SES Société d’Energie Solaire SADownload PDFTrademark Trial and Appeal BoardJan 29, 2009No. 79032663 (T.T.A.B. Jan. 29, 2009) Copy Citation Mailed: 29 January 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re SES Société d’Energie Solarie SA ________ Serial No. 79032663 _______ Anna Kurian Shaw of Hogan & Hartson L.L.P. for SES Société d’Energie Solarie SA. Kaelie E. Kung, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney). _______ Before Seeherman, Drost, and Ritchie, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On 01 November 2006, SES Société d’Energie Solarie SA (applicant) applied to register the mark shown below on the Principal Register for goods ultimately identified as: Apparatus for transforming solar energy into electricity, namely, photovoltaic solar modules, photovoltaic panels, photovoltaic captors in the nature of panels with integrated photovoltaic cells, all for producing of electricity in Class 9; and Non-metallic building materials and non-metallic transportable building materials, namely, roofing elements in the nature of non-metal glass tiles and facade elements in the nature of non-metal fascia with integrated photovoltaic elements and not skylights in Class 19. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 79032663 2 The application (Serial No. 79032663), a request for extension of protection under Section 66A of the Trademark Act, is based on International Registration No. 0907939 and it has a priority date of 10 July 2006. The application describes the mark as follows: “The color(s) orange, gray is/are claimed as a feature of the mark. The color orange appears in the word ‘Sun,’ the color gray appears on the words ‘TechTile.’” Applicant has submitted a disclaimer of the term “Tile.” See Response dated 17 August 2007 at 11. The examining attorney has now refused to register applicant’s mark on the ground that its mark is confusingly similar to three registrations owned by two different parties for the following marks and goods: I. No. 1197917 (issued 15 June 1982) Mark: SUN-TEK (typed or standard character) Goods: Skylights (Class 19) Owner: Sun-Tek Mfg. Inc. Status: Renewed II. No. 3013759(issued 08 November 2005) Mark: Goods: Metal skylights (Class 6) Owner: Sun-Tek Mfg. Inc. Ser No. 79032663 3 Disclaimer: Tube and Tubular Skylight1 III. No. 3111705 (issued 04 July 2006) Mark: Goods: Solar batteries; electric accumulators for vehicles; accumulator boxes; battery boxes; plates for batteries; batteries for lighting; batteries; battery chargers; galvanic batteries; electric batteries (Class 9) Owner: Wuxi Suntech Power Co., Ltd. The examining attorney originally cited and subsequently withdrew refusals based on the following registrations, which applicant discusses in its brief: No. 3139704 (issued 05 September 2006) Mark: SUNTILE (typed or standard character) Goods: Residential photovoltaic panel mounting system, comprised of solar cells, connectors, and a mounting structure, for use in providing heating and cooling load reduction and generating electricity, excluding batteries and battery accessories (Class 9) Owner: Sunpower Corp. No. 3156760 (issued 17 October 2006) 1 In view of the fact that the ‘917 and ‘759 registrations are commonly owned and the goods in the ‘759 registration are narrower and the mark in that registration contains additional words and a design, we will not address the likelihood of confusion separately for this registration. To the extent that there would be confusion with the ‘917 registration, it would serve little purpose to consider the ‘759 registration. If there is no likelihood of confusion with the ‘917 registration, there would similarly be no likelihood of confusion with the ‘759 registration. Ser No. 79032663 4 Mark: Goods: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, namely, solar collectors, solar heat collection panels and solar cells, sold as a unit (Class 11)2 Owner: SunTechnics Solartechnik GmbH After the examining attorney made the refusals final, this appeal followed.3 When there is a question of likelihood of confusion, we look to the factors set out by the Federal Circuit and its predecessor court in cases such as In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000); and In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). 2 The registration also includes services in Classes 37 and 42. 3 In its request for reconsideration, applicant submitted hundreds of copies of registrations that contain the words “Sun,” “Tech,” or “Tek.” With its appeal brief, applicant submitted an equally large number of similar registrations. It is not clear how the two submissions differ. The examining attorney has objected to any new materials submitted with the appeal brief. We sustain this objection and we will not consider the materials submitted with the appeal brief. 37 CFR § 2.142(d). To the extent that applicant has re-submitted materials that were previously of record, this was certainly unnecessary. Miss Universe L.P. v. Community Marketing Inc., 82 USPQ2d 1562, 1565 (TTAB 2007). Ser No. 79032663 5 Two important factors in likelihood of confusion cases concern the similarities of the marks and the relatedness of the goods. 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 characteristics of the goods and differences in the marks”). The first cited mark (the ‘917 registration) is for the mark SUN-TEK in typed or standard character form. Because it is shown without any stylization, we must assume that it can be displayed in a style that is identical or very similar to applicant’s stylization. