Utility Choice, LLC

Trademark Trial and Appeal Board

Oct 20, 2003

No. 76312652 (T.T.A.B. Oct. 20, 2003)

Mailed: October 20, 2003
Paper No. 11
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Utility Choice, LLC
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Serial No. 76312652
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Michael R. Schulman and John D. Wiseman of Locke Liddell &
Sapp LLP for Utility Choice, LLC.
Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______
Before Cissel, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Utility Choice, LLC
to register the mark UTILITY CHOICE ELECTRIC (UTILITY and
ELECTRIC are disclaimed) for “utility services, namely,
transmission of electricity to end-use customers.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
1 Serial No. 76312652 filed September 12, 2001, and asserting a
bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76312652
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ground that applicant’s mark so resembles the mark MY
UTLITY OF CHOICE (UTILITY is disclaimed), previously
registered for “utility services, namely, the transmission
of electricity,”2 that if used in connection with
applicant’s identified services, it is likely to cause
confusion, mistake or deception.
Applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities and
the dissimilarities between the services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Initially, we note that applicant does not dispute
that its services and registrant’s services are identical.
Thus, both applicant and the Examining Attorney have
directed their arguments to whether the marks are similar
2 Registration No. 2,206,681 on the Principal Register issued on
December 1, 1998.
Ser No. 76312652
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of dissimilar and the scope of protection to be afforded
registrant’s mark.
Applicant argues that the marks UTILITY CHOICE
ELECTRIC and MY UTITLITY OF CHOICE are different in sound
and appearance and points to the fact that its mark
consists of three words and eight syllables, whereas the
registrant’s mark consists of four words and seven
syllables. With respect to the connotation of the marks,
applicant maintains that registrant’s mark MY UTILITY OF
CHOICE is clearly a slogan that conveys the message that
registrant is “my utility company; this is the utility
company that I have selected and prefer”; whereas
applicant’s mark UTILITY CHOICE ELECTRIC conveys the
message that “you have the freedom to choose; we provide an
option of high quality electricity.” (Brief, pp. 4-5).
Further, applicant argues that registrant’s mark MY UTILITY
OF CHOICE is laudatory in nature and therefore is entitled
to only a limited scope of protection.
The Examining Attorney, on the other hand, argues that
applicant’s mark UTILITY CHOICE ELECTRIC is substantially
similar in overall commercial impression to registrant’s
mark MY UTILITY OF CHOICE, and that notwithstanding any
alleged weakness in registrant’s mark, it is still entitled
to protection from the registration of applicant’s mark.
Ser No. 76312652
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It is a well-established principle that when marks
appear on identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
We find that the marks MY UTILITY OF CHOICE and
ULTILITY CHOICE ELECTRIC are sufficiently similar in sound
appearance, connotation and overall commercial impression
that if applicant were to use the mark it seeks to
register, confusion would be likely to occur. The marks
are similar in sound and appearance because each is
dominated by the words UTILITY and CHOICE, in that order.
Although each mark contains other wording, this fact is not
sufficient to avoid a likelihood of confusion. When the
marks are viewed in their entireties, they have, in
addition to the similarities in appearance and
pronunciation, a strong similarity in connotation, namely,
that the electric services rendered there under are
preferred or preferable to others. In this regard, we
judicially notice the definition of the word “choice”
Ser No. 76312652
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submitted with the Examining Attorney’s brief:
choice: something that is preferred or
preferable to others; the best part of
something.3
Although there may be subtle differences in the
meanings of the marks when they are subjected to close
scrutiny, we do not believe that consumers will undertake
such an analysis. The test for likelihood of confusion is
not whether the marks can be distinguished when subjected
to a side-by-side comparison. Further, when evaluating
similarities between marks, the emphasis must be on the
recollection of the average purchaser, who normally retains
a general, rather than a specific, impression of
trademarks.
We recognize that registrant’s mark MY UTILITY OF
CHOICE has some laudatory significance as applied to
electric services. However, even weak marks are entitled
to protection against registration by a subsequent user of
the same or a similar mark for the same or closely related
services. See Hollister Incorporated v. Ident A Pet, 193
USPQ 439 (TTAB 1976). In finding that the marks are
3 The Random House Webster’s Unabridged Dictionary (2d ed. 1998).
Ser No. 76312652
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similar, another factor we have considered is that the
record is devoid of any evidence of third-party uses of
marks that include the words UTILITY and CHOICE for
electric or other utility services.
With respect to applicant’s contention that electric
services are purchased only after careful consideration,
applicant has offered no support for this contention.
Moreover, it is common knowledge that electric services are
purchased by ordinary consumers who are not immune from
source confusion when two marks are quite similar.
Finally, to the extent that any of applicant’s
contentions raises doubt on the issue of likelihood of
confusion, such doubt must be resolved in favor of the
registrant and prior user. See In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F2d. 918, 179 USPQ 729 (CCPA 1973).
We conclude that consumers familiar with registrant’s
electric services offered under its mark MY UTILITY OF
CHOICE would be likely to believe, upon encountering
applicant’s mark UTILITY CHOICE ELECTRIC for identical
services, that the respective services originated with or
were somehow associated with or sponsored by the same
entity.
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Decision: The refusal to register under Section 2(d)
is affirmed.