NexGen Resources Corporation

Trademark Trial and Appeal Board

Aug 10, 2006

No. 76334331 (T.T.A.B. Aug. 10, 2006)

Mailed: August 10, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re NexGen Resources Corporation
________

Serial No. 76334331
Serial No. 76334334
_______

Lynn P. Hendrix of Holme Roberts & Owen LLP for NexGen Resources
Corporation.

Susan E. Billheimer, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Hohein, Hairston and Grendel, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

NexGen Resources Corporation has filed applications to
register on the Principal Register the mark "NEXGEN" and design,1
as reproduced below,

and the mark "NEXGEN,"2 in standard character form, for in each
instance the services of "procurement, namely, purchasing of coal

1 Ser. No. 76334331, filed on November 6, 2001, which is based on an
allegation of a date of first use anywhere and in commerce for the
services in each class of November 1996.

2 Ser. No. 76334334, filed on November 6, 2001, which is based on an
allegation of a date of first use anywhere and in commerce for the
services in each class of November 1996.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76334331 and 76334334
2
for others" in International Class 35, "transportation of coal by
train; delivery of coal by train; and storage of coal" in
International Class 39 and "processing of coal, namely, providing
operating personnel and support services" in International Class
40.
Registration has been finally refused in each case
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant's marks, when applied to its services,
so resemble the following marks, which are owned by different
registrants for the services indicated below, as to be likely to
cause confusion, mistake or deception:
(i) the mark "NEXGEN," which is
registered on the Principal Register, in
standard character form, for both "utility
services, namely, the transmission,
distribution and supply of electricity" in
International Class 393 and "generation of
electricity" in International Class 40;4 and

(ii) the mark "NEXGEN FUELING," which is
registered on the Principal Register, in
standard character form, for among other
things "installation of gas or liquefied gas
distribution systems including installation
of metal tubing, vacuum insulated pipe, metal
pipe fittings, cryogenic pumps, and
electrical controllers, and metal fluid
storage tanks, namely, tanks for bulk storage
of gasses and liquefied gasses" in
International Class 37 and "design for others
in the field of gas or liquefied gas systems"
in International Class 42.5

3 Reg. No. 2,837,580, issued on May 4, 2004 to Dale Vince (a citizen of
the United Kingdom), which is based on European Community Reg. No.
1377670, which issued on January 9, 2001.

4 Reg. No. 2,754,804, issued on August 26, 2003 to Dale Vince (a
citizen of the United Kingdom), which is based on European Community
Reg. No. 1377670, which issued on January 9, 2001.

5 Reg. No. 2,737,770, issued on July 15, 2003 to Chart Inc., which sets
forth a date of first use anywhere and in commerce for the services in
Ser. Nos. 76334331 and 76334334
3

Applicant, in each case, has appealed. Briefs have
been filed, but an oral hearing was not requested. Due to the
similarity of the record and issue of likelihood of confusion in
each instance, the appeals have been consolidated as requested by
the Examining Attorney. We reverse the refusal to register in
each case.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
or services and the similarity of the marks.6 Moreover, due to
the nature of the services at issue herein, another significant
factor is the conditions under which and buyers to whom sales are
made, i.e., "impulse" versus careful, sophisticated purchasing.

each class of January 2001. The word "FUELING" is disclaimed. While
such registration also covers "metal tubing; metal pipe featuring
vacuum insulation; metal pipe fittings; [and] metal fluid storage
tanks, namely, tanks for bulk storage of gasses and liquefied gasses"
in International Class 6 and "trailers, namely, tankers for the
transport of liquefied gasses" in International Class 12, it is
assumed that the refusal to register is limited to the services in
International Classes 37 and 42 inasmuch as the Examining Attorney has
made no argument that confusion is likely from contemporaneous use of
applicant's mark for its services and use of the mark "NEXGEN FUELING"
for the goods in International Classes 6 and 12.

6 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and differences
in the marks."
Ser. Nos. 76334331 and 76334334
4
Turning first to consideration of the respective marks,
there is no question that applicant's marks are the same as or
substantially identical to the registrants' marks in sound,
appearance, connotation and commercial impression due to the
shared term "NEXGEN." Applicant, in fact, does not contend
otherwise. Instead, applicant argues in its briefs that there is
no likelihood of confusion because its marks are "part of a
family of registered NEXGEN and NEXGEN and design marks used in
connection with coal related goods and services (namely, mining
and mineral exploration and production services, and mining
equipment), none of which have created a likelihood of confusion
with the marks shown in the Cited Registrations."
While the Examining Attorney has failed to address such
argument in her briefs, suffice it to say that applicant's
contention that there can be no likelihood of confusion because
the marks which it seeks to register are part of its family of
"NEXGEN" and NEXGEN" and design marks fails for a number of
reasons, both factual as well as legal. According to applicant,
its asserted "family of marks include[s] the following registered
[service marks and] trademarks: NEXGEN (Registration No.
2,792,274); NEXGEN and design (Registration No. 2,792,273);
NEXGEN (Registration No. 2,787,140); and NEXGEN and design
(Registration No. 2,787,141)." Information concerning such
registrations was made of record by applicant with its request
for reconsideration of the final refusal in each of these appeals
and shows, inter alia, that the registrations respectively are

