General Cable Technologies Corporationv.National Rural Electric Cooperative Association

Trademark Trial and Appeal Board

Jun 25, 2009

No. 91165554 (T.T.A.B. Jun. 25, 2009)

Hearing: Mailed:
June 11, 2009 June 25, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

General Cable Technologies Corporation
v.
National Rural Electric Cooperative Association
_____

Opposition No. 91165554
to Application Serial No. 78337966
filed on December 8, 2003
_____

Timothy D. Pecsenye of Blank Rome LLP for General Cable
Technologies Corporation.

Elizabeth C. Buckingham of Dorsey & Whitney LLP for National
Rural Electric Cooperative Association.
______

Before Hairston, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

National Rural Electric Cooperative Association
(“applicant”) filed a use-based application for the design
mark shown below for services ultimately identified as
“promoting the interests of electric cooperatives by
promulgating standards for uniform data formatting to
facilitate the transfer of data between software
applications,” in Class 35.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91165554
2

In the application, applicant described its marks as “three
arcs forming a boomerang” and it claimed March 1, 2001 as
its date of first use of the mark anywhere and in commerce.
General Cable Technologies Corporation (“opposer)
opposed the registration of applicant’s mark on the ground
of priority of use and likelihood of confusion under Section
2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d).1
Specifically, opposer alleged that it is the owner of ten
registrations for variations of what it refers to as the
“Roleaux” design mark shown below for, inter alia, the
following goods and services:

1 Opposer also alleged that applicant’s mark does not function as
a service mark because applicant licenses its mark to third
parties as a certification mark. However, because opposer did
not reference this ground of opposition in its brief, or at the
oral hearing, we find that opposer has waived it.
Opposition No. 91165554
3
Wire and cable for energy and electrical
applications, namely bare and insulated
electrical wire and cable, interlocked
armored cable, buried and aerial trunk
cable, distribution and drop cable,
plenum cables, electrical power
instrumentation and control cable,
electrical aluminum cable, and low,
medium and high voltage power
transmission cable, in Class 9;2

Mail order and internet catalog services
featuring electrical wire and cable, in
Class 35;3 and,

Design for others of electrical wire and
cable products, in Class 42.4

Because the mark in the three above-noted registrations
is closer to applicant’s mark than opposer’s other marks, we
have focused our likelihood of confusion analysis on these
marks, as well as on services that opposer contends fall
within the natural scope of expansion of its registered
marks.
Applicant denied the salient allegations in the notice
of opposition.

2 Registration No. 2654145, issued November 26, 2002; Sections 8
and 15 affidavits accepted and acknowledged. We did not set
forth the entire description of goods. We listed the most
relevant products.
3 Registration No. 2811285, issued February 3, 2004; Sections 8
and 15 affidavits accepted and acknowledged.
4 Registration No. 2735482, issued July 8, 2003; Sections 8 and
15 affidavits accepted and acknowledged.
Opposition No. 91165554
4
Preliminary Issues
A. Improper designation of confidential testimony and
evidence.

