West Central Telephone Association

Trademark Trial and Appeal Board

Aug 5, 2011

No. 77777520 (T.T.A.B. Aug. 5, 2011)

Mailed:
August 5, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re West Central Telephone Association
________

Serial No. 77777520
_______

Marsha Stolt of Moss & Barnett, P.A. for West Central
Telephone Association.

Benji Paradewelai, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Cataldo, and Taylor, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

West Central Telephone Association has appealed from
the final refusal of the Trademark Examining Attorney to
register ZENERGY, in standard character format, for
“installation and maintenance of solar and wind-generated
power systems in homes.”1 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 77777520, filed July 9, 2009, based on
Section 1(a) of the Trademark Act, claiming first use and first
use in commerce on September 26, 2008.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77777520
2
§ 1052(d), on the ground of likelihood of confusion. The
examining attorney contends that applicant’s mark so
resembles the marks ZENERGY, in standard characters,2 and
ZENERGY Exploring for Tomorrow’s Energy Today and design,
as shown below,3 both registered by the same entity for “oil
and gas exploration, oil field exploration, oil
prospecting, analysis of oil fields, and oil field
surveying; research and development in the fields of oil,
gas and energy products and services,” that, as used in
connection with applicant’s identified services, it is
likely to cause confusion or mistake or to deceive.

Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic

2 Registration No. 3295501, issued September 18, 2007.
3 Registration No. 3295502, issued September 18, 2007. The
colors blue and black are claimed as a feature of the mark. The
color blue appears in the wording ENERGY and in the flame at the
tail of the letter Z design and the color black appears in the
letter Z and in the wording EXPLORING FOR TOMORROW’S ENERGY
TODAY.

Ser No. 77777520
3
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We will confine our analysis to the cited registration
for ZENERGY, since this mark is identical to the applied-
for mark, and since the services in both of the cited
registrations are identical. If there is likelihood of
confusion with respect to the cited ZENERGY mark there is
no need for us to consider whether there is likelihood with
respect to the cited mark for ZENERGY with additional
wording and a design, and if there is no likelihood of
confusion with respect to ZENERGY per se, there can be no
likelihood of confusion with the mark with the additional
wording and design.
The marks, as we previously noted, are identical.
They are the same in appearance and pronunciation. We can
discern no distinction in connotation or commercial
impression based on the respective services. Thus, the du
Pont factor of the similarity of the marks favors a finding
Ser No. 77777520
4
of likelihood of confusion. See In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688 (“the identity of words,
connotation, and commercial impression weighs heavily
against the applicant”).
We turn next the second du Pont factor, the similarity
of the goods or services, keeping in mind that where the
applicant’s mark is identical to the registrant’s mark,
there need be only a viable relationship between the
respective goods or services in order to find that a
likelihood of confusion exists. In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001). Applicant’s services are
identified as “installation and maintenance of solar and
wind-generated power systems in homes”; the services in the
cited registration are “oil and gas exploration, oil field
exploration, oil prospecting, analysis of oil fields, and
oil field surveying; research and development in the fields
of oil, gas and energy products and services.” The
examining attorney does not contend that applicant’s
services are related to all of the registrant’s identified
services, only research and development in the field of
energy products and services.
In support of his position, the examining attorney has
submitted webpages of several companies to show that they
offer both the applicant’s and the registrant’s types of
Ser No. 77777520
5
services. The statements below are excerpted from some of
these websites:
BP, www.bpsolar-us.com4
A BP Solar system can save you a substantial amount on
your home utility bills and help protect the
environment.
……your BP Solar dealer will schedule an installation
date and order your system. Licensed BP Solar
professionals will install your system.

Research [heading]
BP Solar is committed to bringing photovoltaic (PV)
solar systems into the mainstream of everyday living.
Technological innovation is one of our core strengths.

SunWize, www.sunwize.com5

Our solar electric systems supply reliable power where
and when you need it.

