The opinion of the court was delivered by: WILLIAM YOHN, JR., District Judge
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.
Except where noted, the following facts are undisputed.
CertainTeed has two federally registered trademarks in the term
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
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 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.,