Mid-America Energy Resources, Inc.v.Mid-American Energy Co.

Trademark Trial and Appeal Board

Oct 21, 1999

No. 91103197 (T.T.A.B. Oct. 21, 1999)

Hearing: Paper No. 32
November 17, 1998 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 21, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Mid-America Energy Resources, Inc.
v.
MidAmerican Energy Company
_____
Opposition No. 103,197
to application Serial No. 74/563,990
filed on August 22, 1994
_____
Clifford W. Browning of Woodward, Emhardt, Naughton,
Moriarty & McNett for Mid-America Energy Resources, Inc.
H. Robert Henderson and Richard L. Fix of Henderson & Sturm
for MidAmerican Energy Company.
______
Before Quinn, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by MidAmerican Energy
Company to register the mark MIDAMERICAN ENERGY for “public
utility services in the nature of electricity and gas
distribution.”1

1 Application Serial No. 74/563,990, filed August 22, 1994,
alleging a bona fide intention to use the mark in commerce. The
term “ENERGY” is disclaimed.
Opposition No. 103,197
2
Registration has been opposed by Mid-America Energy
Resources, Inc. under Section 2(d) of the Trademark Act on
the ground that applicant’s mark, if used in connection with
applicant’s services, would so resemble opposer’s mark MID-
AMERICA ENERGY RESOURCES, INC., previously used in
connection with the sale of utility services, namely the
distribution of chilled water used to air-condition
buildings, as to be likely to cause confusion.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; certain of applicant’s
responses to opposer’s requests for admissions and requests
for production, and pages from applicant’s World Wide Web
Internet site, all made of record by way of opposer’s
notices of reliance; and portions of a discovery deposition,
opposer’s responses to applicant’s requests for admissions
and interrogatories, and opposer’s pending application, all
introduced in applicant’s notice or reliance.2 Opposer and

2 Applicant submitted an incomplete copy of opposer’s
application. Opposer, in a rebuttal notice of reliance,
introduced a complete copy of its application.
Applicant’s notice of reliance also included a copy of an
annual report. As pointed out in opposer’s motion to strike
same, such material is not proper subject matter for introduction
by way of a notice or reliance. See TBMP §708. Thus, the motion
to strike is granted, and we have not considered this material in
reaching our decision.
Opposition No. 103,197
3
applicant filed briefs on the case,3 and both were
represented by counsel at an oral hearing held before the
Board.
Opposer is a subsidiary of Indianapolis Power and Light
Company Enterprises, Inc. (“IPALCO”), a holding company for
Indianapolis Power & Light Company (“IPL”), a regulated
public utility that generates and sells electricity and
steam to retail customers in Indianapolis, Indiana and
surrounding areas. IPL operates the second largest district
steam system (also known as a district heating system) in
the country. Such systems involve the generation of steam
at a central plant, and then piping the steam underground to
customers who use the steam to heat their buildings in lieu
of using their own units to generate heat. In October 1989,
an in-house proposal was made to develop, construct and
operate a district cooling system, and, in November 1989,
opposer was incorporated to engage in the development and
operation of district cooling systems. These systems

