Dayton Power and Light Company

Trademark Trial and Appeal Board

Mar 14, 2012

No. 77445395 (T.T.A.B. Mar. 14, 2012)

Mailed: March 14, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dayton Power and Light Company
________

Serial Nos. 77445394 and 77445395
_______

B. Joseph Schaeff of the law firm Dinsmore & Shohl, LLP for
Dayton Power and Light Company.

Corey Boone, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_______

Before Quinn, Ritchie, and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

Dayton Power and Light Company (“applicant”) filed an
application to register the mark displayed below

for the following recitation of services, as amended:
“promoting consumer awareness in the field of renewable energy
and promoting consumer use of renewable energy sources through
incentive programs where customers can purchase renewable energy
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 77445394 and 77445395
2
certificate-based services” in International Class 35.1 The
description of the mark is as follows:
The mark consists of the word “GREEN” displayed in the
color green, above the word “CONNECT” displayed in the
color blue. To the right of the wording, there is a
stylized design of a blue electrical plug and two
green leaves. Applicant does not claim the background
as a feature of the mark.

Applicant made the following claim of color and color location
statement:
The color(s) green and blue is/are claimed as a
feature of the mark.

Applicant also applied to register the mark GREEN CONNECT,
in standard character format, for the identical services noted
above.2
The examining attorney refused registration of both marks
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicant’s marks so
resemble the registered marks GREEN CONNECTED, in standard
character form,3 and the design mark displayed below,4

1 Application Serial No. 77445394, filed April 10, 2008, alleging April
2008 as the date of first use anywhere and in commerce.

2 Application Serial No. 77445395, filed April 10, 2008, alleging April
2008 as the date of first use anywhere and in commerce.

3 Registration No. 3491788, issued August 26, 2008, with a disclaimer
of “GREEN.”

4 Registration No. 3495197, issued November 20, 2007, with a disclaimer
of “GREEN.” The description of the mark is as follows: The mark
consists of the design of a capital green "G" intertwined with a
capital dark grey "C", with word "Green" in dark grey and the word
Serial Nos. 77445394 and 77445395
3

both owned by the same entity, Green Connected, LLC, that when
used on or in connection with applicant’s identified services,
they are likely to cause confusion or mistake or to deceive.
The cited registrations are for the same services: “promoting
the goods and services of others who engage in and promote
environmentally sound practices in the fields of environmentally
sound practices and environmentally sound lifestyles,
residential and commercial renovation, construction and repair,
storage, packaging, transportation, and logistics by means of
providing a website with hypertext links to the web sites of
others” in International Class 35 and “computer services,
namely, search engine services for users seeking information
about goods and services of others that engage in and promote
environmentally sound practices and environmentally sound
lifestyles” in International Class 42.
The examining attorney has also refused registration of
both applications under Trademark Act §§ 1 and 45, on the ground
that the applicant’s specimens fail to show the applied-for

"Connected" in green, with a green leaf at the edge of the word
"Green." The color(s) green and dark grey is/are claimed as a feature
Serial Nos. 77445394 and 77445395
4
marks used in direct connection with the sale or advertising of
the recited services. See 15 U.S.C. §§ 1051, 1052, 1053 and
1127 and 37 CFR §§ 2.56 and 2.76(b)(2). In addition, the
examining attorney has refused registration of Application
Serial No. 77445394 for applicant’s design mark on the ground
that the mark in the drawing is not a substantially exact
representation of the mark as used on the specimens. See 37
C.F.R. § 2.51(a).
Applicant has appealed the examining attorney’s final
refusals to register both applications. Both applicant and the
examining attorney have filed briefs. Because the Board deemed
the cases to have common questions of fact and of law, and the
records are largely identical, the appeals were previously
consolidated. For the reasons explained below, we (1) reverse
the refusals to register both applications under Section 2(d);
(2) reverse the refusals to register both applications on the
ground that the applicant’s specimens fail to show the applied-
for mark used in direct connection with the sale or advertising
of the recited services; and (3) reverse the examining
attorney’s refusal of registration of Application Serial No.
77445394 on the ground that the mark in the drawing is not a
substantially exact representation of the mark on the specimens.