Opposer introduced into evidence the discovery
depositions of applicant’s Rule 30(b)(6) witnesses, Martin
E. Gordon and Gary A. McNaughton, and the testimony
deposition of Lisa Lawson, opposer’s Vice President of
Corporate Communications, under seal without any attempt to
delineate the truly confidential portions by redaction.
However, the parties cannot shield from public information
that which is not appropriately confidential. See Trademark
Rule 2.27(d) and (e). It is readily apparent that most of
the testimony submitted under seal is not confidential.
Within thirty days of the mailing date of this decision, the
parties are ordered to resubmit a redacted copy of the
discovery and testimony depositions with attached exhibits
submitted under seal with only those portions which truly
need to be kept under seal redacted. The redacted copy will
be placed in the public record. If the parties fail to make
this submission as to any sealed deposition, the entire
deposition and exhibits will become part of the public
record.
B. Evidence attached to briefs.
Opposer submitted its main brief with evidentiary
attachments comprising duplicates of evidence and testimony
previously filed during the assigned testimony periods.
Opposition No. 91165554
5
Evidence which was timely filed during the parties’ trial
periods need not, and should not, be resubmitted. Life Zone
Inc. v. Middleman Group, Inc., 87 USPQ2d 1953, 1955
(TTAB 2008); Entm't Group Ltd. v. Nintendo of Am. Inc.,
45 USPQ2d 2021, 2022 (TTAB 1998). Opposer seems to be under
the impression that attaching previously-filed evidence to a
brief is a courtesy or a convenience to the Board. It is
neither. When considering a case for final disposition, the
entire record is readily available to the panel. Because we
must determine whether such attachments are properly of
record, Trademark Rule 2.123(l), citation to the attachment
requires examination of the attachment and then an attempt
to locate the same evidence in the record developed during
trial, requiring more time and effort than would have been
necessary if citations were directly to the trial record.
Accordingly, we did not consider the attachments to
opposer’s brief. We only considered the evidence that was
timely filed during the assigned testimony periods.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b).
A. Opposer’s evidence.
1. A notice of reliance on copies of opposer’s
pleaded registrations prepared and issued by the U.S. Patent
Opposition No. 91165554
6
and Trademark Office showing both the current status of and
the current title to the registrations;
2. Notices of reliance on applicant’s responses to
selected interrogatories and requests for admission;
3. A notice of reliance on the following discovery
depositions:
a. Martin E. Gordon, applicant’s Research
Project Manager, with attached exhibits; and,
b. Gary A. McNaughton, an engineering consultant
with Cornice Engineering, a contractor
engaged by applicant, with attached exhibits;
and,
4. The testimony deposition of Lisa Lawson, opposer’s
Vice President of Corporate Communications, with attached
exhibits.
B. Applicant’s evidence.
1. The testimony deposition of Robert D. Saint,
applicant’s principal engineer, with attached exhibits; and,
2. The testimony deposition of Gary A. McNaughton
with attached exhibits.
The Parties
A. Opposer.
Opposer is a leading global developer and manufacturer
of wire and cable. Opposer, through its predecessors, has
Opposition No. 91165554
7
manufactured and sold wire and cable for over 150 years. It
has operated as an independent public company since 1997.5
Opposer’s operations are divided into three main
segments: (1) energy; (2) industrial & specialty; and (3)
communications.
Energy cable products include low-,
medium- and high-voltage power
distribution and power transmission
products for overhead and buried
applications. Industrial & specialty
wire and cable products conduct
electrical current for industrial, OEM,
commercial and residential power and
control applications. Communications
wire and cable products transmit low-
voltage signals for voice and data
applications.6

The principal market for opposer’s energy cable products are
power utilities such as rural electric associations.7
In addition to wire and cable products, opposer
supplies its customers with a managed inventory system
wherein customers may monitor and maintain inventory, as
well as other inventory control, product ordering and
information distribution systems.8
Opposer’s Roleaux design mark is a housemark used in
connection with all of opposer’s products and services since

5 Opposer’s 2005 Form 10-K, pp. 3 and 5-6, filed with the U.S.
Securities and Exchange Commission attached as part of Exhibit 1
to the Lawson Dep.
6 Id.
7 Id at 5.
8 Lawson Dep., pp. 27-30.
Opposition No. 91165554
8
1927. It is placed on all of opposer’s products, packaging,
literature and advertising and promotional materials.9
B. Applicant.
Applicant is a trade association for electric
cooperatives. An electric cooperative is an energy utility
owned by the customers. There is no stock. The customers
vote for an individual to represent them on the board of
directors.10 Applicant promotes the interests of electric
cooperatives by lobbying legislative bodies, providing
technical expertise, education and training in engineering,
human relations, information technology and the law.11
Companies that sell goods and services to electric
cooperatives (hereinafter “vendors”) may join applicant as
associate members.12
Applicant’s mark is the logo for the MultiSpeak
initiative.13 MultiSpeak is a project to develop standards
for data format and exchange. The purpose of the initiative
is to reduce the cost and effort necessary to integrate
different software applications.14
[Applicant’s] MultiSpeak Specification
is an industry-wide software standard
that facilitates interoperability of