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations with typed drawings are not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce”); Phillips Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 1378, 170 USPQ 35, 36 (CCPA 1971) (“The drawing in the [opposed] application shows the mark typed in capital letters, and … this means that [the] application is not limited to the mark depicted in any special form”). Therefore, the only differences between the marks are applicant’s addition of the word “Tile” and the different spellings of the term “Tech” or “Tek.” Ser No. 79032663 6 With regard to the term “Tile,” we are not persuaded that it would have much significance. Applicant’s goods include “non-metal glass tiles” and, therefore, the term is the generic name for its goods. In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“With respect to ALE, the Board noted that the term is generic and that the registrant disclaimed it in its registration. Because ALE has nominal commercial significance, the Board properly accorded the term less weight in assessing the similarity of the marks under DuPont. As a generic term, ALE simply delineates a class of goods”). The words “Tech” or “Tek” have virtually the same meaning inasmuch as they are phonetic equivalents and even their appearances are not dissimilar. Tech (tek), Informal –adj 1. technical 2. a technician 3. technology The Random House Dictionary of the English Language (unabridged) (2d ed. 1987) (examples omitted). We take judicial notice of this definition. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser No. 79032663 7 When we compare the marks SUN-TEK and , we find that they are very similar in sound, appearance, meaning, and commercial impression because they are dominated by the very similar term “Sun Tek” or “Sun Tech.” They would be pronounced the same, except for the generic term “tile” which, as stated above, does not have any source-indicating significance. Their meanings are also similar in that they both mean “Sun Technology.” Their appearances and commercial impressions are very similar because registrant’s mark can be displayed in a similar style and the slight difference in the spelling of “tech” is not significant. Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973) (“Side by side comparison is not the test”). Regarding the mark in Registration No. 3111705, we point out that the dominant terms in registrant’s and applicant’s marks are identical because they both contain the words “Sun” and “Tech.” As we discussed above, the addition of the generic word, “Tile,” would not have an impact on consumers. The only other difference is the stylization of the marks and the small design in registrant’s mark. Ser No. 79032663 8 These slight differences are hardly memorable and they are unlikely to lead consumers to understand that the marks identify goods from different sources. Plantronics Inc. v. Starcom Inc., 213 USPQ 699, 702 (TTAB 1982) (“Accepting that the marks have differences in sound and appearance, they are identical in respect of their dominant features i.e. the prefix ‘STAR.’ Similarity of dominant features must be accorded greatest weight”). Applicant argues that the “cited marks are entitled to a narrow scope of protection.” Brief at 10. Applicant maintains that “the Cited Marks themselves in addition to those primarily cited by the Examining Attorney are evidence of their own weakness, as the Examining Attorney initially cited five marks owned by four different owners and initially refused Applicant’s Mark on the grounds that such marks were similar to Applicant’s Mark that the goods associated with … such marks and Applicant’s Mark, respectively, were similar.” Brief at 9. We point out that applicant’s goods are in two classes (9 and 19) and the ‘705 goods are in Class 9 and the ‘917 goods are in Class 19. The goods in the withdrawn ‘760 registration are different from the goods in the ‘705 registration and the Ser No. 79032663 9 mark SUNTILE in the withdrawn ‘704 registration does not contain the word “Tech’ or “Tek.” These registrations do not show that the cited marks are so weak as to be entitled to a narrow scope of protection. We also emphasize that the issue here is whether applicant’s mark is confusingly similar to the registrants’ marks, not whether the registrants’ marks are confusingly similar to each other. Indeed, the CCPA has held that: “nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.” AMF Inc. v. American Leisure Products, 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). See also Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) (“[T]hird party registrations relied on by applicant cannot justify the registration of another confusingly similar mark”). In addition, the goods in the cited registrations are different from each other and more similar to the goods in the application. Finally, we point out that it has long been held that “even weak marks are entitled to protection against registration of similar marks, especially identical ones, for related goods and services.” In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982). Ser No. 79032663 10 Regarding the massive number of third-party registrations submitted with applicant’s request for reconsideration, the fact that there are numerous registrations that contain the words “sun” and “tech” or “tek” hardly demonstrates that the marks SUN-TEK or SUNTECH are weak marks. Also, these “registrations are not evidence of use of the marks shown therein. Thus, they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of similar marks in the marketplace, and as a result are able to distinguish between the … marks based on slight differences between them.” In re Jump Designs LLC, 80 USPQ2d 1370, 1375 (TTAB 2006). Furthermore, even if some of these registrations were confusingly similar to the cited registrations, as we indicated earlier, this would not support registering another confusingly similar mark. We add that a large percentage of these registrations are not active, and “a cancelled registration does not provide constructive notice of anything.” Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989). Furthermore, most of these registrations are for unrelated products. For example, many of the registrations are for sunglasses and other eyewear, musical recordings, gaming equipment, and computers. In re Melville Corp., 18 Ser No. 79032663 11 USPQ2d 1386, 1388-89 (TTAB 1991) (“Registrations for goods unrelated to the clothing field are irrelevant to our discussion”); SBS Products Inc. v. Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988) (“[E]ven if evidence of such third-party use were submitted, it would be of no aid to respondent herein where the third-party usage was for goods unrelated to either petitioner’s skin care products or respondent’s stuffing box sealant”); and Anderson, Clayton & Co. v. Christie Food Products Inc., 4 USPQ2d 1555, 1557 n.7 (TTAB 1987) (“The other third-party registrations relating to marks in unrelated fields are of no probative value”). Ultimately, applicant’s third-party registrations do not demonstrate that the cited registrations are entitled to only a very narrow scope of protection although we acknowledge that the terms “sun,” “tech,” and “tek” are hardly arbitrary terms when applied to many of the goods in the application and cited registrations. Therefore, we likewise find that the dominant feature of the marks is identical, and that the marks in their entireties are similar in sound, appearance, meaning, and commercial impression. Next, we consider the goods of applicant and the registrants. Ser No. 79032663 12 In order to find that there is a likelihood of confusion, it is not necessary that the goods or services on or in connection with which the marks are used be identical or even competitive. It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the same source or that there is some association between their sources. McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814- 15 (TTAB 2001). Applicant’s goods are in two classes. The Class 9 goods are photovoltaic solar modules and panels and photovoltaic captors in the nature of panels with integrated photovoltaic cells. The ‘705 registration includes solar batteries, batteries, battery chargers, galvanic batteries and electric batteries in Class 9. Applicant’s Class 19 goods include non-metal glass tiles and façade elements in the nature of non-metal fascia with integrated photovoltaic elements and not skylights while the goods in the ‘917 registration are identified as skylights in Class 19. The case law makes it clear that we must consider the goods as they are identified in the identification of goods. Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be Ser No. 79032663 13 decided on the basis of the respective descriptions of goods”). See also Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed”). Furthermore, it is not proper for the board to read limitations into a registrant’s identification of goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)(“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration”). While applicant argues that “neither the recitation of the goods [skylights] nor the specimens submitted in connection with the SUN-TEK and SUN-TEK TUBE TUBULAR SKYLIGHT registrations suggest that such goods incorporate photovoltaic cells,” inasmuch as the evidence shows that there are such skylights we cannot limit registrant’s goods to skylights without photovoltaic cells. Ser No. 79032663 14 The question then is whether the identified goods of applicant and the registrants are related. Applicant’s goods include photovoltaic4 solar modules, photovoltaic panels, and photovoltaic captors in the nature of panels and integrated photovoltaic cells, while the ‘705 registrant’s goods include solar, electric, and galvanic batteries. These goods are very closely related. See http://science.nasa.gov (“The first photovoltaic module was built by Bell Laboratories in 1954. It was billed as a solar battery”). The following third-party registrations suggest that applicant’s photovoltaic solar modules, panels, and captors and batteries are related. See Registration Nos. 2714655 (“solar photovoltaic modules… storage batteries”); 2890062 (“solar batteries, rechargeable batteries, and other batteries… photovoltaic modules, namely, solar panels”); 2788976 (“Batteries … photovoltaic solar modules”); 2920913 (“photovoltaic cells inverters and batteries”); and 3288135 (“photovoltaic solar modules; attenuators; batteries”). In re Infinity 4 “Photovoltaics is the direct conversion of light into electricity at the atomic level. Some materials exhibit a property known as the photoelectric effect that causes them to absorb photons of light and release electrons. When these free electrons are captured, an electric current results that can be used as electricity… A number of solar cells electrically connected to each other and mounted in a support structure or frame is called a photovoltaic module.” See http://science.nasa.gov. Ser No. 79032663 15 Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001) (“The registrations show that entities have registered their marks for both television and radio broadcasting services. 