of the mark.
Serial Nos. 77445394 and 77445395
5
I. Procedural History
Before discussing the merits of the appeal, the Board is
compelled to comment on the procedural history of these
consolidated proceedings.
The ex parte appeals for both applications commenced on
September 21, 2010.5 On April 15, 2011, applicant requested that
the Board remand both applications back to the examining
attorney for consideration of the mark in a third-party
application which the Office had approved for publication for
opposition, Application Serial No. 76704421. Shortly
thereafter, on May 31, 2011, the third-party application at
issue matured into Registration No. 3968197. The Board granted
applicant’s request on June 7, 2011, finding that because the
evidence was not previously available, applicant had
demonstrated the requisite good cause.6 In that order, the Board
instructed the examining attorney as follows:
Accordingly, we remand the application to the
examining attorney to consider the new evidence, but
the examining attorney should address this evidence in

5 Concurrently therewith, applicant filed its first request for remand
accompanied by a request for reconsideration. The examining attorney
denied the request for reconsideration and proceedings in the ex parte
appeals were then resumed. Both appeals were consolidated on February
18, 2011.

6 The June 7 order also vacated the Board’s prior order dated May 27,
2011 because it addressed the request for remand in Application Serial
No. 77445394 only, despite the fact that the appeals had been
previously consolidated. Further, the May 27, 2011 order erroneously
granted the request for remand on the basis that applicant sought
consideration by the examining attorney of a consent agreement.
Serial Nos. 77445394 and 77445395
6
a supplemental appeal brief, to be issued within 60
days of the mailing date of this order. In addition,
the examining attorney may submit with the
supplemental appeal brief evidence directed to
applicant’s newly submitted evidence.

June 7, 2011 Board Order, p. 2.
The examining attorney, instead of merely considering the
newly issued third-party registration, also argued against the
remand on the ground that this evidence was available prior to
commencement of the appeal.
First, we note that the examining attorney misapprehends
the nature of the evidence the Board found sufficient to justify
remand. While the examining attorney focuses on the pendency of
the third-party application for a long period of time before the
applicant requested remand, the significant factor was not the
mere filing of the application but that the Office had approved
the mark in the application for publication for opposition.
Evidence of the Office’s approval of the application clearly was
not available prior to commencement of the appeal. Second, it
is improper for the examining attorney to question a remand
order after remand is granted by the Board. In a recently
issued precedential opinion, In re Dist. of Columbia, 101 USPQ2d
1588, 1591 (TTAB 2012), a similar situation arose. As the Board
explained:
…the Board may grant an applicant’s request for remand
upon a showing of good cause with or without the
consent of the examining or managing attorney – or,
Serial Nos. 77445394 and 77445395
7
indeed, over their objection. Once the Board granted
applicant’s request and remanded the file to the
examining attorney for consideration of this evidence,
the three third-party registrations which were the
subject of the remand request became part of the
record. (emphasis added)