3 Applicant made several objections during opposer’s testimony,
and applicant reiterated some of the objections in its brief.
The ten objections are merely listed, with no remarks as to the
substance of the objections.
Opposer, in its reply brief, has responded to the merits of the
objections. Suffice it to say that we essentially share
opposer’s views on this matter and, therefore, applicant’s
objections are overruled. We hasten to add, however, that none
of the objected-to testimony or exhibits is crucial to the
outcome of this case. Even if all were excluded, we would reach
the same result in this case. We also note that, except in one
instance, opposer has not referred to any of the disputed
testimony or exhibits in its briefs on the case.
Opposition No. 103,197
4
essentially involve providing chilled water to air-condition
buildings. According to the testimony of Joseph Gustin,
opposer’s president, a district cooling system chills water
at a central plant to approximately 40 degrees Fahrenheit,
and then the chilled water is transported underground via
pipes to customers who use the chilled water to air-
condition their buildings in lieu of their own stand-alone
air-conditioning units. Mr. Gustin explained IPALCO’s
reasons for the decision to select district cooling as a
business for opposer:
First was its benefit to
Indianapolis Power & Light Company. An
IPL employee, since retired, first came
up with the idea probably in ’89 or ’88.
At the time he was manager of the steam
system at IPL; and he thought that by
creating a district cooling business in
Indianapolis that would use steam-driven
chillers, that that business would be a
new customer for his steam operation off
peak and would also provide a great
benefit to the electric utility by
cutting off summer air conditioning
electric peak by using off peak steam.
So there was a benefit to IPL of
district cooling.
Secondly, from our analysis, it
looked to be an attractive business. We
thought we could make some money selling
chilled water to customers and, in turn,
our shareholders.
Also, at that time the United
States had just entered into the Madrid
protocol that required the phasing out
of certain types of refrigerants that
air conditioners used. All types of
buildings across the country used old-
styled air conditioning with this
Opposition No. 103,197
5
refrigerant; and we thought there might
be a window of opportunity there to
provide district cooling as an alternate
source of air conditioning.
Third, we thought by starting a
district cooling business outside of
regulation, it would give Mid-America
Energy and IPL some experience at
dealing in a competitive environment--
nonregulated competitive environment.
Then finally, of all the
opportunities that we had looked at,
here was one that was right in our own
back yard. Those are always the most
advantageous to start out with.
Opposer’s district cooling system started commercial
operations for its first customer (the Indiana State Office
Building) in April 1991 in Indianapolis, Indiana. By the
end of 1994, opposer had fourteen customers. In the years
following, opposer continued to pursue opportunities to
provide district cooling systems to other customers,
including ones located outside of Indianapolis. The
testimony of Mr. Gustin and Kevin Greisl, opposer’s vice
president of sales, presents a detailed chronology of
opposer’s efforts at expanding its district cooling
business. Opposer appeared at trade shows, and conducted
direct mailings to prospective customers (such as college
and corporate campuses). Opposer’s efforts resulted in its
development of district cooling systems in Cleveland, Ohio,
and for Eli Lilly Corporation. During this development
phase, opposer entered into agreements with Carrier
Opposition No. 103,197
6
Corporation and Baltimore Gas & Electric to jointly develop
district cooling systems across the country.
Applicant, according to Beverly Wharton, applicant’s
senior vice president-energy delivery, is a regulated public
utility providing electric service in Iowa, South Dakota and
Illinois, and natural gas in Iowa, South Dakota, Illinois
and Nebraska. Applicant generates electricity at its own
power stations by utilizing coal, natural gas, fuel oil or
nuclear power. The electricity is carried over high-voltage
transmission systems, stepped down to lower-voltage
distribution systems, and then is delivered to applicant’s
business and residential customers. As a regulated utility
company, applicant does not “market” its electricity
inasmuch as applicant’s customers do not have a choice
regarding their source of electricity, and applicant is not
able to provide retail electric service outside of its
authorized service territory. Applicant’s involved
application was filed in August 1994, and Ms. Wharton
testified that applicant began use of its mark at least as
early as the fall of 1995.
We first turn our attention to the issue of priority of
use. Applicant, in its brief, expends considerable effort
in attacking the nature of opposer’s use of MID-AMERICA
ENERGY RESOURCES, INC. More specifically, applicant
contends that opposer has not proved a protectable interest
Opposition No. 103,197
7
in its corporate name, and that opposer has not proved
priority of use. These arguments are clearly ill founded.4
As pointed out by opposer, a name may function, in
appropriate circumstances, as both a trade name and as a
service mark. The question of whether a name used as a
trade name also performs the function of a service mark is
one of fact and is determined from the manner in which the
name is used and the probable impact thereof upon purchasers
and prospective customers. In re Walker Process Equipment
Inc., 233 F.2d 329, 110 USPQ 41, 43 (CCPA 1956); and In re
Univar Corp., 20 USPQ2d 1865, 1866 (TTAB 1991).5
As to the nature of opposer’s use, the record is
replete with testimony and supporting exhibits showing

