settled that in making our determination, we must
look to the goods and services as identified in the application vis-à-vis those recited
in the cited registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011). It is also not necessary that the respective goods
and services be 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
and services are related in some manner, or that the conditions and activities
surrounding the marketing of the goods or services are such that they would or
could be encountered by the same persons under circumstances that could, because
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Serial No. 85738691
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).
Based on the plain meaning of the recitations of the goods and services in the
respective application and registration, it is evident that Applicant’s “exterior
building insulation products” are related to Registrant’s “home energy assessments
leading to and including installation of advanced insulation systems to create a
more energy efficient home thermal envelope.” Simply put, Registrant’s services
include the installation of insulation systems in homes and Applicant’s insulation
products may be used in homes. Put another way, it is feasible that a homeowner
may have Registrant installing Applicant’s goods. As the Examining Attorney
pointed out, a potential consumer of the products and services would be the same,
namely a homeowner, but there is also the common field or purpose of insulating
the consumer’s home.
The evidence of record confirms the relatedness of the goods and services. The
Examining Attorney submitted numerous third-party website printouts for
companies touting their insulation products and services.6 The Examining Attorney
has efficiently laid out representative and relevant sample excerpts from these
websites in his brief and we see no point in repeating this information. Suffice it to
say that this evidence clearly demonstrates that insulation companies will not only
provide insulation products but will install these insulation products. We further
6 Submitted with Office Actions issued on October 22, 2012 and May 24, 2013.
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Serial No. 85738691
note that many of the company website excerpts include those that specialize in
foam insulation products like those of Applicant.
The Examining Attorney also submitted printouts of eleven use-based, third-
party registrations which include both insulation products, as well as the service of
installing the insulation products, in their identifications of goods and services.7
These registrations have probative value to the extent that they suggest that
insulation products and services are the type of goods and services that could be
marketed by a single source under a single mark. See In re Association of the United
States Army, 85 USPQ2d 1264, 1270 (TTAB 2007); In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988).
In sum, it has been shown that Applicant’s insulation goods, as described in the
application, and Registrant’s insulation installation services are clearly related. The
products and services are not only complementary, but will be targeting the same
class of consumers and will be found in the same trade channels.
Conclusion
Because the marks are similar, the goods and services are related, with the
goods and services targeting homeowners and found in the same trade channels, we
find that Applicant’s mark, if used in association with the goods identified in the
application, is likely to cause confusion with the registered mark in connection with
the services recited in the registration.
7 Id.
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Serial No. 85738691
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed.
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