The Board discourages unwarranted questioning of decisions
made to remand applications. To the extent that the examining
attorney in this case may have believed that it was necessary to
“preserve” an objection to the evidence prior to discussing it
in the supplemental appeal brief, such belief is in error.
Section 710.01(c) of the TMEP, and Section 1207.03 of the TBMP,
both cited by the examining attorney as requiring the
preservation of an objection prior to discussion of evidence
made of record after an appeal has been filed clearly do not
apply in the case of a remand. No reasonable reading of either
section provides support for the examining attorney’s objection
to consideration of the evidence the Board allowed to be added
to the record on an appropriate showing by the applicant.
II. Section 2(d) Refusals
Now we will consider the refusals to register both the
GREEN CONNECT design and word marks. We base our determination
under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a 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.,
Serial Nos. 77445394 and 77445395
8
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key, although not
exclusive, considerations are the similarities between the marks
and the similarities between the goods or 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 characteristics of the goods and differences in the
marks”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted relevant argument
or evidence.
A. The Marks
We first turn 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. Each of these characteristics of a mark, if
appropriate, must be considered. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). While “the similarity of
the marks in regard to one of these factors can be critical to a
finding of similarity … the law does not counsel that similarity
in one factor alone automatically results in a finding that the
marks are similar.” Coach Services Inc. v. Triumph Learning
Serial Nos. 77445394 and 77445395
9
LLC, 96 USPQ2d 1600, 1609 (TTAB 2010), aff’d in part, vacated in
part and remanded on other grounds, __ F.3d __ (Fed. Cir. Feb.
21, 2012), 101 USPQ2d 1713 (Fed. Cir. 2012).
Applicant’s and registrant’s marks both share the
disclaimed term GREEN as well as the word CONNECT and formative
thereof (CONNECTED). Nonetheless, we find that there are
crucial differences regarding the sound, appearance, meaning
and, most critically, commercial impression of the marks.
Registrant’s design mark includes the prominently displayed
letters “GC,” matter which does not appear at all in either
applicant’s design or word mark. Conversely, applicant’s design
mark contains the depiction of an electrical plug, an element
notably absent from both registered marks. Hence, the marks at
issue do possess key differences in sound and appearance.
Furthermore, the commercial impression of the marks, when
considered within the context of applicant’s and registrant’s
respective services, engender quite distinct meanings. See
e.g., In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987)
(CROSSOVER for brassieres creates a different commercial
impression from CROSSOVER for ladies’ sportswear); In re British
Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for shoes
engenders a different commercial impression from PLAYERS for
underwear). The term “GREEN” as used in connection with both
applicant’s and registrant’s services has the similar
Serial Nos. 77445394 and 77445395
10
connotation. It is, however, highly suggestive of an
environmentally friendly significance, and the meaning is
slightly different for each mark. The word “GREEN” as applied
to registrant’s services is defined as “concerned with or
supporting environmentalism,” whereas “GREEN” as used in
connection with applicant’s services means “tending to preserve
environmental quality (as by being recyclable, biodegradable, or
nonpolluting)”.7 Moreover, the words CONNECT and CONNECTED, used
respectively in applicant’s and registrant’s marks, each have a
somewhat different significance when considered in relation to
the identified services. “CONNECT” when used in relation to
applicant’s services means “to become joined.” 8 This meaning is
reinforced in applicant’s design mark by the depiction of the
electrical plug. The pictorial representation conveys the image
that consumers who purchase renewable energy certificates to
meet their electricity needs will be “joining” or connecting to
“green” power by purchasing renewable energy credits. By
contrast, “CONNECTED” as applied to registrant’s Internet
website and search engine services means “having social,

7 We take judicial notice of this term, located at Merriam-Webster
Online, www.merriam-webster.com. The Board may take judicial notice
of dictionary definitions obtained through an Internet web site which
exist in printed format. See e.g., Osmotica Holdings Corp., 95 USPQ2d
1666, 1668 (TTAB 2010).

8 We take judicial notice of the words “connect” and “connected,”
located at Merriam-Webster Online, www.merriam-webster.com.

Serial Nos. 77445394 and 77445395
11
professional, or commercial relationships.” Thus, GREEN
CONNECTED as applied to registrant’s services has the distinct
commercial impression of a service which facilitates
professional connections with environmentally friendly
businesses and environmentally concerned customers.
The Board’s reasoning in the case of In re Sydel Lingerie
Co., Inc., 197 USPQ 629, 630 (TTAB 1977) presents an apt
analogy. The Board determined that the mark BOTTOMS UP when
used in connection with men's suits, coats and trousers creates
a different commercial impression from BOTTOMS UP for women's
underwear and, therefore, was not likely to cause confusion:
But more important, and especially in this case is the
nature of the marks and the commercial impression that
they project in connection with the respective goods.
Thus, if “BOTTOMS UP” can be deemed to have any
suggestive connotation as applied to men's suits,
coats and trousers, it will be in association with the
drinking phrase, “drink up!” … This is hardly the
connotation that “BOTTOMS UP” would generate as
applied to applicant's ladies’ and children's
underwear.

