National Rural Electric Cooperative Associationv.Suzlon Wind Energy Corporation

Trademark Trial and Appeal Board

Apr 19, 2006

No. 92043377 (T.T.A.B. Apr. 19, 2006)

Mailed:
19 April 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

National Rural Electric Cooperative Association
v.
Suzlon Wind Energy Corporation
_____

Cancellation No. 92043377

_____

James R. Menker of Smith, Gambrell & Russell, LLP for the
National Rural Electric Cooperative Association.

Jay S. Horowitz, Esq. for Suzlon Wind Energy Corporation.
______

Before Bucher, Holtzman, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Respondent Suzlon Wind Energy Corporation is the owner
of Registration No. 2,811,396 for the mark:

for “wind turbines and their components, namely, nacelle,
gearbox, generator, control system, hub, tower, and blades
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF
THE TTAB
Cancellation No. 92043377
2
in Class 7. The registration resulted from application
Serial No. 76399388, filed April 23, 2002. It alleged
dates of first use of May 1, 2003, and the registration
issued on February 3, 2004.
Petitioner National Rural Electric Cooperative
Association (NRECA), on June 10, 2004, petitioned to cancel
respondent’s mark. Petitioner is the owner of Registration
No. 2,205,808, which issued November 24, 1998, for the mark:

for the following goods and services:
Lapel pins in Class 14
Periodical publications, namely newsletters, magazines,
and information bulletins in the field of rural
electrification, and pens and pencils in Class 16

Conducting educational workshops, seminars and training
programs, and management, law, and labor relations
update seminars and lectures, in the field of rural
electrification in Class 41

Association services, namely, promoting the interests
of the rural electrification industry and members of
rural electric cooperatives in Class 42.

The registration is based on application Serial No.
75409381, filed December 22, 1997. The registration claims
a date of first use and first use in commerce for all the
Cancellation No. 92043377
3
classes of January 1988. Affidavits under Sections 8 and 15
have been accepted or acknowledged.
Petitioner alleges that the “conditions surrounding the
marketing of the goods and services set forth in Reg. No.
2811396 and the goods set forth in … Reg. No. 2205808 are
such that they could be encountered by the same purchasers
under circumstances that could give rise to the mistaken
belief that the goods and/or services come from a common
source.” Petition at 2. Respondent denied the salient
allegations of the petition to cancel.
The Record
The record consists of the following items: the file
of the involved registration; the testimony deposition
of petitioner’s director of conference program planning,
Valerie Parks; and status and title copies of petitioner’s
registration submitted by petitioner under a notice of
reliance.
Priority
Inasmuch as both petitioner and respondent own
registrations, petitioner does not necessarily have priority
simply because it owns a registration. Brewski Beer Co. v.
Brewski Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB 1998)
(The “Board has taken the position, in essence, that the
registrations of each party offset each other; that
petitioner as a plaintiff, must, in the first instance,
Cancellation No. 92043377
4
establish prior rights in the same or similar mark … Of
course, petitioner or respondent may rely on its
registration for the limited purpose of proving that its
mark was in use as of the application filing date”). In
this case, because respondent has not submitted any evidence
of an earlier priority date, the earliest date upon which it
can rely is the filing date of its application (April 23,
2002). Intersat Corp. v. International Telecommunications
Satellite Organization, 226 USPQ 154, 156 n. 5 (TTAB 1985)
(“The earliest date of first use upon which Intelsat can
rely in the absence of testimony or evidence is the filing
date of its application”). Inasmuch as petitioner’s
underlying application was filed on December 22, 1997,
petitioner has priority.
Likelihood of Confusion
We now consider the central issue in this appeal, i.e.,
whether respondent’s SUZLON and design mark when used on
wind turbines and components is confusingly similar to
petitioner’s design mark used on lapel pins; publications;
workshops, seminars and training programs; and association
services. In arriving at a conclusion in likelihood of
confusion cases, we consider the facts as they relate to
the relevant factors set out in such cases as In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003); In re E. I. du Pont de Nemours & Co., 476 F.2d
Cancellation No. 92043377
5
1357, 177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000).
We begin our analysis by comparing the parties’ marks.

