No. 77280981 (T.T.A.B. Sep. 3, 2009)

RAM Oil, Ltd. , LLP

Trademark Trial and Appeal BoardSep 3, 2009

No. 77280981 (T.T.A.B. Sep. 3, 2009)

Mailed: September 3, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re RAM Oil, Ltd., LLP ________ Serial No. 77280977 Serial No. 77280981 _______ Cline H. White of Tuggy Rosenthal Pauerstein Sandoloski Agather LLP for RAM Oil, Ltd., LLP. Katina S. Mister, Trademark Examining Attorney, Law Office 104 (Michael Baird, Managing Attorney). _______ Before Walters, Bergsman and Wellington, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: RAM Oil, Ltd., LLP (“applicant”) filed intent-to-use applications to register the mark RAM, in standard character form, for the following services: Fuel for motor vehicles, namely, gasoline and diesel, in Class 4 (Serial No. 77280977); and, Automobile filling station services, in Class 37 (Serial No. 77280981). The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77280977 Serial No. 77280981 2 mark is likely to cause confusion with the mark RAM ENERGY RESOURCES, in standard character form, for the following services: Oil and gas production services, in Class 40; and, Oil and gas exploration services, in Class 42.1 Registrant disclaimed the exclusive right to use the term “Energy Resources.” Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential 1 Registration No. 3331910, issued November 6, 2007. Serial No. 77280977 Serial No. 77280981 3 characteristics of the goods and differences in the marks”). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of Serial No. 77280977 Serial No. 77280981 4 the average customer, who retains a general rather than a specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). At the outset, we note that applicant’s mark RAM is similar to registrant’s mark RAM ENERGY RESOURCES to the extent that both marks share the word “Ram,” an arbitrary word when used in connection with oil and gas related goods and services. Applicant contends, however, that registrant’s use of the term “Energy Resources” distinguishes the marks because “Energy Resources” “alerts and describes to a consumer the nature of Registrant’s services.”2 In this regard, it is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Thus, we find the word “Ram” is the dominant 2 Applicant’s Briefs, p. 2. Serial No. 77280977 Serial No. 77280981 5 portion of registrant’s mark because the word “Energy Resources” is descriptive when it is used in connection with oil and gas exploration and production services. Therefore, the word “Ram” is accorded more weight than the term “Energy Resources” in our comparison of the marks. In re National Data Corp., 224 USPQ at 751. The significance of the word “Ram” as the dominant element of registrant’s mark is further reinforced by its location as the first part of the mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word). We are not persuaded that the addition of the term “Energy Resources” to registrant’s mark is sufficient to differentiate applicant’s mark from the registered mark in Serial No. 77280977 Serial No. 77280981 6 any meaningful way. As indicated above, the term “Energy Resources” is descriptive when used in connection with registrant’s oil and gas exploration and production services thereby making the word “Ram” that part of the mark on which consumers will focus their attention. Moreover, likelihood of confusion has frequently been found where contested marks, if used in connection with related products and services, involve one mark which consists of a single word and another which is comprised of that same word followed by a second term. See Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY for dresses is likely to cause confusion with LILLI ANN for dresses); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994) (ULTRA for gasoline likely to cause confusion with ULTRA LUBE for lubricating oils and greases); Corporate Fitness Programs Inc. v. Weider Health and Fitness Inc., 2 USPQ2d 1682 (TTAB 1987) (SHAPE for fitness magazines is likely to cause confusion with SHAPE WRITEUP for physical fitness newsletters); In re Dennison Manufacturing Co., 229 USPQ 141 (TTAB 1986) (GLU STIC for adhesives is likely to cause confusion with UHU GLU STIC for adhesives); In re United States Shoe Corporation, 229 USPQ 707 (TTAB 1985) (CAREER IMAGE for women’s clothing stores and women’s clothing is likely to cause confusion Serial No. 77280977 Serial No. 77280981 7 with CREST CAREER IMAGES for clothing); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY DRUM for hairdressing and conditioner is likely to cause confusion with EBONY for cosmetics). In view of the foregoing, we find that applicant’s mark RAM is similar to registrant’s mark RAM ENERGY RESOURCES in terms of appearance, sound, meaning, and commercial impression. B. The similarity or dissimilarity and nature of the goods and services described in the applications and registration. Applicant is seeking to register its mark for gasoline and diesel fuel for automobiles and automobile filling station services. It is well settled that applicant’s goods and services and registrant’s services do not have to be identical or directly competitive to support a finding that there is a likelihood of confusion. It is sufficient if the respective products and services are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re Serial No. 77280977 Serial No. 77280981 8 International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). 1. Gasoline and diesel fuel for motor vehicles. The examining attorney submitted one use-based, third- party registration for gasoline and/or diesel fuel and oil and gas exploration and/or production services: Registration No. 3394038 for the mark HESS.3 A third-party registration which individually covers a number of different goods and services that is based on use in commerce may have some probative value to the extent that it serves to suggest that the listed goods and services are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). One third-party registration is not sufficient to prove that that gasoline and diesel fuel and oil and gas production and exploration services emanate from the same source. Accordingly, we find that the examining attorney has not established that gasoline and diesel fuel and oil 3 It is not clear why the examining attorney included Registration No. 3018384 for the mark AQUILA and Registration No. 1229176 for the mark ERGON. While both registrations include fuel oil, neither include oil and gas exploration and/or production services. Also, Registration No. 3209865 for the mark BP and design is not based on use; it was registered under Section 44 of the Trademark Act. Accordingly, these registrations have not factored into our analysis. Serial No. 77280977 Serial No. 77280981 9 and gas exploration and production services are related for purposes of our likelihood of confusion analysis. 