Piedmont Municipal Power AgencyDownload PDFTrademark Trial and Appeal BoardMar 30, 2009No. 78934760 (T.T.A.B. Mar. 30, 2009) Copy Citation Mailed: March 30, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Piedmont Municipal Power Agency ________ Serial Nos. 78934758, 78934760 and 78934763 _______ Hunter S. Freeman of McNair Law Firm, P.A. for Piedmont Municipal Power Agency. Khanh M. Le, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Seeherman, Quinn and Holtzman, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Piedmont Municipal Power Agency filed applications for the following marks, all for “public utility services in the nature of electricity distribution”: PIEDMONT MUNICIPAL POWER AGENCY, with the words MUNICIPAL POWER AGENCY disclaimed;1 PIEDMONT MUNICIPAL POWER AGENCY and design, as shown below, with the words 1 Application Serial No. 78934758, filed July 21, 2006, asserting first use and first use in commerce on January 22, 1979. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser Nos. 78934758, 78934760 and 78934763 2 MUNICIPAL POWER AGENCY disclaimed. The mark is described as consisting of “a box containing the image of an electric bolt”2; and PIEDMONT POWER, with the word POWER disclaimed.3 The examining attorney issued a final refusal of registration for all three applications pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s marks, as used in connection with the identified services, so resemble the following marks, registered by the same entity for the indicated services, that each of applicant’s marks is likely to cause confusion or mistake or to deceive. PIEDMONT NATURAL GAS (NATURAL GAS disclaimed) Distribution, transportation by pipeline, and storage of natural gas, propane, fuel oil and electricity (Class 39)4 2 Application Serial No. 78934760, filed July 21, 2006, asserting first use and first use in commerce on March 1, 1986. 3 Application Serial No. 78934763, filed July 21, 2006, asserting first use and first use in commerce on January 1, 2000. 4 Registration No. 2573768, issued May 28, 2002; Section 8 affidavit accepted. Ser Nos. 78934758, 78934760 and 78934763 3 PIEDMONT ENERGY COMPANY (ENERGY COMPANY disclaimed) Distribution, transportation by pipeline, and storage of natural gas and propane (Class 39)5 (NATURAL GAS COMPANY disclaimed)6 The mark is lined for the colors blue and red. Natural gas (Class 4) and Public utility services in the nature of natural gas distribution (Class 39)7 Applicant appealed the refusals of registration for each of its applications. Because the appeals involve common questions of law and fact, we have decided them in a single opinion. In its appeal briefs applicant has, for the first time, referenced a number of registrations for marks that include the word PIEDMONT. The examining attorney has objected to our consideration of these listings because the registrations were not timely made of record. The objection is well taken. Trademark Rule 2.142(d) provides 5 Registration No. 2499678, issued October 23, 2001; Section 8 affidavit accepted. 6 Office records show that the mark was amended under Section 7 after the registration issued to delete the word COMPANY; however, the word COMPANY is still listed in the disclaimer. 7 Registration No. 2014834, issued November 12, 1996; Section 8 affidavit accepted; renewed. Ser Nos. 78934758, 78934760 and 78934763 4 that the record in the application should be complete prior to the filing of the appeal. We now turn to the substantive issue in these appeals, namely, whether applicant’s use of its marks for its identified services is likely to cause confusion with the cited registrations. Our determination of this issue is based on an analysis of all of the probative facts in evidence that are relevant to the factors set 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 whether applicant’s marks are likely to cause confusion with the registration of PIEDMONT NATURAL GAS for “distribution, transportation by pipeline, and storage of natural gas, propane, fuel oil and electricity.” Applicant’s services are identified as “public utility services in the nature of electricity Ser Nos. 78934758, 78934760 and 78934763 5 distribution.” Thus, applicant’s services are encompassed by the registrant’s identified services, which include “distribution of electricity,” and therefore the services must be presumed to be legally identical in part. The du Pont factor of the similarity of the services favors a finding of likelihood of confusion. Applicant has stated that its services and those of the registrant are rendered in separate channels of trade. Applicant has explained that it is a joint action agency formed by ten municipal electric utilities which own part of a nuclear power plant and provide the member municipalities with electricity. As a result, applicant argues that these municipalities, which are also members of applicant, are the only customers that could be exposed to the services of both applicant and the registrant. Further, applicant states that these customers are sophisticated. The problem with applicant’s argument is that we must determine likelihood of confusion based on the identifications in the applications and registrations, rather than what the evidence shows the goods and/or services to be. See Canadian Imperial See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). If there are no Ser Nos. 78934758, 78934760 and 78934763 6 restrictions as to the channels of trade recited in the identifications, we must presume that the goods or services travel in all channels appropriate for those goods or services, and that the goods or services would be purchased by all potential customers. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Thus, because the services are, in part, legally identical, they must be presumed to travel in the same channels of trade to the same classes of consumers. With respect to the customers, as noted, applicant argues that its customers are sophisticated because they are municipalities that are part owners of applicant. Whatever arrangements that may be peculiar to applicant’s own situation (and presumably the municipalities would make the electricity available to the residents of those municipalities for use in their homes, so that the ultimate users would also come into contact with the trademarks), we must consider the customers in terms of the identified services. Electricity, whether offered by a public utility or a private company, can be distributed to and purchased by ordinary consumers, members of the public at large, for their personal use. Such consumers cannot be viewed as having any particular sophistication. Ser Nos. 78934758, 78934760 and 78934763 7 The du Pont factors of channels of trade and conditions of purchase favor a finding of likelihood of confusion. We next consider the factor of the similarity of the marks, keeping in mind that when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant’s marks are PIEDMONT MUNICIPAL POWER AGENCY, PIEDMONT MUNICIPAL POWER AGENCY with an electric bolt design, and PIEDMONT POWER; the cited mark is PIEDMONT NATURAL GAS. Although marks must be compared in their entireties, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The words MUNICIPAL POWER AGENCY in applicant’s marks, which have been disclaimed by applicant, are at least highly descriptive, while the disclaimed word POWER in PIEDMONT POWER is generic for the services. Similarly, the disclaimed words NATURAL GAS in the cited mark are also generic for the services. Because of this, the word PIEDMONT in all the marks is the source-indicating element, Ser Nos. 78934758, 78934760 and 78934763 8 and therefore deserves far greater weight in the likelihood of confusion analysis. As for the electric bolt design in applicant’s mark PIEDMONT MUNICIPAL POWER AGENCY and design, this word is merely a pictorial representation of the services, and therefore does not have strong source- identifying significance. Furthermore, if a mark comprises both a word and a design, the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Applicant has argued, with respect to its PIEDMONT MUNICIPAL POWER AGENCY marks, that although MUNICIPAL POWER AGENCY is disclaimed, “even relatively unsophisticated consumers are able to correctly determine that these power distribution services are being provided by a governmental agency rather than a private company such as Registrant,” and that “Consumers will simply know that Appellant is a government agency and that its services are not originating from a private business as Registrant’s services do.” Brief, p. 13. In response to the examining attorney’s statement that there is no indication in the cited marks that the registrant is a private company, applicant asserts that “it is highly unlikely that a governmental agency would provide electricity under a mark that clearly Ser Nos. 78934758, 78934760 and 78934763 9 delineates its governmental status while simultaneously providing natural gas under a mark that does not indicate this governmental status.” Id. We are not persuaded by these arguments. Applicant’s argument is belied by the fact that applicant itself uses a mark, PIEDMONT POWER, that does not delineate its government status, at the same time that it is using other marks that do indicate its governmental status. Second, although applicant has discussed its consumers in terms of the municipalities to which it furnishes its power distribution services, and the attention these sophisticated purchasers would pay to the descriptive words MUNICIPAL POWER AGENCY in the marks, as discussed above, the identification of services does not restrict applicant’s customers to municipalities, and the electricity distribution services must be deemed to be offered to the general public as well. We do agree that the words NATURAL GAS in the registrant’s mark convey somewhat different information about the nature of the service than do applicant’s marks. However, that information will not be viewed as indicating a difference in the source of the services. Because the dominant and source-identifying element in each of applicant’s marks and in the cited mark is the identical Ser Nos. 78934758, 78934760 and 78934763 10 word PIEDMONT, the marks are very similar in appearance, pronunciation and connotation, and they convey the same commercial impression. The du Pont factor of the similarity of the marks favors a finding of likelihood of confusion. Applicant has argued that the word PIEDMONT is geographically descriptive and therefore deserves limited protection. There is a certain irony in applicant’s position, since under applicant’s argument its marks would not be registrable, while we have the examining attorney asserting that PIEDMONT is not geographically descriptive and therefore they are not barred from registration by Section 2(e)(2) of the Trademark Act. If PIEDMONT were geographically descriptive, applicant’s marks PIEDMONT MUNICIPAL POWER AGENCY and PIEDMONT POWER, in which the words other than PIEDMONT have been disclaimed, would be composed entirely of unregistrable terms. This argument would also constitute an impermissible collateral attack on the cited registrations. In any event, the examining attorney has pointed out that “piedmont” has non-geographic meanings.8 Thus, we cannot treat the term PIEDMONT as geographically descriptive. 