Siemens Power Trans-mission & Distribution, Inc.

Trademark Trial and Appeal Board

May 11, 2001

No. 75363102 (T.T.A.B. May. 11, 2001)

5/11/01
Paper No. 20
UNITED STAT
Tradem
In re Siemens Pow
S
Richard V. Westerhoff
Cherin & Mellott, LLC
Distribution, Inc.
Kathleen M. Vanston, T
103 (Michael Hamilton,
Before Seeherman, Hana
Judges.
Opinion by Bucher, Adm
Applicant has app
Examining Attorney to
conditioners for compe
electric power transmi
International Class 9.
Registration has
the Trademark Act, 15
applicant’s mark so re
1 Application serial
1997.THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
ES PATENT AND TRADEMARK OFFICE
________
ark Trial and Appeal Board
________
er Transmission & Distribution, Inc.
________
erial No. 75/363,102
_______
and Michael D. Lazzara of Ekert Seamans
for Siemens Power Transmission &
rademark Examining Attorney, Law Office
Managing Attorney).
_______
k and Bucher, Administrative Trademark
inistrative Trademark Judge:
ealed from the refusal of the Trademark
register DVR for “active power
nsating for voltage sags and swells in
ssion and distribution systems,”1 in
been refused pursuant to Section 2(d) of
U.S.C. 1052(d), on the ground that
sembles the mark DVR for “electric
number 75/363,102 was filed on September 25,
Serial No. 75/363,102
- 2 -
voltage regulators,”2 also in International Class 9, that, as
used on applicant’s identified goods, it is likely to cause
confusion, to cause mistake or to deceive.
The appeal has been fully briefed, but an oral hearing
was not requested. We affirm the refusal of registration.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Obviously, applicant’s and the registrant’s marks are
identical. Further, the registrant’s mark is a strong one.
Based upon this record, it appears that DVR is an arbitrary
mark for the registrant’s electric voltage regulators.
Similarly, while the LEXIS/NEXIS® articles attached to the
initial Office Action repeatedly show use of the designation
“ … dynamic voltage restorer (DVR) …,” substantially all the
“hits” appear to be references to applicant’s product.
2 Registration No. 1,759,107, issued on March 16, 1993; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
Serial No. 75/363,102
- 3 -
Furthermore, applicant argues strongly that it coined this
initialism for its active power conditioner devices:
The trademark DVR was coined by Applicant to
identify the source for its active power
conditioner devices… Applicant respectfully
submits that the DVR mark was not used by
industry in the context of active power
conditioner goods prior to its use by Applicant
as a trademark for Applicant’s product. The DVR
mark was initially coined by Applicant…
(applicant’s response of December 28, 1998, p.
5).3
Inasmuch as the marks herein are identical in all
respects, we turn to a consideration of whether the respective
goods are sufficiently related. It is well settled, in this
regard, that goods need not be identical or even competitive in
nature in order to support a finding of likelihood of
confusion. Instead, it is sufficient that the goods are
related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely
to be encountered by the same persons in situations that would
give rise, because of the marks employed in connection
therewith, to the mistaken belief that they originate from or
are in some way associated with the same producer or provider.
See Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96
3 We note that while the initial Office Action also refused this
initialism as being merely descriptive under Section 2(e)(1) of the
Act, the portion of applicant’s response quoted above contains
applicant’s arguments against such a finding. Although the
Trademark Examining Attorney never expressly withdrew this
additional basis for refusal, it was not pursued again after
applicant made its arguments against such a holding.
Serial No. 75/363,102
- 4 -
(TTAB 1978) and In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
As noted above, applicant’s goods are identified as
active power conditioners for compensating for voltage sags
and swells in electric power transmission and distribution
systems while registrant’s are identified as electric voltage
regulators. In her final refusal, the Trademark Examining
Attorney takes the position that “[t]he goods simply employ
different methods to solve the same problem.” (Office Action
of February 16, 1999, p. 2). Applicant strongly disagrees
with this characterization of the respective goods, arguing
instead that these goods are not related in that they perform
different functions in different ways on different equipment
and are orders of magnitude different in size, power and cost.
Specifically, applicant maintains that:
[Applicant’s] active power conditioners
function to address voltage sags and swells in
the electric power transmission and
distribution systems. They provide a source
which injects power into the transmission or
distribution line in the case of a sag, or
withdraws power from the transmission or
distribution line in the event of a swell,
thereby providing or absorbing real power as
needed to compensate for the disturbance in the
electric power system. In addition,
Applicant's goods sold under the mark provide
compensation to improve the quality of the
sinusoidal pattern of the voltage and shifts in
phase of the voltage in addition to
compensation for swells and sags in voltage
magnitude.
