Reynolds Consumer Products, Inc.v.PRS Mediterranean Ltd.

Trademark Trial and Appeal Board

Feb 14, 2014

No. 91189669re (T.T.A.B. Feb. 14, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: February 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Reynolds Consumer Products, Inc.
v.
PRS Mediterranean Ltd.
_____

Opposition No. 91189669
against Serial No. 77248825
_____

on Request for Reconsideration
_____

James H. Donoian, Sarah Marks, Heidi Garfield and Daniel J. Navarro,
of Greenberg Traurig LLP for Reynolds Consumer Products, Inc.

Richard M. Klein and George P. Huang of Fay Sharpe LLP,
for PRS Mediterranean Ltd.
_____

Before Bucher, Kuhlke and Shaw,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
The Board, in a final decision dated September 27, 2013, sustained the opposition
on the basis of likelihood of confusion brought by Reynolds Consumer Products, Inc.,
doing business as Presto Products Company (hereinafter “opposer”), to the mark
Opposition No. 91189669
2

NEOWEB (in standard character format) as filed by PRS Mediterranean Ltd.
(hereinafter “applicant”) for cellular confinement systems.
On October 28, 2013, applicant filed a timely request for reconsideration (see
Trademark Rule 2.129(c), 37 C.F.R. § 2.129(c)), based upon applicant’s assertion that
the Board erred in applying the first du Pont factor, and in failing to consider certain
third-party trademark registrations, and that these errors led to our incorrectly
holding that the NEOWEB mark is likely to be confused with the GEOWEB mark
under Section 2(d) of the Lanham Act. Applicant requests, therefore, that the Board
reconsider its decision and dismiss the opposition.
Opposer, on November 18, 2013, timely submitted its opposition to applicant’s
request for reconsideration, arguing that the Board’s decision of September 27, 2013,
was proper and that applicant’s request should be denied.
In its motion for reconsideration, respondent asserts that our decision is in error
for the following reasons:
1. The Board erred when considering the appearance and sound of the
respective marks.
2. The Board erred when considering connotations and commercial
impressions of the respective marks.
3. The Board erred in not considering certain third-party trademark
registrations.

The premise underlying a request for rehearing, reconsideration, or
modification of a decision under Trademark Rule 2.129(c) is that, based upon the
evidence of record and the prevailing authorities, the Board erred in reaching the
decision it issued. See TBMP § 543 (June 2013) and the authorities cited therein.
Opposition No. 91189669
3

The request may not be used to introduce additional evidence, nor should it be
devoted simply to a re-argument of the points presented in the requesting party's
brief on the case. See Amoco Oil Co. v. Amerco, Inc., 201 USPQ 126 (TTAB 1978).
Rather, the request normally should be limited to a demonstration that based upon
the evidence properly of record and the applicable law, the Board’s ruling is in error
and requires appropriate change. See Steiger Tractor Inc. v. Steiner Corp., 221
USPQ 165 (TTAB 1984), different results reached on reh’g, 3 USPQ2d 1708 (TTAB
1984); cf. In re Kroger Co., 177 USPQ 715, 717 (TTAB 1973). Although much of
respondent’s motion for reconsideration is nothing more than re-argument, in the
interest of completeness, we will address each point in turn.
I. The first du Pont factor
As do many of our final decisions where the issue is likelihood of confusion, we
started our likelihood of confusion analysis as follows:
Our determination under Trademark Act Section 2(d) is
based on an analysis of the probative facts in evidence
that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm
Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
Opposition No. 91189669
4

