WFI Global, LLCv.MCNS Polyurethanes USA Inc.

Trademark Trial and Appeal Board

Sep 28, 2018

No. 91227865 (T.T.A.B. Sep. 28, 2018)

Mailed: September 28, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
WFI Global, LLC

v.

MCNS Polyurethanes USA Inc.
_____

Opposition No. 91227865
_____

Elizabeth E. Fabick of Fabick Inc.,
for WFI Global, LLC.
Jae Youn Kim and Harold L. Novick of Novick Kim & Lee PLLC,
for MCNS Polyurethanes USA Inc.
————
Before Shaw, Pologeorgis and Coggins,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
MCNS Polyurethanes USA Inc. (“Applicant”) seeks registration on the Principal
Register of the mark SuperCore (in standard characters) for “Polyurethanes;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91227865
2
Polyurethane for use in manufacture of foams” in International Class 1, and
“Insulating materials, namely, polyurethane foam” in International Class 17.1
WFI Global, LLC (“Opposer”) opposes the registration of Applicant’s mark on the
following two grounds: (1) likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), and (2) misuse of the registration symbol pursuant to Section
29 of the Trademark Act, 15 U.S.C. § 1111.2 In support of its claims, Opposer pleaded
ownership of a registration for the mark U-CORE (in standard characters) for
“Insulating material in the nature of polyurethane foam and polyethylene foam for
use in the manufacture of fenestration; polyurethane spray foam containing two
formulated components for injection into extrusion and pultrusion frame and sash
cavities to improve overall window thermal performance and enhance window
condensation resistance” in International Class 17.3 Additionally, Opposer pleaded
prior common law use of the mark U-CORE used in connection with the sale,
marketing, advertising, and promotion of the same goods identified in its pleaded
registration.4
In its answer, Applicant denied the salient allegations in Opposer’s pleading and
asserted the affirmative defense that “there is no likelihood of confusion, mistake or

1 Application Serial No. 86739506, filed on August 27, 2015, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
2 Notice of Opposition; 1 TTABVUE.
3 Registration No. 4569638, issued on July 15, 2014; Notice of Opposition ¶ 1, 1 TTABVUE
4.
4 Notice of Opposition ¶¶ 2 and 5; 1 TTABVUE 4.
Opposition No. 91227865
3
deception because, inter alia, Applicant’s mark and the pleaded marks of Opposer are
not confusingly similar.”5 Applicant’s affirmative defense is not a true affirmative
defense but rather is simply an argument that goes to the merits of a central issue in
this proceeding. Accordingly, the Board construes Applicant’s defense as a mere
amplification of Applicant’s denials to the salient allegations set forth in Opposer’s
notice of opposition. See Order of Sons of Italy in Am. v. Profumi Fratelli Nostra AG,
36 USPQ2d 1221, 1223 (TTAB 1995).
I. Procedural Background/Accelerated Case Resolution
On August 12, 2016, the parties submitted a stipulation regarding the
introduction of evidence in this proceeding.6 Specifically, the parties stipulated that
(1) all documents produced by either party in this proceeding shall be deemed
authentic business records and that objections to admissibility of such documents on
the grounds of authenticity or genuineness are waived, and (2) testimony may be
introduced by sworn declaration or affidavit in lieu of live deposition, with exhibits
attached thereto, subject to the right of the party against whom the evidence is
introduced to object to such evidence on any applicable ground, including but not
limited to competency, relevance, and materiality, and further subject to the parties’
right to cross-examine declarants by live deposition. On August 23, 2016, the Board
approved the parties’ stipulation.7

5 4 TTABVUE 5.
6 6 TTABVUE.
7 7 TTABVUE.
Opposition No. 91227865
4
On September 23, 2016, the parties filed a stipulated motion to use Accelerated
Case Resolution (“ACR”) to resolve this proceeding (“ACR Stipulation”),8 in which
they agreed, inter alia, that (1) evidence may be submitted in the form of declarations
or affidavits, and exhibits thereto, similar to the format used for summary judgment,
(2) evidence that under normal trial procedures could be submitted by notice of
reliance also may be submitted as attachments or exhibits to the parties’ briefs, and
(3) documents and things produced in response to requests for production, or reprints
of pages retrieved from the Internet, may be submitted as exhibits without the need
for accompanying testimony. Additionally, the parties consented to the Board’s
resolution of any and all disputed issues of material fact and to the Board rendering
a final decision based on the pleadings, stipulated facts, briefs, and evidence. The
Board approved the parties’ ACR Stipulation on October 18, 2016.9
II. Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Applicant’s application file. The record also comprises the evidence
summarized below.10

8 9 TTABVUE.
9 10 TTABVUE.
10 We note that some of the evidence proffered by both parties has been designated
confidential and filed under seal. We have discussed only in general terms the relevant
evidence submitted under seal. However, to the extent the parties have improperly
designated testimony and evidence as confidential, the Board may disregard the confidential
designation when appropriate. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“[t]he Board
may treat as not confidential that material which cannot reasonably be considered
confidential, notwithstanding a designation as such by a party.”); see also Couch/Braunsdorf
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014). We further note
that, effective June 24, 2016, the Board instituted a revised standard protective order for
Opposition No. 91227865
5
1. The parties’ stipulation of facts.11
2. Exhibits accompanying the parties’ stipulation of facts consisting of: 12
• Copy of Opposer’s pleaded U-CORE registration;
• Status and title copy of Opposer’s pleaded U-CORE registration
obtained from the USPTO’s electronic database;