Serial No. 75/363,102
- 5 -
On the other hand, the Registrant produces
“standby generators ranging from 5 kilowatts to
over 2,000 kilowatts” and a “digital voltage
regulator” for “unprecedented precision and
protection in the regulation of generators.”
Thus, Registrant's goods are devices that
regulate the voltage that a standby generator
produces. Such devices maintain a constant
voltage output and are not designed to, nor are
they capable of serving as a source or
reservoir of energy. Most importantly, they
are not designed and are not used to regulate
the voltage on electric power transmission or
distribution lines. Hence, the goods of
Applicant and Registrant are not related in
that they perform different functions, i.e.,
compensating for sags and swells on electric
power transmission and distribution lines vs.
regulating the output voltage of a generator,
in that they operate in different ways, i.e. ,
injecting or absorbing energy vs. maintaining a
constant output voltage, and in that they
operate on different equipment, i.e., electric
power transmission and distribution lines vs.
small standby generators. They are also orders
of magnitude different in size, power and cost.
Applicant's specimen filed with the application
illustrates one of its devices which is housed
in and fills a large trailer truck as opposed
to the relatively small size of a voltage
regulator on a small generator, which is
Registrant's product. Obviously, such a much
larger device costs much more.
The Examining Attorney, on the other hand, correctly
notes that the issue of likelihood of confusion must be
determined on the basis of the goods as they are identified in
the application and the cited registration, citing Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Here, even if
applicant’s power conditioning devices may be used somewhat
Serial No. 75/363,102
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differently from registrant’s voltage regulators, given their
similarities, the Trademark Examining Attorney contends that
“it would be reasonable for a prospective customer to assume
that both types of goods can come from the same source.”
In support of this position, the Trademark Examining
Attorney has submitted for the record a number of NEXIS®
stories, such as the following paragraph, showing that these
two devices for ensuring uninterrupted power are more alike
than applicant argues:
Methods to safeguard against the vagaries of
commercial AC power include dedicated lines,
dual feeders, shielded isolation transformers,
line-voltage regulators, power-line
conditioners, motor generators, engine
generators, power distribution centers, and
UPSs. These power conditioning systems vary in
cost and in the degree of protection they
provide…
“Staying in Power: Uninterruptible power supply
for computer equipment,” Datamation, July 15,
1986. (emphasis supplied)
The Trademark Examining Attorney has also shown that a
number of merchants and manufacturers listed in the Thomas
Register offer among their listed electrical products goods
identified as power conditioners as well as voltage
regulators.
After a complete review of the entire record, we conclude
that there are differences in the functional characteristics
of these respective goods. For example, applicant’s
sophisticated power conditioners have a capacity for
compensation (e.g., injecting power to the load side in the
Serial No. 75/363,102
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case of a sag in electricity coming from the grid), whereas
the typical voltage regulator has no reservoir of energy.
From registrant’s web pages made part of the record by
applicant, it is clear that many of registrant’s motors and
generators are targeted to small- and medium-sized businesses,
while applicant’s specimens of record show a product housed on
a tractor trailer and marketed to electric power utilities and
large manufacturers.
In spite of these differences, however, we agree with the
Trademark Examining Attorney that they are related goods.
Both serve as devices placed between a power source (e.g., an
electric power substation, the utility’s electricity power
grid or a local, standby generator) and the load (e.g., large
factories, computer intensive industrial sites or hospitals).
Both are designed to take an electrical power input and
improve the quality of the electrical signal at its output
end.
A “voltage regulator” is a device that “holds an output
voltage constant during variations in the output load or input
voltage.”4 Under this definition, an active power conditioner
would be a specialized subset of this broadly defined category
4 The Illustrated Dictionary of Electronics, Seventh edition
1997) McGraw-Hill, p. 720.
Serial No. 75/363,102
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of goods.5 While applicant’s current identification of goods
is indeed listed as “active power conditioners for
compensating for voltage sags and swells in electric power
transmission and distribution systems,” we note that the
application as originally filed identified the goods as “solid
state voltage regulators.” Upon receiving the initial Office
action, which cited registrant’s mark as applied to voltage
regulators, applicant amended its identification of goods. To
the extent that applicant submitted this amendment, and the
Trademark Examining Attorney subsequently approved this
change, under the strictures of Trademark Rule 2.71(a)6, we
have to assume that both applicant and the Trademark Examining
Attorney made the determination that the amended terminology
of “active power conditioners” was a clarification or
limitation on the term “voltage regulators,” rather than a
device falling entirely outside the scope of that initial
identification of goods.
