Energistics Consortium, Inc.

Trademark Trial and Appeal Board

Apr 29, 2009

No. 77033372 (T.T.A.B. Apr. 29, 2009)

Mailed: 4/29/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Energistics Consortium, Inc.
________

Serial Nos. 77033363 and 77033372
_______

Jonathan M. Pierce of Conley Rose for Energistics
Consortium, Inc.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Quinn and Holtzman, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Energistics Consortium, Inc. filed applications to
register the mark ENERGISTICS for “educational services,
namely, arranging and conducting seminars, lectures and
continuing education programs regarding the production and
use of standards for data exchange formats for use in the
fields of energy exploration, production and distribution;
publication of standards for data exchange formats for use
in the fields of energy exploration, production and
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. Nos. 77033363 and 77033372
2
distribution” (in International Class 41);1 and “association
services, namely, promoting the interests of oil and gas
businesses by providing a forum to facilitate the
development, adoption and deployment of uniform standards
for data exchange formats, for use in the field of energy
exploration, production and distribution” (in International
Class 35), and “establishing, developing and disseminating
voluntary standards for data exchange formats for use in
the field of energy exploration, production and
distribution; providing online information about voluntary
standards for data exchange formats for use in the field of
energy exploration, production and distribution” (in
International Class 42).2

1 Application Serial No. 77033363, filed October 31, 2006,
alleging a bona fide intention to use the mark in commerce.
There appears to be a discrepancy between a portion of the
recitation of services relied upon by applicant and the examining
attorney in making their respective arguments. The examining
attorney refers, in relevant part, to “publication of standards
for data exchange formats for use in the fields of energy
exploration, production and distribution” whereas applicant
refers to “publication of printed material via data exchange
formats featuring standards for use in the fields of energy
exploration, production and distribution.” The recitation of
services set forth by the examining attorney is the one cited in
both applicant’s response filed September 17, 2007 and request
for reconsideration filed May 14, 2008. Accordingly, the
recitation including “publication of standards for data exchange
formats for use in the fields of energy exploration, production
and distribution” is the operative portion of the recitation of
services for our consideration of the Section 2(d) refusal.
2 Application Serial No. 77033372, filed October 31, 2006,
alleging a bona fide intention to use the mark in commerce.
Ser. Nos. 77033363 and 77033372
3
The trademark examining attorney refused registration
in each application under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
mark, when used in connection with applicant’s services, so
resembles the previously registered mark ENERGISTICS for
“market research services”3 as to be likely to cause
confusion.
When the refusal was made final in each application,
applicant appealed. Applicant and the examining attorney
filed briefs.
The appeals involve common issues of law and fact.
Further, the records are quite similar. Accordingly, we
will decide the appeals in a single opinion.
The examining attorney maintains that the marks are
identical and the services are related. As to the
services, the examining attorney highlights the fact that
registrant’s services are broadly worded, without any
limitations regarding field, class of customers or trade
channels. Thus, the examining attorney contends, the
recitation of “market research services” in the cited
registration encompasses all fields, including market
research services in the fields of energy exploration,
production and distribution. In support of the refusal the