Ser. Nos. 76334331 and 76334334
5
for the following services and goods: "mining and mineral
exploration services" in International Class 42; "mining and
mineral exploration and production services" in International
Class 42; "mining equipment, namely, machines for the extraction
of minerals and other substances of value from the earth" in
International Class 7; and, likewise, "mining equipment, namely,
machines for the extraction of minerals and other substances of
value from the earth" in International Class 7. Although no
other information was provided concerning its alleged family of
marks, applicant nonetheless contends that:
Applicant has spent significant amounts
in advertising and promotions of its goods
and services containing these marks and, as a
result, has firmly established the brand and
consumer recognition of its marks within the
relevant industry. This extensive public
recognition of Applicant's family of marks
associated with mining and mineral related
goods and services has resulted in vast
public recognition of Applicant, its marks
and its products within the relevant
industry. This recognition results in the
public distinguishing between the
[Applicant's] Mark[s] and the marks contained
in the Cited Registrations.

As explained in J & J Snack Foods Corp. v. McDonald's
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-92 (Fed. Cir. 1991):
A family of marks is a group of marks
having a recognizable common characteristic,
wherein the marks are composed and used in
such a way that the public associates not
only the individual marks, but the common
characteristic of the family, with the
trademark owner. Simply using a series of
similar marks does not of itself establish
the existence of a family. There must be a
recognition among the purchasing public that
the common characteristic is indicative of a
common origin of the goods. ....

Ser. Nos. 76334331 and 76334334
6
Recognition of the family is achieved
when the pattern of usage of the common
element is sufficient to be indicative of the
origin of the family. It is thus necessary
to consider the use, advertisement, and
distinctiveness of the marks, including
assessment of the contribution of the common
feature to the recognition of the marks as of
common origin.

The record herein, however, is devoid of any evidence showing
that applicant has in fact developed a family of marks containing
the term "NEXGEN" as the common characteristic or "family"
feature thereof.
Specifically, as explained in Land-O-Nod Co. v.
Paulison, 220 USPQ 61, 65-66 (TTAB 1983), in order to establish
the existence of a family of marks:
[I]t must be shown by competent
evidence, first, that ... the marks
containing the claimed "family" feature, or
at least a substantial number of them, were
used and promoted together ... in such a
manner as to create public recognition
coupled with an association of common origin
predicated on the "family" feature; and
second, that the "family" feature is
distinctive (i.e., not descriptive or highly
suggestive or so commonly used in the trade
that it cannot function as a distinguishing
feature of any party's mark).

Here, applicant has not submitted any evidence concerning its
sales or advertising and promotional expenditures under its
"NEXGEN" and "NEXGEN" and design marks, much less that it has
promoted such marks together in such a way as to create a family
of marks. All that applicant has done, instead, is merely to
present information that it owns four subsisting registrations
for the marks "NEXGEN" and "NEXGEN" and design. Such a showing
is an insufficient basis on which to predicate the existence of a
Ser. Nos. 76334331 and 76334334
7
family of marks. See, e.g., Hester Industries, Inc. v. Tyson
Foods, Inc., 2 USPQ2d 1646, 1647 (TTAB 1987); Consolidated Foods
Corp. v. Sherwood Medical Industries Inc., 177 USPQ 279, 282
(TTAB 1973); Polaroid Corp. v. American Screen Process Equipment
Co., 166 USPQ 151, 154 (TTAB 1970); and Polaroid Corp. v. Richard
Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421 (CCPA 1965).
Moreover, and in any event, it is pointed out that the
sole issue before us is whether the "NEXGEN" and "NEXGEN" and
design marks which applicant seeks to register for coal
procurement services, coal train transportation and delivery
services, coal storage services and coal processing services so
resemble either or both of the registrants' "NEXGEN" and "NEXGEN
FURLING" marks for, respectively, electric utility and generation
services and installation and design services for others of gas
or liquefied gas systems that confusion is likely. Consequently,
even if applicant were to demonstrate that it has established a
family of marks characterized by the term "NEXGEN," such would
not aid or otherwise entitle applicant to the registrations which
it seeks. See, e.g., Hornblower & Weeks Inc. v. Hornblower &
Weeks Inc., 60 USPQ2d 1733, 1737 (TTAB 2001); Baroid Drilling
Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1052 (TTAB
1992); and In re Lar Mor Int'l, Inc., 221 USPQ 180, 183 (TTAB
1983).
Applicant further argues in its briefs that confusion
is not likely because of the distinct differences in the services
at issue herein, asserting that:
Ser. Nos. 76334331 and 76334334
8
Similar to Applicant's other registered
marks, the [marks NEXGEN and NEXGEN and
design are] ... used in connection with coal
related ... services, as opposed to the (i)
liquefied gas and gas storage ... services
(in the case of Registration No. 2,737,770),
(ii) utility services for the transmission,
supply and distribution of electricity (in
the case of Registration No. 2,837,580), or
(iii) electricity generation services (in the
case of Registration No. 2,754,804) with
which the marks shown in the Cited
Registrations are used. These products are
vastly different and consumers within the
relevant industries are not likely to confuse
the source of these products, as evidenced by
the declarations submitted by Applicant.
Further, the facts that the trade channels
used by Applicant and the Registrants, and
the purchasing environment surrounding the
sale of the different products containing the
[Applicant's] Mark[s] and the marks contained
in the Cited Registrations are significantly
different also establishes that there will be
no likelihood of confusion between
Applicant's Mark[s] and Registrant's [sic]
Mark[s].

