Total Energy Corp.

Trademark Trial and Appeal Board

Aug 29, 2007

No. 75352844 (T.T.A.B. Aug. 29, 2007)

Mailed:
August 29, 2007
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Total Energy Corp.
________

Serial Nos. 75352844 and 753528451
_______

Ned W. Branthover, Esq. of Abelman, Frayne, Schwab for
Total Energy Corp.

Angela Micheli, Trademark Examining Attorney, Law Office
101 (Ronald Sussman, Managing Attorney).
_______

Before Walters, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On September 8, 1997, Total Energy Corp. (applicant)
filed two intent-to-use applications to register two
closely related marks on the Principal Register, the mark
TOTAL ENERGY and Design shown below (Serial No. 75352844)
and TOTAL ENERGY in standard-character form (Serial No.
75352845).

1 We have consolidated the appeals in these two applications for
decision in one opinion; the appeals were filed by the same party
for related marks, and they involve the same issues.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial Nos. 75352844 and 75352845

2

In each of the applications applicant has now
identified its services as:
distributorships featuring natural gas liquids and
natural gas, heating oil, coal, propane and
electricity to commercial, residential and
governmental end-users and distributors to end-users,
in International Class 35;

brokerage of energy, in International Class 36: and

distribution of natural gas liquids and natural gas,
heating oils, coal, propane and electricity to
commercial, residential and governmental end-users and
distributors to end-users, In International Class 39.

In each of the applications applicant has disclaimed
“ENERGY.”
In both applications, the Examining Attorney has
refused registration under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), based on a likelihood of confusion with
prior Registration No. 2131701 for the mark TOTAL in
standard-character form on the Principal Register for:
oil and gas well drilling; land vehicle service
station services; and car washing, in International
Class 37;

transportation of petroleum and petroleum-derived
products through pipelines, in International Class 39;
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oil and gas production, in International Class 40; and

oil and gas exploration; retail motor fuel supply
services; restaurant, cafeteria, and fast food
restaurant services; retail store services in the
field of petroleum, petroleum-derived products, and
related merchandise, in International Class 42.

