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CERTAINTEED CORPORATION v. BOISE CASCADE CORPORATION

United States District Court, E.D. Pennsylvania


April 12, 2004.

CERTAINTEED CORPORATION, Plaintiff,
v.
BOISE CASCADE CORPORATION, Defendant

The opinion of the court was delivered by: WILLIAM YOHN, JR., District Judge

Memorandum and Order

Plaintiff, CertainTeed Corporation, brings this action against defendant, Boise Cascade Corporation, for trademark infringement and false designation of origin pursuant to 15 U.S.C. § 1114 and 15 U.S.C. § 1125. Compl. ¶ 7. Plaintiff claims that Boise's use of the term "Building Solutions" in connection with its construction products and its building division is likely to cause confusion with CertainTeed's registered marks*fn1 as to the source or origin or sponsorship of Boise's goods and services. Compl. ¶ 3.

Currently pending before the court is the defendant's motion for summary judgment (Doc. # 38). Boise argues that granting summary judgment in its favor is appropriate based on any or all of the following grounds: 1) the term "Building Solutions" is generic when used to refer to building products and services; 2) Boise's use of the term "Building Solutions" constitutes a fair, descriptive use as a matter of law; and 3) there is no likelihood of confusion as a matter of law. Def.'s Brief at 1. For the reasons discussed below, I will grant the defendant's motion for summary judgment as to registration no. 2,390,753*fn2 and deny it as to registration no. 1,823,200.

 FACTUAL BACKGROUND

  Except where noted, the following facts are undisputed.

  CertainTeed has two federally registered trademarks in the term "Building Solutions."

  In 1994, CertainTeed registered the term "Building Solutions," accompanied by a sunflower motif, for "residential and commercial building and construction; namely, carpentry, additions and design consulting." United States Trademark Registration No. 1,823,200; Def.'s Statement of Material Facts ¶ 3; Pl.'s Opposition at 3. The registration has achieved incontestable status under the Lanham Act, 15 U.S.C. § 1065. Pl.'s Opposition at 4; Compl. ¶ 17, Exhibit C. Boise maintains that CertainTeed does not make use of the sunflower mark; however, CertainTeed argues that its licensee uses the mark and that this use inures to CertainTeed as a matter of law. Pl.s' Response to Boise's Statement of Undisputed Facts ¶ 9. In 2000, CertainTeed registered the mark "BUILDING SOLUTIONS," in all capital letters for "preparations of customized marketing information for others, all relating to building materials, for builders, architects and designers" and "analysis of electrical power and energy needs of others, consulting services in connection with the design of electrical systems for others." United States Trademark Registration No. 2,390,753; Def.'s Statement of Material Facts ¶ 1; Pl.'s Opposition at 3-4.

  CertainTeed uses its "BUILDING SOLUTIONS" mark (registration no. 2,390,753) in connection with its marketing program Def.'s Statement of Material Facts ¶ 5; Pl.'s Opposition at 3.*fn3 CertainTeed often uses this term in all capital letters, as it appears in its registration, but CertainTeed also uses the term as the defendant does in its title case form (i.e. "Building Solutions"). See Compl., Exhibits A, D; Pl.'s Response, Exhibit 25; Defendant's Statement of Material Facts, Exhibit 8. It has done so since at least 1996.*fn4 Id. Certain Teed's Building Solutions program offers awards and rebates to builders, architects and contractors and others who use CertainTeed products. Def.'s Statement of Material Facts ¶ 6; Pl.'s Opposition at 3. The parties dispute whether CertainTeed places the term on any of its products or product labels. Def.'s Statement of Material Facts ¶ 7. In its complaint, CertainTeed avers that it uses its mark as an "umbrella brand" and that it appears "on and in connection with point of sale materials for a full range of construction pro ducts, including siding, roofing, decking, railing and fencing, and insulation, windows, ventilation products and pipe and foundation products." Compl. ¶ 10.*fn5 In its response to Boise's statement of the undisputed facts, CertainTeed maintains that it uses its mark on point of sale materials for products. Pl.'s Response ¶ 7. CertainTeed also maintains in response to Boise's assertions to the contrary that it does not always use the name Certain Teed in association with term "Building Solutions." Id.