• Status and title copy of Applicant’s involved application;13

• Dictionary definitions of the terms “U-value,” “U-factor,” “core,”
and “super”;

• Opposer’s customer list;

• Opposer’s advertising materials for goods offered in connection
with its U-CORE mark;

• Media articles regarding Opposer’s U-CORE mark;
• Article regarding recognition award bestowed on Opposer for its
U-CORE goods;

• Screenshot from the website www.glassbuildamerica.com
identifying attendees at the GlassBuild America trade show;

• Copies of the National Fenestration Rating Council’s (“NRFC”)
2014 and 2017 rating reports;

currently pending inter partes cases. However, insofar as the parties had already designated
materials as confidential pursuant to the tiers of confidentiality under the Board’s former
protective order, those designations remain in effect. As such, the former standard protective
order applies for this proceeding. Further information regarding the Board’s new standard
protective order is available under the “Standard documents & guidelines” section at
www.uspto.gov/ttab.
11 30 TTABVUE. We note that neither party submitted any testimony, either by live
deposition or by declaration or affidavit.
12 The parties stipulated to the authenticity and admissibility of the exhibits attached to the
parties’ stipulation of facts. 30 TTABVUE 3.

13 It was unnecessary to submit a copy of Applicant’s involved application since it is
automatically of record. See Trademark Rule 2.122(b).
Opposition No. 91227865
6
• Applicant’s customer list;

• Applicant’s advertising material for its SuperCore product;

• Email communications between Applicant and (1) Craig Gilbert,
Applicant’s former Director of Technical Sales, and (2)
Applicant’s advertiser, ADCOM;

• Copy of an invoice of Applicant’s SuperCore product displaying
the ® symbol; and

• Copies of third-party registrations and applications for marks
containing the suffix “CORE” for various insulation products.

3. Exhibits Accompanying Applicant’s ACR Brief comprising of:
• Email communications between Applicant’s president, Jin
Park, and Craig Gilbert, Applicant’s former Director of
Technical Sales, including a list of proposed trademarks for
Applicant’s foam insulation goods;14

• Portions of the discovery deposition of Applicant’s 30(b)(6)
witness, i.e., Jin Park, Applicant’s president;15 and

• Safety Data Sheets of Applicant’s SuperCore insulation
product.16

4. Exhibits Accompanying Opposer’s ACR Reply Brief consisting of:
• Email communications between Applicant’s president, Jin
Park, and Craig Gilbert, Applicant’s former Director of
Technical Sales;17

• Applicant’s supplemental responses to Opposer’s First Set of
Document Requests;18 and

14 40 TTABVUE 2-5; 41 TTABVUE 2-8.
15 40 TTABVUE 6-14.
16 43 TTABVUE 2-41.
17 45 TTABVUE 27-31.
18 45 TTABVUE 32-49.
Opposition No. 91227865
7
• Portions of the discovery deposition of Applicant’s 30(b)(6)
witness, i.e., Jin Park, Applicant’s president.19

III. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). Our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that a plaintiff must demonstrate that it possesses a “real interest”
in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
belief of damage.” Empresa Cubana Del Tabaco 111 USPQ2d at 1062 (citing Ritchie
v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real
interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v.
Simpson, 50 USPQ2d at 1026.
Opposer has demonstrated through the USPTO database printout made of record
that it is the owner of its pleaded registration and that the registration is valid and
subsisting.20 Because Opposer’s registration is of record, Opposer has established its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000); Lipton Ind., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982).

19 45 TTABVUE 50-60.
20 Statement of Facts, Ex. B.; 30 TTABVUE 23-26.
Opposition No. 91227865
8
IV. Section 2(d) Claim
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove, by a
preponderance of the evidence, that it has priority in the use of its mark and that use
of Applicant’s mark is likely to cause confusion, mistake, or deception as to the source
or sponsorship of Applicant’s goods, Cunningham, 55 USPQ2d at 1848, even in the
absence of contrary evidence or argument. Threshold TV, Inc. v. Metronome Enters.,
Inc., 96 USPQ2d 1031, 1040 (TTAB 2010).
A. Priority
Because Opposer’s pleaded registration for the mark U-CORE is of record and
since the Statement of Facts submitted by the parties establishes that Opposer has
used its pleaded U-CORE mark in commerce prior to Applicant’s first use of its
involved mark,21 priority is not an issue with respect to the goods identified in
Opposer’s registration, see Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286
(TTAB 1998) (citing King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974)), nor is priority an issue with regard to Opposer’s
common law use of its pleaded U-CORE mark in connection with the same goods

