Blue Star Power Systems, Inc.

Trademark Trial and Appeal Board

Sep 17, 2013

No. 85462512 (T.T.A.B. Sep. 17, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Blue Star Power Systems, Inc.
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Serial No. 85462512
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Edmund J. Sease of McKee, Voorhees & Sease, P.L.C. for Blue Star Power Systems,
Inc.

Tina L. Snapp, Trademark Examining Attorney, Law Office 116 (Michael W. Baird,
Managing Attorney).
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Before Kuhlke, Wellington, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Blue Star Power Systems, Inc. (applicant) has appealed the final refusal to
register its mark BLUE STAR POWER SYSTEMS INC. and design, as set forth
below, for “emergency automatic standby electric generator sets of at least 20 kWe
sold through distributors for standby power in industrial and commercial
buildings:”1

1 Application Serial No. 85462512, filed November 2, 2011, based on allegations of use in
commerce pursuant to Section 1(a) of the Trademark Act as of August 3, 2004.
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.
Registration was refused pursuant to Section 2(d) of the Trademark Act on the
ground of likelihood of confusion with the mark BLUE STAR in typed form2 for
“electric generators for welding or power.”3
Application Serial No. 85462512 is the companion application to Application
Serial No. 85459999, which is for the mark BLUE STAR POWER SYSTEMS (in
standard character form) for the identical goods. The primary difference between
the two applications is the formats of the marks. The mark in Serial No. 85459999
is in standard character format and the mark in the application at bar is slightly
stylized with a blue star design substituted for the letter “a” in the word “STAR.”
Application Serial No. 8545999 was also refused on the ground of likelihood
of confusion with the mark BLUE STAR in typed form for “electric generators for
welding or power.” In an unpublished decision dated August 23, 2013, we affirmed
the likelihood of confusion refusal. Similarly, we are affirming the likelihood of
confusion refusal in the current appeal. However, for completeness sake, we will
discuss all of the relevant issues herein.
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings.
3 Registration No. 1662304, issued October 29, 1991; renewed February 19, 2011.
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forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We first consider the marks BLUE STAR POWER SYSTEMS INC. & design
(as set forth above) and BLUE STAR, and compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567.
While we analyze the marks in their entireties, it is well settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature when evaluating the similarities of the
marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Here, the term BLUE STAR is the most prominent portion of applicant’s
mark. It is the first portion of the mark and the most distinctive and is depicted in
large font above the phrase “Power Systems Inc.” The added phrase, “Power
Systems Inc.” is merely descriptive, and appropriately disclaimed in the application.
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re
Dixie Rest., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). The
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literal portion of Applicant’s mark BLUE STAR POWER SYSTEMS INC.
incorporates the entirety of registrant’s mark BLUE STAR, adding only the merely
descriptive phrase. In general, the addition of merely descriptive matter does not
obviate a finding of similarity. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004).
Thus, while the added term does present some difference in appearance and
sound, the overall commercial impression and connotation remain the same in view
of the dominance of the term BLUE STAR in the marks. In view thereof, we find
that the similarities outweigh the dissimilarities. Viterra Inc., 101 USPQ2d 1905.
The only other difference between the cited mark and applicant’s mark is
that applicant’s mark includes a design element consisting of a blue star, which has
been substituted for the letter “a” in the word “STAR.” Generally, the literal portion
of a mark is given more weight than the design element therein. In the case of a
composite mark containing both words and a design, the verbal portion of the mark
is the one most likely to indicate the origin of the goods to which it is affixed. In re
Viterra Inc., 101 USPQ2d at 1905 citing CBS Inc. v. Morrow, 708 F.2d. 1579, 128
USPQ 198 (Fed. Cir. 1983) (internal quotations omitted). Moreover, in this case the
minor design reinforces the similarities between the marks since it is a depiction of
the dominant literal term “BLUE STAR.”
Applicant argues that the term BLUE STAR is weak and entitled to a limited
scope of protection. Applicant submitted printouts of 65 third-party registrations in
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support of its position.4 However, these registrations do not establish that the term
BLUE STAR is weak for any goods or services under the sixth du Pont factor,
because there is no evidence that the marks in these registrations are actually in
use. Evidence of weakness or dilution consisting solely of third-party registrations
is generally entitled to little weight in determining the strength of a mark, because
such registrations do not establish that the registered marks identified therein are
in actual use in the marketplace or that consumers are accustomed to seeing them.
See: AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269
(C.C.P.A. 1973); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009);
In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009); Richardson-Vicks Inc. v.
Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982). Moreover, the registrations
are for unrelated goods and services.
We look next at the goods at issue to determine the similarity or dissimilarity
thereof. Our evaluation of the goods is based on the goods as identified in the
registration and application. In re Dixie Restaurants Inc., 41 USPQ2d at 1534 . See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Further, “where the goods in a
cited registration are broadly described and there are no limitations in the
identification of goods as to their nature, type, channels of trade or classes of
purchasers, it is presumed that the scope of the registration encompasses all goods

4 The 66th registration submitted was the cited registration.
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of the nature and type described, that the identified goods move in all channels of
trade that would be normal for such goods, and that the goods would be purchased
by all potential customers.” In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
While applicant has restricted its goods to “emergency automatic standby
electric generator sets of at least 20 kWe sold through distributors for standby
power in industrial and commercial buildings,” the goods in the cited registration
are broadly described as “electric generators for welding or power.” “Electric
generators for power” encompass applicant’s goods. As such, the cited goods are
legally identical to applicant’s goods and are presumed to travel in the same
channels of trade as applicant’s goods and to be purchased by all potential
customers.
Applicant’s arguments regarding the differences in the actual goods and
channels of trade are not persuasive inasmuch as we must make our determination
based on the goods as identified, and here, the identifications of goods in the
registration and application are not limited to any particular channel of trade. See
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Applicant contends that the purchasers of its electric generators are
sophisticated purchasers. The overlap in channels of trade here would be limited to
applicant’s commercial goods, and we agree that electric generators for industrial
and commercial buildings are unlikely to be impulse purchases and the purchasers
thereof may be sophisticated. However, even sophisticated purchasers may be
confused when similar marks are used with respect to the same goods. In re
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Cynosure Inc., 90 USPQ2d 1644, 1647 (TTAB 2009). See also In re Research and
Trading Corp., 793 F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
Applicant’s argument that there have been no known instances of actual
confusion is not persuasive. The contemporaneous use of applicant’s and
registrant’s marks for a period of approximately eight and one half years without
actual confusion is entitled to little weight. See Majestic Distilling Co., Inc., 65
USPQ2d at 1205 (“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476
F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of
applicant’s corporate president’s unawareness of instances of actual confusion was
not conclusive that actual confusion did not exist or that there was no likelihood of
confusion). The lack of evidence of actual confusion carries little weight,5 especially
in an ex parte context. In any event, there is not sufficient evidence relating to the
extent of use of registrant’s mark and, thus, whether there have been meaningful
opportunities for instances of actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992).
Having considered all the evidence and argument on the relevant du Pont
factors, we find that applicant’s mark BLUE STAR POWER SYSTEMS INC. &
design for “emergency automatic standby electric generator sets of at least 20 kWe

5 J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965),
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sold through distributors for standby power in industrial and commercial buildings”
is likely to cause confusion with the cited registration for the mark BLUE STAR for
“electric generators for welding or power.” Moreover, to the extent that any of
applicant's points raises a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.