Solar Energy Design Services [subheading]
… we offer the following project services:
…
Installation Supervision—O&M Manual Preparation

…Our Kingston facility also contains a comprehensive
research and development laboratory [that] facilitates
new product development offering our customers more
solutions to remote power problems.
…In 2008, SunWize moved the Distributed Power Group
headquarters to San Jose, California where it currently
conducts its Product Distribution, Residential Systems
and Commercial Systems operations. The Residential
Power Systems Division, headquartered in San Jose,
currently focuses on providing design, engineering, and
installation services for residential and small
commercial customers….

Installing a Residential Solar Power System is a Smart
Financial Decision [heading]

4 April 1, 2010 Office action, pages 7-12.
5 Office action mailed April 1, 2010, pp. 13-17.
Ser No. 77777520
6
Astralux Power Systems, www.aessolarenergy.com6

Astralux Power Systems is Colorado’s leading Solar
Installation Company. Serving the solar power and
energy efficiency needs of Colorado home and business
owners for the past 17 years.

From research and development of cutting edge Solar
Energy technologies to design and integration, Astralux
has been involved in Solar for many years.

Silicon Solar Inc., www.siliconsolar.com7

Silicon Solar Inc. is a world leader in the solar
energy industry. Our innovative vertically integrated
business model includes research and development,
innovative sales and marketing strategies as well as a
complete line of educational and installation services
for residential and commercial clients across the
United States and around the world.

Applicant does not appear to dispute that the evidence
submitted by the examining attorney shows “numerous
companies who offer both installation of solar or wind-
energy equipment and who also conduct research [and]
development in connection with solar or wind-energy
equipment.” Brief, p. 6. However, applicant contends that
“while the examples submitted by the Examining Attorney
show that many companies who are engaged in research and
development of energy products also install and maintain
such products, none of the evidence shows that a company
whose principal business is oil and gas exploration is also

6 Office action mailed April 1, 2010, pp. 26-33.
7 Office action mailed April 1, 2010, pp. 47-54.
Ser No. 77777520
7
engaged in the business of installing and maintaining solar
and wind-generated products for homes.” Id. Applicant
further asserts that the printouts from the website of BP
(British Petroleum), which applicant concedes show that a
single company provides oil and gas exploration, research
and development of energy products, and installation of
solar products in homes, is not typical, and that there is
no basis for assuming that the owner of the cited
registrations provides services of a scope anywhere near
those of BP.
Applicant seems to be asserting that, because oil and
gas exploration are listed as services in the cited
registration, the examining attorney must, in order to show
that “installation and maintenance of solar and wind-
generated power systems in homes” and “research and
development in the field of energy products and services”
are related, also show that companies that engage in such
services also offer oil and gas exploration services,
because such services are also listed in the cited
registration. However, applicant cannot limit the
presumptions of Section 7(b) of the Trademark Act, 15
U.S.C. § 1057(b), i.e., that the registrant’s registration
is prima facie evidence of its exclusive right to use the
mark in connection with each of the services listed in the
Ser No. 77777520
8
registration, including “research and development in the
field of energy products and services.” The registrant’s
right to use its mark for research and development in the
field of energy products and services is not dependent on
the inclusion of other goods or services in the
identification in the registration, such that the examining
attorney has to, in effect, show that third parties use a
single mark for all of the goods or services in the cited
registration and the application.
Further, applicant asserts that there is nothing in
the record or the identification in the cited registration
that “leads one to believe that the Registrant is offering
installation services to home owners for wind or solar
products.” Brief, p. 7. However, the question is not
whether the registrant is offering the same services as the
applicant (installation and maintenance of solar and wind-
generated power systems in homes), but whether consumers
are likely to believe that the services, as identified,
emanate from a single source if they were offered under the
identical mark, ZENERGY. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978) (It is not
necessary that the goods or services of applicant and the
registrant be similar or competitive, or even that they
move in the same channels of trade to support a holding of
Ser No. 77777520
9
likelihood of confusion. It is sufficient that the
respective goods or services are such that they would or
could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer.) As identified, the registration
includes research and development in the field of energy
products and services, without any limitation as to the
type of energy, and therefore the research and development
services must be deemed to include solar and wind energy
products and services.8 See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); In re 1st USA Realty Professionals
Inc., 84 USPQ2d 1581 (TTAB 2007). See also, 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 evidence submitted by the examining attorney is
sufficient to show that the same companies that do research