In particular, applicant insists that:
The fact that these differences in the
... services will not cause confusion is
demonstrated by (i) the Cited Registrations
themselves in that the USPTO, who first
granted registration of the [NEXGEN FUELING]
mark contained in Registration No. 2,737,770
... for use with goods and services in the
energy utility sector, subsequently granted
registration of the [NEXGEN] marks contained
in Registration Nos. 2,754,804 and 2,837,580
... also for use in connection with ...
services in the energy utility sector, (ii)
the fact that the USPTO has granted
Applicant's prior registrations for its ...
[NEXGEN and NEXGEN and design] marks despite
the existence of [two of the three] Cited
Registrations, and (iii) the fact that there
have been no known instances of actual
confusion. Further, the relevant purchasers
within the "energy utility sector" are
sufficiently able to distinguish between
Applicant's services and the ... services
with which the marks contained in the Cited
Ser. Nos. 76334331 and 76334334
9
Registrations are used. This is evidenced by
the declarations from members within the
relevant industries attached to Applicant's
most recent Response to Office Action. The
services ... with which the Mark[s] and the
marks in the Cited Registrations are used are
vastly different and, as a result, consumers
within the relevant industries are not likely
to confuse the source of these services ....

In addition, applicant maintains that confusion is
unlikely because the services at issue move in distinct channels
of trade and are purchased with care. According to applicant:
Applicant's distinct services move
through separate channels of trade that are
markedly different from those channels in
which ... services bearing the marks ... in
the Cited Registration normally move ....
The ... services identified by Registration
No. 2,737,770 are used by customers with gas
and liquefied gas storage needs and would
travel in the normal channels of trade for
... gas storage related goods and services.
The services identified by Registration Nos.
2,754,804 and 2,837,580 are used by the
general public and other customers who need
to consume electricity. In contrast,
Applicant's services are marketed only to
large corporate customers who desire to
purchase coal services rather than directly
to the general public or to customers with
specialized gas and liquefied gas needs.
These distribution channels used by the
target customers of Applicant and the owners
of the marks in the Cited Registrations are
markedly different. As a result, there will
be no confusion ... since any actual
purchaser would not encounter the marks in
the same channels of commerce.

.... As explained in Applicant's
various responses, the purchasing
environments surrounding purchasers of the
services bearing the [Applicant's] Mark[s]
and ... the marks contained in the Cited
Registrations are also dissimilar. The
services sold by Applicant are carefully
purchased. Applicant's services are out-of-
the-ordinary, expensive purchases made by
large corporate customers who need assistance
Ser. Nos. 76334331 and 76334334
10
with obtaining coal. These purchases are
deliberately made by sophisticated corporate
customers who typically negotiate such
purchases through long term contracts.
Presumably, the purchasers of the gas and
liquefied gas storage ... services sold by
the owner of the [NEXGEN FUELING] mark ... in
Registration No. 2,737,770 are similarly
sophisticated purchasers who carefully select
these ... services. When there is care
involved in making a decision to purchase
..., there is less likelihood of confusion.
Electronic Design & Sales Inc. v. Electronic
Data Sys. Corp., 21 U.S.P.Q.2d 1388, 1393
(Fed. Cir. 1992). The purchasers of
Applicant's coal related services are
conscientious and sophisticated and exercise
extra care and regard to purchasing such
services and unquestionably know the source
of such products. As a result, purchasers of
Applicant's services would not likely confuse
Applicant's services with the ... services of
the owners of the Cited Registrations. In re
N.A.D. Inc., 224 U.S.P.Q. 969, 971 (Fed. Cir.
1985); In re Ship. [sic], 4 U.S.P.Q.2d 1174,
1176 (TTAB 1987).