9 Lawson Dep., pp. 25-27.
10 Gordon Dep., pp. 15, 23-24.
11 Gordon Dep., pp. 19-20, 21; Saint Dep., pp. 9-11.
12 Gordon Dep., pp. 25-26, 28; McNaughton Testimony Dep., p. 16.
13 Gordon Dep., p. 50.
14 McNaughton Testimony Dep., pp. 7, 13; Gordon Dep., pp. 50, 52,
64, 89, 93 and 107; Saint Dep., pp. 12-14.
Opposition No. 91165554
9
diverse business and automation
applications used in electric utilities.

* * *

MultiSpeak is a specification for the
automation of business processes and the
exchange of data among software
applications commonly applied in
utilities. The foundation of the
specification is an agreement on the
details of the data objects that need to
be exchanged to more fully integrate
disparate software applications. The
MultiSpeak specification is intended to
assist vendors and utilities to develop
interfaces that enable software products
from a variety of vendors to
interoperate without the need for
extensive custom interface development.
(Emphasis added).

* * *

MultiSpeak defines data objects and
specifies message structures so that
vendors or utilities can write a single,
common interface that facilitates
communication with another type of
software.15

Electric cooperatives benefit from industry-wide
software standards for data format and exchange as follows:
1. It facilitates a high level of application
integration;

2. It minimizes expensive and maintenance-intensive
custom interfaces;

3. It allows utilities to focus on the best software
application available rather than interface-type
issues; and,

15 McNaughton Testimony Dep., Exhibit 22.
Opposition No. 91165554
10
4. It reduces the deployment time and risk in
implementing new software.16
Software developers benefit from industry-wide software
standards for data format and exchange as follows:
1. It reduces the time spent in developing and
maintaining custom interfaces;

2. It frees programmers to develop better
applications;

3. It facilitates the release and implementation of
new products; and,

4. It increases the willingness of utilities to
invest in new software applications.17

The MultiSpeak initiative has three types of
membership: (1) vendor members comprising software vendors;
(2) auditing members comprising service providers (e.g.,
consultants or system integrators); and (3) utilities.18
Representative vendor members include IBM, Oracle, and
Siemens.19
Applicant first used its logo in the March 2001 issue
of Rural Electrification, applicant’s magazine for electric
cooperatives.20 The logo has been in continuous use since
its first use.21 Only applicant may use the logo as a stand
alone mark.22 Vendors may use the logo in combination with

16 Id.
17 Id.
18 McNaughton Testimony Dep., pp. 16-17, 23; Saint Dep., p. 16.
19 McNaughton Dep., Exhibit 22; Saint Dep., pp. 18-19.
20 Gordon Dep., p. 62.
21 McNaughton Testimony Dep., p. 19.
22 McNaughton Testimony Dep., pp. 19-20.
Opposition No. 91165554
11
other matter pursuant to a license to indicate membership in
the MultiSpeak initiative, to indicate that a product is in
Opposition No. 91165554
12
compliance with the MultiSpeak specification or to indicate
that a company or person has achieved specific training in
connection with the MultiSpeak specification.23
Applicant actively promotes the MultiSpeak initiative
at electric utility industry conferences, trade shows and
other meetings because the success of the project depends
upon the willingness of software vendors to support the
standard and the willingness of utilities to demand
compliance with the MultiSpeak standards.24
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982).
Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks and the services covered by the registrations. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974).

23 McNaughton Testimony Dep., p. 20.
24 McNaughton Testimony Dep., p. 10; Saint Dep., pp. 14-15.
Opposition No. 91165554
13
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of 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., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s marks.

