No. 79103504 (T.T.A.B. Jul. 2, 2013)

ITT Cannon GmbH

Trademark Trial and Appeal BoardJul 2, 2013

No. 79103504 (T.T.A.B. Jul. 2, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 2, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re ITT Cannon GmbH _____ Serial Nos. 79103503 and 79103504 _____ Timothy T. Tyson for ITT Cannon GmbH. Sharon A Meier, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _____ Before Quinn, Wolfson and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Applicant seeks registration on the Principal Register of the mark and the standard character mark BLUE GENERATION based on requests for extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. § 1142(f), for goods currently identified as “Electrical connectors namely housings, Serial No. 79103503 and 79103504 2 electric and magnetic contacts, insulators, and cables for electrical signal transmission” in International Class 9.1 Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s marks, when used on its identified goods, so resemble the registered standard character mark BLUEGEN for: Electric power generators; mechanical control devices for heaters, namely, valves being parts of machines; mechanical control devices for air heaters and water heaters, namely, pump control valves, proportional flow valves as parts of machines, thermostatic control valves as parts of machines; pumps for heating installations, namely, pumps for machines (in International Class 7); Electric circuit switches; testing and measuring instruments for use in testing the performance and efficiency of power plant equipment; power factor regulators to economize the delivery of electrical power; fuel cells and structural parts therefor; fuel cell stacks; galvanic electric cells; galvanic batteries; anodes; cathodes; electric batteries; battery chargers; photo voltaic cells; electric switches and circuit breakers; electricity inverters for use in electric power generation; electricity converters for use in electric power generation; electricity limiters for use in electric power generation; electric voltage transformers; voltage regulators for use in electric power generation; voltage surge protectors for use in electric power generation; electricity switch boxes; electricity control panels; electricity meters; electricity monitoring apparatus, namely, energy meters for tracking and monitoring energy usage; electric instruments, namely, power analyzers; control devices, namely, thermostats and timers for heating installations; 1 Serial Nos. 79103503 and 79103504 respectively, both filed September 8, 2011. In its brief for Serial No. 79103503, applicant agreed to adopt the examining attorney’s proposed description of the mark, as follows: “The mark consists of the stylized letter B and the wording BLUE GENERATION. The wording is to the right of the letter B and the word BLUE is above the word GENERATION.” Br., p. 6. The description has been entered. Serial No. 79103503 and 79103504 3 electrical remote control apparatus for heating and air conditioning systems; electric thermostats; computer software for controlling mains power electricity supply apparatus; measuring instrumentation and apparatus, namely, voltmeters, ammeters, ohmmeters, wattmeters, electric power supply analyzers; temperature indicators (in International Class 9); Apparatus for heating, namely, boilers for heating installations, central heating radiators, heating installations, thermostatic valves as parts of heating installations; lighting apparatus, namely, lighting installations and electric lighting fixtures; steam generators; heat exchangers; heat regenerators; heat exchangers; hot water heaters; central heaters; gas operated apparatus for heating, namely, space heaters and water heaters; air conditioners; cooling appliances and installations, namely, air coolers, water coolers; gas regulators (in International Class 11); and Installation and repair of heating apparatus; installation and repair of electricity generation apparatus; installation and repair of refrigeration or air conditioning apparatus (in International Class 37)2 as to be likely to cause confusion, mistake or deception. In addition, registration has been finally refused based on the requirement to amend the identification of goods in each application. As the two appeals involve common issues of law and fact, and the evidentiary records and arguments are highly similar, the Board will decide the appeals in this single opinion. Evidentiary Objection As a preliminary matter, the examining attorney’s objection to evidence presented for the first time attached to applicant’s brief is sustained. Trademark 2 Registration No. 3956849, issued on May 10, 2011. Serial No. 79103503 and 79103504 4 Rule 2.142(d) (record should be complete prior to filing of appeal). Accordingly, in