21 Statement of Facts, ¶¶ 5 and 7, 30 TTABVUE 4.
Opposition No. 91227865
9
identified in its pleaded registration.
B. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on the likelihood of confusion. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”); see also
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
“Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus
… on dispositive factors, such as similarity of the marks and relatedness of the goods.”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002) (quoting Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d
1557, 1559 (Fed. Cir. 2001)). The fame of the prior mark can also be critical. Bose
Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002). These factors, and the other relevant du Pont factors are discussed below.
1. Similarity of the Goods, Trade Channels and Classes of Purchasers
We first address the second du Pont likelihood of confusion factor focusing on the
comparison of the goods identified in Applicant’s application vis-à-vis the goods
identified in Opposer’s pleaded registration. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002).
Opposition No. 91227865
10
At the outset, we note that the involved application and Opposer’s pleaded
registration include goods that are identical, at least in part. Applicant’s application
and Opposer’s registration both include insulating material in the nature of
polyurethane foam. With regard to Applicant’s Class 1 goods, Applicant concedes that
these goods are similar to the goods identified in Opposer’s pleaded registration.22
Given that the parties’ Class 17 goods are identical in part and in light of Applicant’s
concession that its Class 1 goods are related to Opposer’s goods, this du Pont factor
weighs in favor of finding a likelihood of confusion.
Because the parties’ Class 17 goods are legally identical in part, and since neither
Opposer’s registration nor the involved application contain any limitations on the
channels of trade and classes of purchasers, we must presume that the trade channels
and classes of purchasers are the same for these identical goods. See Stone Lion, 110
USPQ2d at 1161; In re Yawata Iron & Steel Co., Ltd., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
With regard to Applicant’s Class 1 goods, Applicant concedes that these goods travel
in similar trade channels as Opposer’s goods and are available to the same or
overlapping consumers.23 As such, the third du Pont factor regarding the similarity
or dissimilarity of established, likely to continue trade channels and classes of

22 Applicant’s ACR Brief, pp. 6-7, 39 TTABVUE 11-12.
23 Id. at p. 7, 39 TTABVUE 12.
Opposition No. 91227865
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purchasers also favors a finding of likelihood of confusion.
2. Strength of Opposer’s U-CORE mark
The fifth du Pont factor, the fame of the prior mark, and the sixth du Pont factor,
the number and nature of similar marks in use for similar goods, du Pont, 177 USPQ
at 567, are considered in tandem to determine the strength of Opposer’s mark and
the scope of protection to which it is entitled. Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017).24 “In determining strength of a mark,
we consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition.” Bell’s Brewery, 125 USPQ2d at 1345 (citing
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”).
In assessing the conceptual strength of Opposer’s U-CORE mark, we note that the
record includes copies of third-party registrations for marks that include the term
CORE as a suffix for various insulation products.25 As example:

24 The Federal Circuit recently reiterated that “‘[w]hile dilution fame is an either/or
proposition—fame either does or does not exist—likelihood of confusion fame varies along a
spectrum from very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay
Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005) (internal quotation omitted)).
25 Stipulation of Facts, Ex. HH, 30 TTABVUE 425-79. The record also includes pending and
abandoned applications for “–CORE” formative marks for various insulation products. Id., 30
TTABVUE. Applications, whether live or abandoned, are not evidence of anything except for
the dates on which they are filed. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB
2016); Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467 n.6 (TTAB 2003)
Opposition No. 91227865
12
• (Reg. No. 4763096) for, among other things, “foam
insulation, namely, expanded polystyrene for use in building and
construction”;

• PINKCORE (Reg. No. 3134201) for “building insulation”;
• J-CORE (Reg. No. 4305883) for “foam sheeting for use as a building
insulation”;

• IPN-Quadcore (Reg. No. 4647736) for, among other things,
“insulating materials”;

• AEROCORE (Reg. 3739324) for “electric, thermal and acoustic
insulators”;

• (Reg. No. 1780288) for “thermal and acoustical insulating
material for walls and partitions, for air conditioning equipment and
for lighting equipment”;

• SAFECORE (Reg. No. 2792389) for “insulating mineral material sold
in bonded slab, bonded sheet or bonded board form, for fire protec-
tion, fire proofing or fire retardation, to be used in the manufacture
of doors, wall and ceiling panels and indoor furniture”;

• STRUCTURE CORE (Reg. No. 2944956) for “insulating structural
panels for placement on edifices”;

(applications are only probative to show that the application has been filed). It is certainly
not evidence of the weakness or usage of the “–CORE” formative marks for insulation
products. Thus, we accord the third-party applications little, if any, probative value.
Additionally, the record includes third-party registrations for marks encompassing the term
CORE but for goods unrelated to those at issue. See, e.g., GLIDE SMOOTH CORE (Reg. No.
5041493) for “plastic film for industrial and commercial packing use” and HI-CORE (Reg. No.
1866366) for “plastic sheet material; namely, polypropylene and polyethylene corrugated
sheets for use in manufacturing.” These third-party registrations have no probative value in
our analysis herein. See In re Melville Corp., 18 USPQ2d 1386, 1388-99 (TTAB 1991)
(“Registrations for goods unrelated to the clothing field are irrelevant to our discussion”);
Anderson, Clayton & Co. v. Christie Food Prods. Inc., 4 USPQ2d 1555, 1557 n.7 (TTAB 1987)
(“The other third-party registrations relating to marks in unrelated fields are of no probative
value”).
Opposition No. 91227865
13
• UTILICORE (Reg. No. 4654162) for “insulating materials.” 26