  Beginning in approximately March of 2002, Boise began to use "Boise Building Solutions" as the name of its building division.*fn6 Boise has also registered "boisebuildingsolutions" as a domain name. Pl.'s Opposition at 6; Compl. ¶ 21, Exhibit E. According to the plaintiff, Boise also uses the term in its advertising, on its products and trucks, in the media, and on its website. Pl.'s Response ¶ 8.

  Through its building division, Boise provides building products and services to distributors and dealers and retailers of building materials. Def.'s Brief at 1. Boise distributes other companies' building products and manufactures lumber products such as wood boards and panels. Pl.'s Opposition at 4. In June 2003, Boise began to carry Home Plate siding in its building division which, according to CertainTeed, competes directly with CertainTeed's siding. Pl.'s Opposition at 7. CertainTeed avers that this product is characterized by Boise in its advertising efforts as a Boise Building Solution. Id. Boise also distributes a decking product that competes directly with CertainTeed's decking product. Id. According to CertainTeed, both parties advertise in the same trade publications and at the same trade shows, attended by professionals, non-professional end users of building materials and home owners. Id.

 LEGAL STANDARD

  Summary judgment may only be granted where "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). In order to defeat a properly supported motion for summary judgment, the non-moving party cannot rest on the pleadings, but rather that party must go beyond the pleadings and present "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986); Crissman v. Dover Downs Entertainment, Inc., 239 F.3d 357, 360-61 (3d Cir. 2001). All reasonable inferences are drawn in the non-moving party's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-49 (1986). "Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no `genuine issue for trial.'" Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citations omitted). DISCUSSION

  Boise argues that granting summary judgment in its favor is appropriate based on any or all of the following grounds: 1) the term "Building Solutions" is generic when used to refer to building products and services; 2) Boise's use of the term "Building Solutions" constitutes a fair, descriptive use as a matter of law; and 3) there is no likelihood of contusion as a matter of law. Def.'s Brief at 1. I will address each of these arguments in turn, prefaced by an overview of the applicable trademark principles.

  Trademark law recognizes four separate categories of marks, listed here in order of decreasing distinctiveness: 1) arbitrary or fanciful terms, 2) suggestive terms, 3) descriptive terms and 4) generic terms. A.J. Canfield Co. v. Honickman et al., 808 F.2d 291, 296 (3d Cir. 1986). Arbitrary or fanciful terms are "those words, symbols, pictures, etc., which are in common linguistic use but which, when used with the goods or services in issue, neither suggest nor describe any ingredient, quality or characteristic of those goods or services." Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 292 n.18 (3d Cir. 1991). Arbitrary and fanciful terms "bear no logical or suggestive relation to the actual characteristics of the goods." A.J. Canfield, 808 F.2d at 296. Suggestive terms suggest rather than describe the characteristics of goods or services. Id. Suggestive terms are "virtually indistinguishable from arbitrary marks." Checkpoint Systems, Inc. v. Checkpoint Software Technologies, Inc., 269 F.3d 270, 282 (3d Cir. 2001). They require "imagination, thought or perception" to reach a conclusion as to the nature of the goods or services. Id. A mark is inherently distinctive if it is arbitrary, fanciful or suggestive. A.J. Canfield, 808 F.2d at 297.

  Descriptive and generic terms are never inherently distinctive. Dranoff-Perlstein Assoc. v. Sklar, 967 F.2d 852, 855 (3d Cir. 1992). Descriptive terms describe a characteristic, ingredient or function of the product or service to which they refer. A.J. Canfield Co., 808 F.2d at 296. Unlike suggestive and arbitrary marks, descriptive terms "convey an immediate idea of the ingredients, qualities or characteristic" of the goods or services. Id. at 297; Checkpoint Sys., 269 F.3d at 282. Descriptive terms that have been registered but have not obtained incontestable status are legally protectable as trademarks if they have acquired secondary meaning. Ford Motor Co., 930 F.2d at 291-92. That is, the plaintiff must show that consumers identify the term with the source, or the party claiming trademark protection. A.J. Canfield Co., 808 F.2d at 297.

  Generic terms function as the common descriptive name of a product class. Dranoff-Perlstein, 967 F.2d at 857; A.J. Canfield Co., 808 F.2d at 296, 308. "A term is generic if it is the common name for a class of products rather than a name of the individualized product." A.J. Canfield Co., 808 F.2d at 308. The distinction between descriptive and generic terms is "often somewhat elusive," but the distinction is crucial. Dranoff-Perlstein, 967 F.2d at 859 n. 15; A.J. Canfield Co., 808 F.2d at 296-97. If a term is generic, it cannot qualify for trademark protection. Dranoff-Perlstein, 967 F.2d at 855. Generic terms are denied trademark status because granting one party "exclusive use would place competitors at a serious competitive disadvantage" by depriving them of the right to identify an article by its name. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:88 (4th ed. 2003); 1 Jerome Gilson, Trademark Protection and Practice § 2.02 at 2-23 (1991); A.J. Canfield Co., 808 F.2d at 297.

