HSB Solomon Associates LLC

Trademark Trial and Appeal Board

Aug 8, 2016

No. 86404350 (T.T.A.B. Aug. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re HSB Solomon Associates LLC
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Serial No. 86404350
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George R. Schultz of Schultz & Associates, P.C.
for HSB Solomon Associates LLC.
Laura Golden, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Wolfson, Gorowitz and Heasley,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
HSB Solomon Associates LLC (“Applicant”) seeks registration on the Principal
Register of the mark NEI (in standard characters) for
Business consulting services, namely, benchmarking
forecasting, and formulation of best practices in the oil, gas,
chemical, refining and power generation industries, in
International Class 35.1

1 Application Serial No. 86404350 was filed on September 24, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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The Trademark Examining Attorney refused registration of Applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s
mark so resembles the following registered marks as to be likely to cause confusion,
mistake or deception:
• Registration No. 1979883 for the mark NEI (typed drawing)2
and Registration No. 2001173 for the mark

for: “association services, namely promoting the peaceful uses
of nuclear energy and supporting the commercial nuclear
energy industry” in International Class 42;3
• Registration No. 3943236 for the mark
4 and Registration No. 4503969 for
the mark 5
for: “Downloadable electronic publications in the nature of fact
sheets, summaries and reports in the field of nuclear energy
and technologies; pre-recorded videos, audiotapes, and
podcasts in the field of nuclear energy, the commercial nuclear

2 It is noted that prior to November 2, 2003, “standard character” drawings were known as
“typed” drawings. A typed mark is the legal equivalent of a standard character mark. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003,
‘standard character’ marks formerly were known as ‘typed’ marks.”)
3 Both registered on June 11, 1996 and renewed on July 11, 2006.
4 Registered on April 12, 2011.
5 Registered on April 1, 2014.
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energy industry and nuclear technology” in International
Class 9; and
“Association services, namely, promoting the peaceful uses of
nuclear energy and supporting the commercial nuclear energy
and technologies industry; lobbying and advocacy services in
the field of nuclear energy, the commercial nuclear energy
industry and nuclear technology; management and
compilation of computerized databases; providing on-line non-
downloadable computer databases featuring information
relating to legislation and public policy in the field of nuclear
energy, the commercial nuclear energy industry and nuclear
technology; providing an online website featuring data and
information relating to legislation and policy in the field of
nuclear energy, the commercial nuclear energy industry and
nuclear technology” in International Class 35; and
“Providing on-line website and computer database featuring
information relating to educational events, conferences and
outreach programs in the field of nuclear energy, the
commercial nuclear energy industry and nuclear technology;
providing educational events, conferences and outreach
programs; publishing fact sheets, summaries, newsletters,
brochures, pamphlets and reports in the field of nuclear
energy and technologies; providing on-line non-downloadable
electronic publications in the nature of fact sheets, action
alerts and email notices relating to research, training,
education, meetings, legislation and policy in the field of
nuclear energy, the commercial nuclear energy industry and
nuclear technology” in International Class 41.

When the refusal was made final, Applicant appealed. We affirm the refusal to
register.
I. Discussion
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.
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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).
A. Similarity or dissimilarity of the marks.
We start our analysis with the first du Pont factor, the similarity or
dissimilarity of the marks at issue. Applicant’s mark is NEI in standard characters
and Registrant’s marks are NEI in typed form, ,
, and Registration No. .
The first cited mark NEI in typed form is the legal equivalent of NEI in standard
character form.6 “Standard character … registrations are federal mark registrations
that make no claim to any particular font style, color, or size of display and, thus, are
not limited to any particular presentation.” Citigroup Inc. v. Capital City Bank Group
Inc., 637 F3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011). Because the design
elements and the additional literal elements in the other cited marks arguably