In Juice Generation Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675
(Fed. Cir. 20015), our reviewing court, the U.S. Court of Appeals for the Federal
Circuit, stated the following with regard to the probative value of third-party
registrations when analyzing the strength or weakness of a mark or a portion thereof:
In addition, “[a] real evidentiary value of third party registrations per se
is to show the sense in which … a mark is used in ordinary parlance.” 2
McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015)
(emphasis added). “Third party registrations are relevant to prove that
some segment of the composite marks which both contesting parties use
has a normally understood and well recognized descriptive or suggestive
meaning, leading to the conclusion that that segment is relatively
weak.” Id.; see Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 [189
USPQ 693] (CCPA 1976) (even if “there is no evidence of actual use” of
“third-party registrations,” such registrations “may be given some
weight to show the meaning of a mark in the same way that dictionaries
are used”). Marks that are descriptive or highly suggestive are entitled
to a narrower scope of protection, i.e., are less likely to generate
confusion over source identification, than their more fanciful
counterparts. See, e.g., Drackett Co. v. H. Kohnstamm & Co., 404 F.2d
1399, 1400 [160 USPQ 407] (CCPA 1969) (“The scope of protection
afforded such highly suggestive marks is necessarily narrow and
confusion is not likely to result from the use of two marks carrying the
same suggestion as to the use of closely similar goods.”).

In the present case, the third-party registrations of record are sufficient to show
that that the term CORE, when used in association with insulation products

26 The record also includes third-party registrations of marks with a “–CORE” suffix for goods
in the nature of acoustical insulation. See e.g., ACOUSTICORE (Reg. No. 3281353) for
“acoustical insulation barrier panels”; DBCORE (Reg. No. 2916582) for “thermal and
acoustical insulation pads for automotive applications”; HUSHCORE (Reg. No. 2294156) for
“acoustical insulation barrier panels, baffles and partitions”; PURECORE (Reg. No. 3784171)
for “architectural acoustic products, namely, acoustic infill for use as sound absorbers, sound
insulators, sound deflectors, sound reflectors and/or sound diffusers”; TERRA CORE (Reg.
No. 4585269) for, among other things, “acoustical insulation for buildings”; and ZORBICORE
(Reg. No. 3684350) for “acoustical insulation barrier panels.”
Opposition No. 91227865
14
generally or with insulation products with thermal or acoustical barrier applications
specifically, has been extensively adopted and registered as part of a trademark for
such insulation goods. We therefore find the term CORE has a significance in the
insulation industry which makes its suggestive of these types of insulation goods.
The record demonstrates that Opposer, in choosing a trademark for its
polyurethane foam, wanted a name that was easy to spell and pronounce, and that
also was suggestive of the benefits its goods provide.27 Opposer chose its U-CORE
mark because the polyurethane foam impacts the “U-value” of the window extrusion
into which its goods are injected, providing enhanced insulation benefits.28 The record
also demonstrates that “U-value” (or “U-factor”) is a recognized term in the
fenestration29 industry, and, according to Merriam-Webster, is “a measure of the heat
transmission through a building part (as a wall or window) or a given thickness of a
material (as insulation) with lower numbers indicating better insulating results.”30
Accordingly, we find that the “U-“ prefix of Opposer’s mark is also suggestive of

27 Statement of Facts, ¶ 14, 30 TTABVUE 5.
28 Id., 30 TTABVUE 5-6.
29 We take judicial notice of the definition of “fenestration” which includes “1: the
arrangement, proportioning, and design of windows and doors in a building.” See
www.merriam-webster.com. The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110
USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
The Board may notice dictionary definitions sua sponte. See Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
30 Statement of Facts, ¶ 15 and accompanying Exh. D, 30 TTABVUE 6 and 98-99.
Opposition No. 91227865
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Opposer’s identified goods inasmuch it suggests to consumers that the polyurethane
foam impacts the degree of the U-value or U-factor.
While there is no evidence of record of any third-party registrations or third-party
uses of the term U-CORE, as a whole, for the goods at issue, we nonetheless find that,
with regard to conceptual strength, the components of Opposer’s U-CORE mark are
suggestive of the identified goods. As a result, Opposer’s U-CORE mark is not as
conceptually strong as a term that is entirely arbitrary.31 Accordingly, the sixth du
Pont factor, i.e., the number and nature of similar marks in use on similar goods,
slightly favors Applicant.
In determining the commercial strength of Opposer’s U-CORE mark, such
strength “may be measured indirectly by the volume of sales and advertising
expenditures in connection with the [goods] sold under the mark, and other factors
such as length of time of use of the mark; widespread critical assessments; notice by
independent sources of the [goods] identified by the mark []; and the general
reputation of the [goods].” Tao Licensing, LLC v. Bender Consulting Ltd., 125
USPQ2d 1043, 1056 (TTAB 2017).
To demonstrate the commercial strength of its U-CORE mark, Opposer provided
a variety of evidence, some of which is confidential and therefore will be discussed