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 services listed therein, including television and radio broadcasting, 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)"). Next, we look at applicant’s roofing elements in the nature of non-metal glass tiles and façade elements in the nature of non-metal fascia with integrated photovoltaic elements and not skylights and the ‘917 registrant’s skylights. “Building-integrated photovoltaics (BIPV) are increasingly incorporated into new domestic and industrial buildings as a principal or ancillary source of electric power… Typically, an array is incorporated into the roof or walls of a building, and roof tiles with integrated PV cells can now be purchased.” www.wikipedia.com. Ser No. 79032663 16 Photovoltaic technology can be incorporated into skylights. See www.openenergycorp.com Sizes, shapes, and design configurations can be built to match virtually any specification available today, allowing for a direct substitution for monolithic, laminated, or insulated glass panels. It is often desirable to achieve translucency in photovoltaic skylight applications. See also Photon Technologies, Inc. website (“Semi- Transparent Solar Photovoltaic Glass Laminates can provide an Easy Way to add Electrical Power to your Skylight products… It is perfect for powering a small Ventilation Fan”); www.p2pays.org (“ENERGY STAR®-rated appliances are specified, and a building-integrated skylight photovoltaic (solar electric) system was installed on one building”); and www.openenergycorp.com (“It is often desirable to achieve translucency in photovoltaic skylight applications”). Photovoltaic technology can also be incorporated into roofing materials. www.wbdg.org (“A Building Integrated Photovoltaics (BIPV) system consists of integrating photovoltaic modules into the building envelope, such as the roof or the façade… [D]esigners may use PV to create unique daylighting features on façade, roofing, or skylight PV systems”). Many different forms of solar roof tiles are available on the market. The most common solutions are photovoltaic roof tiles with mono- or polycrystalline solar cells used together with the classical roof Ser No. 79032663 17 tiles of the same producer or photovoltaic roof shingle. www.pvresources.com. Building Integrated Photovoltaics (BIPV) System… Consider integrating Daylighting and Photovoltaic Collection: Using semi-transparent thin-film modules, or crystalline modules with custom-spaced cells between two layers of glass, designers may use PV to create unique daylighting features in façade, roofing, or skylight (PV) systems. www.wbdg.org. The same entity can provide both photovoltaic roofing materials and skylights. Hot Sun Engineering website (“Unisolar Roof & Solar Thermal Awnings” and “Semi- Transparent PV Skylight”) and Registration No. 1292289 (“prefabricated glass block roof panels; precast concrete floor and wall panels having glass block inserts, and tempered insulated glass for use in connection with passive solar skylights”). They are installed together. www.buildingsolar.com (Use of PV roofing materials and skylight material together). It is clear that applicant’s photovoltaic roofing materials could be used with photovoltaic skylights and indeed with non-photovoltaic skylights. Regarding the purchasers and channels of trade, there would be an overlap here. Absent restrictions in the identification of goods, we must assume that the goods travel in “the normal and usual channels of trade and Ser No. 79032663 18 methods of distribution.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). Therefore, we must assume that registrants’ and applicant’s goods are sold through all channels of trade and distribution including stores that would supply roofing materials and solar systems. Purchasers of skylights would likely purchase other roofing materials; batteries and photovoltaic solar modules, panels, and captors are also likely to be purchased by the same customers who are installing solar systems. Applicant argues that its goods are “normally marketed and provided to persons with a high degree of knowledge and familiarity concerning the goods and are not purchased impulsively.” Brief at 18. Here, the goods are related and the marks involve identical or phonetically similar words for related goods with only minor differences between the marks. It is likely that, under these circumstances, even sophisticated purchasers would assume that there was some relationship between the sources of the goods. In re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986) (“While we do not doubt that these institutional purchasing agents are for the most part sophisticated buyers, even sophisticated purchasers are not immune from confusion as Ser No. 79032663 19 to source where, as here, substantially identical marks are applied to related products”). When we consider all the evidence of record, we are convinced that there is a likelihood of confusion. Applicant’s mark and the registered marks SUN-TEK and are very similar. The goods are also related. Decision: The examining attorney’s refusals to register are affirmed. Copy with citationCopy as parenthetical citation