3 Registration No. 1697943, issued June 30, 1992; renewed.
Ser. Nos. 77033363 and 77033372
4
examining attorney submitted third-party registrations
showing that the same entities have registered a single
mark for, in one application, both market research services
and educational or publication services, and for, in the
second application, both market research services and
association services or services relating to the
development or promotion of industry standards. For each
application, the examining attorney also introduced
Internet evidence retrieved using GOOGLE’s search engine,
and articles retrieved from the NEXIS database showing,
according to the examining attorney, that the same entities
offer both types of services.
Applicant concedes that the marks are identical, but
contends that the services rendered under the marks are
markedly different. Although applicant recognizes that the
examining attorney’s third-party registration evidence “may
have some probative value,” it goes on to argue that this
evidence falls short of showing that prospective purchasers
would expect both types of services to emanate from the
same source. Applicant specifically points to the
limitations set forth in its recitation of services,
contending that the record is devoid of evidence showing a
relationship between market research services and
applicant’s services that are restricted to the specific
Ser. Nos. 77033363 and 77033372
5
fields of energy exploration, production and distribution.
In support of its arguments, applicant offers an in-depth
analysis of the third-party registration and website
evidence relied upon by the examining attorney. Further,
applicant relies upon its own third-party registration
evidence that, according to applicant, “far outweighs” the
examining attorney’s evidence. Applicant contends that its
searches of the trademark register reveal that the
respective services “almost never” emanate from a single
source. Applicant also asserts that the involved services
tend to be expensive and that purchasers of the services
tend to be sophisticated. Applicant also submitted a
dictionary definition of “market research.”
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
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,
however, 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).
Ser. Nos. 77033363 and 77033372
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Turning first to a consideration of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
marks are identical in every respect. Although the meaning
of the mark ENERGISTICS may be somewhat suggestive, the
record is devoid of any third-party registrations or uses
of the same or similar mark. The identity between the
marks weighs heavily in favor of finding a likelihood of
confusion.
Given that the marks are identical, applicant and the
examining attorney have focused their attention on the du
Pont factor of the similarity/dissimilarity between
applicant’s and registrant’s services. In comparing the
services, we initially note that where identical marks are
involved, as is the case here, the degree of similarity
between the parties’ services that is required to support a
finding of likelihood of confusion declines. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed.
Cir. 1993); Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001). It is only necessary that there be a
Ser. Nos. 77033363 and 77033372
7
viable relationship between the two to support a finding of
likelihood of confusion. In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The
issue, of course, is not whether purchasers would confuse
the services, but rather whether there is a likelihood of
confusion as to the source of the services. In re Rexel
Inc., 223 USPQ 830 (TTAB 1984).
It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
services recited in applicant’s application(s) vis-à-vis
the services identified in the cited registration.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992). Where the services in the
application at issue and/or in the cited registration are
broadly identified as to their nature and type, such that
there is an absence of any restrictions as to the channels
of trade and no limitation as to the classes of purchasers,
as is the case with the cited registration, it is presumed
that in scope the identification of services encompasses
not only all the services of the nature and type described
therein, but that the identified services are offered in
all channels of trade which would be normal therefor, and
that they would be purchased by all potential buyers
thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Ser. Nos. 77033363 and 77033372
8
The term “market research” is defined as “the
gathering and evaluation of data regarding consumers’
preferences for products and services.” The American
Heritage Dictionary of the English Language (4th ed. 2006)
(retrieved from www.dictionary.com). In considering the
services, we compare registrant’s “market research
services” to applicant’s
association services, namely, promoting
the interests of oil and gas businesses
by providing a forum to facilitate the
development, adoption and deployment of
uniform standards for data exchange
formats, for use in the field of energy
exploration, production and
distribution in Class 35;

educational services, namely, arranging
and conducting seminars, lectures and
continuing education programs regarding
the production and use of standards for
data exchange formats for use in the
fields of energy exploration,
production and distribution;
publication of standards for data
exchange formats for use in the fields
of energy exploration, production and
distribution in Class 41; and

establishing, developing and
disseminating voluntary standards for
data exchange formats for use in the
field of energy exploration, production
and distribution; providing online
information about voluntary standards
for data exchange formats for use in
the field of energy exploration,
production and distribution in Class
42.

