TTAB Dismisses SUPERCORE Opposition: No Likelihood of Confusion with U-CORE and No Intent to Deceive in Misuse of the “R” Symbol

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School]. In a 30-page opinion, the Board dismissed this Section 2(d) and Section 29 opposition to registration of the mark SUPERCORE in light of WFI Global’s registered mark U-CORE, both marks in standard characters and both for insulating materials and polyurethanes. Upon balancing the relevant du Pont factors, the Board found there was no likelihood of confusion. In addition, the Board ruled that while Applicant had misused the federal registration symbol, there was no evidence that it intended to deceive the public. WFI Global, LLC v. MCNS Polyurethanes USA Inc., Opposition No. 91227865 (September 28, 2018) [not precedential] (Opinion by Judge Geogre C. Pologeorgis).

Likelihood of Confusion: The Board proceeded with a lengthy likelihood of confusion analysis discussing all relevant du Pont factors. It found that the parties’ goods are “identical in part and therefore presumably move in the same trade channels and [are] offered to the same classes of purchasers.” Third-party registration evidence showed that the term “CORE” is suggestive of insulation products and, although WFI Global had achieved some commercial success, the fifth du Pont factor “only slightly favors Opposer, if at all.”

As to the marks, the Board found them to be “more dissimilar than similar in appearance, sound, meaning and commercial impression.” It focused especially on “the suggestive nature of the shared ‘—CORE’ component…as well as the suggestive nature of the ‘U—’ prefix in Opposer’s mark,” the designation “U—” being a recognized term in the fenestration industry.

Accordingly, the Board concluded that Opposer had failed to establish its Section 2(d) claim by a preponderance of the evidence.

Misuse of the Registration Symbol: Improper use of registration notice with an unregistered mark, if done with the intent to deceive, will be grounds for refusing an otherwise registrable mark. Copeland’s Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991).

WFI Global pointed to evidence that Applicant improperly used the registration symbol with the SUPERCORE mark on proposed advertising materials before the mark had been registered. There was also evidence that Applicant continued to use the registration symbol with its mark even after being put on notice of alleged improper use (by the filing of the Notice of Opposition).

Applicant contended that it took remedial action as soon as it was informed that it should not use the trademark registration symbol prior to actual registration of its mark. Moreover, Applicant asserted that it was “unfamiliar with U.S. trademark procedures and the use of appropriate symbols” and it “never intended to deceive the public or any other person or entity in the trade into believing that its mark was registered.”

The Board found that Opposer failed to present evidence that Applicant expressly intended to deceive the public. In addition, it noted 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.’” See TMEP Section 906.02. Therefore, the Board dismissed the Section 29 claim.

Conclusion: Finding no likelihood of confusion and no intent to deceive while misusing the federal registration symbol, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: I guess you could say that opposer's claims were defenestrated.

The Defenestration of Prague
Text Copyright Kira-Khanh McCarthy and John L. Welch 2018.