8 If applicant believed that the registrant’s research and
development services in the field of energy products and services
does not include solar and wind products and services, its remedy
was to file a proceeding for partial cancellation of the
registration under Section 18 of the Act.
Ser No. 77777520
10
and development in the solar energy field (which would be
included in the services of “research and development in
the field of energy products and services” identified in
the cited registration), also do installation of solar
power systems in homes, services which are identified in
applicant’s application.9
Applicant asserts that “while it may be more common
for companies to be engaged in both research and
development of energy products as well as the installation
of such products, there are many more companies who engage
in one or the other activity, but not both.” Brief, p. 7.
The question, however, is not whether some, or even many,
companies engage in the separate activities. Rather, the
question is whether there are companies that engage in both
activities, and the evidence submitted by the examining
attorney is sufficient to show that this is not an
aberration done by only one or two companies. As the Board

9 We are aware that applicant’s identification, “installation
and maintenance of solar and wind-generated power systems in
homes,” includes maintenance of such systems, and includes wind-
generated power systems as well as solar. We also note that the
evidence provided by the examining attorney is limited to solar
power systems. However, it is not necessary for the examining
attorney to prove likelihood of confusion with respect to each of
the services identified in applicant’s single-class application;
if there is likelihood of confusion with respect to any of
applicant’s identified services, the refusal of registration must
be affirmed. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).

Ser No. 77777520
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said in connection with a similar argument based on third-
party registrations, i.e., that there were many third-party
registrations for the goods of the applicant that did not
include the goods identified in the cited registration, and
vice versa:
There is no requirement for goods to be found
related that all or even a majority of the
sources of one product must also be sources of
the other product. Therefore, evidence showing
only that the source of one product may not be
the source of another product does not aid
applicant in its attempt to rebut the evidence of
the examining attorney.