The same rationale applies to this case with equal force. Thus,
the differences in commercial impression of marks explained
above weigh in favor of not finding a likelihood of confusion.
B. Strength/Weakness of Marks
We next consider the strength of registrant’s marks and the
number and nature of similar marks in use for similar services.
Serial Nos. 77445394 and 77445395
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Applicant argues that because registrant’s marks are weak, they
are entitled to a limited scope of protection.
Based on the dictionary definitions discussed above, the
term green is merely descriptive and appears in both applicant’s
and registrant’s marks. Applicant also points to the fact that
both applicant and registrant disclaimed term GREEN in each
mark. We find this to be probative to the extent it
demonstrates that GREEN is a descriptive term to designate
environmentally friendly goods or services and that a disclaimer
was appropriate.
In further support of this argument, applicant has
submitted the following third-party registrations:9
Registration No. 3690757 for the mark GREEN
CONNECTIVITY for “electrical wires and cables and
electrical connectors” in International Class 9,
registered on the Supplemental Register;

Registration No. 3649560 for the mark GREEN STUFF
CONNECTION and design for “retail store services
featuring earth friendly clothing, home goods,
accessories and personal care items” in International
Class 35, registered on the Principal Register with a
disclaimer of GREEN;

Registration No. 3768435 for the mark THE GREEN
CONNECTION for various lawn and garden products and

9 During the ex parte prosecution of the involved applications,
applicant submitted additional third-party registrations to
purportedly show that registrant’s mark is diluted or weak. Insofar
as applicant did not discuss these registrations in its appeal brief,
we decline to discuss those registrations at length in this opinion.
Nonetheless, we have reviewed those third-party registrations, and
found them to be of little or no probative value because the
commercial impressions are so distinct (e.g., GREEN R, GREEN CORNER),
they have no impact on the strength of registrant’s marks.
Serial Nos. 77445394 and 77445395
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services, including “retail stores services featuring
organic materials, namely, mulch, loam, sand, stones,
wood chips and firewood” in International Class 35 and
“material treatment services in connection with
recycling” in International Class 40, registered on
the Principal Register with a disclaimer of GREEN; and

Registration No. 3968197 for the mark GREENRIDE
CONNECT for “providing on-line forums for transmission
of messages among computer users concerning
information about environmentally friendly
transportation options, route alternatives, ride-
sharing, car-pooling, public transportation, bicycling
and walking” in International Class 38, registered on
the Principal Register with a disclaimer of CONNECT.10

It is well established that third-party registrations are
not evidence of use of the marks in the marketplace, and they do
not show that the public is familiar with them. See Olde Tyme
Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545
(Fed. Cir. 1992); AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Third-party
registrations may be relevant, however, to show that a mark or a
portion of a mark is descriptive, suggestive, or so commonly
used that the public will look to other elements to distinguish
the source of the goods or services. See, e.g., In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-
Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus
Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).