31 Even if Opposer’s pleaded U-CORE mark is considered somewhat suggestive of Opposer’s
attendant goods, see infra, we find that the suggestiveness of the mark does not detract from
the fact that Opposer’s U-CORE mark is inherently distinctive. See generally Two Pesos Inc.
v. Taco Cabana Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992) (suggestive, arbitrary and
fanciful marks are deemed inherently distinctive).
Opposition No. 91227865
16
only in general terms. We initially note that Opposer operates in a niche market. The
evidence of record shows, inter alia, that (1) Opposer has been using its U-CORE
mark in connection with its polyurethane foam insulation since April 18, 2013;32 (2)
since Opposer began offering its polyurethane foam under its U-CORE mark,
Opposer’s sales have been on an upward trend despite the fact that its advertising
expenditures have not been significant; (3) Opposer has marketed its goods offered in
connection with the U-CORE mark through direct sales, third-party sales
representatives, equipment distributors, tradeshow attendance, and an online
presence through its website; (4) Opposer’s U-CORE goods have been the subject of
several articles in publications concerning the window foam industry, namely, Plastic
News, Window & Door, and Door & Window Market Magazine; (5) Opposer has
advertised and marketed its U-CORE polyurethane foam product at the following
tradeshows: (i) Northeast Window & Door Association in Mount Laurel, New Jersey
on January 28-29, 2013; (ii) GlassBuild America in Las Vegas, Nevada on September
9-11, 2014, and (iii) GlassBuild America in Atlanta, Georgia on September 16-18,
2015; and (6) in 2014, Opposer was awarded the Door & Window Market Magazine’s
Green Award for goods sold in connection with Opposer’s U-CORE mark.
While this evidence supports a finding of some renown attributable to Opposer’s
pleaded U-CORE mark since 2013, we find that Opposer’s mark has only achieved a
marginal degree of fame under the fifth du Pont factor to the extent that it would not
outweigh all the other du Pont factors in Applicant’s favor. Additionally, Opposer has

32 Statement of Facts, ¶ 5, 30 TTABVUE 4.
Opposition No. 91227865
17
failed to submit any evidence of (1) how its sales and advertising figures compare to
its competitors in the industry (except for Applicant), (2) how many times consumers
encounter its U-CORE mark for polyurethane foam, or (3) any context for its
achievements in the polyurethane foam window insulation industry, e.g., market
share. Without comparative numbers or market share percentages, it is difficult to
place the apparent success or renown of Opposer’s U-CORE mark into context. Bose
Corp., 63 USPQ2d at 1309. Ultimately, Opposer’s evidence falls short of establishing
that its pleaded U-CORE mark falls on the “very strong” end of the spectrum of fame
for likelihood of confusion purposes.
“In view of the extreme deference that is accorded to a famous mark in terms of
the wide latitude of legal protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting
that its mark is famous to clearly prove it.” Blue Man Prods. Inc. v. Tarmann, 75
USPQ2d 1811, 1819 (TTAB 2005). Based on the evidence of record, we find that
Opposer’s U-CORE mark has only achieved a marginal degree of fame for likelihood
of confusion purposes. That is, Opposer’s U-CORE mark has achieved a limited level
of recognition amongst consumers of polyurethane insulating foam.
The determination of the strength or fame of a mark is not a binary analysis, but
rather is the examination of a continuum from the weakest to the most famous.
Joseph Phelps Vineyards, 122 USPQ2d at 1734. Based on the totality of the evidence
submitted by Opposer which the Board may consider, including the evidence
submitted under seal as confidential by both parties, we find that, while Opposer has
Opposition No. 91227865
18
demonstrated its U-CORE mark has achieved commercial success when used in
association with polyurethane foam, Opposer has only shown that its U-CORE mark
has achieved a marginal degree of fame in the spectrum of fame for purposes of the
likelihood of confusion analysis. The fifth du Pont factor therefore only slightly favors
Opposer, if at all. Id. at 1734-35; Tao Licensing, 125 USPQ2d at 1056.
C. Similarity of the Marks
We next consider the first du Pont likelihood of confusion factor, which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay Imps., 73
USPQ2d at 1691 (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-
by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (internal citation omitted). Moreover, our analysis cannot be predicated on
dissection of the involved marks. Stone Lion, 110 USPQ2d at 1161. Rather, we are
obliged to consider the marks in their entireties. Id.; see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic
that a mark should not be dissected and considered piecemeal; rather, it must be
considered as a whole in determining likelihood of confusion.”). Nonetheless, there 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 a
consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at 1161.
Opposition No. 91227865
19
Furthermore, the focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See In re
Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Finally, keeping in mind that where the goods are identical
or identical in part, as is the case here, the degree of similarity necessary to support
a conclusion of likely confusion declines. Bridgestone Ams. Tire Operations, LLC v.
Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992).
Applicant’s mark is SuperCore in standard characters. Opposer’s pleaded mark is
U-CORE in standard characters. The parties have stipulated that the common term
between Applicant’s mark and Opposer’s mark is the last portion of the marks, i.e.,
the term CORE.33 The parties have also stipulated that term “core” is defined as “a
central and often foundational part usually distinct from the enveloping part by a
difference in nature.”34 The record demonstrates that term “super” is defined as “of
high grade or quality.”35 While there is no dictionary definition of record for the
designation “U-,” as noted supra, “U-value” (or “U-factor”) is a recognized term in the
fenestration industry, and Opposer chose the U-CORE mark because its insulation
material impacts the “U-value” of the window extrusion into which the goods are