The registration issued on January 27, 1998, and the
registration is active. When the Examining Attorney made
the refusals final applicant appealed.
During the prosecution of these applications, from
July 7, 1999 until July 29, 2004, the Examining Attorney
suspended action on the applications to permit applicant to
work out a consent with the owner of the cited
registration. Applicant has not submitted a consent in
either application.
Both applicant and the Examining Attorney have filed
briefs. In Application Serial No. 75352845 applicant filed
a motion requesting that we accept applicant’s late-filed
reply brief. We grant the motion; the reply brief is
essentially identical to the reply brief filed in the
related application.
We affirm the refusals.
I. Procedural Matters
Before addressing the merits of the case we wish to
clarify several points. In its main brief applicant
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identifies five additional TOTAL registrations also owned
by the owner of cited Registration No. 2131701 referenced
above. Applicant’s Brief at 1. Then, under the heading
”Procedural History,” applicant states, “In the first
official letter, issued on June 12, 1998, the Examining
Attorney refused the mark under Section 2(d). The
Examining Attorney based the refusal on some of the prior
TOTAL Registrations.” (Emphasis provided.) Id. at 4.
Here, applicant appears to refer to some or all of the five
registrations it identified on page 1 of its brief.
Later in the same section applicant states, “On July 19,
2004, the Examiner withdrew the suspension and continued
her final refusal pursuant to Section 2(d) and cited
Registration No. 2131701 for the mark TOTAL as an
additional basis under Section 2(d).” (Emphasis provided.)
Id.
Applicant’s account is inconsistent with the records
in these applications. In both applications, in the first
office actions both dated June 12, 1998, the Examining
Attorney refused registration under Trademark Act Section
2(d) based on Registration No. 2131701, and no other
registration. This is the only registration which was ever
cited in either of these applications, and it is the only
cited registration at issue in these appeals.
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The Examining Attorney did refer to certain of these
other registrations owned by the owner of Registration No.
2131701 in later actions in both applications, without
citing them, as evidence that the cited mark was a house
mark used by the registrant. The Examining Attorney also
suggests that these registrations show that the cited mark
is a member of a family of marks. We find these arguments
misplaced in the circumstances of this ex parte case, and
therefore, we have not considered them.
On this record we have no basis to determine whether
the cited mark is a house mark. Likewise, we have no basis
to determine whether the cited mark is a member of a family
of marks. In re Globe-Union Inc., 189 USPQ 158, 160 (TTAB
1975) (“[O]wnership of a number of registrations for marks
containing a common component is insufficient, per se, to
establish a ‘family of marks.’”). See generally J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991).
II. Likelihood of Confusion
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
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The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the services
of the applicant and registrant. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will consider each of the factors
as to which applicant or the Examining Attorney presented
arguments or evidence.
A. The Services
The services of applicant and the registrant need not
be identical to find likelihood of confusion under Section
2(d) of the Trademark Act. They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant consumers mistakenly
believing that the services originate from the same source.
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978). See also On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000).
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Furthermore, in comparing the services we must
consider the services as identified in the application and
registrations. See 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 [or
services] set forth in the application regardless of what
the record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of
goods [or services] are directed.”) See also 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 decided on the basis of the
respective descriptions of goods [or services].”).
Applicant does not mention the relationship between
applicant’s identified services and those identified in the
cited registration in any of its briefs. On the other
hand, the Examining Attorney argues that the services of
applicant and those in the cited registration are closely
related.
Applicant identifies its services broadly.
Applicant’s services include, among others,
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distributorships featuring and distribution of natural gas
liquids and natural gas, heating oil, coal, propane and
electricity to commercial, residential and governmental
end-users and to distributors to end-users.
The services identified in the cited registration are
also quite broad. The cited registration identifies, among
other services: land vehicle service station services;
transportation of petroleum and petroleum-derived products
through pipelines; retail motor fuel supply services;
retail store services in the field of petroleum, petroleum-
derived products, and related merchandise.
Thus, the services of applicant and registrant,
particularly as identified at the retail level, are closely
related, and even overlapping. For example, applicant’s
distribution of heating oil to residential and commercial
end-users could overlap with the retail store services in
the field of petroleum and petroleum-derived products
identified in the cited registration. Accoridngly we
conclude that the services of applicant and registrant are
overlapping and otherwise closely related.
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods or services are
identical. Century 21 Real Estate Corp. v. Century Life of
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America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
B. The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court
of Appeals for the Federal Circuit observed, “…in
articulating reasons for reaching a conclusion on the issue
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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
The Examining Attorney argues that the marks of
applicant and registrant are similar because they share the
same dominant, distinctive element, TOTAL, and because the
addition of the word ENERGY and the design are insufficient
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to distinguish the marks. We agree with the Examining
Attorney and conclude that applicant’s marks are highly
similar to the cited mark.
We acknowledge, as applicant argues, that the marks
must be considered in their entireties. However, certain
elements may be more significant or dominant than others in
that overall comparison. Here, applicant has disclaimed
the additional term “ENERGY” and used it generically in its
own identification of services. Generic matter, such as
ENERGY in this case, is less significant when comparing the
marks. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997).
Furthermore, we note that TOTAL, the word which the
marks share in common, and the only distinctive word
element in the marks of applicant and the mark in the cited
registration, is also the first word in the marks. Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988)(“…[it is] a matter of some importance