2. Automobile filling station services. The examining attorney submitted excerpts from the websites of Murphy Oil Corporation (murphyoilcorp.com), BP (bp.com), Chevron (chevron.com), Marathon Oil Corporation (marathon.com), and Conoco Phillips Company (conocophillips.com) to show that these companies are engaged in oil and gas exploration and production, as well as rendering automobile service station services.4 In addition, the examining attorney submitted one third-party registration that included gasoline service station services, oil and gas drilling and extraction services, and the processing and production of oil, gas and fuels: Registration No. 3394038 for the mark HESS.5 The websites submitted by the examining attorney demonstrate that oil and gas exploration and production services and automobile filling station services may 4 We do not include the Shell website (shell.com) in our analysis because the excerpt provided does not clearly state that the company renders automobile filling station services. The website merely states the “Oil Products organization comprises a number of downstream businesses,” including retail. It is not clear what products are sold retail or whether those products are sold in automobile filling stations. 5 As indicated in Note 3, Registration No. 3209865 for the mark BP and design is not based on use; it was registered under Section 44 of the Trademark Act. Accordingly, we have not given it any consideration. Serial No. 77280977 Serial No. 77280981 10 emanate from a single source. In view thereof, we find that the examining attorney has established that these services are related for purposes of our likelihood of confusion analysis. C. The similarity or dissimilarity of likely-to-continue trade channels and classes of consumers. Because there are no limitations as to channels of trade or classes of purchasers in the description of goods and services in either application or the cited registration, it is presumed that applicant’s gasoline and diesel fuel for motor vehicles and automobile filling station services and registrant’s oil and gas exploration and production services move in all channels of trade normal for those goods and services, and that they are available to all classes of purchasers for the listed goods and service. In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Unfortunately, neither the examining attorney, nor applicant, submitted any evidence regarding the normal channels of trade or classes of consumers for the goods and services at issue. Oil and gas exploration and production services are different from gasoline and diesel fuel and automobile filling station services. In its briefs, applicant explains that oil and gas exploration “is the search by Serial No. 77280977 Serial No. 77280981 11 petroleum and geophysicists for hydrocarbon deposits beneath the Earth’s surface, such as oil and natural gas,” and that oil and gas production “is the means by which oil and gas is extracted from beneath the Earth’s surface.”6 The examining attorney did not challenge this explanation; she only contends that there is a relationship between the goods and services because they are in the same industry. Because of the different nature of the goods and services, it is logical to infer that how and to whom these goods and services are sold are likely to be different. While it is reasonable to assume that consumers contracting for oil and gas exploration and production services will also use gasoline and diesel fuel and service station filling services, as discussed below, consumers of oil and gas exploration and production services are knowledgeable about oil and gas exploration and production, the sources of such services, and will exercise a high degree of care when contracting for such services. In view thereof, we find that the examining attorney has not established that the goods and services at issue move in the same channels of trade or that they are sold to the same or overlapping classes of consumers, with the exception of the careful and 6 Applicant’s Briefs, p. 3. Serial No. 77280977 Serial No. 77280981 12 knowledgeable purchasers of oil and gas exploration and production services. D. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. While applicant’s gasoline and diesel fuel and automobile filling station services may be encountered by the ordinary, average consumer, as discussed above, the relevant purchaser or potential purchaser of registrant’s oil and gas exploration and production services would not be the ordinary, average consumer. Oil and gas exploration and production services by their very nature are unusual, complex and expensive activities. Therefore, we may safely assume that the relevant purchasers of oil and gas exploration and production services are knowledgeable and careful consumers who exercise a high degree of care prior to doing business in the field of oil and gas exploration and production. Since the only overlap in customers is the careful, sophisticated purchasers of registrant’s services, these are the only purchasers who are exposed to both marks. Therefore, we find that the degree of care likely to be exercised by purchasers of the relevant goods and services does not support a finding of likelihood of confusion. Serial No. 77280977 Serial No. 77280981 13 E. Balancing the du Pont factors. Despite the relationship established between automobile filling stations and oil and gas exploration and production, on this record, we find that the differences between the channels of trade, and classes of consumers, as well as the relatively sophisticated decision-making involved in purchasing registrant’s oil and gas exploration and production services warrant a finding that there is no likelihood of confusion. In reaching this conclusion, we have carefully considered the scant evidence in the records before us pertaining to the relevant duPont factors, as well as all of the arguments presented in the briefs. Based on the presumed differences in the channels of trade and classes of consumers, as well as the high degree of care exercised by registrant’s potential customers, we find that the examining attorney has not met her burden of establishing that confusion is likely. Language by our primary reviewing court is helpful in resolving the likelihood of confusion controversy in this case: We are not concerned with the 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. Serial No. 77280977 Serial No. 77280981 14 Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d at 1391, citing Witco Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969). Decision: The refusals to register are reversed.