10 Applicant discussed and submitted for the first time third-party
Registration No. 3963916 for the mark G GREENRIDE CONNECT and design
with its reply brief. This registration was not included in
applicant’s request for remand. In view thereof, we have given no
consideration to this registration. See Trademark Rule 2.142(d).
Serial Nos. 77445394 and 77445395
14
The registration for the mark GREENRIDE CONNECT has some
probative value since it shows that the word CONNECT is used to
identify computer services designed to connect users with a
shared interest in environmentalism. That being said, it is
only a single registration. The probative value of the
remaining third-party registrations is limited because the goods
and services are dissimilar to the registrant’s services. See
In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009). See also
Key Chemicals, Inc. v. Kelite Chemicals Corp., 464 F.2d 1040,
175 USPQ 99 (CCPA 1972).
In addition, applicant has submitted a sample of the
results from the Google® search engine for the phrase “green
connect” to show that registrant’s mark is weak or diluted.
This evidence, however, is also of limited probative value
because there is insufficient information to show the context of
each use of the phrase on the third-party websites. See In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833
(Fed. Cir. 2007). See also In re Thomas, 79 USPQ2d 1021, 1026
(TTAB 2006).
After carefully considering all of the evidence bearing on
the strength of registrant’s mark, we find that the record
reflects that the term “GREEN” has a descriptive meaning when
used in connection with services relating to or promoting
environmentalism, thereby rendering the term inherently weak as
Serial Nos. 77445394 and 77445395
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a source indicator in the environmental field. Therefore we
find this du Pont factor to weigh against finding a likelihood
of confusion.
C. Relatedness of the Services
Next we consider the similarities or dissimilarities of the
services. It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
services recited in applicant's applications vis-à-vis the
services identified in the cited registrations. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783
(Fed. Cir. 1992). The examining attorney bears the burden of
establishing a prima facie that a relationship between the goods
exists though persuasive evidence. See In re Princeton
Tectonics Inc., 95 USPQ2d 1509, 1512 (TTAB 2010).
To show that the involved services are related, the
examining attorney has not submitted any evidence such as third-
party registrations or materials obtained from third-party
websites to show that consumers would perceive applicant’s and
registrant’s services as emanating from the same source.
Instead the examining attorney relies primarily on the
respective recitation of services of the involved applications
and registrations. As the examining attorney contends:
The parties’ services are closely related in their
essential nature and purposes. Both parties’ stated
purpose concerns the focus on and adherence to
Serial Nos. 77445394 and 77445395
16
environmentally conscious business practices. The
applicant, as a power company, places emphasis on the
use of renewable energy, which serves to reduce impact
on the environment by avoiding the use of non-
renewable resources that merely deplete finite sources
that are converted to energy power. Similarly, the
registrant promotes environmentally conscious
practices by promoting the goods and services of
others that fulfill such eco-friendly principles.
Thus, the underlying natures of the parties’ services
– promotion of practices that reduce negative
environmental impact – are identical.

Examining Attorney’s Brief (unnumbered page).
The examining attorney relies on evidence obtained from
registrant’s website to argue that registrant’s website and
search engine services may conceivably link to the website of
energy companies like applicant. For example, the examining
attorney points to the following links on registrant’s web site:
“Google’s PowerMeter to Show Home Energy” “Oil Price Slump
Challenge to Obama Energy,” “Electric Cards Spur New Battery
Industry,” “Energy Efficiency Could Save American’s $,” “Algae:
The Next Biofuel Bet,” “FedEx Plans Largest Rooftop Solar
Install”, and “Ecobee Smart Thermostat Controlled by iPhone.”
Office Action dated August 21, 2009. In addition, the examining
attorney points to a link promoting “Home Energy Loss
Professionals (H.E.L.P.),” who focus on assisting consumers on
increasing energy efficiency in buildings. See id. The
examining attorney also points to another link promoting a
company that produces tree-shaped electronic devices for
Serial Nos. 77445394 and 77445395
17
capturing light energy to convert it to electric power.
September 25, 2010 Request for Reconsideration, pp. 10-11.
Lastly, the examining attorney has introduced a link to another
company that like the applicant employs renewable energy,
specifically to operate residential and commercial HVAC systems.
The examining attorney also contends that consumers
encountering the applicant’s services may mistakenly believe
that they are endorsed by the registrant. As the examining
attorney explains:
The registrant’s key business interest involves
evaluating and vouching for products and services
provided by others where they meet criteria for
practices deemed to be environmentally sound. In
essence, the registrant finds, “certifies”, and posts
information about companies that engage in
environmentally-friendly practices. Since the
applicant is one such company within the ambit of the
registrant’s concern, this scenario thus presents an
opportunity for confusion as to the marks and mistake
as to the potential endorsement between the parties,
if not the source of the services.