Ser. Nos. 77033363 and 77033372
9
The examining attorney, in connection with her
argument that the services are related, submitted third-
party use-based registrations and excerpts of third-party
websites. 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. In re Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6
USPQ2d 1467 (TTAB 1988).
With respect to applicant’s services relating to
voluntary standards in Class 42, the examining attorney’s
submission does not include sufficient evidence to show a
viable connection between market research services and
establishing, developing and disseminating voluntary
standards for data exchange formats or providing online
information about voluntary standards for data exchange
formats. Applicant’s establishment and development of
voluntary standard services appear to be highly technical
in nature and, while such services may be related to
association services, we cannot find on the present record
that these voluntary standard services are related to
market research services. Furthermore, given the lack of
evidence on this critical du Pont factor of the similarity
Ser. Nos. 77033363 and 77033372
10
of the services, we find that there is no likelihood of
confusion between applicant’s mark for its services in
Class 42 and the cited registration, and therefore the
refusal with respect to this class in application Serial
No. 77033372 is reversed.
As to the remainder of applicant’s services in Classes
35 and 41, the examining attorney’s evidence establishes
that entities have adopted or render under a single mark
both market research services and the general type of
services rendered by applicant, that is, association,
educational and publication services. In some of the
registrations, the association, educational or publication
services are limited to a specific field (as in the case of
applicant’s recitation), a point highlighted by applicant:
“Nothing in the third-party information cited by the
Examiner shows a relationship between market research
services and the specific association or industry standard
services, or the specific educational or publication
services recited in applicant’s [applications].” (emphasis
in original)(Briefs, pp. 5-6).
Applicant’s argument ignores the fact that
registrant’s recitation of “market research services” is
broadly worded with no limitations regarding the specific
field or industry in which the services are rendered. As
Ser. Nos. 77033363 and 77033372
11
set forth in the cited registration, the recitation of
services is broad enough to encompass market research in
the field of energy. See In re Elbaum, 211 USPQ at 640.
The registrations indicate that a single source may use the
same mark for both types of services involved herein,
namely, on the one hand, market research, and, on the
other, association, educational or publication services.
Thus, we find that the third-party registrations are
probative of a relationship between market research
services and the types of association, educational or
publication services recited in applicant’s application.
The third-party website evidence likewise shows that the
same entities render association, educational or
publication services, as well as market research services.
In an attempt to diminish the probative value of the
third-party registration evidence, applicant conducted its
own search of the trademark register. Applicant’s search
revealed ninety-three third-party live applications and
registrations listing both “association services” and
“market research,” and five-hundred live applications and
registrations listing both “educational services” and
“market research.”4 Applicant then reduces these results to