  To show trademark infringement under the Lanham Act, a plaintiff must prove that 1) the mark is valid and legally protectable; 2) the mark is owned by the plaintiff; and 3) the defendant's use of the mark to identify goods or services is likely to cause confusion concerning the origin of the goods or services. Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 291 (3d Cir. 1991); Opticians Assoc. of Am. v. Independent Opticians of Am., 920 F.2d 187 (3d Cir. 1990). The initial elements of the claim — validity, legal protectability, and ownershi — are proved if the mark at issue is federally registered and has become incontestable pursuant to 15 U.S.C. § 1058 and 1065.*fn7 Where a mark has been registered but has not yet achieved incontestable status, the plaintiff establishes validity, legal protectability, and ownership only if the mark is inherently distinctive (i.e. arbitrary, fanciful or suggestive) or, if the mark is descriptive, if plaintiff can show that the mark has acquired secondary meaning. Ford Motor Co., 930 F.2d at 291-92 (citations omitted).*fn8

  Boise contends that the term "Building Solutions," whether used by plaintiff or defendant, is generic when used to refer to products and services that meet building problems or challenges. Def.'s Brief. at 8, 13, 16. In doing so, Boise makes two arguments. First, Boise argues through implication that plaintiff's mark is generic. Yet, Boise also claims that even if plaintiff's mark is protectable, Boise may still use the term because its own use of the term "Building Solutions" is generic. Id. I will address each of defendant's genericness arguments in turn.

 A. Whether plaintiff's use of the term "Building Solutions" is generic

  Boise argues that CertainTeed uses its "Building Solutions" mark (registration no. 2,390,753) generically and thus CertainTeed may not prevent Boise from using the term to describe generically its own goods and services.

  Genericness is a question of fact. McCarthy § 12:12. Registration of a mark constitutes prima facie evidence that the mark is valid. Lucent Info. Management, Inc. v. Lucent Techs., Inc., 186 F.3d 311, 315 (3d Cir. 1999). If the plaintiff has a federal registration, it constitutes a strong presumption that the term is not generic*fn9 and defendant bears the burden of overcoming that presumption. McCarthy § 12:12; 15 U.S.C. § 1115(a).*fn10 CertainTeed has registered the term "Building Solutions" for "preparations of customized marketing information for others, all relating to building materials for builders, architects and designers" and "analysis of electrical power and energy needs of others, consulting services in connection with the design of electrical systems for others." United States Trademark Registration No. 2,390,753; Def.'s Statement of Material Facts ¶ 1; Pl.'s Opposition at 3-4. Thus, the registered mark is accorded validity, and the burden is on the defendant to overcome the presumption that CertainTeed's registered mark is not generic. In other words, Boise bears the burden of proving that the term "Building Solutions" is generic for the uses specified in CertainTeed's registration.

  In support of its claims that CertainTeed's use is generic, Boise points to the alleged widespread use of the term in its generic sense by third parties in the construction industry. Def.'s Brief at 14. Boise states that "numerous other entities within the construction and building industry used the term alone and in conjunction with other words." Id. Boise also contends that there is strong evidence of genericness because the plaintiff has failed to contest such third-party use. Id. at 14. According to Boise, William O'Connor, CertainTeed's own branding expert, admitted that CertainTeed often uses the term in a generic sense. Id.

  Plaintiff argues that the term "Building Solutions" cannot be generic because its primary reference in the minds of the relevant consuming public is not to the product category or genus of the product at issue (i.e. its marketing program or its education program for architects). Pl.'s Opposition at 15. Boise does not directly address this contention. There is no suggestion in defendant's motion of any evidence as to how the relevant public perceives the term in connection with plaintiff's program or any evidence from a linguistics expert on the meaning of the term. Instead, Boise concedes that "`Building Solutions' may not be generic for the services specified in CertainTeed's `753 trademark registration (i.e., `preparation of customized marketing materials' and `analysis of electrical energy needs')" Def.'s Brief at 16.