(CCPA 1976); see also In re Azteca Rest. Enters., Inc., 50
USPQ2d 1209 (TTAB 1999).
We noted in our decision of September 2013, that as to appearance, these two
marks are identical except for the first letter (GEOWEB versus NEOWEB). Inasmuch
as the terms “Geo-”and “Neo-” appear to be perfectly rhyming, two-syllable prefixes
having the identical “e•o” vowel pair, we concluded that the terms “Geoweb” and
“Neoweb” are “strikingly similar in sound.”
Furthermore, in comparing these respective marks under the first du Pont factor,
we noted that we must consider the marks in their entireties as to both connotation
and commercial impression in determining the similarity or dissimilarity between
them:
As to connotation, the prefix “Geo-” has the suggestion of
“earth,” while “Neo-” has a different meaning, often that of
“new” or “revised.” While applicant suggests that this
distinction should be the end of this inquiry, we agree with
opposer that prospective customers might well view “Neo-” as
an intentional play on the word “Geo” – the more so inasmuch
as applicant consistently touts its NEOWEB product as a later
generation of products that improves significantly upon
GEOWEB products. This combination of identical
pronunciations and structure, and an almost intuitive
connection to the earlier product is significant in this case,
works to create a close association between the overall
commercial impressions of the two marks used in a
marketplace of legally identical, competing products … .
Throughout the prosecution of this proceeding, applicant has emphasized the
difference in the connotations of the prefixes of these respective marks. We
acknowledged that “Geo-” has the suggestion of “earth,” while “Neo-” means “new”
or “revised.” Although applicant argued that this dissimilarity in meaning alone
Opposition No. 91189669
5

should be determinative in resolving the question of likelihood of confusion in its
favor and hence, dismissing the opposition, we found otherwise.
We found, in addition to the fact that the terms “Geo-”and “Neo-” are strikingly
similar in sound, that applicant’s efforts to show its bona fide credentials and long
experience in the industry repeatedly resulted in advertisements that touted its
New version of the Geoweb products. Hence, in making a determination about the
all-important commercial impressions of the respective marks, we noted several
different forces at work, each mutually reinforcing the impressions of a close
relationship between the GEOWEB and NEOWEB as they appeared in the
marketplace.
Our case law has also set up a converse relationship between the first and
second du Pont factors: when the goods and/or services are legally identical, as is
the case herein, “the degree of similarity [between the marks] necessary to support
a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied
506 U.S. 1034 (1992) (CENTURY 21 for inter alia, insurance brokerage service
confusingly similar to CENTURY LIFE OF AMERICA for insurance underwriting
services); and Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1752 (TTAB
2006) (finding LESSBUCKS COFFEE similar in appearance, sound, and overall
commercial impression to STARBUCKS and STARBUCKS COFFEE). Hence, the
above cited language confirms our focus on the fact that these respective marks are
indeed being “used in a marketplace of legally identical, competing products.”
Opposition No. 91189669
6

Of course, in the larger scheme of applying the du Pont factors, after reviewing
all the relevant factors from among the thirteen listed by the du Pont Court, the
tribunal is then charged with carefully balancing all the relevant factors. At the
time of this final balancing, the strength of the cited mark is certainly a relevant
factor.
II. Factoring in the Strength of the cited marks
As suggested by applicant, we need to look to factors dealing with the strength
of opposer’s prior mark, namely, both its “commercial strength” (the fifth du Pont
factor) and its “conceptual strength (the sixth du Pont factor).
As to the factor of commercial strength, while we found that opposer’s
GEOWEB marks are not “famous,” we concluded that opposer’s predecessor-in-
interest was the
… first company to offer commercially cellular
confinement systems, and continues to be a prominent
player in this industry after more than thirty years. …
[O]pposer’s GEOWEB marks have served as distinctive
source indicators for its cellular confinement products for
more than three decades.”
Then, as to the sixth du Pont factor, we observed that while applicant had
shown that both “geo-” and “-web” had been used by third-party competitors, no
third party has been shown to have adopted or used a mark as similar to opposer’s
marks as is applicant’s applied-for mark, and that absent a counterclaim to cancel
these registrations, applicant could not collaterally attack these registrations.
Opposition No. 91189669
7

