Power Distribution, Inc.

Trademark Trial and Appeal Board

Sep 29, 2012

No. 77825939 (T.T.A.B. Sep. 29, 2012)

Oral Hearing: July 20, 2012 Mailed: September 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Power Distribution, Inc.
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Serial No. 77825939
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Thomas J. Moore of Bacon & Thomas, PLLC for Power Distribution, Inc.
John Kelly, Trademark Examining Attorney, Law Office 117 (Brett Golden,
Managing Attorney).
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Before Holtzman, Taylor and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On September 14, 2009, Power Distribution, Inc. (“applicant”) filed an
application to register the mark POWERWAVE BUS SYSTEM in standard
character format for, as amended, “structured electrical busses comprising electrical
power connectors, electrical power distribution units, and electric power supplies for
use with electric power equipment, not for use with radio frequency power
amplifiers, not for use with audio frequency power amplifiers, and not for use with
This Opinion is a
Precedent of the TTAB
Serial No. 77825939
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power supplies for arc welders” in International Class 9. 1 The application includes
a disclaimer of the term BUS SYSTEM.
The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the registered marks POWERWAVE and
POWERWAVE TECHNOLOGIES,2 also in standard character format, with respect
to the registrant’s goods identified therein as “converters” and “electrical power
distribution units,” that when used on or in connection with applicant’s identified
goods, it is likely to cause confusion or mistake or to deceive. The term
TECHNOLOGIES has been disclaimed in the latter registration.
Applicant has appealed the examining attorney’s final refusal to register the
application. Both applicant and the examining attorney have filed briefs, applicant
filed a reply brief and an oral hearing was held. For the reasons explained below,
we affirm the refusal to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).

1 Application Serial No.77825939 based on an intent to use pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

2 Registration Nos. 3386310 and 3392898, registered respectively on February 19 and
March 4, 2008 for a large number of goods and services in International Classes 6, 9, 37 and
42. During ex parte examination of the application, the examining attorney expressly
limited the refusal to registrant’s goods identified as “converters” and “electrical power
distribution units” in International Class 9. Thus, we have not considered applicant’s
arguments in its brief relating to other goods and services either in International Class 9 or
other classes.
Serial No. 77825939
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See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). We discuss each of the du Pont factors as to which applicant
or the examining attorney submitted argument or evidence.
I. The Marks
First, we consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties as well as the relative
strength or weakness of the registered mark. The question is not whether the
marks can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in their entireties that confusion as to
the source of the goods or services offered under the respective marks is likely to
result. The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. In re Jack B.
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant contends that while each mark incorporates the term
POWERWAVE, applicant’s mark creates a distinct commercial impression because
it includes the term BUS SYSTEM. Applicant also argues that the term
POWERWAVE is highly suggestive for the identified goods, implying that it is not
entitled to a broad scope of protection. In support of its position, applicant requests
that we take judicial notice of the dictionary definitions of the terms “power” and
Serial No. 77825939
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“wave.”3 Applicant also has submitted two use-based third party registrations
which also incorporate the term POWERWAVE.4
Applicant’s arguments are unconvincing. It is well established that
prospective consumers are generally more inclined to focus on the first word, prefix
or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). See also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d
1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered” when making
purchasing decisions). Furthermore, in comparing marks, disclaimed matter is
typically less significant or less dominant. See In re Dixie Rests., Inc., 105 F.3d
1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753
F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985). In applicant’s mark, the
descriptive wording “BUS SYSTEM” has been disclaimed, and in one of the
registered marks, the descriptive term “TECHNOLOGIES” has been disclaimed.
Because POWERWAVE is the first part of applicant’s mark, and the second portion,
BUS SYSTEM is descriptive, POWERWAVE is the dominant element of applicant’s
mark. See Palm Bay Imports v. Veuve Clicquot Ponsardin Maison Fondee En 1772,

3 We grant applicant’s request to take judicial notice and have considered the dictionary
definitions in rendering our decision.