33 Statement of Facts, ¶ 75, 30 TTABVUE 17.
34 Exh. F of Statement of Facts (www.merriam-webster.com), 30 TTABVUE 111-22.
35 Exh. P of Statement of Facts (www.merriam-webster.com), 30 TTABVUE 266-67.
Opposition No. 91227865
20
injected, resulting in enhanced overall window energy-related performance.
Keeping these definitions in mind, as well as the suggestive nature of the prefix
U- and the term CORE in relation to insulation products as discussed above, we find
that even though both marks share the common suggestive suffix –CORE, when the
marks are viewed in their entireties, they convey differing connotations and
commercial impressions. Opposer’s U-CORE mark conveys that its foundational
product affects the U-value or U-factor of the goods on which it is used. In contrast,
Applicant’s SuperCore mark engenders a connotation that its foundational product is
of high quality or grade. The marks also differ visually and aurally in light of the
differing prefixes of the marks. Consumers are generally more inclined to focus on
the first word, prefix, or syllable in any trademark or service mark. See Palm Bay
Imps., 73 USPQ2d at 1692; Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“[I]it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered” when making
purchasing decisions).
While we have not overlooked the common “–CORE” suffix in each of the parties’
marks, we nonetheless conclude that this shared word is not a sufficient basis for
finding that the marks, particularly in light of the suggestive nature of the term in
relation to the parties’ goods. Rather, we find that the overall visual and aural
dissimilarity between the marks, arising from the presence of the differing prefixes
conveying different connotations, makes the marks more dissimilar than similar in
terms of their overall commercial impression. Accordingly, the marks, when viewed
Opposition No. 91227865
21
in their entireties, are sufficiently dissimilar that confusion is not likely to result from
their use on or in connection with the parties’ goods. To find otherwise would accord
inordinate significance to the suggestive “–CORE” suffix in each mark.
Thus, the first du Pont factor does not support a conclusion that confusion is likely.
D. Applicant’s Intent in Adopting its SuperCore Mark
Opposer asserts that Applicant sought registration of the SuperCore mark in bad
faith. Specifically, Opposer contends that Applicant was well aware of Opposer’s U-
CORE mark prior to choosing the applied-for SuperCore mark and had knowledge of
Opposer’s mark at least two years prior to filing the involved application.36 Opposer
further contends that Applicant could not name any other competitors in the industry
using the term “core” and purportedly struggled to identify any other companies as
competitors in the polyurethane window foam market.37 Under the circumstances
surrounding Applicant’s creation, selection and adoption of a mark allegedly
confusingly similar to its competitor’s known mark, Opposer argues that it is not a
stretch to conclude Applicant’s intent in choosing its SuperCore mark was in bad
faith.38
Applicant argues that it chose and adopted its SuperCore mark in good faith by
conducting a survey among Applicant’s employees and one of Applicant’s third party

36 Opposer’s ACR Brief, p. 28, 32 TTABVUE 36.
37 Id. at p. 29, 32 TTABVUE 37.
38 Id. at p. 31, 32 TTABVUE 39.
Opposition No. 91227865
22
representatives, namely, Prysm Marketing.39 Applicant further maintains that its
mark was chosen because it received the majority vote. Applicant also contends that
the adoption of its mark had nothing to do with Applicant’s prior knowledge of
Opposer or its pleaded mark.40
Bad faith, or intent to confuse, falls under the thirteenth du Pont factor regarding
“any other established fact probative of the effect of use.” L.C. Licensing Inc. v.
Berman, 86 USPQ2d 1883, 1890 (TTAB 2008) (“[A] party which knowingly adopts a
mark similar to one used by another for related goods should not be surprised to find
scrutiny of the filer’s motive.”); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1442
(TTAB 2012). “[W]hen there is evidence of an applicant’s intent to adopt a mark that
suggests to purchasers a successful mark already in use by another, the Board may,
and ought to, take into account that intent when resolving the issue of likelihood of
confusion when that issue is not free from doubt.” First Int’l Servs. Corp. v. Chuckles
Inc., 5 USPQ2d 1628, 1633 (TTAB 1988). However, “an inference of ‘bad faith’
requires something more than mere knowledge of a prior similar mark.” Sweat
Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed.
Cir. 1987). A finding of bad faith must be supported by evidence of an intent to
confuse, rather than mere knowledge of another’s mark or even an intent to copy. See,
e.g., Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769,
1782 (2d Cir. 2009) (“[T]he ‘only relevant intent is intent to confuse. There is a

39 Applicant’s ACR Brief, p. 10, 39 TTABVUE 15.
40 Id.
Opposition No. 91227865
23
considerable difference between an intent to copy and an intent to deceive.”’ (quoting
4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 23:113)).
Inasmuch as the only evidence here merely pertains to Applicant’s prior
knowledge and not to Applicant’s intent, we do not find this record supports, by a
preponderance of the evidence, a conclusion of bad faith adoption. We therefore find
the du Pont factor regarding bad faith adoption to be neutral.
E. Actual Confusion (and the Opportunity for Actual Confusion)
We next turn to the seventh du Pont factor (nature and extent of any actual
confusion) and the related eighth du Pont factor (extent of the opportunity for actual
confusion). du Pont, 177 USPQ at 567.
Applicant argues that, despite the fact the parties have attended some of the same
trade shows and that the parties have used their respective marks concurrently for
approximately three and one-half years, there is no evidence of a single instance of
actual confusion.41
Proof of actual confusion is not necessary to show a likelihood of confusion. See
e.g., In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir.
2017); Herbko Int’l Inc., 64 USPQ2d at 1380; Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). Moreover, “the absence of
evidence of actual confusion, under the seventh du Pont factor, by itself is entitled to
little weight in our likelihood of confusion analysis unless there also is evidence,