making our decision, we have not considered Exhibit A or Exhibits C through I, or any arguments in applicant’s brief related thereto.3 Identification of Goods We turn first to the final refusal based on applicant's failure to comply with the Trademark Examining Attorney's requirement for an amended identification of goods. Trademark Rule 2.32(a)(6), 37 C.F.R. § 2.32(a)(6), requires that the application include “a list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” The Office has discretion to require a more particularized statement of the goods in the identification of goods, including in a case where the goods as identified could be classified in two different International Classes of goods. See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007). See also TMEP §1402.01 (2013). Moreover, the examining attorney will examine the identification of goods and/or recitation of services in a § 66(a) application according to the same standards of specificity used in examining applications under §§ 1 and 44 of the Trademark Act, 15 U.S.C. §§ 1051 and 1126. TMEP § 1402.01(c). In other words, the examining attorney must follow the procedures set forth in the TMEP, and identify an applicant’s goods and/or services according to the USPTO ID Manual, whenever possible. Id. 3 The proper method to have new evidence examined after appeal is to request remand which, we note, is granted in only limited circumstances. See TBMP §1207.02 (2013). In any event, consideration of that evidence would not have altered our determination. Serial No. 79103503 and 79103504 5 Applicant’s goods originally were identified as “Electric connectors and their parts.” In response to the examining attorney’s requirement for a more definite identification of the term “parts,” applicant amended the identification to “Electrical connectors namely housings, electric and magnetic contacts, insulators, and cables for electrical signal transmission.” The examining attorney objects to the amendment because the term “insulators” is beyond the scope of the original identification of goods in that they are properly classified in International Class 17, and the type of “insulators” is not specified. We agree. Under standard examination practice, the word “namely” is used to set out the common commercial names for items that fall within the general category of the term appearing before the word “namely.” See, generally, TMEP § 1402.01(a). If, as applicant argues, applicant sells “insulators” as a component of the electrical connectors, applicant should have used the wording “composed of” or “comprising” rather than “namely.” As currently written, the “insulators” appear to be stand- alone goods in a list of items used to modify “electrical connectors.” The ID Manual lists various types of “insulators,” including “insulators for electrical cables” in International Class 17; none are listed in International Class 9. Section 66(a) applications, such as the instant applications, cannot be amended to include any goods outside the scope of the class assigned by the International Bureau (in this case International Class 9), as that would result in the lack of a basis for registration of those goods under U.S. law. TMEP § 1401.02(c). Serial N “Insulat identific A goods. W register analyze de Nem Majestic any like between Federat (CCPA W between registra appeara similari Ponsard Cir. 200 test, un o. 7910350 ors” there ation of go ccordingly e turn n ed mark the facts a ours & Co. Distilling lihood of the mar ed Foods, 1976). e conside applican nt’s mark nce, soun ty or dissi in Maison 5), quoting der the fir 3 and 791 fore are b ods is una , we affirm ow to the BLUEGEN s they rel , 476 F.2d Co., Inc., confusion ks and th Inc. v. Fo r first the t’s mark BLUEGEN d, connot milarity be Fondee E In re E. st du Pont 03504 eyond the cceptable. the requ Likeliho refusal b . When ate to the 1357, 177 315 F.3d analysis, e similar rt Howar du Pont s . We mu ation and tween the n 1772, 3 I. du Pont factor, is 6 scope of t irement fo od of Confu ased on a the quest relevant fa USPQ 56 1311, 65 U two key c ities betw d Paper C factor of t a st compare commerc m. Palm B 96 F.3d 1 de Nemo not wheth he origina r a more sion likelihoo ion is like ctors set o 3, 567 (CC SPQ2d 1 onsiderati een the o., 544 F he similar nd BLUE the mark ial impre ay Impor 369, 73 U urs & Co., er the ma l identific definite id d of confu lihood of ut in In r PA 1973). 201 (Fed. ons are t goods or .2d 1098, ities and GENER s in their ssion to ts, Inc. v. SPQ2d 16 177 USPQ rks can be ation, and entificatio sion with confusion e E. I. Du See also I Cir. 2003) he similar services. 