Hence, as to the overall strength of opposer’s GEOWEB marks, we discussed our
relative weighing of the fifth and sixth du Pont factors. Accordingly, we found that
opposer’s GEOWEB mark represented a “well-established brand in this field
sufficient to accord it a slightly wider scope of protection, despite any possible
conceptual weakness,” and we concluded that
[w]hatever arguable weaknesses may have been inherent
in opposer’s selection in 1984 of the term “Geoweb” for
geocells in the form of plastic “webbing,” under Section 7
of the Lanham Act, and in keeping with more than thirty
years of usage in this field, we accord the pleaded marks
the scope of protection to which they are rightly entitled.
Then, finally in balancing together all the relevant du Pont factors, we found as
follows:
The goods, the channels of trade and classes of consumers
herein are identical. Even if one concedes some inherent
conceptual weakness in the trademark when opposer first
adopted its mark in 1984, it has nonetheless become a
widely-known and established brand, and the parties’
marks involved herein are quite similar in appearance,
sound and overall commercial impression. These factors,
going in favor of a finding of likelihood of confusion,
outweigh that which goes in applicant’s favor, namely the
care with which these goods will be purchased by fairly
sophisticated professionals, and hence, we find that
confusion is likely between opposer’s GEOWEB marks and
applicant’s NEOWEB mark. To the extent we retain any
doubt as to whether there is a likelihood of confusion, we
resolve such doubt, as we must, in favor of opposer, the
prior registrant. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1691 (Fed. Cir. 1993).
Hence, contrary to applicant’s assertion in its request for reconsideration, the
totality of our September 2013 decision shows that we did consider marketplace
Opposition No. 91189669
8

conditions under several relevant du Pont factors in reaching our likelihood of
confusion determination herein.
III. Failure to consider certain third-party trademark registrations
We turn then to applicant’s final complaint. In our earlier decision (at 24,
footnotes 72 and 73), we noted that we had given no consideration to a number of
third-party applications and registrations placed into the record by applicant that
had been abandoned, cancelled or expired. We have long held that cancelled or
expired registrations are not evidence of anything except that they issued. See TBMP
§ 704.03(b)(1)(A) (June 2013) and cases cited therein.
Applicant cites, inter alia, to Henry Siegel Co. v. M & R International Mfg. Co., 4
USPQ2d 1154 (TTAB 1987) in support of its claim of a Board error herein. However,
we note that the defendant (Respondent M&R International) in the Henry Siegel case
counterclaimed for cancellation of petitioner’s registration for jeans, claiming that the
CHIC mark claimed by plaintiff (petitioner Henry I. Siegel Co.) was merely
descriptive of jeans. On this counterclaim, after reviewing respondent’s dictionary
definitions and articles from periodicals where the word “chic” was used in its
ordinary dictionary sense, the Board also identified seventeen third-party trademark
registrations placed into the record by respondent that were among the “most
relevant” (i.e., most similar to the marks at issue) of the many-more-than-seventeen
third-party registrations offered in evidence. As noted by opposer, “[t]he Board [in
Henry Siegel] did not, as Applicant argues, describe the [four] expired and cancelled
registrations as ‘among the most relevant evidence of record to show that the term …
Opposition No. 91189669
9

has a descriptive significance’.” Opposer’s brief at 4 n2. Finally, in making the
decision on likelihood of confusion in Henry Siegel, the Board held that petitioner was
entitled to preclude the registration of respondent’s mark L.A. CHIC, under § 2(d) of
the Act, without citing back to any weakness in the term “Chic.”
Accordingly, we find that the Board committed no errors in reaching our decision
of September 27, 2013.
Decision: After due consideration of all the issues raised in applicant’s motion for
reconsideration, including any not specifically addressed herein, applicant’s request
for reconsideration is denied, and the Board adheres to its decision of September 27,
2013, sustaining the opposition and denying the registration of applicant’s NEOWEB
mark.