We note that a “[s]ide by side comparison is not the test.”

Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d
586, 177 USPQ 573, 574 (CCPA 1973). However, because the
marks include designs, it is helpful to observe the marks
together so that their similarities and differences can be
determined. When we do compare the marks, it is clear that
the marks are similar to the extent that both marks contain
dark, circular designs.1
The circle design is hardly particularly distinctive in
trademark designs. In re Anton/Bauer Inc., 7 USPQ2d 1380,
1381 (TTAB 1988) (“In particular, common geometric shapes
such as circles, ovals, triangles, diamonds and stars, when
used as backgrounds for the display of word or letter marks,

1 Petitioner’s witness asserts that respondent’s mark is used in
a similar green color. Parks dep. at 69 (“Primarily it appears
in green, a green that’s very similar to, if not the same as, the
NRECA logo”).
Cancellation No. 92043377
6
are not regarded as trademarks for the goods to which they
are applied absent evidence of distinctiveness of the design
alone”). Both marks are also mostly shaded. Another
feature that the marks share are several lines.
Respondent’s mark contains three identical lines that have
one bend. Petitioner’s mark contains five lines. Three of
the lines are nearly the same and two other lines are
different.
Petitioner’s style manual describes its trademark as
follows: “The NRECA symbol was designed to represent
electric lines crossing the green rolling hills of America’s
countryside.” Parks dep. Ex. 15 at 000119. Respondent
describes its marks (Brief at 5) as “the ‘SUZLON’ wording
along with the ‘S’ design composed of three ‘S-shaped’
zigzagging lines in a circle.” Respondent’s design
certainly would not suggest a countryside scene. Also,
while petitioner argues that both “parties use the zig-
zagging lines to connote electricity or dynamic movement,”
(Brief at 15), because the parties are involved in the field
of electrification as the supplier of turbines or as an
association of rural electrical cooperatives, the designs
are suggestive of the goods, and therefore, to the extent
that consumers would view both designs as suggesting
electricity, such a similarity in connotation does not
mandate a finding that the marks are similar. Furthermore,
Cancellation No. 92043377
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regardless of what the parties may have intended, the
designs are somewhat abstract, and therefore it is not clear
that consumers would view them as suggesting electricity.
Instead, both marks “could easily suggest a number of
different things to prospective purchasers.” Ocean Spray
Cranberries, Inc. v. Ocean Garden Products, Inc., 223 USPQ
1027, 1029 (TTAB 1984).
Before we conclude our discussion of the marks, we
would be remiss if we did not emphasize that an important
difference between the two marks is that respondent’s mark
is not simply a design. In addition to the design,
respondent’s mark also contains the apparently arbitrary
word SUZLON. This word is a prominent part of respondent’s
mark inasmuch as it could be pronounced and it would be used
to verbally describe the source of wind turbines and their
components. Petitioner argues that “[m]any members display
their name underneath the NRECA logo… Suzlon can easily be
mistaken for a member of the electric cooperative using its
trade name underneath the NRECA logo.” Brief at 17.
However, respondent is not using its mark in connection with
association services or seminars in the field of rural
electrification. Respondent is using its mark to indicate
the source of wind turbines and their components, not
Cancellation No. 92043377
8
services associated with electric cooperatives.2 Merely
because petitioner is an association does not mean that
potential members of its association are likely to assume
that all somewhat similar marks on electricity generating
products are somehow associated with petitioner. Therefore,
we cannot discount the significance of the arbitrary word in
respondent’s mark when it is used as a trademark for its
goods.
It is critical that we compare the marks in their
entireties because that is how customers will perceive them.
When we do this, we must keep in mind that "[h]uman memories
even of discriminating purchasers … are not infallible." In
re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986), quoting, Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970). Here, even taking into consideration the
fallibility of memory, when we compare the marks, we
conclude that they are only somewhat similar in appearance,
meaning, and commercial impression inasmuch as the designs
contain circular designs that are suggestive of