8 We grant the examining attorney’s request that we take judicial notice of the definition of “piedmont.” It is defined Ser Nos. 78934758, 78934760 and 78934763 11 We do recognize that PIEDMONT has a suggestive connotation, in that it refers, inter alia, to an 80,000 square foot region of the eastern United States. See listing in The Columbia Gazetteer of North America, © 2000, of which we also take judicial notice. Thus, we agree with applicant that the cited registrations cannot be treated as arbitrary marks. However, suggestive marks are still entitled to protection, and in the present case, because the additional elements in applicant’s and the registrant’s marks are descriptive or generic, they are not sufficient to distinguish the marks. Cf. In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996 ). Consumers will view PIEDMONT in applicant’s marks and the cited mark as the source- identifying element. Finally, applicant argues that the du Pont factor of the length of time during and conditions under which there has been concurrent use without evidence of actual confusion should carry great weight in this case. Applicant has submitted declarations of Coleman F. Smoak, Jr., its general manager, attesting to its use of PIEDMONT in The American Heritage Dictionary of the English Language, 4th ed. © 2000, as meaning “An area of land formed or lying at the foot of a mountain or mountain range.” The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser Nos. 78934758, 78934760 and 78934763 12 MUNICIPAL POWER AGENCY since 1979; PIEDMONT MUNICIPAL POWER AGENCY and design since 1986; and PIEDMONT POWER since 2000. Referencing the dates of use claimed in the cited registrations of 1980 for PIEDMONT NATURAL GAS and design and of 1994 for PIEDMONT ENERGY COMPANY,9 Mr. Smoak stated that he was unaware of any instances of actual consumer confusion arising during the parties’ concurrent use of their respective marks. However, it is not at all clear that the parties operate in the same geographic area: although applicant states that applicant and the registrant “operate and provide their goods/services in overlapping market areas,” brief, p. 8, Mr. Smoak’s declaration uses the language “Assuming that [registrant] has continued to use both of these marks in commerce without abandoning either of the marks,” which implies that Mr. Smoak is not actually familiar with the registrant’s use of its marks. More importantly, the lack of instances of actual confusion can be due to the marketing practices that applicant currently engages in. As discussed above, applicant was formed by ten municipalities who are also its sole customers. If applicant does not offer its electricity 9 At the time the declarations were submitted, the examining attorney had not yet refused registration on the basis of the registration for PIEDMONT NATURAL GAS and design. Ser Nos. 78934758, 78934760 and 78934763 13 distribution services in the same geographic areas or to the same customers to whom the registrant offers its services, we cannot say that there has been an opportunity for confusion to occur, such that we can presume from the lack of evidence of actual confusion that such confusion is not likely. And the fact that there has been no confusion as a result of applicant’s current practices does not mean that there would not be confusion if applicant were to expand its customer base or its geographic area, or if the registrant were to offer its services in the same geographic area. Neither applicant’s applications nor the cited registration is restricted either geographically or as to channels of trade, and therefore if applicant were to obtain registrations it would be free to use its marks in any area of the country, including the area where the registrant operates, and to sell to all consumers, not only the municipalities that formed applicant. We also think the comments made by the Court of Appeals for the Federal Circuit in In re Majestic Distilling Co., 65 USPQ2d at 1205, are applicable here: With regard to the seventh DuPont factor, we agree with the Board that Majestic's uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) Ser Nos. 78934758, 78934760 and 78934763 14 (stating that self-serving testimony of appellant'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). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context. Thus, this du Pont factor is neutral. The foregoing are the only factors on which applicant and the examining attorney have provided evidence or argument. To the extent that any other du Pont factors are applicable, we treat them as neutral. After considering all the relevant du Pont factors, we find that applicant’s marks are likely to cause confusion with the cited registration for PIEDMONT NATURAL GAS. We next turn to the issue of whether applicant’s marks are likely to cause confusion with the cited registration for PIEDMONT ENERGY COMPANY for “distribution, transportation by pipeline, and storage of natural gas and propane.” Here, the registrant’s services do not include electricity, so we must consider whether these services and applicant’s services, which are limited to electricity Ser Nos. 78934758, 78934760 and 78934763 15 distribution, are similar. In doing so, we recognize the well-established rule that it is not necessary that the goods or services of applicant and the registrant be similar or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The examining attorney has submitted evidence of such relatedness in the form of third-party registrations which show that entities have adopted a single mark for services that are the same as those of applicant and the registrant, and pages from websites indicating that companies provide both types of services. The third-party registrations include Registration No. 3092648 for natural gas utility services, namely, distribution, transmission and storage of natural gas and electrical utility services, namely, the transmission and distribution of electricity; Registration No. 3178334 for distribution of energy, namely electricity and natural gas, to commercial and residential consumers; Ser Nos. 78934758, 78934760 and 78934763 16 Registration No. 3120239 for utility services, namely, the transmission of electricity and natural gas; and Registration No. 3180552 for distribution of energy commodity products, namely, natural gas, electricity, oil, propane, and green energy fuel sources. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The website evidence includes a webpage from Duke Energy, which states that “Duke Energy is one of the largest electric power companies in the United States. ... We have approximately 36,000 megawatts of electric generating capacity in the Midwest and the Carolinas, and natural gas distribution services in Ohio and Kentucky.” A webpage from ConEdison, Inc. states that it provides “electric and natural gas service to seven counties in New York, northern New Jersey and northeastern Pennsylvania.” The webpage for CoServ states that “as the second largest electric cooperative in Texas, CoServ Electric provides services” to 120,000 residents in various Texas counties, and that CoServ Gas provides natural gas services to more than 53,000 customers in North Texas. The webpage for Ser Nos. 78934758, 78934760 and 78934763 17 Florida Public Utilities lists natural gas, electric and propane, while the webpage for Rochester Gas and Electric states that it “provides electricity and natural gas energy and related services.” The above evidence not only suggests that companies offer both electricity and natural gas services under a single mark, but that this information is made known to consumers through their websites. In view of this, we find that the examining attorney has shown that the services are related, and that this du Pont factor favors a finding of likelihood of confusion. The Internet evidence also shows that the services are offered through the same channels of trade. We have already explained why applicant’s arguments about its specific channels of trade are not persuasive, and we need not repeat that discussion here. Similarly, our comments with respect to the conditions of purchase are applicable here. The public at large must be considered the consumers of natural gas and electricity services, and they cannot be deemed to have any particular sophistication or expertise with respect to the purchase of these services. As for the marks, if anything, applicant’s marks are closer to PIEDMONT ENERGY COMPANY than they are to PIEDMONT NATURAL GAS, since the words ENERGY COMPANY would be more Ser Nos. 78934758, 78934760 and 78934763 18 applicable to applicant’s electricity services, and therefore would not have even the small difference in connotation that PIEDMONT NATURAL GAS has. The word PIEDMONT in the registrant’s mark is, as with the other marks, the dominant element, since the disclaimed words ENERGY COMPANY are generic for a company that offers the services identified in the registration. We find applicant’s marks to be very similar to PIEDMONT ENERGY COMPANY in appearance, pronunciation and connotation, and to have the same commercial impression. This du Pont factor favors a finding of likelihood of confusion. Our comments with respect to the strength of the registrant’s mark, and applicant’s arguments and evidence regarding the lack of instances of actual confusion, are equally applicable here. In short, we find that applicant’s marks are likely to cause confusion with the cited registration for PIEDMONT ENERGY COMPANY. As for the cited registration for PIEDMONT NATURAL GAS and design, in view of our findings with respect to the other registrations we see no need to reach the question of likelihood of confusion with respect to this mark. We have already found that applicant’s marks are barred from registration because of the other registrations, and Ser Nos. 78934758, 78934760 and 78934763 19 therefore any discussion of this registration would be superfluous. Because the mark and the services are, taken together, more different from the other registrations, if on appeal a court were to find no likelihood of confusion with respect to the other registrations, there would be no likelihood of confusion with respect to this registration. Decision: The refusals of registration for applications Serial Nos. 78934758, 78934760 and 78934764 are affirmed. Copy with citationCopy as parenthetical citation