In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1370
(TTAB 2009).
With respect to the du Pont factor of the channels of
trade, applicant argues that its services and those of the
registrant’s are sold in different channels of trade. We
agree that the same residential customer who would purchase
applicant’s “installation and maintenance of solar and
wind-generated power systems in homes” is not likely to be
a direct customer of the research and development in the
field of energy products and services identified in the
cited registration. However, as shown by the website
evidence submitted by the examining attorney and excerpted
above, such a consumer is likely to be exposed to the
information that companies that are involved in
Ser No. 77777520
12
installation of solar power systems in homes also provide
research and development of energy products and services.
It is clear from the websites that some, at least, are
directed to consumers interested in installing solar power
systems in their homes (for example, they have a contact
webpage for the homeowner to obtain an evaluation of their
property for solar products).
The next du Pont factor discussed by applicant is the
consumers of the respective services and their degree of
care. We agree with applicant that the purchasers of the
registrant’s services would be sophisticated and
knowledgeable. We also agree that applicant’s homeowner
customers, “while not as sophisticated, are making an
expensive and significant purchase and can be expected to
exercise a reasonable amount of care.” Brief, p. 12. It
is because these homeowner customers are making an
expensive and significant purchase that they would be
expected to do some investigation of solar power systems in
general, and therefore are likely to be aware that
companies that install residential solar power systems also
do research and development in the field of solar energy
products and services. As a result, when they see the
identical mark ZENERGY in connection with both types of
Ser No. 77777520
13
services, they are likely to assume that the services come
from the same source.
Finally, applicant argues that the cited mark is
entitled to a limited scope of protection, and that
applicant’s services are sufficiently different from the
registrant’s that they fall outside of the cited
registration’s ambit of protection. Applicant has
submitted a number of third-party registrations in support
of this position.
Third-party registrations are not evidence that the
marks shown therein are in use, or that the public is
familiar with them. Olde Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) and AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177
USPQ 268, 269 (CCPA 1973). However, third-party
registrations can be used in the manner of dictionary
definitions, to show that a term has a particular
significance in a particular industry. See Tektronix, Inc.
v. Daktronics, Inc., 187 USPQ 588 (TTAB 1975). In this
case, except for two registrations originally cited by the
examining attorney as an additional basis for refusal under
Section 2(d) of the Act, a refusal that was later
withdrawn, none of the registrations submitted by applicant
is for goods or services similar to those in the
Ser No. 77777520
14
application or cited registration, but are for goods such
as yoga mats, DVDs and computer software featuring
training, career guidance services, conducting classes in
the field of health and wellness, and tea beverages. Thus,
although for such goods ZENERGY might be viewed as having
significance as a conflation of the words ZEN and ENERGY,
we cannot conclude from these registrations that ZENERGY
has such a significance for the services in the cited
registration.
The third-party registrations that are for goods that
are closest to applicant’s and the cited registrant’s
services consist of a single set of two registrations,
owned by the same entity, for the marks ZENERGY and ZENERGY
POWER for the same goods. The list of goods is quite long,
and covers goods in Classes 7, 9 and 11, and includes
engines and motors for the generation of electricity or
power, electricity generators, and industrial furnaces.
This set of two registrations owned by a single entity is
not sufficient for us to conclude that ZENERGY has a
particular significance in the industry, or that it was
adopted by the registrant because it has a particular
significance for its services. Thus, these two third-party
registrations show only what is obvious from the mark
itself, namely, that the mark ZENERGY includes the word
Ser No. 77777520
15
ENERGY. It is because of the word ENERGY in the cited
mark, not the set of two third-party registrations, that we
find that the cited mark has a suggestive significance.
Although suggestive marks may be entitled to a
narrower scope of protection than arbitrary marks, they are
entitled to protection against the registration of, in this
case, the identical mark for related services. Although
applicant has attempted to characterize all of the goods
and services--its own, those in the cited registration, and
this third-party registrant’s--as being in “the vast energy
sector,” brief, p. 14, there is clearly a difference. The
evidence shows that there is a clear relatedness between
applicant’s services and the services in the cited
registration, while any relatedness between the goods in
the third-party registrations and those in the cited
registration is not readily apparent. To put it another
way, the goods in the third-party registrations are
certainly not as close to the services identified in the
cited registration as are applicant’s. Thus, this single
set of third-party registrations does not persuade us that
the cited registration is entitled to such a limited scope
of protection that such protection would not extend to
prevent the registration of applicant’s identical mark for
its related services.
Ser No. 77777520
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Neither applicant nor the examining attorney have
discussed or submitted evidence on any other du Pont
factors. To the extent that any other factors are
applicable, we must treat them as neutral.
After considering all the relevant du Pont factors, we
find that applicant’s mark, ZENERGY, used for “installation
and maintenance of solar and wind-generated power systems
in homes,” is likely to cause confusion with cited
Registration No. 3295501 for ZENERGY for, inter alia,
research and development in the field of energy products
and services. To the extent that there is any doubt on
this issue, we resolve that doubt, as we must, in favor of
the registrant and prior user. In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729 (CCPA 1973). Accordingly,
registration to applicant must be refused. In view
thereof, we need not reach a decision on the refusal of
registration based on Registration No. 3295502 for ZENERGY
Exploring for Tomorrow’s Energy Today and design.
Decision: The refusal of registration on the basis of
Registration No. 3295501 is affirmed.