In support thereof, as indicated above, applicant has
made of record with its request for reconsideration of the final
refusal in each of these appeals the declarations, with exhibits,
of Bill Schafer, Jon E. Kelly and Marcus A. Wiley. Such persons,
applicant asserts, are "experts from within the relevant
industries who are familiar with Applicant's services and the
relevant ... services identified by the marks shown in the Cited
Registrations, the distinct channels of trade, and the relevant
consumers." The declaration of Bill Schafer, for instance,
provides in relevant part that he is "currently the Vice
President and General Manager of NexGen Highwall Mining Systems,
LLC, an affiliate of NexGen Resources Corporation ('NexGen') that
markets, distributes and manufactures highwall mining systems";
Ser. Nos. 76334331 and 76334334
11
that he has held such position "since March, 2001"; that formerly
he was "the Manager of Energy Services for IES Utilities, Inc.
('IES'), a company that (i) generates, transmits, distributes and
sells electric energy, [and] (ii) purchases, distributes,
transmits and sells natural gas"; that in such capacity, he "was
responsible for overseeing all fuel purchasing for virtually all
of IES's generating stations"; that as part of those
responsibilities, he "arranged for the purchase and the
transportation of both coal and natural gas" and thus he is
"familiar with all of the major producers of gas and coal" as
well as "all of the major transporters of each of these
commodities"; that as a result of his position at IES, he is
"also familiar with the marketing, distribution and purchasers of
electricity"; that formerly he was also "the Manager of Coal
Sales for ARCO Coal Company ('ARCO'), a company that provides
coal to customers across the United States and overseas"; that he
was "responsible for marketing ARCO's coal products" and thus he
is "familiar with coal purchasers" as well as "the procurement,
processing, transportation and sale of coal"; that formerly he
was additionally "the Director of Energy Services for Vitol Gas &
Electric ('Vitol'), an electric utility company located in
Boulder, Colorado," that in such capacity he "structured
transactions that involved coal, natural gas, and power" and
"worked closely with both providers and purchasers of each of
these commodities"; that as a result thereof, he is "very
familiar with the electric utilities industry"; and that he is
Ser. Nos. 76334331 and 76334334
12
also "familiar with the procurement, supply, storage and
transportation of both coal and natural gas."
In consequence of his "education, training and
employment, during the past twenty-five years," Mr. Schafer
further states that he has "become familiar with all aspects of
the (i) coal industry and, specifically with the procurement,
processing and transportation of coal, and with the purchasers of
these services, (ii) electric power utility industry including
the transmission, distribution and supply of electricity, and
(iii) natural gas utility industry including the purchase,
storage, distribution, transmission/transportation ... and sale
of natural gas"; that the owner of the cited registration for the
mark "NEXGEN FUELING," namely, "Chart, Inc. ('Chart')," uses such
mark "in connection with the sale and installation of equipment
for the storage, transportation and handling of gasses"; that
"Chart's products are metal pipes, fittings, trailer tanks and
storage tanks for gasses and liquefied gasses including
cryogenically liquefied gasses which are commonly known as to be
liquid oxygen, liquid nitrogen, and carbon dioxide"; that "[g]as
and liquefied gas are very different products from coal"; that
"[s]ince coal is a solid fuel, its handling and transportation
has little in common with the methods employed with liquids and
gasses"; that "[c]oal is generally transported via rail or barge
and rarely by truck and never in gas storage trailers"; that
"[c]oal is never stored in gas storage tanks like those sold by
Chart, and the metal tubing, pipes, and fittings that are sold by
Chart and other suppliers are not used with coal"; that given his
Ser. Nos. 76334331 and 76334334
13
"experience with and knowledge of the coal and utility
industries," he knows that "the purchasers of NexGen's coal
procurement, processing and transportation services are very
different than the purchasers of Chart's products and services,"
who "are liquefied natural gas ('LNG') fuel stations, and bus,
truck and engine manufacturers" and thus "are not also potential
purchasers of NexGen's coal procurement, processing and
transportation services"; that "Chart does not provide purchasing
and logistical delivery management of coal as a service to
industrial and utility coal consumers and, as a result, these
coal customers would never encounter Chart, its trademarks or its
goods or services that relate to gas and liquefied gas"; and
that, "[s]imilarly, NexGen's services do not relate, in any way,
to gas or liquefied gas products or services and, as a result,
the LNG gas fuel stations, the bus truck and engine
manufacturers, and other purchasers of Chart's gas related goods
and services would never encounter NexGen's coal services or
NexGen."
In addition, Mr. Schafer states that, given his
"specific knowledge of the electric power utility industry," the
owner of the cited registration for the mark "NEXGEN," namely,
"Dale Vince ('Vince')," uses his mark "in connection with the
generation, transmission, distribution and supply of
electricity"; that, "presumably, these services are sold to
electricity producers and consumers"; that "NexGen has never
generated electricity and its [coal] services are not sold or
marketed to electricity consumers"; that while "NexGen procures,
Ser. Nos. 76334331 and 76334334
14
processes and transports coal as a fuel to industrial and utility
coal companies," "[c]oal is widely used as an industrial fuel in
applications involving no electrical generation"; that
"[a]lthough coal is supplied to companies that generate
electricity, electricity is bought and sold in entirely different
markets and channels of trade than coal"; that "[t]he sale of
electricity necessarily uses different vendors, methods and
marketing strategies to attract electricity users than those
employed in the sale of coal to industrial companies"; that "the
services provided using the Vince mark are entirely different
than the services provided by NexGen and the customers of the
respective services are entirely different with no overlap"; and
that "the services identified by the NexGen marks are as
different form the ... services identified by the Vince and Chart
marks as the ... services identified by the Vince and Chart marks
are from each other."
The declaration of Jon E. Kelly similarly provides in
relevant part that he currently is "a mining engineer and mineral
economist and ... the Vice President of TUCCO, Inc., a company in
Amarillo, Texas that procures, stores and transports coal"; that
as a result of his "education and employment in the coal and
mining industries for the past thirty-eight years," he is "an
expert in these industries" due to his "expertise in coal mining
operations, oil sand mining and planning, industrial engineering
and cost estimation"; that during his career he has "negotiated
and administered many coal procurement contracts and coal
transportation contracts"; that he additionally has "specific
Ser. Nos. 76334331 and 76334334
15
knowledge about the oil and gas industry and about the energy
