MCNS Polyurethanes USA, Inc. offered enough third-party registrations to cross what we suggest is the 10 Mark threshold and it was rewarded with a weak trademark finding. MCNS applied to register the mark SUPERCORE (in standard characters) for, among other goods, polyurethane foam used as insulation. When the SUPERCORE mark was published for opposition by the Trademark Office, WFI Global, LLC filed a notice of opposition.
WFI alleged that MCNS’ SUPERCORE mark was likely to cause confusion with its prior registered mark U-CORE (in standard characters) also for polyurethane foam used as insulation. MCNS denied WFI’s allegations and asserted the affirmative defense that there was no likelihood of confusion between the marks.
MCNS offered 15 third-party registrations that included -CORE as a suffix for some type of insulation. Only one of the third-party registrations specifically mentions a foam insulation product and six of the third-party registrations are specifically for acoustic insulation not building insulation like the goods identified in the SUPERCORE application and U-CORE registration. Nevertheless, the Trademark Trial and Appeal Board found that the goods were close enough that it would give consideration to the six acoustic insulation registrations when assessing whether U-CORE was a weak trademark.
This is a much different approach than what the Board took in the LUNA case less than a month ago. In that case, the Board refused to give any consideration to numerous third-party registrations because the registrations did not identify the goods at issue; namely, women’s bicycle apparel. Instead, the third-party registrations identified only women’s apparel. Women’s apparel and women’s bicycle apparel were not close enough.
The Board found that the third-party registrations were sufficient to show that the term CORE when used with insulation products have been “extensively adopted and registered . . . .” It then found the term CORE “has significance in the insulation industry which makes its [sic] suggestive [sic] of these types of insulation products.” Extensive use and suggestive are generally not terms used in the same sentence. Extensive use generally demonstrates the existence of descriptive not suggestive term.
Nevertheless, the Board correctly held that strength for likelihood of confusion purposes is not an all or nothing proposition. Instead, it exists on a sliding scale. While CORE may be a suggestive term when used in connection with insulation products, it exists in a crowded field, which lowers its conceptual strength.
Ultimately, the Board found that WFI’s U-CORE mark was a weak trademark. This finding paved the way for the Board’s ultimate finding of no likelihood of confusion between the two marks.