192 USPQ dissimilar ATION, entireties a determine Veuve Clic 89, 1690 ( at 567. distingui the n of the , we Pont n re . In ities See 24 ities and s to the quot Fed. The shed Serial N when su sufficien as to th likely to F appeara appear Canadia Canadia 1490, 1 T and reg by the t word G results registra apparat refers to W of a styl 4 See Ja “generat 5 We ack refers to apparatu o. 7910350 bjected to tly simila e source o result. urther, it nce where in both ap n Imperia n Imperia USPQ2d 1 here are o istrant’s m erm GEN ENERATI to the qu nt’s good us, consum GENERA hile appli ized letter nuary 5, 20 or” appear i nowledge “generator s, this dist 3 and 791 a side-by r in terms f the good is well-s similar t plicant’s a l Bank of l Bank of 813 (Fed. bvious visu ark in th or GENER ON. In fa ery “what s include ers likely TION.5 cant’s mar B, the des 12 Office a n second, t that consum .” Howeve inction is no 03504 -side com of their o s and/or se ettled th erms or p nd registr Commerce Commerc Cir. 1987) al and ph at all thre ATION, ct, the wo does GE generator will und k ign elemen ction. The hird and fou ers also c r, as a “ge t significan 7 parison, b verall com rvices offe at marks hrases, or ant’s mark , 228 USP e v. Wells (COMMCA onetic sim e contain and GEN rd GENER N stand s and ot erstand th also inc t merely d words “ge rth place, r ould under nerator” is t. ut rather mercial im red under may be similar p s. See, e.g Q 689 (TT Fargo Ban SH and C ilarities be the identic is a recogn ATION a for?” on a her elect at the GE ludes a de raws atte neral”, “gen espectively stand that a type of e whether pression the respe confusing art of term ., Crocker AB 1986), k, Nat’l A OMMUNI tween app al word B ized abbr ppears as cronmyfin rical pow N in reg sign eleme ntion to th eric (virus . GEN in re lectrical po the marks that confu ctive mark ly simila s or phra Nat’l Ban aff’d sub n ss’n, 811 CASH). licant’s m LUE, follo eviation of the first o der.com.4 er genera istrant’s m nt in the e first lett scanners)” gistrant’s m wer gener are sion s is r in ses, k v. om. F.2d arks wed the f 16 As tion ark form er in and ark ation Serial N the visu design, purchas (TTAB GENER mark, a W they cr GENER commer consum argues, consum applican consum than the F the term evidenc In registra o. 7910350 ally prom the word i ers to req 1987). T ATION, w lso is the d e further eate the s ATION ra cial impre , and r ers could v in light o ers would t’s marks ers would color blue inally, the BLUEGE e, to the co view of nt's mark 3 and 791 inent word s normally uest the g hus, cont hich com ominant p find that ame comm ther than ssion bet egistrant’s iew BLUE f the dictio more like . Moreov view the le . re is no ev N is weak ntrary. the fore are compa 03504 BLUE. accorded oods. In rary to a prises the ortion of a the conno ercial im its abbre ween app mark B GEN as nary evid ly view r er, there tters b-l-u idence of , and the going, we red in the 8 When a m greater w re Appetit pplicant’s entirety pplicant’s tations of pression. viation G licant’s m LUEGEN. similar to ence regar egistrant’s is no ev -e within record to s examinin find tha ir entireti ark comp eight beca o Provisio argumen of applica mark the mark Applican EN does n arks BLU In this the word ding the mark as idence of applicant’s upport ap g attorney t, when es, they a rises both use it wou ns Co., 3 ts, the w nt’s stand . s are iden t’s use of ot result E GENE regard, “bludgeon term GEN an abbrev record to mark as plicant’s c argues, w applicant re sufficie a word a ld be use USPQ2d ording BL ard chara tical, and the full w in a diffe RATION even if s ,” as appli , we find iated form suggest anything o ontention ith suppor 's marks ntly simila nd a d by 1553 UE cter that ord rent and ome cant that of that ther that ting and r in Serial No. 79103503 and 79103504 9 appearance, sound, connotation and commercial impression that, if used in connection with related goods, confusion would be likely to occur. As such, this du Pont factor favors a finding of likelihood of confusion. We turn next to the du Pont factor of the relatedness of the goods.6 We base our evaluation on the goods as they are identified in the registration and applications. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not necessary that the respective goods 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 goods themselves, but rather whether they would be confused as to the source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Contrary to applicant’s assertions, the record supports a finding that many of registrant’s goods are related to applicant’s goods and often emanate from the same source. The examining attorney submitted copies of more than 20 use-based, third- party registrations that include the types of goods identified in the applications and cited registration. These registrations suggest, in general, that electrical connectors are related to many of the items listed in the registration, such as power