Examining Attorney’s Brief (unnumbered page).
Applicant, however, points out that the services it
provides in its capacity as a public utility company consist of
renewable energy credits. By contrast, registrant’s services
are an Internet web site and search engine that ‘connect’
environmentally conscious consumers with ‘green’ businesses.
We agree with applicant that while the prefatory language
of the recitation is similar insofar as the services pertain to
Serial Nos. 77445394 and 77445395
18
“green” services, this is where the similarity ends. “[T]o
demonstrate that goods are related, it is not sufficient that a
particular term may be found which may broadly describe the
goods.” In re W.W. Henry Co., 82 USPQ2d 1213 (TTAB 2007),
citing General Electric Co. v. Graham Magnetics Inc., 197 USPQ
690 (TTAB 1977); Harvey Hubbell Inc. v. Tokyo Seimitsu Co.,
Ltd., 188 USPQ 517 (TTAB 1975). See also Calypso Technology,
Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213 (TTAB
2011). Reading each recitation in its entirety, it is clear
that the services are quite distinct. Applicant is a public
utility and the service that applicant provides is an incentive
program whereby consumers can buy renewable energy credits
(RECs). Registrant, by contrast, provides an online directory
listing for companies that sell environmentally friendly
products and services. Our conclusion is confirmed by
registrant’s specimens of record: “GreenConnected offers an
online business profiling community to connect with companies
who provide or use Green products or services.” Office Action
Response dated January 28, 2009.
The examining attorney concedes that applicant and
registrant are not competitors. While we acknowledge that the
recitation of registrant’s website and search engine services is
sufficiently broad as to encompass services retrieved from the
green energy field, and that the examining attorney has
Serial Nos. 77445394 and 77445395
19
introduced minimal evidence confirming this, the examining
attorney has not introduced any evidence that consumers would
perceive applicant’s and registrant’s marks as identifying
services emanating from a common source.
We therefore conclude that the examining attorney has
failed to establish a sufficient commercial relationship between
applicant’s and registrant’s services so that, when rendered
under the marks, consumers are likely to be confused as to
source.
D. Reverse Confusion
The examining attorney also argues “reverse confusion” –-
that is, consumers will be confused by the marks and will
mistakenly view applicant, the junior user, as the source of
registrant’s services. In support thereof, the examining
attorney relies on the assumption that because applicant has
identified its services as “promoting consumer awareness in the
field of renewable energy” and “promoting consumer use of
renewable energy,” the services in question are identical.
The Federal Circuit, our primary reviewing court, gives the
following explanation of the concept of “reverse confusion:”
The term “reverse confusion” has been used to describe
the situation where a significantly larger or
prominent newcomer “saturates the market” with a
trademark that is confusingly similar to that of a
smaller, senior registrant for related goods or
services. The junior user does not seek to benefit
from the goodwill of the senior user; however, the
Serial Nos. 77445394 and 77445395
20
senior user may experience diminution or even loss of
its mark's identity and goodwill due to extensive use
of a confusingly similar mark by the junior user.

The avoidance of confusion between users of disparate
size is not a new concept; however, the weighing of
the relevant factors must take into account the
confusion that may flow from extensive promotion of a
similar or identical mark by a junior user. In
considering likelihood of confusion as to the source
of services that are not identical, or likelihood of
confusion as to whether there is a relation between
the source of the services, the extent of the
registrant's and the newcomer's activities relating to
the mark must be given weight appropriate to the
circumstances.