2 We point out that respondent’s registration includes only goods
in Class 7. While petitioner refers to respondent’s training
services (Brief at 26), we must consider these services to be
simply ancillary services involved with the purchase of
respondent’s wind turbines and associated products. The record
does not indicate that this brochure was submitted earlier,
therefore it is not properly of record. We add that even if it
had been made of record earlier, the fact that respondent
provides these ancillary services does not support a conclusion
that confusion is likely.
Cancellation No. 92043377
9
electricity. They are different because respondent’s mark
contains an arbitrary word and its lines do not suggest the
countryside as petitioner’s mark does. In re Coors Brewing
Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)
(“Although we uphold the Board’s finding that the two marks
are generally similar, principally because they both use the
term ‘Blue Moon,’ we note that similarity is not a binary
factor but is a matter of degree”). Here, the degree of
similarity is not great.
The next factor we consider is whether the goods and
services of the parties are related. It is well established
that we consider the goods and services as they are
described in the identification of goods and services in the
registrations. Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Respondent’s goods are wind turbines and their
components, namely, nacelle, gearbox, generator, control
system, hub, tower, and blades. Petitioner’s goods include
lapel pins and newsletters, magazines, and information
bulletins in the field of rural electrification, and pens
and pencils. Its services include conducting educational
workshops, seminars and training programs in the field of
rural electrification and association services promoting the
interests of the rural electrification industry and members
of rural electric cooperatives. It is clear from even a
Cancellation No. 92043377
10
cursory review of the parties’ goods and services that they
are neither identical nor closely related. There are no
obvious connections between the source of lapel pins,
publications, seminars and association services, even if
they concern electrification, and the source of wind
turbines, other than the fact that wind turbines may be
featured in publications or discussed at seminars involving
electrification. However, that is not the end of the
discussion on the relatedness of the goods and services.
It “has often been said that goods or services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
enough that goods or services are related in some
manner or that circumstances surrounding their
marketing are such that they would be likely to be seen
by the same persons under circumstances which could
give rise, because of the marks used thereon, to a
mistaken belief that they originate from or are in some
way associated with the same producer or that there is
an association between the producers of each parties'
goods or services.”

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See
also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1661 (TTAB 2002).
Petitioner argues (Brief at 19) that the marks “are
used on directly competitive goods and services.”
Specifically, petitioner maintains (Brief at 20) that:
“NRECA helps member co-ops evaluate renewable energy
resources like wind as they promote fuel diversity and
power supply.” See Parks Dep. at 82. NRECA’s interest
in wind power was documented in April of 2003 when
NRECA produced a white paper on the topic. The white
paper provided an overview of wind power as an
alternative energy source for co-operatives and
Cancellation No. 92043377
11
documents that it is the fastest growing form of
renewable energy in America. Recognizing that a focus
on the environment is of primary importance, this
document was designed to provide co-ops with an
objective overview of wind energy as a technology for
them to investigate and research as an alternative
energy source.