This du Pont factor requires us to consider the fame of
opposer’s mark. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
Opposition No. 91165554
14
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc.,
63 USPQ2d at 1305-1306 and 1309. Although raw numbers of
product sales and advertising expenses may have sufficed in
the past to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc.,
63 USPQ2d at 1309.
We have considered the following testimony and evidence
in determining whether opposer’s mark is famous:
1. Opposer has been using its mark since 1927;25
2. Opposer has made substantial sales of wire and
cable in the United States during the five years preceding
Ms. Lawson’s testimony:26
Year Net Sales
2007 $1.8 billion
2006 $1.5 billion
2005 $952 million
2004 $788 million
2003 $615 million

25 Lawson Dep., p. 25.
26 Lawson Dep., Exhibit 1 (Opposer’s 2007 Annual Report, Bates No.
1767). Opposer reported worldwide revenues, but Ms. Lawson
testified that 40% of opposer’s sales are from the United States.
(Lawson Dep., p. 9). The figures listed above are U.S. sales.
Opposition No. 91165554
15
3. Opposer has extensively advertised its products:27
4. While opposer vies with Southwire as the largest
manufacturer of wire and cable in the United States, it is
the largest supplier of energy cable in the United States.28
Based on our review of the evidence, we find that
opposer’s Roleaux design mark has achieved a high degree of
recognition as a mark for wire and cable products, such that
the mark would be viewed as a strong and distinctive mark.
However, we cannot find on this record that the relevant
U.S. consumers have been so exposed to the mark, or that
they are so aware of it, that it can be considered a famous
mark as contemplated by the case law. In view of the
extreme deference that a famous mark is accorded, and the
dominant role fame plays in the likelihood of confusion
analysis, a plaintiff asserting that its mark is famous has
a duty to clearly prove fame. Leading Jewelers Guild Inc.
v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007); Blue
Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1819
(TTAB 2005).
In this case, opposer’s evidence falls short of proving
that its mark is famous because opposer’s mark is primarily

27 Lawson Dep., pp. 21-23; Exhibit 1 (Opposer’s 2007 K-1 Form,
Bates No. 1331). Out of an abundance of caustion, we have not
listed the actual advertising figures because we are not clear
whether they are truly confidential.
28 Lawson Dep., p. 33.
Opposition No. 91165554
16
displayed in connection with the trade name General Cable as
shown below.29

Furthermore, the industry publications about opposer
introduced into evidence (Lawson Deposition Exhibit 5) do
not reference the design mark although it may appear next to
the trade name.
The problem with opposer’s evidentiary showing on the
issue of fame is that there is nothing that demonstrates
that the Roleaux design mark has any renown independent of
the trade name General Cable. Cf. Bose Corp. v. QSC Audio
Products Inc., 63 USPQ2d at 1308 (“If a product mark used in
tandem with a famous house mark . . . has independent
trademark significance, it should not be a great burden to
substantiate the point”). The nature and context in which
the mark is used is a reliable measure of mark independence,
as is the strength of the public reputation of the product
mark. Id. As indicated above, there is very little
evidence that opposer’s Roleaux mark is used as a stand
alone mark or that it has any recognition separate and apart
from opposer’s trade name. Because we will not infer fame,

29 Lawson Dep., Exhibits 1-5, 8-12. We note that in some of the
packaging presented in Lawson Dep. Exhibit 7 the Roleaux design
mark is displayed in an ornamental manner; but that appears to be
the exception rather than the rule.
Opposition No. 91165554
17
we find that although the strength of opposer’s mark is a
factor that favors opposer, opposer’s mark does not rise to
the level of a famous mark.
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now 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. The marks at issue are
arbitrary designs. As such, they are perceived graphically,
rather than being spoken or read: that is, they are not
translated into words. In fact, neither party references
the designs in their advertising and promotional materials
(e.g., there is no look for advertising). Moreover, neither
party submitted any evidence concerning how consumers
perceive the respective marks. Accordingly, the similarity
or dissimilarity of the marks must be analyzed simply on the
visual similarity of the marks. Daimler-Benz A.G. v. Ford
Motor Co., 143 USPQ 453, 456 (TTAB 1964). See also General
Foods Corp. v. Ito Yokado Co. Inc., 219 USPQ 822, 828
(TTAB 1983) (the comparison of design marks comes down to a
“subjective ‘eye ball’ reaction”). Comparing each of the
marks in their entireties, we find that applicant’s mark is
similar to opposer’s mark. While a close visual inspection
Opposition No. 91165554
18
of the marks reveals some differences, the overall
impressions created by the marks are similar (i.e.,
intersecting arcs forming a circular triangle).
C. The similarity or dissimilarity and nature of the
products and services described in the application and
registrations.