4 In turning to consider priority, we note, at the outset, that a
copy of opposer’s application serial no. 74/692,619 is of record.
A check of Office records shows that the application matured into
Registration No. 2,145,592, issued March 24, 1998, for the mark
MID-AMERICA ENERGY RESOURCES, INC. (“ENERGY RESOURCES, INC.
disclaimed) for “utility services, namely distributing chilled
water used to air condition buildings.” The registration issued
after the close of the testimony periods and, therefore, we
presume that the late issuance explains why the registration was
not added as part of opposer’s claim. We also note that in spite
of applicant’s claim herein that opposer lacks priority, it has
failed to file any petition to cancel the registration on this
basis. Inasmuch as a status and title copy of opposer’s
registration is not of record, priority must be established by
opposer through testimony or other evidence. Cf.: King Candy
Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974) [no issue with respect to priority when plaintiff
proves its ownership of a valid and subsisting registration of a
pleaded mark (as, for example, by submission of a status and
title copy)].
5 Applicant presses the point that opposer, in the notice of
opposition, alleges only service mark use, with no mention of
trade name use. In view of the well settled dual functions of
trade names/service marks, the allegations pertaining to service
mark use clearly encompass opposer’s trade name use.
Opposition No. 103,197
8
opposer’s use of its trade name MID-AMERICA ENERGY
RESOURCES, INC. as a service mark to identify opposer’s
utility services, namely distributing chilled water used to
air condition buildings. The testimony of Messrs. Gustin
and Greisl, and exhibits such as Nos. 2, 5, 6, 13, 45 and 51
(to identify only a few) clearly establish use of MID-
AMERICA ENERGY RESOURCES, INC. as a service mark in
connection with its district chilling services.6
With respect to first use, again there is ample
testimony and evidence to support opposer’s service mark use
of MID-AMERICA ENERGY RESOURCES, INC. prior to the earliest
date upon which applicant can rely (in this case, August 22,
1994, which is the filing date of the involved application).
Opposer has established that it has been providing district
cooling services under its mark to commercial customers in
Indianapolis since April 1991 (when opposer’s district
cooling system became operational), and that the use has
been continuous since that time. This proof of prior and
continuous use in intrastate commerce establishes opposer’s
priority. Laughner’s Drive-in, Inc. v. Steer Inn Systems,
Inc., 151 USPQ 650, 652 (TTAB 1966), aff’d, 405 F.2d 1401,
160 USPQ 626 (CCPA 1969). Further, the record establishes

6 Exhibit No. 5, which Mr. Greisl identified as a “benefit sheet”
used to summarize the beneficial features of opposer’s services
to prospective customers, was submitted as the specimen of actual
use in commerce in connection with opposer’s application serial
Opposition No. 103,197
9
that opposer has been advertising its district cooling
services to prospective customers in interstate commerce
since March 1992. A representative example of opposer’s
prior use is shown below which is an advertisement run in
the April 29, 1991 Indianapolis Business Journal.
We next turn our attention to the main controversy
between the parties. 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
likelihood of confusion issue. In re E. I du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key considerations

no. 74/692,619 which, as noted above, matured into a
Opposition No. 103,197
10
are the similarities between the marks and the similarities
between the services. We will first focus on these factors,
and then will consider the remaining relevant du Pont
factors.
Insofar as the marks are concerned, we have little
trouble concluding that there are substantial similarities
between opposer’s MID-AMERICA ENERGY RESOURCES, INC. mark
and applicant’s MIDAMERICAN ENERGY mark. Contrary to
applicant’s arguments, we find the marks to be similar in
terms of sound, appearance and meaning. In considering the
marks, we recognize that the descriptive and disclaimed
portions of the marks (“ENERGY RESOURCES, INC.” in opposer’s
mark and “ENERGY” in applicant’s mark) cannot be ignored.
Giant Food, Inc. v. National Food Service, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983). However, although we
have considered the marks in their entireties, there is
nothing improper in giving more weight, for rational
reasons, to a particular feature of a mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In the present case, we have given more weight to the MID-
AMERICA and MIDAMERICAN portions (both of which are followed
by the identical word “ENERGY”) of the respective marks
because of the clearly descriptive nature of the disclaimed
words. The specific differences between the marks are

registration.
Opposition No. 103,197
11
clearly insufficient to distinguish them. And, to the
extent that the marks are suggestive, the marks convey
similar meanings. Notwithstanding this suggestiveness, we
also would point out that the record is devoid of any
evidence of third-party uses or registrations of the same or
similar marks in the utilities field.7
With respect to a comparison of the services, we
acknowledge that applicant’s electric and gas utility
services are specifically different from opposer’s district
cooling utility services. Nonetheless, the services need
not be identical or even competitive to support a holding of
likelihood of confusion. It is sufficient that the services
are so related or that conditions surrounding their
marketing are such that they are encountered by the same
persons who, because of the relatedness of the services and
the similarities between the marks, would believe mistakenly
that the services originated from or are in some way
associated with the same producer. Hercules Inc. v.
National Starch and Chemical Corp., 223 USPQ 1244, 1247
(TTAB 1984).