4 We have not considered third-party Registration No. 3545735 for the mark POWERWAVE
because it is registered pursuant to Section 44(e) of the Trademark Act.
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73 USPQ2d at 1692. The same reasoning applies to registrant’s mark
POWERWAVE TECHNOLOGIES.
Moreover, applicant’s submission of two third-party registrations
incorporating the term POWERWAVE does not imply that registrant’s marks are
weak and therefore deserving of only a limited scope of protection. Aside from the
fact that two third-party registrations on the entire USPTO register is hardly a
significant number, third-party registrations are not evidence of use of the marks.
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). The
third-party registrations are “[a]t best, … evidence that the consuming public could
potentially be cognizant of third-party use of the term [POWERWAVE.]” See Palm
Bay Imports v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at
1693. As such, the two third-party registrations submitted by applicant are of
minimal probative value.
We therefore find that applicant’s mark and registrant’s marks are highly
similar in appearance, sound, connotation and commercial impression. This first du
Pont factor weighs in favor of finding a likelihood of confusion.
II. The Goods and Trade Channels
Next, we compare the respective goods as well as the channels of trade,
keeping in mind that our determination is based on the goods as listed in the
application and cited registration. See Cunningham v. Laser Golf Corp., 55
USPQ2d at 1846. See also Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
Serial No. 77825939
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Applicant’s goods are identified as “structured electrical busses comprising
electrical power connectors, electrical power distribution units, and electric power
supplies for use with electric power equipment, not for use with radio frequency
power amplifiers, not for use with audio frequency power amplifiers, and not for use
with power supplies for arc welders.” Applicant essentially contends that because
“electrical power distribution units” are component parts of “structural electrical
busses,” the goods are neither identical nor related.
We do agree with applicant that “electrical power distribution units” are
listed as a component part of “structured electrical busses” in applicant’s
identification. However, according to the wording of applicant’s identification of
goods, “electrical power distribution units” are not sold as a unit with applicant’s
“structured electrical busses.” Applicant’s identification is therefore ambiguous as
to whether the mark refers only to the finished product. Based on this wording, we
must assume that the component parts of “electrical power distribution units” are
sold separately. As such, registrant’s goods which are individually identified as
“electrical power distribution units” are identical to the “electrical power
distribution units” sold as a component of applicant’s structured electrical busses.”
The fact that the identification of goods for applicant’s products contain
limitations regarding use, does not affect our determination because registrant’s
goods do not include any such limitations.
Even if, however, we were to assume that such goods are not identical,
applicant’s goods of “structural electrical busses” are closely related to registrant’s
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“converters” and “electrical power distribution units.” By their intrinsic nature, the
goods are related because they both consist of electrical power distribution products
used for similar purposes, namely, for the distribution of electrical power. As
evidence thereof, the examining attorney has submitted an excerpt from the
Internet website http://www.electronicsmanufacturers.com/products/electrical-
electronic-components/power-distributionbusbar/ explaining that “[e]lectrical power
distribution busway systems are used to distribute electrical power throughout
buildings.” See Final Office Action dated February 15, 2011. In instances involving
the technical goods, it is entirely appropriate for the Board to consider extrinsic
evidence in order to ascertain the significance of the goods. See In re Edwards Life
Sciences, 94 USPQ2d 1399 (TTAB 2010) (“However, applicant has submitted
extrinsic evidence to demonstrate the meaning of its description of goods, not to
restrict or limit the goods. Where, as here, applicant's description of goods provides
basic information, and the goods are of a technical nature, it is entirely appropriate
to consider extrinsic evidence to determine the specific meaning of the description of
goods.”).
It is well established that the respective goods do not have to be identical or
even competitive in order to determine that there is a likelihood of confusion;
rather, it is sufficient that the respective goods are related in some manner, or the
conditions surrounding their marketing must be such that the goods will be
encountered by the same purchasers under circumstances that would give rise to
the mistaken belief that they originate from the same source. See, e.g., On-line
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Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984). We find that based on the evidence discussed above, applicant’s
and registrant’s goods are related.
Regarding the channels of trade, as noted above, although the identification
of goods set forth in the application contains restrictions, the identification in the
cited registrations does not include any limitations. Therefore, it is presumed that
the registrations encompass all goods of the type described, including the electrical
power distribution units comprised in the applicant’s structured electrical busses,
referred to in applicant’s more specific identification, that the goods move in all
normal channels of trade, and that they are available to all potential customers.
See In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Thus these du Pont factors weigh in favor of finding a likelihood
of confusion.
III. Sophistication of Purchasers
Given the technological nature of the involved products, the purchasers of
both applicant’s and registrant’s goods are sophisticated and knowledgeable in their
purchasing decisions, and would be highly familiar with the use and purpose of both
parties’ products. However, the fact that purchasers are sophisticated or
knowledgeable in a particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
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confusion. See In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9
USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB
1983). This factor also weighs in favor of finding a likelihood of confusion.
To the extent that there are any other relevant du Pont factors, we treat
them as neutral. In addition, any doubt regarding a likelihood of confusion
determination is resolved in favor of the registrant. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, we conclude that there is a likelihood of
confusion between applicant’s mark and the registered mark when used in
connection with their identified goods and services.
DECISION: The refusal to register is affirmed.