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CERTAINTEED CORPORATION v. BOISE CASCADE CORPORATION

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 ...


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