  For purposes of its summary judgment motion, Boise has not presented evidence sufficient as a matter of law to overcome the presumption that the term as plaintiff uses it is not generic. Id. The facts as presented by both parties could lead a rational fact-finder to conclude that the term "Building Solutions" as CertainTeed uses it is or is not generic. Therefore, there is a genuine issue for trial. Accordingly, I will deny defendant's motion for summary judgment in so far as Boise claims that plaintiff's mark as plaintiff uses it is generic.

 B. Whether defendant's use of the term "Building Solutions" is generic

  Next, Boise argues that it is entitled to summary judgment because Boise itself is using the phrase "Building Solutions" in its generic sense to refer to products and services that meet building problems or challenges. Def.'s Brief at 14.*fn11 Boise argues that its own use of the term is generic and that the plaintiff cannot prevent defendant from making use of "Building Solutions" in its generic sense. Def.'s Brief at 16. Boise states that the term "`Building Solutions' has a generic meaning as a matter of law, at least when it is used to refer to building products and services," which is how Boise uses the term Id. (emphasis added). Boise argues that "to the extent plaintiff has any valid trademark rights, those rights are for non-generic use of the term Building Solutions." Id. at 2.*fn12 In support of its claims that its use of the term is generic, Boise claims that plaintiff's branding expert conceded that the term could be used in a generic sense. Def.'s Brief at 16-17. Boise also points to third-party uses of the term in the construction industry. Id. at 14. Boise contends that based on this evidence the term is generic for solving building problems and challenges.*fn13

  Boise asks that I find the term "Building Solutions," as it is used by Boise, as a generic name for its goods and services. While the term "Building Solutions" could well be generic as defendant uses it, it is not generic as a matter of law. Boise has not shown that its use of the term is generic as a matter of law. The question of whether defendant's use of the term "Building Solutions" is generic is a genuine issue of material fact that must be decided by the fact-finder. Examining the facts on record, a rational fact-finder could conclude that the term "Building Solutions" as it is used by Boise is not generic. Thus, I will deny defendant's motion for summary judgment in so far as defendant argues that defendant's use is generic as a matter of law.

 C. Whether Boise is making fair use of the term "Building Solutions"

  Next Boise argues that its use of the term "Building Solutions" is fair use as a matter of law. Def.'s Brief at 13. Boise evokes the fair use defense under 15 U.S.C. § 1115(b)(4), which provides that a defendant may assert the fair use defense when the allegedly infringing term is used fairly and in good faith only to describe to users the goods or services of a party or their geographic origin." Id. at 16.*fn14

  Under the fair use doctrine, "[a] junior user is always entitled to use a descriptive term in good faith in its primary, descriptive sense other than as a trademark." McCarthy § 11:45; Barton et al. v. Rex-Oil Co., 2 F.2d 402 (3d Cir. 1924); Fawcett Publications, Inc. v. Popular Mechanics Co., 80 F.2d 194 (3d Cir. 1935); Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144 (3d Cir. 1953). However, defendant's use of the contested term must not cause confusion: "If, with all the words of the English language at its disposal, [the defendant] should adhere to the [contested] words . . . as the name of its product, it must unmistakably distinguish the name of its product from the name of the complainants' product [or service]." Barton, 2 F.2d at 407. "While defendant may use the descriptive word. . . . it must do so in such a manner as will distinguish it from plaintiffs [product or service] and thus prevent deception to the purchasing public." Fawcett Publications, 80 F.2d at 199. To demonstrate fair use, a defendant is required to prove that it 1) used the contested term merely to describe its product; 2) did not use the term as a trademark; and 3) used the term in good faith. Information Inc. v. Gordon & Breach, Science Publishers, Inc., 931 F.2d 1002, 1008 (3d Cir. 1991).*fn15

  Boise contends that to the extent the term is descriptive as used by Boise, then Boise's use is fair use as a matter of law. With respect to the first factor, Boise argues that the term "Building Solutions" is a concise description of its business and the nature of its goods and services. Def.'s Brief at 17. Boise argues that the word "building" denotes the nature of the goods — those related to the construction or building industry, and that the word "solutions" communicates that Boise is a source for answers or resolutions. Id. at 19. Together, the words communicate that Boise is in the business of supplying solutions for problems arising in the construction business. Id. Boise contends that it has the right to use the term in a fair manner to describe the fact that its business is providing solutions to building problems and challenges.