5 Even if we view applicant's complex product as consisting of a
number of different components, one part of which has the basic
function of the traditional voltage regulator in ensuring a constant
output of voltage, the goods of applicant and registrant both
provide a similar function and could be competitive solutions for
dealing with the “vagaries” of electrical inputs by improving the
quality of the electrical signal at its output end.
6 §2.71 Amendments to correct informalities.
The applicant may amend the application during the course
of examination, when required by the Office or for other
reasons.
Serial No. 75/363,102
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As to alleged differences in size and cost of these
respective goods, the specimens of record indeed show a large,
trailer-mounted compensation system designed to protect larger
loads. However, there is nothing in the identification of
goods that would restrict the use of applicant’s power quality
technology from a more compact sized platform. This might be
due to advances in technology, or because applicant has found
a market for a device that could likewise protect smaller
electrical loads from voltage disturbances. Accordingly, if
one compares the largest of registrant’s generators (e.g.,
2000 to 4000 kW) and their attendant voltage regulators to a
more compact DVR device from applicant intended for smaller
industrial customers, those differences in “size, power and
cost” need no longer be measured in “orders of magnitude”
(applicant’s appeal brief, p. 6).
In its reply brief, applicant cites to In re Trackmobile
Inc., 15 USPQ2d 1152 (TTAB 1990),7 arguing that in the current
case, it has shown by a submission of registrant’s web page
that “ … a recitation of goods in a registration can have a
(a) The applicant may amend the application to
clarify or limit, but not to broaden, the
identification of goods and/or services.
7 In Trackmobile, a Section 2(d) refusal had been issued based on
a registration in which the goods were identified as “light railway
motor tractors.” The applicant, in attempting to overcome the
Section 2(d) refusal by demonstrating that its goods were unrelated
to the goods identified in the cited registration, offered extrinsic
Serial No. 75/363,102
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meaning in the trade that does not include Applicant’s goods.”
(reply brief, p. 2).
However, the Board considered the applicant’s extrinsic
evidence regarding the registrant’s goods in Trackmobile
because the Board was uncertain as to what the goods
identified in the registration entailed. That is, the Board
did not consider the extrinsic evidence in order to determine
the exact nature of the registrant’s particular “light railway
motor tractors,” but rather to determine generally what type
of vehicles “light railway motor tractors” comprised.
In the present case, by contrast, no extrinsic evidence
is necessary in order to educate the Board as to what
“electric voltage regulators” are; the term has been defined
with a dictionary entry, and while it may be broad, it is
neither vague nor uncertain. Accordingly, applicant's
reliance on Trackmobile is misplaced, and applicant’s
proffered extrinsic evidence regarding the nature and scope of
the goods actually sold by the registrant is not probative of
a different result herein.
As to the channels of trade, while some of the case
studies cited in the LEXIS/NEXIS® materials do reflect the
purchase of applicant’s devices by utility companies, the
evidence as to the nature of the registrant's goods, evidence which
the Board considered.
Serial No. 75/363,102
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affidavit of James R. Legro makes it clear that these “power-
conditioning” devices are also marketed to “large users” of
electrical power including manufacturers having sensitive
electrical loads. While in ¶ 17 of his affidavit, James R.
Legro opines that registrant’s goods “… are sold primarily to
consumers of electrical generation equipment…,” there is
nothing in the record to suggest that this group of consumers
does not overlap with applicant’s potential customers, e.g.,
manufacturers having sensitive devices and production
processes such as in the chemical industry, glass production,
semiconductor production, paper industry, automobile
factories, etc.
As to the du Pont factor focusing on the conditions under
which and buyers to whom sales are made, we acknowledge that
applicant’s goods are targeted to careful, sophisticated
purchasers. However, with identical marks used on closely
related goods, the fact that applicant’s goods would be used
by sophisticated purchasers, and not members of the general
public, does not avoid a likelihood of confusion. That is,
under the circumstances of this case, even among knowledgeable
purchasers working for technically sophisticated customers,
confusion as to the origin of the respective goods, or
mistakenly attributing a common association thereto, is likely.
Serial No. 75/363,102
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As to the du Pont factor focusing on the number and
nature of similar marks in use on similar goods, there is
nothing in the record to suggest that there are any third
parties using this designation on power quality products or
services, on voltage regulators or even any remotely related
electrical power goods or services.
Finally, any doubt on the question of likelihood of
confusion must be resolved against applicant as the newcomer
has the opportunity of avoiding confusion and is obligated to
do so. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423, at 1440
(TTAB 1993).
Decision: The refusal to register is affirmed.