41 Id. at p. 9, 39 TTABVUE 14.
Opposition No. 91227865
24
under the eighth du Pont factor, that there has been a significant opportunity for
actual confusion to have occurred.” In re Ass’n of the U.S. Army, 85 USPQ2d 1264,
1273 (TTAB 2007) (citing Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992)).
While there is no evidence of any instances of actual confusion, a fact which could
weigh in Applicant’s favor under the seventh du Pont factor, we find that it is entitled
to little weight due to the minimal evidence of record pertaining to the eighth du Pont
factor, i.e., “the length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.” Specifically, while (1) the
parties may have attended some of the same trade shows, (2) their respective marks
have co-existed for approximately three and one-half years, and (3) their goods have
been sold in overlapping markets,42 the record demonstrates that each parties’
advertising expenditures have not been substantial in the years since they each
began using their respective marks.43 Accordingly, the evidence of record fails to
demonstrate the nature and extent in which consumers have been exposed to each of
the parties’ respective marks in the overlapping geographic markets. In light of the
lack of this evidence as well as the limited time in which the parties have used their
marks concurrently, we cannot conclude, on this record, that that the absence of

42 Opposer contends there is no evidence of record regarding the overlap of the geographic
market of the parties’ respective goods. Opposer is mistaken. Both Opposer and Applicant
submitted, under seal, their respective customer lists. See Statement of Facts (Confidential
version), Exhs. G and W, 31 TTABVUE 123-26 and 322-24. The lists clearly demonstrate an
overlap of the geographic markets where both parties sell their goods.
43 Statement of Facts (Confidential Version) ¶¶ 22 and 56, 31 TTABVUE 7 and 13.
Opposition No. 91227865
25
instances of actual confusion between Applicant’s SuperCore mark and Opposer’s U-
CORE mark is legally significant. See Gillette Can., 23 USPQ2d at 1774. Accordingly,
the seventh and eighth du Pont factors, relating to actual confusion, are neutral in
this case or, at best, weigh only minimally in Applicant’s favor.
F. Balancing of Factors
In a particular case, any of the du Pont factors may play a dominant role. du Pont,
177 USPQ at 567. In fact, in some cases, a single factor may be dispositive. Kellogg
Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). In
the present case, based on all evidence and arguments bearing on the du Pont factors
that the Board may consider, including the evidence and arguments that we have not
specifically discussed herein, we conclude that although the parties’ goods are
identical in part and therefore presumably move in the same trade channels and
offered to the same classes of purchasers, and while Opposer has established that its
pleaded U-CORE mark has achieved some nominal commercial success, when
considered in their entireties, Opposer’s U-CORE mark and Applicant’s SuperCore
mark are more dissimilar than similar in appearance, sound, meaning and
commercial impression, particularly in light of the suggestive nature of the shared
“– CORE” component of the parties’ marks as well as the suggestive nature of the
“U– ” prefix in Opposer’s mark. The remaining du Pont factors discussed are neutral
or slightly favor Applicant.
Accordingly, since the record demonstrates that Opposer’s pleaded U-CORE mark
is not similar to Applicant’s SuperCore mark for likelihood of confusion purposes, we
find that, on balance of all of the du Pont factors, Opposer has failed to prove its
Opposition No. 91227865
26
Section 2(d) claim by a preponderance of the evidence.
V. Misuse of the Registration Symbol
Section 29 of the Trademark Act, 15 U.S.C. § 1111, provides that “a registrant of
a mark registered in the Patent and Trademark Office, may give notice that his mark
is registered by displaying ... the letter R enclosed within a circle, thus ®.” The Office
has clarified that “the registration symbol should be used only on or in connection
with the goods/services/collective membership organization listed in the registration”
and that the “symbol may not be used with marks that are not actually registered in
the USPTO.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 906
(October 2017).
In Copeland’s Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298
(Fed. Cir. 1991), the Federal Circuit held “improper use of a registration notice in
connection with an unregistered mark, if done with intent to deceive the purchasing
public or others in the trade into believing that the mark is registered, is a ground for
denying the registration of an otherwise registrable mark.” The Court further noted
that “continuing to use [the registration symbol] after being specifically notified of
the impropriety of such use” is a factor that “raises serious questions as to the [user’s]
purpose and intent.” Id. at 1299. The Board has maintained the availability of this
ground in Board proceedings. See, e.g., NSM Res. Corp. v. Microsoft Corp., 113
USPQ2d 1029, 1034 n.8 (TTAB 2014); see also TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (TBMP) § 309.03(c)(1) (June 2018) (Grounds, in General “(16)
That defendant has misused the federal registration symbol with intent to deceive
the purchasing public or others in the trade into believing that the mark is
Opposition No. 91227865
27
registered”) and cases cited therein at Note 31.
Opposer maintains that less than one month after Applicant filed the involved
application but prior to the mark being registered, Applicant began to use improperly
the registration symbol with its SuperCore mark on proposed advertising materials,
proposed product fact sheets and in emails with its advertising agency even before it
applied to register its mark.44 Opposer further maintains that Applicant started
using the registration symbol even though two weeks before filing its application it
received an email from its advertising agency outlining the procedures for registering
a trademark which stated, in part, “the trademark symbol cannot be used during the
pending period before passing the registration application, and it can be used once
the evaluation is finished and you have received a complete registration decision.”45
Opposer also contends that after the notice of opposition was filed (which provided
notice to Applicant that it was allegedly misusing the trademark registration
symbol), and notwithstanding Applicant’s answer to the pleading stating that it
removed the registration symbol and no longer used the symbol, Applicant continued
to use improperly the trademark registration symbol. As example, Opposer points to
an industry report where Applicant updated its listing of its product and employed
the registration symbol but did not request to remove the symbol after being put on