Respondent admits (Brief at 8) that “the goods and
services used with the respective marks fall in the energy
industry.” Indeed, inasmuch as the parties operate in the
same general area, it is not surprising that their paths do
occasionally cross at trade seminars and policy group
meetings. However, these common interactions do not make
wind turbines related to association services. If this were
the case, goods and services in such fields as the computer
and snack food industry would almost always be held to be
related even though our case law oftentimes arrives at the
opposite conclusion. Merely because parties operate in the
same broad industry does not, by itself, establish that
their goods and services are related. Saks & Co. v. Snack
Food Association, 12 USPQ2d 1833, 1835 (TTAB 1989) (“Merely
because opposer sells what can be characterized as snack
foods, even snack foods bearing the ‘SFA’ logo, in its
retail establishments, does not create a sufficient nexus
with the association services applicant renders to the snack
food industry”); In re Quadram Corporation, 228 USPQ 863,
865 (TTAB 1985) (“[W]e think that a per se rule relating to
source confusion vis-a-vis computer hardware and software
Cancellation No. 92043377
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is simply too rigid and restrictive an approach and fails to
consider the realities of the marketplace”).
When we look at petitioner’s evidence, we do see an
example of where there is potential for overlap, and it
occurs among members or potential members of petitioner’s
association and suppliers of wind turbines. An example of
this overlap is in Kotzebue, Alaska.3 See Parks dep. Ex. 7.
The Kotzebue Electric Association is a member of the
National Rural Electric Cooperative Association and it
displays petitioner’s mark on its literature. Parks Dep.
Ex. 7. The exhibit is entitled “The Kotzebue Wind Energy
Project.” In the brochure, the Kotzebue Electric
Association (KEA) describes how KEA “raised three 66-
kilowatt turbines high above the expansive Arctic horizon,
seeding the first utility wind farm in Alaska. The turbines
were soon harnessing piercing winter winds, producing
electricity for local homes and heralding the potential for
a brighter energy future for remote communities.” The
Kotzebue Electric Association would therefore be a user of
petitioner’s services as well as a member of petitioner’s
association. It would also be a potential purchaser of
respondent’s wind turbines.

3 Kotzebue is a town of 3000 residents located in northwest
Alaska approximately 550 air miles from Anchorage. Parks Dep.
Ex. 7.
Cancellation No. 92043377
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As the provider of electric power to Kotzebue, KEA
presumably purchases numerous goods and services. However,
we simply do not have evidence to conclude that KEA and
other cooperatives would assume that all goods and services
are associated with petitioner simply because such goods and
services are all involved with producing electricity. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1310 (Fed. Cir. 2002) (A “broad general market
category is not a generally reliable test of relatedness of
products”). Therefore, we find that petitioner’s
association services and its services involving conducting
educational workshops, seminars and training programs, and
management, law, and labor relations update seminars and
lectures in the field of rural electrification, are at best
only tenuously related to wind turbines and component parts.
As for petitioner’s lapel pins and publications, petitioner
has not established any relationship between these goods and
wind turbines. Coors Brewing, 68 USPQ2d at 1064 (“[D]egree
of overlap between the sources of restaurant services and
the sources of beer is de minimis”).
Other factors that we take into consideration are the
sophistication of the purchasers and the care with which
purchases are made. The decision to purchase a wind turbine
is a decision that requires careful consideration by
knowledgeable purchasers. Petitioner’s literature (Parks
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Dep. Ex. 12 at 002011-12) describes some of the cost and
details involved in purchasing and installing wind turbines:
New wind turbines being installed in wind farms are
very large. A typical 650-kW unit has rotors that
measure about 155 feet (approximately 50 meters) – more
than half the length of a football field – and towers
215 feet tall. Foundations for these units require
holes 30 feet deep and 14 feet in diameter…

A typical wind farm can be installed in a remote
location within a two-year period, although building
transmission capacity to transport the electricity to
load centers could take a much longer time…

The current cost for wind turbine installation of large
wind farms is approximately $900 to $1000 per kW. For
smaller installations, the cost for wind turbines is
$1200 to $1300 per kW. Small units for individual
farms or businesses (10-kW turbines) could run as high
as $3000 per kW.

Similarly, the decision to join an association promoting the
interests of the rural electrification industry or to attend
training in this area is not likely to be made lightly.
Joining an association promoting rural electrification or
using their services as well as purchasing wind turbines
would involve sophisticated purchasers who are not making
ordinary or impulse purchases. Indeed, these purchases are
likely be made after careful consideration. Therefore,
these factors favor respondent.
Petitioner also alleges that there has been actual
confusion between petitioner’s and respondent’s marks. “A
showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of
confusion.” Majestic Distilling Co., 65 USPQ2d at 1205.
Cancellation No. 92043377
15
Here, petitioner argues that there “has been at least one
incident of actual confusion… Actual confusion occurred
when the general counsel and government relations director
of the South Dakota Rural Electric Association first viewed
Suzlon’s mark.” Brief at 28 (underlining added).
Petitioner’s conclusion is based on an email from Harlan
Fuglesten, who is the General Counsel and Government
Relations Director for the North Dakota Association of Rural
Electric Cooperatives. In this email (Parks dep. Ex. 24),
Mr. Fuglesten reports that:
I happened to notice an ad today for Suzlon Energy, a
wind energy company, which has as its logo a green ball
with three jagged lines running through it. At first,
I thought it was an NRECA ad. I just wondered if
anyone had looked at this for possible trademark
infringement. You can see the logo by going to
Suzlon’s website at www.suzlon.com.