6 See fn. 2.
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contain additional points of difference with Applicant’s mark, we confine our analysis
to the issue of likelihood of confusion between Applicant’s mark and the cited
registration for the mark NEI in standard character form. That is, if confusion is
likely between those marks, there is no need for us to consider the likelihood of
confusion with the cited registrations for the marks with literal elements and designs;
if, on the other hand, there is no likelihood of confusion between Applicant’s mark
and the cited marks in standard characters, then there would be no likelihood of
confusion with the marks with literal and design elements. See, e.g., In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
In comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). Applicant’s mark NEI in standard character format and the cited mark NEI
are identical in appearance, sound, connotation and commercial impression and thus
the first du Pont factor strongly favors a finding of likelihood of confusion.
B. Similarity or dissimilarity of the services; channels of trade and class of
customers.
With this in mind, we look next at the second and third du Pont factors, the
similarity of the services and the channels of trade in which they travel. When
determining the relationship between the services,
[t]he authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification
of [services] set forth in the application regardless of what the
record may reveal as to the particular nature of an applicant’s
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[services], the particular channels of trade or the class of
purchasers to which [rendering of services] are directed.
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); see also Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014). Further,
[t]he greater the degree of similarity in the marks, the
lesser the degree of similarity that is required of the
products or services on which they are being used in order
to support a holding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 352,
356 (TTAB 1983). Where, as in this case, applicant’s mark
is identical to opposer’s L’OREAL PARIS mark, there need
only be a viable relationship between the goods to find that
there is a likelihood of confusion. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)
(contemporaneous use of identical or nearly identical
marks can lead to the assumption that there is a common
source “even when [the] goods or services are not
competitive or intrinsically related”); and In re Thor Tech
Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012). In this case, since the
marks are identical, there need only be a viable relationship between the services to
find that there is a likelihood of confusion.
It is not necessary that the respective services be identical or even competitive in
order to find that they are related for purposes of our likelihood of confusion analysis.
That is, the issue is not whether consumers would confuse the services themselves,
but rather whether they would be confused as to the source of the services. Id. (citing
In re Rexel Inc., 223 USPQ 830 (TTAB 1984)).The respective services need only be
“related in some manner and/or … the circumstances surrounding their marketing
[be] such that they could give rise to the mistaken belief that [the services] emanate
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from the same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)). See also In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991).
Applicant’s services are identified as: “business consulting services, namely,
benchmarking forecasting, and formulation of best practices in the oil, gas, chemical,
refining and power generation industries” and the services identified in the cited
registration for the mark NEI in typed form are: “association services, namely
promoting the peaceful uses of nuclear energy and supporting the commercial nuclear
energy industry.”7
In support of her position, the Examining Attorney submitted copies of a number
of use-based third-party registrations, each of which includes both “business
consulting services” (Applicant’s services) and “association services” (Registrant’s
services), which serves to suggest that the services are of a kind that may emanate
from a single source.
Third-party registrations that individually cover a number of different items and
that are based on use in commerce may have some probative value to the extent that
they serve to suggest that the listed goods and/or services are of a type that may
emanate from a single source. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.6

7 As we have focused our discussion on the standard character mark NEI, we do not consider
the issue of likelihood of confusion with respect to any other services provided by registrant
under the other cited marks.
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(TTAB 2015); See also In re RiseSmart Inc., 104 USPQ2d 1931, 1934-1935 (TTAB
2012); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). These
registrations were attached to the Office Action dated November 26, 2014. For
example:
• Registration No. 4429765 for the mark OPENVM
for, inter alia, Association services, namely, promoting the
interests of computer hardware, software, and peripheral
manufacturers and vendors; and Development of
voluntary standards and specifications for computer
hardware, software and peripherals (TSDR p. 21);8

• Registration No. 4638011 for the mark CGA
COMPRESSED GAS ASSOCIATION THE STANDARD
FOR SAFETY SINCE 1913 & Design
for, Association services, namely, promoting the interests
of the compressed gas industry; and Technical consulting
in the field of engineering of compressed gas equipment
and compressed gas engineering services; Development of
voluntary standards for equipment and services relating
to the compressed gas industry (TSDR pp. 27-28);
• Registration No. 4522009, for the mark THE POWER OF
PISTACHIOS
for, Association services, namely, promoting the interests
of pistachio growers, packers, processors, and producers
through commercial advertisements in the form of
television, print, film, motion picture, and electronic
media; business consulting services for the pistachio
industry (TSDR p. 39);

• Registration No. 4522092, for the mark M MISSOURI
CREDIT UNION ASSOCIATION & Design

8 TSDR is the Trademark Status and Document Retrieval database, which is the source of all
documents filed by an applicant during the prosecution of an application, as well as Office
actions issued by an examining attorney.