industry"; and that, in particular, due to his work "on projects
involving the Utah oil sand deposits," he "know[s] about the
procurement, storage, transportation, use and customers of oil
and gas" and, due to his work "on various energy projects in the
United States" and elsewhere, he has "specific knowledge about
the generation and distribution of electricity and about
electricity customers."
Mr. Kelly further declares that due to his "expertise
in [the] energy sector," he "know[s] that this industry is
segmented into a large number of industries"; that "[t]he coal
industry is vastly different from the oil and gas industry and
vastly different from the electric power industry"; that "[t]here
are a great number of separate industries that comprise the
general energy sector including the coal industry, alternative
energy industry, natural gas utilities industry, electric power
utilities industry, oil and gas industry, nuclear power industry
and others"; that "[t]he differences between the sectors are
considerable and include differences in the (i) commodities, (ii)
procurement of the ... commodities, (iii) storage of the ...
commodities, (iv) transportation of the commodities, (v)
marketing of the ... commodities, (vi) customers of the ...
commodities and the services or equipment related to these
commodities, (vii) means of transforming the ... commodities into
energy, and (viii) non-energy uses for the various commodities";
that "[a]s a result of these differences, the companies involved
in the various aspects of these industries (i.e., the mining or
Ser. Nos. 76334331 and 76334334
16
procurement companies, the storage and transportation companies,
the equipment producers and the purchaser[s]) tend to specialize
within their given industry"; that, in particular, "[c]oal is a
vastly different commodity from gasses or electricity"; that
"[c]oal is provided and procured using different methods than the
methods used to procure gas"; that "[c]oal is stored in a
different manner and using different storage devices than those
used with the storage of gas and the storage of electricity"; and
that "[t]he transportation and handling methods and equipment
used with coal, gas and electricity are all significantly
different."
Mr. Kelly additionally states that he is "aware that a
company called Chart, Inc. ('Chart') ... owns a ... registration
for [the mark] NexGen Fueling ... and that Chart purportedly uses
this trademark with the sale of gas storage tanks and fittings
and certain gas transportation equipment used to transport gasses
by truck"; that he is "also aware that an individual named Dale
Vince ('Vince') owns ... registrations for [the mark] NexGen ...
for use with the generation, transmission, distribution and
supply of electricity"; that as a result of his "expertise and
experience in the energy industry," he "believe[s] that the
relevant purchasers of NexGen Resources Corporation's
('NexGen's') coal related services, Chart's gas related ...
services, and Vince's electricity services" are "all different";
that "NexGen does not sell its coal services to the LNG fuel
stations, bus, truck or engine manufacturers or any other
purchasers of gas storage products and the purchasers of NexGen's
Ser. Nos. 76334331 and 76334334
17
coal services do not purchase gas storage tanks and equipment";
that "NexGen does not sell its coal services to the ultimate end
users of electricity (such as, businesses and individuals) who
purchase the services provided in connection with the use of
Vince's ... [services] and these end users of electricity do not
purchase NexGen's coal services"; and that, "[j]ust as the coal,
gas and electricity industries are separate and distinct, so are
the markets and consumers of these industries' different ...
services."
The declaration of Marcus A. Wiley states in pertinent
part that, among other things, he is "currently the Manager of
Wiley Consulting, LLC, a mining consulting company," as well as
"the General Manager and part owner of Madison Coal, LLC[,] a
company that acquired an interest in a small West Virginia coal
mine operation"; that he has "considerable knowledge about the
energy industry and, specifically[,] about the coal mining
industry, due to ... thirty-three years of experience" therein;
that he is "aware of NexGen Resources Corporation's coal
procurement, processing and transportation services and its ...
NexGen and NexGen and design" marks; that he has also "learned
that there is a company that manufactures gas storage tanks, gas
transportation equipment and fittings named Chart, Inc. ('Chart')
that uses the trademark NexGen Fueling, and that there is a
trademark ... NexGen that is owned by a man named Dale Vince for
use in connection with the generation, transmission, distribution
and supply of energy"; that "the customers of the kind of coal
procurement, transportation and processing services offered by
Ser. Nos. 76334331 and 76334334
18
NexGen Resources Corporation are not the same as the customers of
Chart's gas storage products or the customers who produce or
purchase electricity"; that "[c]oal and coal services are
typically sold to large specialized industrial corporate clients
such as power plants, iron and steel manufacturers and
corporations with industrial process heating needs," who "would
not have any exposure to the gas storage products sold by Chart
and[,] even if this were hypothetically possible, these are
sophisticated purchasers and would understand that Chart's gas
storage products were from a different source than NexGen
Resources Corporation"; that "purchases of the coal services
provided by NexGen Resources Corporation result from lengthy
negotiations and formal service contracts that cause the
purchasers of these coal services to know the service provider
intimately"; that "although these coal service consumers would
likely have a need to use electricity, ... these coal service
consumers are sophisticated corporations and would understand
that NexGen Resources Corporation is not the source of
electricity"; that "customers who purchase gas storage equipment
are not the types of customers who purchase coal procurement,
coal transportation or coal processing services" because "[t]hese
markets are distinct"; and that, "[l]ikewise, purchasers of
electricity do not purchase coal mining services, coal
transportation services or coal processing services."
The Examining Attorney, however, properly contends that
likelihood of confusion is determined on the basis of the
services as respectively identified in the application and cited
Ser. Nos. 76334331 and 76334334
19
registrations, citing Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002), and In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993). She maintains in her briefs that, in view thereof, an
applicant may not restrict the scope of its services or those in
the cited registrations "by extrinsic argument or evidence" and
thus:
[I]n the present case, evidence and/or
argument relating to the position that
applicant's purchasers are sophisticated
corporate buyers, unlike registrants'
purchasers, must be disregarded since there
is no restriction in the application[s] or
registrations limiting the services to
particular trade channels or classes of
customers. The evidence submitted in
applicant's declarations must also be
disregarded because it focuses on the nature
of the services that both registrants
currently provide, and not on registrants'
actual rights to use their marks based on the
identification[s] in the registrations.