As noted above, opposer three most relevant
registrations cover wire and cable, sales services in
connection with wire and cable including providing customers
with access to inventory control systems, and designing wire
and cable. Applicant seeks to register its mark for what
are essentially trade association services for electric
cooperative (i.e., a form of electric utilities) in the
nature of “promulgating standards for uniform data
formatting to facilitate the transfer of data between
software applications.” On their face, the services of
applicant appear to be different from the goods and services
of opposer in terms of their character and use.
Accordingly, it is incumbent upon opposer to show that its
respective goods and services and applicant’s services are
related in some manner and/or the conditions surrounding the
marketing thereof are such that they would be likely to be
encountered by the same person under circumstances that
could give rise (because of the marks) to the mistaken
belief that they originate from or are in some way
Opposition No. 91165554
19
associated with the same source. Champion International
Corp. v. Genova, Inc., 199 USPQ 301, 305 (TTAB 1978).
Opposer’s testimony and argument is directed almost
exclusively to the similarity of trade channels and class of
consumers.30 While both opposer and applicant sell their
goods and services to electric cooperatives, that does not
change the distinctly different character and use of their
goods and services. Opposer’s contention that the channels
of trade and classes of consumers are the same does not
address the similarity of the goods and services themselves.
“The mere fact that two products may move in the same
channels of trade to the same class of purchasers does not,
ipso facto, prove that there is a definite relationship
between the goods.” Champion International Corp. v. Genova,
Inc., 199 USPQ at 305. See also Canada Dry Corp. v.
American Home Product Corp., 468 F.2d 207, 175 USPQ 557
(CCPA 1972) (despite the fact that applicant’s laundry
detergent is sold in the same channels of trade to the same
consumers as opposer’s soft drinks, the two products are so

30 Lisa Lawson testified that opposer provides its customers with
access to a vendor managed inventory system which automatically
keeps track of the wire and cable the customer has on hand and
replenishes the supply as appropriate. (Lawson Dep., pp. 27-28).
Opposer also provides an online system where customers may check
inventory, receive reports and access product data sheets.
(Lawson Dep., pp. 28-29). We find that these services are
ancillary to the sale of opposer’s wire and cable and that they
are not related to promulgating software specifications for data
format and exchange.
Opposition No. 91165554
20
different in their essential character and purpose that
there is no likelihood of confusion); Alliance Mfg. Co.,
Inc. v. Chicago Musical Instrument Co., 184 USPQ 118,
121 (TTAB 1974). As discussed more fully below, there is no
evidence of record to show that the goods and services of
the parties will come to the attention of the same types of
actual or potential consumers or users suggesting a common
origin.
In view of the foregoing, we find that applicant’s
services are not related to opposer’s goods and services.
D. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers or users.

The channels of trade and classes of consumers or users
factor involves how and to whom the goods and services at
issue are sold or marketed. We must determine, therefore,
whether there is likely to be an overlap between the
respective purchasers/users of the goods and services of the
parties to confuse actual and potential purchasers/users.
Electronic Design & Sales v. Electronic Data Systems, 954
F.2d 713, 21 USPQ2d 1388, 1390 (fed. Cir. 1992).
[W]here both applicant’s goods and
opposer’s services are marketed and sold
in the medical and certain other fields,
it is error to deny registration simply
because “applicant sells some of its
goods in some of the same fields in
which opposer provides its services,”
without determining who are the
“relevant persons” within each corporate
customer. This is especially true
where, as here, the Board acknowledged
Opposition No. 91165554
21
that “applicant’s goods are specifically
different and noncompetitive.”
[Internal citations omitted].