In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1690
(Fed. Cir. 1993) (citations omitted.)
The examining attorney has not submitted any evidence that
applicant is a “significantly larger or prominent newcomer” who
has “saturated the market” with GREEN CONNECT marks. Indeed, in
an ex parte context, it would be difficult to establish these
facts. Accordingly, the examining attorney’s arguments
concerning reverse confusion are unpersuasive.
E. Summary
To the extent that there are any other relevant du Pont
factors, we treat them as neutral.
Because the marks have different connotations and
commercial impressions when used in relation to the identified
goods, and because the examining attorney has not demonstrated
Serial Nos. 77445394 and 77445395
21
that the services are related, we conclude that applicant’s
marks are not likely to cause confusion with registrant’s marks.
We emphasize that we have reached our determination that
confusion is not likely based on the record before us. On a
different record, such as might be adduced in an opposition
proceeding, we might well come to a different conclusion.
III. Specimen Refusals
A. Application Serial Nos. 77445394 and 77445395
We will now discuss the trademark examining attorney’s
refusal to register both marks on the ground that applicant's
specimens of record do not show the applied-for marks used in
direct connection with the sale or advertising of the recited
services. 15 U.S.C. §§ 1051, 1052, 1053 and 1127 and 37 CFR
§§ 2.56 and 2.76(b)(2). For the reasons discussed herein, both
refusals to register are reversed.
A service mark is used in commerce “when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce, or the services are rendered
in more than one State or in the United States and a foreign
country and the person rendering the services is engaged in
commerce in connection with the services.” Trademark Act
Section 45, 15 U.S.C. § 1127. Trademark Rule 2.56(a) provides,
in part, that an application under section 1(a) of the Act,
i.e., an application based on use in commerce, such as the
Serial Nos. 77445394 and 77445395
22
applications at issue herein, must include one specimen showing
the mark as used on or in connection with the sale or
advertising of the services in commerce. Trademark Rule
2.56(b)(2) further specifies that a “service mark specimen must
show the mark as actually used in the sale or advertising of the
services.” When used in advertising services, the service mark
must not merely appear in the advertising material that also
discusses or offers the services, but must be associated with
the services in such a manner as would be sufficient to indicate
to potential purchasers or users of the services that the mark
identifies the services and their source. See In re Universal
Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973)
(“The minimum requirement is some direct association between the
offer of services and the mark sought to be registered
therefor.”). See also In re Moody's Investors Service Inc., 13
USPQ2d 2043, 2047 (TTAB 1989) (requirement is for “a direct
association between the mark sought to be registered and the
services specified in the application, i.e., that [the mark] be
used in such a manner that it would be readily perceived as
identifying such services”).
Serial Nos. 77445394 and 77445395
23
In both applications, applicant submitted the identical
specimen with its amendment to allege use.11 The specimen
consists of a printout from applicant’s website and is displayed
below:

The examining attorney takes the position that both
applicant’s word and design marks “appear in framed-off portions
of the page, distanced from the explanation of the services.”
Examining Attorney’s Brief (unnumbered page). In addition, the
examining attorney maintains that the term “Green Pricing” is
“used more prominently, consistently, and directly” than
applicant’s applied-for GREEN CONNECT marks to advertise

11 During ex parte examination, applicant also submitted substitute
specimens. We focus our analysis, however, solely on the specimen
submitted with applicant’s amendment to allege use because this
presents applicant’s strongest case.
Serial Nos. 77445394 and 77445395
24
the services. Id. Applicant, on the other hand, contends that
its GREEN CONNECT marks appear in “highly stylized fashion” on
the web page, and that the designation “Green Pricing Program”
appears in non-distinctive lettering in a less prominent manner
than applicant’s GREEN CONNECT marks. Applicant’s Brief, p. 2.
In our view, the proximity of both applicant’s word and
design marks to the description of applicant’s services is more
than sufficient here to establish the necessary association
between the marks and the services. In this regard, we note
that applicant’s applied-for mark prominently appears twice on
the specimen of record: once on the left hand side of the web
page and second on the upper right hand corner. On the web
page, in close proximity to both marks is a detailed description
of applicant’s services:
Looking for an easy way to make a green choice? DP&L
is now offering a program that makes it easy for our
customers to support renewable resources. The new
Green Pricing program helps make a difference in the
environment by supporting the purchase of renewable
energy certificates (RECs) that come from renewable
sources of electric power generation, such as wind,
solar and landfill gas.