With respect to the cited "NEXGEN" registrations, she
insists that applicant's "coal purchasing, processing,
transportation, delivery, and storage services are highly similar
to" the registrant's "utility services, namely, the transmission,
distribution and supply of electricity" and the "generation of
electricity," thereby engendering a likelihood of confusion from
contemporaneous use by applicant of marks which are the same as
or substantially identical to the registrant's mark due to the
shared term "NEXGEN." According to the Examining Attorney:
Applicant provides coal services to
utility companies that use coal to generate
electricity. These services include services
that otherwise would be performed in-house by
utility companies. For example, applicant's
Ser. Nos. 76334331 and 76334334
20
marketing brochure states that utility
companies benefit from applicant's services
because utility companies can use applicant's
services to "out-source non-generating
functions" and "concentrate on the core
business of generating electricity." See
Applicant's specimen submitted June 12, 2003
("Specimen"). Registrant's mark is
identified for use with the "generation of
electricity."

Applicant markets itself as an upstream
substitute service provider to these
companies that provide electricity generation
services. See Specimen (enclosing press
release announcing purchase of coal company
by applicant's affiliate in a deal favorable
to a local utility company). The
[respective] marks are therefore found in
close proximity to each other in the
electricity provision trade channel.

The Examining Attorney further argues that, "[e]ven if
applicant does not actually supply coal to registrant, ...
applicant's proposed service mark[s] would give rise to the
likelihood that consumers of registrant's services would believe
that applicant's coal services were the source of or associated
with registrant's utility generation and transmission services."
According to the Examining Attorney:
"Likelihood of confusion is not limited
to purchasers ... but may occur at any stage
of the distribution process." In re Decombe,
9 USPQ2d 1812, 1815 (TTAB 1988). This
encompasses all those who may come into
contact with the NEXGEN marks, for example[,]
someone who sees applicant's mark[s] on
applicant's trains. If that person has a
negative impression of the mark[s] based on
applicant's use of the mark[s] in commerce,
this may carry over into their decision to
purchase registrant's utility services.
Permitting registration of identical marks
for similar services found in the same trade
channels gives rise to the danger that the
good will of the owner [of] a registered mark
will be harmed by possible negative
Ser. Nos. 76334331 and 76334334
21
impressions associated with the other mark in
the marketplace. See Scarves by Vera, Inc.
v. Todo Imports, Ltd.[,] 544 F.2d 1167, 1172
(2d. Cir. 1976).

As to the cited "NEXGEN FUELING" registration, the
Examining Attorney urges that confusion is likely with
applicant's "NEXGEN" marks because:
Registrant's identified [services of
the] installation of gas or liquefied gas
distribution systems and design for others in
the field of gas or liquefied gas travel in
the same trade channels as applicant's
identified coal-related services. Even if
the technical aspects of the provision of raw
materials to utility companies differ, they
both compete for utility companies' business.
See Evidence from February 24, 2005 Office
Action ("... there are basically two options
for every new power plant: burn natural gas
or burn coal"). Applicant's submitted
marketing materials even state that it
provides utility companies with the ability
to "receive coal (like gas) at the burner
tip." See Specimen.

....

Both marks are associated with the
distribution of the raw materials used in
energy production. Registrant's mark is
identified for use with [the services of]
designing and installation of gas
distribution systems. Applicant's coal
purchasing, processing, transportation,
delivery, and storage services also address
the logistics of delivering raw materials
used in energy production to utility
companies.

Applicant's Specimen includes a press
release quoting the President of NexGen
Resources as describing applicant as "a
natural resource management and development
firm that capitalizes on its expertise in the
energy and minerals industry." See Specimen.
Purchasers are therefore likely to believe
applicant's services are related to [the
cited registrant's NEXGEN FUELING] ...
services because applicant does not
Ser. Nos. 76334331 and 76334334
22
distinguish between coal and gas in marketing
materials supplied to potential purchasers.