Thus, although the two parties conduct
business not only in the same fields but
also with some of the same companies,
the mere purchase of the goods and
services by both parties by the same
institution does not, by itself,
establish similarity of trade channels,
or overlap of customers. The likelihood
of confusion must be shown to exist not
in a purchasing institution, but in
“customer or purchaser.” [Internal
citations omitted] (Emphasis in the
original).

Electronic Design & Sales v. Electronic Data Systems, 21
USPQ2d at 1391.
It’s clear from the record that both parties market
products and services or otherwise interact with electric
cooperatives. Applicant uses its mark to identify the
MultiSpeak initiative for developing software standards for
use by electric cooperatives and software suppliers.
Opposer sells wire and cable to electric cooperatives,
including members of applicant. In fact, opposer was
formerly an associate member of applicant. Opposer and
applicant attend the same trade shows and place
advertisements in the same publications.
Indeed, at at least one IEEE trade show,
[applicant’s] and [opposer’s] booths,
which both prominently displayed their
respective [marks], the Roleaux Mark and
the NR Mark that Applicant uses in
connection with its MultiSpeak
Opposition No. 91165554
22
initiative, were located directly next
to one another.31

Because opposer and applicant market their goods and
services to electric cooperatives through the same media,
opposer contends that the channels of trade and classes of
consumers are identical.32 The problem with opposer’s
argument is that opposer presumes that the same people who
buy wire and cable for an electric cooperative are also
involved with the software used by electric cooperatives.
There is no evidence regarding the organization of electric
cooperatives that establishes that the persons in charge of
information technology are also responsible for purchasing
wire and cable. Considering the obvious complexity involved
in distributing electricity and managing an electric
cooperative, it is inconceivable that the individuals in
charge of information technology are also involved with
purchasing wire and cable. Based on this record, there is
no basis for us to presume that the same people in charge of
information technology are also the same individuals who
purchase wire and cable. Electronic Design & Sales v.
Electronic Data Systems, 21 USPQ2d at 1391 (“it cannot be
presumed . . . that the general computer services are
selected by the same individuals who select battery chargers
and power supplies”). Therefore, the mere fact that both

31 Opposer’s Brief, p. 22.
32 Opposer’s Brief, pp. 46-50.
Opposition No. 91165554
23
parties market their goods and services to electric
cooperatives through the same media does not establish that
actual and potential purchasers from electric cooperatives
would be the same.
In view of the foregoing, we find that that channels of
trade and classes of consumers are different notwithstanding
that both parties market their goods and services to
electric cooperative through the same media.
E. Degree of consumer care.
The degree of care that relevant consumers exercise in
purchasing opposer’s wire and cable products and utilizing
applicant’s specialized software standards weighs against
finding that there is a likelihood of confusion. We are
convinced that electric cooperatives and software vendors
interested in applicant’s software standards exercise a very
high degree of care before agreeing to use the standard.
The use of applicant’s software standards involve
considerable planning that requires that electric
cooperatives and software vendors have a specific purpose or
plan for implementing the standards. This entails educating
cooperatives and vendors regarding the benefits of standard
specifications for data format and exchange.33
Q. What have you done to convince
companies like IBM and Oracle to
become members?

33 Saint Dep., pp. 14-15; McNaughton Testimony Dep., pp. 10-11.
Opposition No. 91165554
24
A. Well, I show them that we have
developed a specification that they
can use, that can be - - a
standardized specification that
they can use to do their
integration so they don’t have to
do customized integration, and
point out that we are also
encouraging utilities to specify
MultiSpeak usage when they buy
software, so if one of their
customers specifies MultiSpeak, if
they already have it, already
utilizing it, they can comply with
that request.

A. When you make this pitch, what
happens?

Q. Well, they either agree or
disagree. And, you know, they don’t
join on the spot. It’s not like
they sign up and have their - - you
know, it not that type of
operation.