  Plaintiff contends that Boise's use is not fair use because it is using the term as a mark or in a manner analogous to trademark use. That is, plaintiff contends Boise is using the term to capture attention, to identify and distinguish its services and products from those of others, and to drive the sale of its products. In order to avail itself of the fair use defense, the defendant must use the "words not as a trade-mark but only descriptively." Q-Tips, 206 F.2d at 148. "The physical nature of the use in terms of size, location, and other characteristics in comparison with the appearance of other descriptive matter or other trademarks is also relevant to the fairness of the use." Restatement (Third) of Unfair Competition § 28, comment c (1995). "It is not a trademark infringement to use words in their ordinary, rather than in their special trademark, meaning." Louis Rich, Inc. v. Horace W. Longacre, Inc., 423 F. Supp. 1327 (E.D.Pa. 1976).*fn16

  CertainTeed contends that Boise cannot successfully raise the fair use defense because the term is not being used by Boise in its everyday sense because Boise is using the term as a mark, to identify and distinguish its goods and services. Pl.'s Opposition at 21. In support of this assertion, CertainTeed observes that Boise uses the term to attract attention. Id. at 22. CertainTeed avers that the phrase "Boise Building Solutions" is set off from other text and stands alone in advertisements. Id. at 22-23. CertainTeed notes that its catchy alliteration signals that Boise is using the term as a mark, rather than as a descriptive term. Id. CertainTeed also asserts that Boise has made use of the term "Building Solutions" as part of a domain name. Id. at 6; Compl. ¶ 21, Exhibit E (showing registrations for www.boisebuildingsolutions.com, -.net, and -.org).*fn17 Accepting all of plaintiff's assertions as true, as I must on defendant's motion for summary judgment, I find that a reasonable fact-finder could conclude that Boise is using the term as a mark, rather than in an ordinary descriptive sense. Thus, I will not grant Boise's motion for summary judgment on the grounds of the fair use defense.

  Finally, CertainTeed also alleges facts sufficient for purposes of overcoming a summary judgment motion to show that Boise did not act in good faith. Pl.'s Opposition at 13-14. CertainTeed contends that Boise initially failed to conduct a trademark search and later ignored the results of a search it commissioned after learning of plaintiff's rights and proceeded with its plan to use the contested term. Id. at 2, 13-14. CertainTeed also maintains that "notwithstanding its awareness of CertainTeed's trademark rights, Boise conducted no reasonable investigation into the nature and extent of CertainTeed's use, nor into the nature and extent of any third-party uses of the term." Pl.'s Opposition at 5, 6. Plaintiff avers that Boise failed to conduct a reasonable investigation into the nature and extent of plaintiff's use even after receiving plaintiff's objections. Id. Because the fair use defense applies only when the defendant uses the term in good faith, I find that there is a genuine issue of material fact as to whether Boise acted in good faith. Therefore, I will deny defendant's summary judgment motion in so far as defendant claims that its own use of the term "Building Solutions" was fair use.

 D. Whether there is Likelihood of Confusion

  Finally, Boise moves for summary judgment on the grounds that there is no likelihood of confusion. Def.'s Brief at 19. Boise claims that its use of the term "Building Solutions" does not constitute an infringement of CertainTeed's rights in its "Building Solutions" mark (registration no. 2,390,753) because CertainTeed has not shown that its mark is protectable.

  As explained above, to show trademark infringement under the Lanham Act, a plaintiff must first prove that the mark in question is valid and legally protectable. Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 291 (3d Cir. 1991). An incontestable mark is legally protectable. For a contestable mark to be legally protectable, the mark must either be arbitrary, fanciful or suggestive so that it is inherently distinctive or, if the mark is descriptive, it must have acquired secondary meaning. Id. at 291-92. Inherently distinctive marks are never descriptive; they are either arbitrary, fanciful or suggestive. Ford Motor Co., 930 F.2d at 292 n. 18.

  Boise argues that the CertainTeed's mark has not attained incontestable status. Boise also argues that because the mark is not inherently distinctive and has not acquired secondary meaning Certain Teed cannot claim likelihood of confusion. Def.'s Brief at 21-22.

  The parties do not dispute that CertainTeed's "Building Solutions" mark (registration no. 2,390,753) has not achieved incontestable status. CertainTeed has not averred incontestable status for this particular mark, registered October 3, 2000. Furthermore, there is no evidence on the record that CertainTeed complied with the statutory formalities necessary to obtain such status. Compl. ¶ 13; Pl.'s Response ¶ 16; Pl.'s Opposition at 10.