7 Applicant makes a weak argument that opposer’s mark is merely
descriptive and that, therefore, opposer must show secondary
meaning. Applicant’s answer makes no such allegations, and the
attack on the distinctiveness of opposer’s pleaded mark, raised
for the first time in applicant’s brief, is manifestly late.
Accordingly, we have given no consideration to applicant’s
argument.
Opposition No. 103,197
12
Opposer’s roots are in the public utility services
field, with opposer’s being conceived by IPL, an Indiana
regulated public utility, to benefit IPL. As Mr. Gustin
explained, when an IPL customer air-conditions its building
with chilled water supplied by opposer, the customer uses
less electricity than would have been required to air-
condition the building with its own air-conditioning unit.
Mr. Gustin pointed out that this translated into a
“significant demand side management tool” for IPL because it
lowered the peak demand, which occurs in the hottest months
of the year, for IPL electricity to run air-conditioning
units.
As further evidence of the relationship between the
parties’ services, we note Mr. Gustin's testimony that
articles concerning opposer and its district cooling
services have appeared in trade publications circulated in
the electric utility industry. Mr. Gustin specifically
referred to articles in Electric Utility Week, Electric
Light & Power and Electric Utility Week’s Demand-Side
Report.
Opposer also has highlighted two instances when opposer
has submitted joint proposals to develop district cooling
systems with public utilities (Atlantic Energy, and
Baltimore Gas & Electric). Mr. Gustin testified that when
opposer contacts a potential customer for its district
Opposition No. 103,197
13
cooling services, “the first thing they hear is our name and
the fact that we’re associated with IPALCO and Indianapolis
Power & Light Company.” According to Mr. Gustin, this
ensures that potential customers understand that opposer’s
district cooling services are in some way affiliated with an
established electric utility.
The parties’ respective services would be purchased by
the same classes of customers, namely commercial and
business entities. Mr. Greisl testified that “the decision
makers which [opposer] were seeking with respect to district
cooling systems in Indianapolis were also the decision
makers to purchase electricity in general” about 95 percent
of the time. Although applicant’s services are regulated
and, thus, for the time being, are geographically restricted
in use (a fact, however, which is not reflected in the
involved application, which seeks a geographically
unrestricted registration), there is still an overlap in
customers. We tend to agree with applicant, however, that
the overlap comprises sophisticated customers. Indeed,
given the nature and cost of opposer’s services, there is a
good bit of negotiation and education involved before a deal
is struck between opposer and a customer. Nonetheless, even
sophisticated purchasers are not immune from source
confusion, and we find that especially to be the case where,
as here, the marks are very similar and the services are
Opposition No. 103,197
14
closely related. Carlisle Chemical Works, Inc. v. Hardman &
Holden, Ltd., 168 USPQ 110 (CCPA 1970); and HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, 14 USPQ2d 1840 (Fed. Cir. 1990).
One final argument of opposer’s merits mention.
Opposer posits that “[i]mpending regulation of the electric
industry means that the regulated, monopolistic electric
utility markets of the past will be replaced with
unregulated, competitive markets in the not-too-distant
future” and that “[a] competitive market will mean that the
captive electricity customer of today will have competitive
choices among electricity providers.”8 Opposer goes on to
assert that impending deregulation of the electric industry
means that applicant will be free to offer its public
utility services outside of its present regulated market.
In making this assertion, opposer points to Ms. Wharton’s
testimony that should deregulation take place, applicant
could be selling its services in the Indianapolis area, and
even to opposer’s present district cooling customers.
We also note Mr. Greisl’s testimony that opposer’s long
range plan in 1992 was to start district cooling systems in
30 targeted cities so that, when deregulation of the
electric industry occurred, opposer would be a known entity

8 Applicant also recognizes the impending deregulation of the
electric industry, informing its shareholders of “the
increasingly competitive environment ahead.”
Opposition No. 103,197
15
and be well positioned to sell electic power to customers in
those cities. In this connection, Mr. Gustin added that
opposer likely will secure some new retail customers for IPL
after deregulation occurs due to its existing relationships
which have been established through its district cooling
services.
We need not base our conclusion on speculative, future
events, but rather have reached our decision based on the
regulated situation that exists today. Nevertheless, the
evidence of record, some coming from applicant, suggests
that the electric industry is heading toward deregulation, a
situation which would only increase the likelihood of
confusion between the parties’ marks. The absence of proof
of actual confusion undoubtedly can be attributed, at least
in part, to the regulated nature of applicant’s business.
In any event, the test here is not actual confusion, but
rather likelihood of confusion. Thus, the lack of evidence
of actual confusion does not compel a different result here.
Lastly, to the extent that any of applicant’s arguments
raise a doubt about likelihood of confusion, such doubt must
be resolved against the newcomer and in favor of the prior
user. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 2 (CCPA 1977).
Opposition No. 103,197
16
Decision: The opposition is sustained and registration
to applicant is refused.
T. J. Quinn
G. D. Hohein
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board