4 Of course, applications are not evidence of any fact other than
that the applications were filed.
Ser. Nos. 77033363 and 77033372
12
a percentage of all registrations/applications listing
either association services or educational services,
concluding that “[t]hese miniscule percentages run contrary
to the Examiner’s conclusion that the respective services
are likely to emanate from a single source. In fact, the
search results show that it almost never happens.”
(Briefs, p. 13 and p. 15).
Applicant’s quantitative analysis does not diminish
the probative value of the examining attorney’s evidence.
The number of registrations retrieved by applicant is not
insignificant, and therefore they show that a substantial
number of entities have adopted a single mark for both
types of services. The registration evidence is entitled
to probative weight to the extent that it suggests that
applicant’s and registrant’s services are types that may
emanate from a single source. See In re Association of the
United States Army, 85 USPQ2d 1264, 1270-71 (TTAB 2007).
And, given the identity between the marks, only a viable
relationship between the services need be shown.
In view of the relatedness between market research
services and association, educational or publication
services, the second du Pont factor weighs in favor of a
finding of likelihood of confusion with respect to these
services.
Ser. Nos. 77033363 and 77033372
13
As to trade channels and purchasers, because there are
no limitations or restrictions in the cited registration
covering market research services, we must presume that
those services are offered in all normal trade channels and
to all normal classes of purchasers for such services.
Again, because registrant’s services as identified are
presumed to include market research services in the fields
of energy exploration, production and distribution, these
would include the same trade channels as those in which
applicant’s services are rendered, and would include the
same classes of purchasers, that is, individuals involved
in the energy field. Thus, the third du Pont factor weighs
in favor of a finding of likelihood of confusion.
While we accept, in considering the fourth du Pont
factor, applicant’s assertion that the involved services
may be the subjects of sophisticated purchases, even
careful purchasers are likely to be confused by identical
marks. As stated by our primary reviewing court, “[t]hat
the relevant class of buyers may exercise care does not
necessarily impose on that class the responsibility of
distinguishing between similar trademarks for similar
goods. ‘Human memories even of discriminating purchasers
... are not infallible.’” In re Research and Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
Ser. Nos. 77033363 and 77033372
14
quoting Carlisle Chemical Works, Inc. v. Hardman & Holden
Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Therefore, the fact that the purchasers may exercise care
before purchasing these services does not mean there can be
no likelihood of confusion. In the present case, the
identity between the marks and the similarity between some
of the services as identified outweigh any sophisticated
purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing
decision, and expensive goods].
In making our determination in this appeal, we
recognize, as indicated earlier, that the recitation of
services in the cited registration, “market research
services,” is broadly worded. In its response filed
September 17, 2007, applicant refers to a website outlining
the specific nature of registrant’s services and, based
thereon, suggests that registrant’s actual marketing
research services are quite different from applicant’s
services. As alluded to above, the problem with this type
of argument is that our comparison of the services in the
likelihood of confusion analysis must be based on the
Ser. Nos. 77033363 and 77033372
15
services as recited in the registration, and not on
evidence that illustrates the services for which registrant
may actually use its mark. Thus, applicant’s attempt to
impermissibly limit registrant’s recited services by
extrinsic evidence is unavailing. In re Bercut-Vandervoort
& Co., 229 USPQ 763, 764 (TTAB 1986).
Applicant should note, however, that Section 18 of the
Trademark Act gives the Board the equitable power to cancel
registrations in whole or in part, “restrict the goods or
services identified in an application or registration,” or
to “otherwise restrict or rectify...the registration of a
registered mark.” 15 U.S.C. §1068; Trademark Rule
2.133(b). See also TBMP §309.03(d) (2d ed. rev. 2004) and
cases cited therein. As the Board recently stated in
IdeasOne, Inc. v. Nationwide Better Health, Inc., 89 USPQ2d
1952, 1954-55 (TTAB 2009):
Indeed, the Board has encouraged
parties, such as the petitioner in this
case, whose applications have been
refused registration under Section 2(d)
based on a broad identification of
goods or recitation of services to seek
a restriction of the cited registration
under Section 18. See In re N.A.D.
Inc., 57 USPQ2d 1872, 1874 (TTAB 2000)
(“While we are sympathetic to
applicant’s concern about the scope of
protection being given to the cited
registrations, applicant is not without
remedies...Applicant may, of course,
seek a consent from the owner of the
Ser. Nos. 77033363 and 77033372
16
cited registrations, or applicant may
seek a restriction under Section 18 of
the Trademark Act, 15 U.S.C. §1068.”).
Section 18 provides an avenue of relief
for a party, for example, who faces a
cited registration with the no longer
permitted identification of goods
“computer programs,” and believes that
a restriction may serve to avoid a
likelihood of confusion. Thus, in
bringing the instant petition for
partial cancellation, petitioner was
acting in a manner entirely consistent
with accepted Board practice.

A Section 18 petitioner must plead that the proposed
restriction will avoid a likelihood of confusion and that
respondent is not using the mark on the goods or services
being deleted or “effectively excluded” from the
registration. See Eurostar Inc. v. “Euro-Star” Reitmoden
GmbH & Co., 34 USPQ2d 1266, 1271 (TTAB 1994). See also
ProQuest Information and Learning Co. v. Island, 83 USPQ2d
1351, 1353-54 (TTAB 2007); and Penquin Books Ltd. v.
Eberhard, 48 USPQ2d 1280, 1286-1287 (TTAB 1998).
Thus, if applicant wanted to limit registrant’s goods,
the proper procedure is to bring a cancellation action
seeking restriction under Section 18 of the Act, rather
than in an ex parte proceeding.
We conclude that applicant’s services in Classes 35
and 41 and registrant’s services, as identified in the
involved applications and registration, are sufficiently
Ser. Nos. 77033363 and 77033372
17
related so that, when rendered under the identical mark
ENERGISTICS, purchasers are likely to be confused. We also
conclude that the record falls short of establishing a
viable connection between applicant’s services in Class 42
and registrant’s services and, accordingly, find no
likelihood of confusion as to source or origin, even when
the services are rendered under the identical mark.
Lastly, to the extent that any of the points made by
applicant raise a doubt about likelihood of confusion in
Classes 35 and 41, that doubt is required to be resolved in
favor of the prior registrant. In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984).
Decision: The refusals to register in Class 41 in
application Serial No. 77033363, and Class 35 in
application Serial No. 77033372 are affirmed. The refusal
to register in Class 42 in application Serial No. 77033372
is reversed.