since 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 Maison Fondee En 1772, 73 USPQ2d at 1692
(“The presence of this strong distinctive term as the first
word in both parties’ marks renders the marks similar,
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especially in light of the largely laudatory (and hence
non-source identifying) significance of ROYALE.”).
In the case of the special form version of applicant’s
mark, we likewise find that the design element is
insufficient to distinguish applicant’s mark from the mark
in the cited registration. In In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987), the Board
stated, “Thus, if one of the marks comprises both a word
and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request
the goods or services. Kabushiki Kaisha Hattori Tokeiten
v. Scuotto, 228 USPQ 461, 462 (TTAB 1985).”
We reject applicant’s argument that the commercial
impressions of the marks differ because TOTAL is an
adjective as used in applicant’s marks as opposed to its
use as a noun in the cited mark. To the extent that there
may be a dictionary distinction in meanings, the
distinction is too obscure and too subtle to serve as the
basis for the conclusion that the marks differ in
commercial impression or otherwise.
We also reject applicant’s argument that the marks
differ because registrant is a French company and relevant
consumers will consequently perceive registrant’s mark as a
French word and use the French pronunciation, in contrast
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to the English pronunciation which would apply to
applicant’s mark. This argument is counter not only to
common sense but to bedrock principles of trademark law.
The simple facts are that the word TOTAL is identical in
the marks of both applicant and registrant and that there
is no basis to believe that U.S. consumers will pronounce
TOTAL differently in the TOTAL mark versus the TOTAL ENERGY
marks. Furthermore, trademarks identify anonymous sources.
Johnson & Johnson v. E. I. du Pont de Nemours and Company,
Inc., 181 USPQ 790, 791 (TTAB 1974) (“… [T]he function of a
trademark is to identify a single, albeit anonymous source
of commercial sponsorship of the goods [or services]…”).
Thus, it is improper to interpose an expectation that
relevant consumers will know the identity and nationality
of the registrant. Finally, there is no correct
pronunciation of a trademark. Centraz Industries Inc. v.
Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006).
Therefore, we reject appllicant’s argument based on
different pronunciations of the marks.
Applicant also argues that the registerd TOTAL mark is
entitled only to a narrow scope of protection due to the
existence of third-party registrations for TOTAL marks for
similar services. We also reject this argument.
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In its response to the first office actions in these
applications applicant identified two registrations, which
it again identifies in its briefs, as the basis for this
argument, namely, Registration No. 1908703 for the mark
TOTAL FLUIDS MANAGEMENT owned by Haliburton Energy
Services, Inc. for managing for others drilling, completion
and well development projects in the oil, gas and
geothermal industries and Registration No. 1346794 for the
mark TOTAL SYSTEMS APPROACH owned by Baker Hughes Inc. for
chemical treatment services for the oil and gas industry.
We note preliminarily that applicant has not submitted
copies of USPTO records related to these registrations and
that, on that basis, we would not ordinarily consider the
information. See In re Dos Padres Inc., 49 USPQ2d 1869,
1861 n.2 (TTAB 1998). However, in this case we will
consider the information applicant provided for whatever
probative value it warrants because the Examining Attorney
did not object to the evidence and thereby afford applicant
the opportunity to submit it in proper form.
In considering this evidence, we conclude that it is
insufficient to establish that TOTAL is a weak mark for the
services identified in the cited registration. Both
referenced registrations identify highly specialized
services rendered only to energy companies. In contrast
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the applications and registration at issue here identify
services which would also be rendered to the end users of
energy products. More importantly, under the circumstances
of this case, the two registrations are quantitatively
insufficient. While there is no magic number which would
be sufficient in all cases, we note that the evidence here
falls far short of the quantum of evidence in cases where
we have found the term in question weak. Cf. Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005). In Knight Textiles, in concluding that ESSENTIALS
was highly suggestive the Board relied primarily on a
dictionary definition for “essential-s” and “twenty-three
extant ESSENTIAL registrations on the register in the
clothing field registered to twenty-one different owners.”
Knight Textile, 75 USPQ2d at 1316.
In sum, we conclude that the marks of applicant and
registrant are highly similar and that the registered mark
is entitled to the same degree of protection which would be
accorded to any registered mark.
C. Other Arguments
Lastly, applicant argues that we should reverse the
refusals here because the owner of the cited registration
had opposed another application by applicant and, “…
withdrew its opposition to Applicant’s mark TOTAL ENERGY
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and Design, Application Serial No. 75/185,049… which hss
now been issued Registration No. 3,211,980.” Applicant’s
Reply Brief at 2. Applicant states further, “The fact that
Total SA withdrew the opposition to the same mark involving
the ‘brokerage of energy’ where the services associated
with the mark which is the subject of this ex parte appeal
are for the same brokerage services demonstrates that Total
S.A. does not believe confusion is likely.” Applicant’s
Brief at 7.
Here also, applicant has failed to submit a copy of
relevant USPTO records regarding this application and the
related proceeding. See In re Dos Padres Inc., 49 USPQ2d
at 1861 n.2. Applicant’s Reply Brief at 2. More
importantly, even if this evidence were made of record in
proper form, we would not consider it. In an ex parte
proceeding such as this, we will not consider extrinsic
unsupported arguments from applicant regarding the
registrant’s position. Cf. In re Bercut-Vandervoort & Co.,
229 USPQ 763, 764 (TTAB 1986) (extrinsic evidence and
argument suggesting trade-channel restrictions not
specified in application rejected).
Furthermoe, the Examining Attorney suspended action in
these applications for five years for the specific purpose
of permitting applicant to negotiate a consent with the
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owner of the cited registration. The applications, and
these appeals, were suspended again for an extended period
pending the disposition of the referenced opposition
proceeding. Thus, applicant has had every opportunity to
obtain and file an appropriate consent with regard to the
specific applications at issue in these appeals, and
applicant has not done so. Accordingly, we reject
applicant’s arugments based on the unsupported allegation
that registrant does not believe confusion is likely here.
III. Conclusion
In conclusion, we find that there is a likelihood of
confusion between applicant’s TOTAL ENERGY marks at issue
here and the TOTAL mark in the cited registration. We
conclude so principally because the marks are highly
similar and because the services of applicant and
registrant are overlapping or otherwise closely related.
Decision: The refusals to register the marks in both
applications under Section 2(d) of the Trademark Act are
affirmed.