  Instead, the parties dispute whether the mark is inherently distinctive. CertainTeed claims that its mark is inherently distinctive because it is suggestive, whereas Boise contends that the mark is either generic or descriptive. Boise argues that the widespread use of the phrase throughout the construction industry shows that the mark is not inherently distinctive. Def.'s Brief at 22.

  I find that CertainTeed has not presented sufficient evidence such that a reasonable fact-finder could determine that CertainTeed's mark is suggestive and therefore inherently distinctive. Suggestive marks are "virtually indistinguishable from arbitrary marks" and require "imagination, thought or perception to reach a conclusion as to the nature of the goods." McCarthy § 11:4; Checkpoint Systems, Inc., 269 F.3d at 282. CertainTeed does not explain how imagination is required to understand the mark as it relates to its marketing program and the products provided through that program, and I can discern no basis in the evidence for such an argument. Furthermore, descriptive terms "convey an immediate idea of the ingredients, qualities or characteristics of the goods [or services]." Id. Courts also infer descriptiveness where there is use by competitors and there is a need for competitors to use the term. McCarthy § 11:69. "If . . . the message conveyed by the mark about the goods or services is so direct and clear that competing sellers would be likely to need to use the term in describing or advertising their goods, then this indicates that the mark is descriptive." McCarthy § 11:68. Boise contends that competitors need the term to describe their products and presents substantial evidence that competitors have used this term for that very purpose.*fn18 CertainTeed has failed to present evidence such that a reasonable fact-finder could conclude that the term is suggestive and therefore inherently distinctive. It is, at most, descriptive.

  Because its mark is not inherently distinctive, CertainTeed must rely on a showing that its mark has acquired secondary meaning to make it legally protectable. A term that is not inherently distinctive is not protected unless the term has acquired secondary meaning. Two Pesos, Inc. v. Taco. Cabana, Inc., 505 U.S. 763, 769 (1992); Duraco Prods. v. Joy Plastic Enters., 40 F.3d 1431, 1440 (3d Cir. 1994). "Secondary meaning is demonstrated where in the minds of the public, the primary significance of a . . . term is to identify the source of the product itself." Ford Motor Co., 930 F.2d at 292 (citations omitted). "A non-exclusive list of factors which may be considered includes the extent of sales and advertising leading to buyer association, length of use, exclusivity of use, the fact of copying, customer surveys, customer testimony, the use of the mark in trade journals, the size of the company, the number of sales, the number of customers, and actual confusion." Ford Motor Co., 930 F.2d at 292.

  I conclude that CertainTeed has not presented evidence such that a reasonable fact-finder could determine that the term has acquired secondary meaning. CertainTeed avers that since 1996, it spent approximately $30 million promoting its marketing program; however, it offers no evidence that its use was exclusive or that the relevant purchasing public has come to associate the term "Building Solutions" with CertainTeed. In fact, Boise presents evidence that in a survey of builders and architects, not a single person spontaneously associated the term with CertainTeed. Def.'s Brief at 22 (citing Weilbacher expert report). Boise also presents evidence of third-party uses of similar marks. Id. In light of this evidence and plaintiff's failure to present evidence that might show how the term has acquired secondary meaning, no reasonable fact-finder could conclude that the term "Building Solutions" has acquired secondary meaning.

  Because CertainTeed's "Building Solutions" mark is contestable and because CertainTeed has not established that its mark is inherently distinctive or that it has acquired secondary meaning, CertainTeed has not presented evidence such that a reasonable fact-finder could conclude that the mark is legally protectable. Therefore, I will grant summary judgment in favor of the defendant as to the "Building Solutions" mark (registration no. 2,390,753).

  Order

  And now, this __ day of April 2004, upon consideration of defendant's motion for summary judgment (Doc. # 38), plaintiff's response, defendant's reply, and plaintiff's letter of August 11, 2003, it is hereby ORDERED that:

  1) Defendant's motion for summary judgment is GRANTED as to the registered mark no. 2,390,753, and judgment is entered in favor of defendant Boise and against plaintiff CertainTeed as to that mark.

  2) Defendant's motion for summary judgment is DENIED as to the registered mark no. 1,823,200.

  3) Trial is scheduled for June 21, 2004 at 10 am.


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