Respondent (Brief at 7) argues that this “testimony did
not involve a consumer in the marketplace, but rather the
general counsel of one of Petitioner’s cooperatives.”4 We

4 Respondent also refers to the statement as hearsay, but we can
consider testimony concerning employee’s statements about actual
confusion as an exception to the hearsay rule. CCBN.com Inc. v.
c-call.com Inc., 53 USPQ2d 1132, 1137 (D. Mass. 1999)
(“[S]tatements of customer confusion in the trademark context
fall under the ‘state of mind exception’ to the hearsay rule.
See Fed. R. Evid. 803(3)”). In addition, letters (or their
electronic equivalent, email) from customers are also recognized
as an exception to the hearsay rule. International Kennel Club
of Chicago v. Mighty Star Inc., 846 F.2d 1079, 6 USPQ2d 1977,
1985 (7th Cir. 1988) (The “weight of authority allows the
admission of letters directed to the plaintiff where the evidence
contains factual data (beyond a mere legal conclusion) that is
material to the issue of the likelihood of confusion”). See also
Freddie Fuddruckers, Inc. v. Ridgeline, Inc., 589 F. Supp. 72,
223 USPQ 1139, 1141 (N.D. Tex. 1984) (“Hearsay letters and
Cancellation No. 92043377
16
are not persuaded that this single instance of alleged
actual confusion is significant. Mr. Fuglesten’s email
seems to indicate that he mistakenly believed that the mark
was petitioner’s without considering the goods and services.
Indeed, when the ad was viewed in its entirety,
Mr. Fuglesten arrived at the conclusion that the marks as
used on the respective goods and services did originate from
different sources. Therefore, we find this equivocal email
does not require us to conclude that there is a likelihood
of confusion.
On the factor of fame, we note that petitioner has
provided some evidence that while it does not have a “budget
for the green ball logo, per se; however, given that this
logo appears on – gosh, on all of our websites, that it
appears on every piece of print and collateral material that
NRECA produces, I think it’s pretty safe to say that budget
is in excess of a million dollars per year.” Parks dep. at
53. However, the same witness (Id.) “wouldn’t characterize
it as famous.” While we agree that petitioner’s mark is not
famous, petitioner’s evidence does demonstrate that its mark
is not weak.

statements of customers are admissible in evidence under Fed. R.
Evid. Rule 803(3) where they reveal the then existing state of
mind of the writers and speakers and their state of mind is
relevant to the case”), aff’d mem., 783 F.2d 1062 (5th Cir. 1986).
Cancellation No. 92043377
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Another point we consider is that “a presumption of
validity attaches to a service mark registration, and the
party seeking cancellation must rebut this presumption by a
preponderance of the evidence.” West Florida Seafood Inc.
v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ 1660, 1662
(Fed. Cir. 1994). Viewed in this light, we determine that
petitioner has not met its burden of demonstrating that
there is a likelihood of confusion. The marks are far from
identical. Respondent’s mark contains an arbitrary word and
the designs are not the same. Even if prospective
purchasers may at first glance see the marks as consisting
of similar dark circles with zigzagging lines, when the
marks are considered in relation to the relevant goods and
services, confusion is not likely. Wind turbines and
association services and seminar and update services are
barely related. When we also consider that these goods and
services would be purchased by knowledgeable purchasers
after some thought, there is even less reason to believe
that confusion is likely.
Decision: The petition to cancel is denied.