Monday, April 18, 2005

CAFC Affirms Dismissal Of 5 "MASTER" Cancellation Petitions On 2(d) And Equitable Grounds

The CAFC has affirmed the TTAB's decision in Master Builders, Inc. v. Polymerica, Inc., Cancellations Nos. 92030319 et al. (February 24, 2004) [not citable]. On April 14, 2005, the appellate court issued its per curiam ruling under Rule 36 (without opinion) in Appeal No. 04-1372 .
Petitioners sought cancellation of five Polymerica registrations for similar "globe" design marks that incorporate the words MasterProof, MasterQuartz, MasterShield, MasterSpec, and MasterPiece, for epoxy surface coating materials for concrete and other floors. [One of the five marks is shown immediately above.]

Petitioners relied on 13 registrations for marks that include the word "MASTER" for additives for concrete mix, including MASTER BUILDERS, MASTERSEAL, and MASTERPLATE, and claimed a "family" of "MASTER" marks.

In its 64-page decision, the Board extensively reviewed the record evidence in light of the du Pont factors. It found "key factors" to be "the dissimilarities of the marks, the sophistication of the purchasers and ultimate consumers, the technical nature of the respective goods and the conditions of sale." The Board also noted the lack of actual confusion despite the parties' co-existence in the market since 1990. Finally, it concluded that there existed "at most a de minimis chance" of confusion.

The Board rejected Petitioners' "family of marks" claim, both because Petitioners "have not promoted the term 'MASTER' as the 'family surname,'" and because the term "MASTER" is not sufficiently distinctive to qualify as the "surname" of a "family" of marks.

In addition to the Section 2(d) ruling, the Board also ruled that the Petitioners' consolidated cancellation petition was barred by laches and equitable estoppel. Master Builders' parent company had written to Polymerica in 1994 demanding that use of three of the marks at issue be terminated. Petitioners took no further action until 2000, when they filed the petitions for cancellation. Meanwhile, Polymerica had filed for and obtained the registrations at issue and had "actively developed its business and its products." The Board found that Polymerica was materially prejudiced by the delay (laches) and by Petitioners' misleading conduct, on which it had relied (estoppel).

Text ©John L. Welch 2005. All Rights Reserved.


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