generators, power equipment, electrical equipment including switches and batteries, 6 Although the registration includes services, we need only find a likelihood of confusion vis- à-vis any of the goods in any of the classes in the registration. See, e.g., See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application). Serial No. 79103503 and 79103504 10 voltmeters, and electricity generating apparatus.7 See In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001). Although these registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nevertheless have probative value to the extent that they serve to suggest that the goods listed therein are of a kind which may emanate from a single source. See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988). The examining attorney also submitted web pages from third-party websites showing that the same companies offer the types of registrant’s goods and applicant’s goods under the same marks. In particular, web pages from the websites of Cole Hersee, Abra Key Dabra Electric, Delphi, Terra Power Systems and Finex Electronics demonstrate that applicant’s goods (electrical connectors) and various of registrant’s goods (electric and electricity generating apparatus such as electric power generators, electric switches, circuit switches, fuel cells, voltmeters and batteries) commonly are sold together. The evidence also includes web pages and online catalogs from the Google search engine showing that applicant’s goods and registrant’s goods are of the types that the same companies often sell and the same classes of purchasers often encounter. Specifically, the IQS Industrial Quick Search Manufacturer Directory, KOMPASS and SPSSW.COM web pages list various companies that offer goods of the types identified by both applicant and registrant. Consequently, consumers who encounter these goods under very similar 7 See, e.g., Registration Nos. 2545934, 2798898, 3342672, 3603060 and 3564678. Serial No. 79103503 and 79103504 11 marks are likely to believe, mistakenly, that the goods come from the same source or are otherwise connected. Based upon the evidence made of record by the examining attorney and the nature of the goods themselves, we find that the goods of applicant and registrant are closely related. As a result, this du Pont factor also favors a finding of likelihood of confusion. Applicant argues, without evidentiary support, that the trade channels are different because the goods of applicant and registrant are not ordered off the shelf, and must be ordered directly from applicant or registrant. However, because the goods are so closely related and there are no limitations in the identifications of the applications and cited registration, such as that the goods are “made to order,” we must presume that they are offered in the same channels of trade to the same classes of customers. Hewlett-Packard Co., 62 USPQ2d 1001. Further, the web pages and online catalogs from the Google search engine mentioned above establish that the goods, as identified, travel in the same trade channels. Applicant also contends, without support, that applicant’s and registrant’s goods are very expensive, are not subject to impulse buying, and the purchasers are sophisticated. As discussed above, the evidence demonstrates that the same sources of electrical products often offer a variety of goods, including goods of the types identified in the applications and registration, under the same mark, and that consumers are accustomed to seeing those types of goods sold under the same mark. In any event, the fact that purchasers are sophisticated or knowledgeable in a Serial No. 79103503 and 79103504 12 particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks, or immune from source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Finally, we agree with the examining attorney that applicant’s arguments regarding registrant’s purported abandonment of its mark constitute an impermissible collateral attack on the registration. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Similarly, applicant’s arguments regarding its priority are appropriate for a cancellation proceeding, should applicant choose to initiate one. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Neither argument is appropriate in this ex parte proceeding. In conclusion, we find that because the goods are related, the channels of trade and classes of consumers are the same, and the marks are similar, confusion is likely between applicant’s marks and BLUE GENERATION, and registrant’s mark BLUEGEN. Decision: The refusal to register based on a likelihood of confusion under Section 2(d) of the Trademark Act is affirmed in each application. In addition, the refusal to register based on the requirement for an acceptable identification of goods in each application is affirmed.