44 Opposer’s ACR Brief, p. 36, 32 TTABVUE 44; see also Statement of Facts ¶¶ 52 and
accompanying Exhs. U, X, and Y; 30 TTABVUE 11, 12, 313-19, 325-71.
45 Opposer’s ACR Brief, p. 36, 32 TTABVUE 44; see also Statement of Facts, Exh. Q, 30
TTABVUE 288-94.
Opposition No. 91227865
28
notice of improper use.46 Additionally, Opposer maintains that at least one of
Applicant’s third-party sales representatives, i.e., Aribell Products Limited
(“Aribell”), continued to use advertising materials that displayed the registration
symbol after the filing of Applicant’s answer to the notice of opposition. Opposer
further contends that Applicant did not send new advertising materials to its third-
party representative that did not include the registration symbol after receiving
notice of improper use.47 In fact, Opposer maintains that, in November of 2016, six
months after being notified of the misuse of the registration symbol, Applicant finally
emailed new brochures that replaced the registration symbol with the “TM” symbol
to its third-party representative, Aribell.48 Opposer concludes that these facts are
sufficient to prove Applicant’s deceptive intent, and justifies a refusal to register
Applicant’s involved mark.49
Applicant argues that once Applicant was informed that Applicant should not use
the registration symbol prior to registration of its mark, Applicant responded by
taking remedial actions. For example, on May 25, 2016, prior to the filing of its
answer to Opposer’s notice of opposition, email communications were exchanged
between Jin Park, Applicant’s president, and Applicant’s employees regarding
removal of the registration symbol from shipping labels, flyers, and Applicant’s

46 Opposer’s ACR Brief, p. 37-38, 32 TTABVUE 45-46; see also Statement of Facts ¶ 65 and
accompanying Exhs. L, Z, and AA, 30 TTABVUE 15, 172-215, and 372-77.
47 Opposer’s ACR Brief, p. 39, 32 TTABVUE 47.
48 Id.
49 Id. at pp. 39-40, 32 TTABVUE 47-48.
Opposition No. 91227865
29
website.50 Moreover, at the time of Applicant’s use of the registration symbol,
Applicant contends that it was unfamiliar with U.S. trademark procedures and the
use of appropriate symbols.51 Based upon such unfamiliarity, Applicant claims that
it was not able to distinguish the legal difference between a trademark application
and a trademark registration, and assumed that it could use the registration symbol
once a trademark application has been filed.52 Applicant states that it was confused
as to when it was able to use the registration symbol and whether it was Applicant
or its advertising company who was actually responsible for inserting the registration
symbol on Applicant’s advertising materials.53 Confusion was further caused because
the communication between Applicant and its advertising company was at all times
conducted in Korean.54 Applicant concludes by stating that while it accepts that all
its attempted measures to remove the registration symbol from its advertising and
marketing material may not have been foolproof and although a single sales
representative may have continued to use the registration symbol, Applicant never
intended to deceive the public or any other person or entity in the trade into believing
that its mark was registered.55
In this case, we find that Opposer has not proven that Applicant had the requisite

50 Applicant’s ACR Brief, p. 11 and accompanying Exh. A, 39 TTABVUE 16, 40 TTABVUE 2-
5.
51 Id. at p. 12, 39 TTABVUE 17.
52 Id. and accompanying Exh. B (Park Dep. at 52:17-20), 39 TTABVUE 17, 40 TTABVUE 8.
53 Id. and accompanying Exh. B (Park Dep. at 53:3-54:3), 39 TTABVUE 17, 40 TTABVUE 9-
10.
54 Id., 39 TTABVUE 17.
55 Id. at pp. 12-13, 39 TTABVUE 17-18.
Opposition No. 91227865
30
intent to deceive the purchasing public, or anyone else, and thus cannot find in
Opposer’s favor on the ground of misuse of the registration symbol. There is no
dispute that Applicant used the registration symbol “®” after the term SuperCore on
various emails, as well as advertising and marketing materials, both before and after
it filed the involved application, as well as after the notice of opposition was filed.
Notwithstanding, the record demonstrates that Applicant’s confusion regarding the
proper use of the registration symbol falls within the ambit of the types of
misunderstandings that the Office lists in the TMEP as “common reasons for
improper use ... that do not indicate fraud,” specifically, mistake as to the
requirements for giving proper notice. See TMEP § 906.02. Given Applicant’s
admitted unfamiliarity with the U.S. trademark registration procedure,
misunderstandings that may have arisen from a language barrier, and its clear
attempts to prevent improper future use of the symbol, albeit over an approximate
six-month period and after being put on notice of the improper use of the registration
symbol by way of the notice of opposition, we do not find Applicant’s actions rise to
the level of intending to deceive prospective purchasers or anyone else. Accordingly,
we find that Opposer has failed to demonstrate, by a preponderance of the evidence,
its claim based on Applicant’s improper use of the registration symbol.
Decision: The opposition, based on the grounds of likelihood of confusion and
misuse of the registration symbol, is dismissed.