Contrary, however, to the immediately preceding
assertion by the Examining Attorney, applicant in the brochure
submitted as its specimen of use in each of its applications does
in fact "distinguish between coal and gas in marketing materials
supplied to potential purchasers" by stating, in the section
entitled "A Word from the President" of applicant, that: "We are
'coal people' who believe in coal for energy" and "[t]he NexGen
Coal Services Group can provide a source of innovation and cost-
reducing measures s they relate to your coal-supply needs."
Based, therefore, upon the evidence presented and careful
consideration of the arguments advanced, we find that on this
record confusion is not likely.
To state the obvious, the term shared by the marks at
issue, namely, "NEXGEN," is highly suggestive of "next
generation," which is indicative of the latest or most modern
developments and innovations in the various services at issue
herein. In fact, in applicant's brochure, applicant repeatedly
touts its "NEXGEN" services as: "'The Next Generation of Coal
Services.'" Referring, for instance, to "THE NEXGEN DIFFERENCE,"
such brochure states that (emphasis added):
Deregulation of the utility industry and
the resulting competitive forces have caused
power companies to reconsider their
conventional ways of conducting business.
They must now consider all options to reduce
costs and redeploy capital.

In response to these changes facing
utilities, the NexGen Coal Services Group
provides a range of services encompassing
Ser. Nos. 76334331 and 76334334
23
coal procurement, coal transportation and
coal yard operations, which can include
owning and operating your coal facilities.

....

NexGen can offer you such value-added
coal supply services, which may make the
difference during this era of deregulation
and competition. As our name implies, NexGen
is providing "the Next Generation of Coal
Services."

While, to be sure, the term "NEXGEN" likewise conveys
the same highly suggestive connotation when used in connection
with, respectively, the registrants' "NEXGEN" utility services,
namely, the generation, transmission, distribution and supply of
electricity and "NEXGEN FUELING" installation and design services
with respect to gas or liquefied gas distribution systems, the
use of such term by applicant in connection with its "NEXGEN"
marks does not necessarily result in a likelihood of confusion
because consumers will not necessarily find applicant's various
coal procurement, train transportation and delivery, storage, and
processing services to be commercially related to the services of
each of the registrants simply by the fact that the respective
services are marketed and sold under marks that share such term.
Stated otherwise, the fact that the registrants' "NEXGEN" and
"NEXGEN FUELING" services can coexist on the Principal Register
without a likelihood of confusion is some indication that
applicant's "NEXGEN" specifically different services can likewise
coexist.
It is of course well settled, as a general proposition,
that services nonetheless need not be identical or even
Ser. Nos. 76334331 and 76334334
24
competitive in nature in order to support a finding of likelihood
of confusion. Instead, it is sufficient that the services 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 under 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 entity or provider. See, e.g., Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978); and
In re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978). In this case applicant has established,
however, that contrary to the Examining Attorney's speculative
contentions, the respective services typically will not be
encountered by the same classes of purchasers under circumstances
conducive to a likelihood of confusion.
In particular, as pointed out by applicant, the
services at issue herein are specifically different and are often
purchased exclusively by sophisticated and highly discriminating
consumers. While, in the case of the "NEXGEN" utility services,
namely, the generation, transmission, distribution and supply of
electricity, offered by one of the registrants, the record
confirms that electricity may be generated either by the burning
of coal or natural gas, it is also clear that the procurement of
coal, its transportation and delivery by train, the storage
thereof, and various coal processing services have nothing in
common with the supply of natural gas, including installation and
design services with respect to natural gas or liquefied natural
Ser. Nos. 76334331 and 76334334
25
gas distribution systems. Thus, other than the fact that coal
and natural gas are used as fuels to generate electricity, the
sale and provision of such commodities have essentially nothing
in common inasmuch as they move in different channels of trade
and generally are not purchased by the same customers.
Specifically, as established by the declarations
furnished by applicant, coal is generally a solid fuel which is
transported by rail or barge; it is rarely transported by truck
and is never shipped in gas storage trailers or stored in gas
storage tanks of the kinds utilized in the gas and liquefied gas
distribution systems designed and installed by registrant Chart
Inc. under its "NEXGEN FUELING" mark. In fact, in the case of
the latter's liquefied natural gas distribution systems, such
systems are sold to fueling stations for operators of fleets of
buses, trucks and refuse vehicles and to manufacturers of buses,
trucks and engines, none of which would have any apparent need to
utilize the coal purchasing, processing, train transportation,
train delivery, and storage services provided by applicant under
its "NEXGEN" and "NEXGEN" and design marks. Similarly, the
declarations submitted by applicant demonstrate that services
constituting the generation, transmission, distribution and
supply of electricity, such as those rendered under the "NEXGEN"
mark by registrant Dale Vince, are sold to electricity producers
and other customers for electric power, such as businesses and
ordinary consumers. Electricity, however, is purchased in
entirely different markets and channels of trade than coal and,
thus, the ultimate end-use customers of the services provided by
Ser. Nos. 76334331 and 76334334
26
registrant Dale Vince would usually not have any need for or
otherwise encounter the coal purchasing, processing, train
transportation, train delivery, and storage services rendered by
applicant under its "NEXGEN" and "NEXGEN" and design marks.
Applicant nevertheless acknowledges, in the declaration
of Marcus A. Wiley, that "[c]oal and coal services are typically
sold to large specialized industrial corporate clients such as
power plants, iron and steel manufacturers and corporations with
industrial process heating needs" and that, not surprisingly,
such customers "would likely have a need to use electricity."
However, as applicant further points out in such declaration,
"these coal service consumers are sophisticated corporations and
would understand that NexGen Resources Corporation is not the
source of electricity" given that "purchases of the coal services
provided by NexGen Resources Corporation result from lengthy
negotiations and formal service contracts that cause the
purchasers of these coal services to know the service provider
intimately." Although the Examining Attorney, citing In re
Decombe, supra at 1814-15, properly notes in her briefs that
"[t]he existence of sophisticated consumers in a particular field
does not necessarily mean that they are sophisticated or
knowledgeable in the field of trademarks or immune from source
confusion," the declaration of Jon E. Kelly provides that, in
this instance, the "energy sector" is not one field but many
diverse fields. Specifically, according to Mr. Kelly, the energy
sector "is segmented into a large number of industries," with the
result that "[t]he coal industry is vastly different from the oil
Ser. Nos. 76334331 and 76334334
27
and gas industry and vastly different from the electric power
industry." Plainly, therefore, purchaser sophistication in each
of such separate industries can serve to minimize, if not to
preclude, any likelihood of confusion from occurring.
Moreover, there is nothing in the record which shows
that the particular individuals who would be responsible for
purchasing applicant's coal procurement services for power plants
and other large, specialized industrial entities would also be
the same group of buyers who would select and purchase services
involving the generation, transmission, distribution and supply
of electricity for those firms. As noted, for example, by our
principal reviewing court in Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391
(Fed. Cir. 1992), it is error to deny registration simply because
an applicant markets and sells its services in one (or more) of
the same fields (e.g., what the Examining Attorney has variously
characterized in this appeal as "electricity provision" and
"energy production"7) as those utilized by a registrant for its
services without also determining who are the relevant purchasers
in instances of common institutional customers. Here, the mere
purchase by the same institutions of both (i) applicant's s coal
procurement services, namely, purchasing, train transportation