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for, Trade association services, namely, promoting the
interests of credit unions; Business consultation services
for the financial services industry; Business marketing
consultation services for the financial services industry
(TSDR p. 45); and
• Registration No. 4596513, for the mark STMA SOUTH
TEXAS MERCHANTS ASSOCIATION & Design
for, inter alia, Association services, namely, promoting the
interests of convenience store owners and related
businesses; Business management consulting, strategic
planning and business advisory services provided to
convenience store owners and related businesses (TSDR
p. 54).

Applicant argues that the services are different because “Applicant’s
benchmarking services in the oil and gas industry do not overlap with Registrant’s
association services in the nuclear energy industry.” However, to establish likelihood
of confusion, it is not necessary for all of the services to “overlap” as long as some of
the services are related. Cf. Tuxedo Monopoly Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (“A likelihood of confusion must be found
if the public, being familiar with appellee’s use of MONOPOLY for board games and
seeing the mark on any item that comes within the description of goods set forth by
appellant in its application, is likely to believe that appellee has expanded its use of
the mark ….”). By definition, some of the broadly identified services in Applicant’s
recitation and some of the broadly identified services in the cited registration are
related.
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The “power generation industry” includes companies that generate “nuclear
power.”9 Thus, Applicant’s recitation of services effectively covers the nuclear power
generation industry. Similarly, registrant’s association services identified in the cited
registration as “supporting the commercial nuclear energy industry,” include
supporting services, such as formulating best practices, provided to an electric power
utility company.10 As such, the services are closely related.
Applicant argues that the channels of trade and customers are different, however,
since neither of the recitations of services restrict either channels of trade or
customers, given the close relationship between the services, the services, as
identified, would encompass services rendered to or for the benefit of the same
entities in the power generation industry.
Accordingly, we find that the second and third du Pont factors favor a finding of
likelihood of confusion.
C. Sophistication of purchasers.
We agree with Applicant that all of the relevant services would be purchased
by sophisticated purchasers. However, the fact that “the relevant class of purchasers

9 Nuclear power generating station is defined as: “a plant wherein electric energy is produced
from nuclear energy by means of suitable apparatus. The station may consist of one or more
generating units.” On-line version of IEEE 100 The Authoritative Dictionary of IEEE
Standards Terms (http://ieeexplore.ieee.org/), (PE/NP) 308-1991; © 2000 Institute of
Electrical and Electronics Engineers.
10 Commercial power is defined as: “(1) (emergency and standby power) Power furnished by
an electric power utility company; when available, it is usually the prime power source.
However, when economically feasible, it sometimes serves as an alternative or standby
source. Synonym: utility power. (2) Power furnished by an electric power utility company.”
Id., at (IA/PSE) 446-1995, (IA/PSE) 1100-1999.

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may exercise care does not necessarily impose on that class the responsibility of
distinguishing between similar marks for similar services. Human memories even of
discriminating purchasers are not infallible.” In re Research and Trading Corp., 793
F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (internal citation omitted).
Relying on Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
954 F2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992). Applicant argues that “the
sophistication of the purchasers is so important that it is often dispositive.” Appeal
Brief, 4 TTABVUE 12. This case is distinguishable from Electronic Design wherein
the goods and services, while marketed and sold in the medical fields, were
substantially different; the opposer’s services were “data processing services for
medical insurers, whereas the applicant’s goods were batteries and power supplies
sold to makers of medical equipment such as bedside alert systems and crib monitors.
Electronic Design, at 1392. In the current case, Applicant’s and Opposer’s services, as
identified, are related. Accordingly, even though the purchasers are sophisticated,
given that the marks are identical, confusion is still likely.
D. Conclusion.
Having considered all the evidence and argument under the relevant du Pont
factors, whether discussed herein or not, we find that Applicant’s mark, NEI for
“business consulting services, namely, benchmarking forecasting, and formulation of
best practices in the oil, gas, chemical, refining and power generation industries” is
likely to cause confusion with the cited mark NEI for “association services, namely
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promoting the peaceful uses of nuclear energy and supporting the commercial nuclear
energy industry.”
Decision: The refusal to register Applicant’s mark NEI is affirmed.