We disagree with the examining attorney’s assertion that the
phrase “Green Pricing” more directly advertises applicant’s
services. Products or services may bear multiple marks. 1 J.T.
McCarthy, McCarthy on Trademarks and Unfair Competition, § 7:2
(4th ed. 2010). It is clear from the description of the services
Serial Nos. 77445394 and 77445395
25
on the specimen that applicant’s GREEN CONNECT marks function as
a source indicator for applicant’s identified services. This
determination is reinforced by the relative prominence of the
GREEN CONNECT mark, as well as the position of the “button”
below applicant’s GREEN CONNECT mark enabling consumers to
purchase applicant’s identified renewable energy credits. Thus,
prospective consumers will readily perceive the GREEN CONNECT
marks as advertising applicant’s identified services.
Accordingly, we conclude that applicant's specimens of
record are acceptable for both applications on this basis.
B. Application Serial No. 77445394

The examining attorney has also refused registration of
applicant’s GREEN CONNECT design mark on a second ground, namely
that the mark as it appears on the drawing is not a
substantially exact representation of the mark on the specimen.
See 37 C.F.R. § 2.51(a). The examining attorney argues that
while applicant’s design mark “features a light but discernible,
greenish rectangular background,” both displays of the mark on
applicant’s specimen fail to include the same background.
Examining Attorney’s Brief (unnumbered page). More
specifically, the examining attorney contends that the smaller
display of the mark on the specimens appears to have no
background, and that the background for the larger display is
Serial Nos. 77445394 and 77445395
26
either “transparent or filled with the grass images” as opposed
to a “plain greenish rectangle.” Id.
The “drawing depicts the mark sought to be registered.” 37
CFR § 2.52. “In an application under section 1(b) of the Act,
the drawing of the mark must be a substantially exact
representation of the mark as intended to be used on or in
connection with the goods and/or services specified in the
application, and once an amendment to allege use under § 2.76 or
a statement of use under § 2.88 has been filed, the drawing of
the mark must be a substantially exact representation of the
mark as used on or in connection with the goods and/or
services.” 37 CFR § 2.51(b). “The regulation's term
‘substantially’ permits some inconsequential variation from the
‘exact representation’ standard.” In re Hacot-Columbier, 105
F.3d 616, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997).
We find that this is an instance where there exists a
minor, “inconsequential variation” between the mark as it
appears on the drawing page and in the specimen. See id.
During the course of ex parte prosecution, applicant amended its
description of the mark to specifically exclude the “greenish
rectangular background” as a feature of the mark. Office Action
Response dated January 28, 2009, p. 1. The matter in question
is merely a background color or carrier, as opposed to wording,
Serial Nos. 77445394 and 77445395
27
stylized lettering, a design or pictorial representation. The
background has no distinctive or source-indicating function, and
it has no effect on the commercial impression of applicant’s
mark. As such, it was unnecessary for the examining attorney to
require applicant to either (1) amend the drawing to remove the
background, (2) submit a substitute specimen conforming with the
drawing, (3) or amend the basis of the application to Section
1(b). See Office Action dated February 13, 2009.
Accordingly, the refusal to register is reversed.
DECISION: For the reasons explained below, we (1) reverse
the refusals to register both applications under Section 2(d);
(2) reverse the refusals to register both applications on the
ground that the applicant’s specimens fail to show the applied-
for mark used in direct connection with the sale or advertising
of the recited services; and (3) reverse the examining
attorney’s refusal of registration of Application Serial No.
77445394 on the ground that the mark in the drawing is not a
substantially exact representation of the mark on the specimens.