But the people that I talk to that
go to these trade shows is usually
not the decision maker. So they
have to take it back to their
corporate decision makers, which
are sometimes marketing people,
sometimes software development
people. It varies by company.34

Applicant uses knowledgeable engineers to promote the
benefits of the standardized software data formats and the
electric cooperatives and software vendors have equally
knowledgeable personnel evaluating the costs and benefits of
a standardized interface. Because of the technology
involved and the personal marketing necessary to promote

34 Saint Dep., pp. 20-21.
Opposition No. 91165554
25
standard software protocols, the electrical cooperatives and
software vendors know that they are dealing with applicant
as the source of the software standards.
By the same token, we find that opposer’s purchasers
undoubtedly exercise a high degree of care in purchasing
wire and cable, especially the electric utilities that
purchase opposer’s energy related products. Opposer’s wire
and cable are specialized products that are undoubtedly
purchased in bulk after significant research and comparison
of competing products.
We therefore find that the parties’ products and
services are purchased after careful consideration by person
who are knowledgeable about the goods and services and their
source.
F. No instances of actual confusion.
Opposer and applicant have been concurrently using
their marks since March 2001. Applicant argues that during
the period that the parties have been concurrently using
their marks on purportedly related goods and services and in
purportedly identical channels of trade in connection with
the same classes of consumers there have been no reported
instances of actual confusion.35 On the other hand, opposer
argues that evidence of actual confusion is not necessary to
prove likelihood of confusion and that since applicant is

35 Applicant’s Brief, p. 11.
Opposition No. 91165554
26
rendering a trade association type service, people will be
less likely to report confusion.36
Where the parties have coexisted in the marketplace
under circumstances where there has been an opportunity for
confusion to have occurred, the lack of any reported
instances of confusion is a factor that the Board may
consider. G.H. Mumm & Cie v. Desnoes & Geddes, Ltd.,
917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990)
(despite over a decade of marketing in the United States,
opposer was unable to offer any evidence of actual
confusion); Mr. Hero Sandwich Systems, Inc. v. Roman Meal
Co., 781 F.2d 884, 228 USPQ 364, 367 (Fed. Cir. 1986) (the
concurrent use of the marks for approximately 20 years
without any reported instances of confusion suggests that
the marks are not likely to cause confusion); King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974) (absence of confusion for over 20 years
supports finding that confusion is not likely). Because we

36 Opposer’s Reply Brief, pp. 15-18. Opposer also asserts that
applicant did not prove its date of first use and, thus, there is
no basis for asserting that there has been any concurrent use.
However, as indicated above, applicant has been continuously
using its mark since March 2001. (Gordon Dep., p. 62; McNaughton
Testimony Dep., p. 19). See National Bank Book Co. v. Leather
Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a party’s
mark when it is based on personal knowledge, it is clear and
convincing, and it has not be contradicted); Liqwacon Corp. v.
Browning-Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979);
GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577
(TTAB 1976).
Opposition No. 91165554
27
have previously found that the channels of trade and classes
of consumers are different, there has not been a meaningful
opportunity for confusion to have occurred and, therefore,
the lack of any reported instances of confusion is a neutral
du Pont factor.
G. Balancing the factors.
In view of the facts that applicant’s services are so
different from opposer’s goods and services, that
applicant’s services and opposer’s goods and services move
in different channels and are sold to different classes of
consumers, and that the purchasers/users and potential
purchasers/users of the goods and services at issue exercise
a high degree of care, we find that there is no likelihood
of confusion by the contemporary use of applicant’s design
mark and opposer’s Roleaux marks. We reach this conclusion
despite the strength of opposer’s Roleaux marks and the
similarity of the marks of the parties. We also note the
interesting role played by the lack of any reported
instances of actual confusion under the facts in this case.
Had we accepted opposer’s contention that the channels of
trade and classes of consumers are identical, then the lack
of any reported instances of confusion would suggest that
there is no likelihood of confusion. However, the lack of
any reported instances of confusion actually supports our
Opposition No. 91165554
28
finding that the channels of trade and classes of consumers
are different.
Decision: The opposition is dismissed and the
application will register in due course.
Also, as explained above, within thirty days of the
mailing date of this decision, the parties are ordered to
resubmit a redacted copy of all testimony and exhibits
submitted under seal, including their briefs, with only
those portions which truly need to be kept under seal
redacted, failing which the entire record will be made
public.