7 It is settled in this regard that while a term may be found which
encompasses the services at issue, such does not mean that customers
will view the respective services as commercially or otherwise closely
related in the sense that they will assume that they emanate from or
are associated with a common source. See, e.g., General Electric Co.
v. Graham Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977); and Harvey
Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB
1975).

Ser. Nos. 76334331 and 76334334
28
and delivery, storage, and processing, under its "NEXGEN" and
"NEXGEN" and design marks and (ii) registrant Dale Vince's
utility services, namely, the generation, transmission,
distribution and supply of electricity, under his "NEXGEN" mark,
does not, of itself, establish similarity of trade channels or
overlap of customers. Any likelihood of confusion must, instead,
be shown to exist not in a purchasing institution but in a shared
customer or purchaser. Thus, as our principal reviewing court
has cautioned in this regard that:
We are not concerned with mere theoretical
possibilities of confusion, deception, or
mistake or with de minimis situations but
with the practicalities of the commercial
world, with which the trademark laws deal.

Id., quoting from Witco Chemical Co. v. Whitfield Chemical Co.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g, 153
USPQ 412 (TTAB 1967).
As set forth in Astra Pharmaceutical Products, Inc. v.
Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 791 (1st
Cir. 1983), for a likelihood of confusion to exist, "it must be
based on confusion of some relevant person; i.e., a customer or
user, and there is always less likelihood of confusion where
goods [or services] are expensive and purchased and used by
highly specialized individuals after careful consideration."
Here, the services at issue on their face are not only distinctly
different, but they clearly are very expensive and would be
bought, as indicated previously, only by highly knowledgeable,
discriminating and sophisticated purchasers after thorough
deliberation rather than on impulse. As our principal reviewing
Ser. Nos. 76334331 and 76334334
29
court has pointed out, such "sophistication is important and
often dispositive because sophisticated end-users may be expected
to exercise greater care." Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., supra at 21 USPQ2d 1392.
In consequence of the above, we conclude that customers
for applicant's procurement services, namely, the purchasing,
train transportation and delivery, storage, and processing of
coal, which are rendered under its "NEXGEN" and "NEXGEN and
design marks, would not be likely to believe, if they were to
encounter either registrant Dale Vince's services of the
generation, transmission, distribution and supply of electricity,
as provided under his "NEXGEN" mark, and/or registrant Chart
Inc.'s services of the installation of gas or liquefied gas
distribution systems and the design for others of gas or
liquefied gas systems, as provided under its "NEXGEN FUELING"
mark, that the respective services emanate from, or are sponsored
by or associated with, the same source.
Decision: The refusal under Section 2(d) is reversed
as to each application.