New Dominion, LLC

Trademark Trial and Appeal Board

Mar 28, 2013

No. 85225322 (T.T.A.B. Mar. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re New Dominion, LLC
_____

Serial No. 85225322
_____

Joseph D. Fincher of Hall Estill Hardwick Gable Golden & Nels for New Dominion,
LLC
Thomas M. Manor, Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pederson, Managing Attorney).
_____

Before Zervas, Wolfson and Adlin, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
New Dominion, LLC (“applicant”) seeks registration on the Principal Register
of the mark NEW DOMINION, LLC A NATURAL RESOURCE PRODUCER (in
standard characters) for “analysis services for oil field exploration; exploration and
searching of oil and gas; gas exploration; geophysical exploration for the oil, gas and
mining industries; oil field exploration; oil prospecting; oil prospecting, namely, well
logging and testing; performing oil well diagnostics; petroleum exploration;
Serial No. 85225322

2

providing technology information in the oil and gas industry,” in International Class
42.1
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having
determined that registration would lead to a likelihood of confusion in view of the
services recited in Reg. No. 2601969 for the mark DOMINION (in standard
character format).2 The examining attorney cites specifically to registrant’s services
in Classes 37 and 42 as being most relevant to the refusal. These services are:
Installation, construction, maintenance and repair of
transmission facilities, energy equipment, and energy
systems; maintenance and repair of the electrical or
mechanical systems of others to eliminate or reduce
electric power interruptions, fluctuations, transients, and
harmonics; land development services, namely, planning
and laying out of power plants; power plant construction;
drilling and pumping oil and natural gas; installation of
home security systems in International Class 37; and
Computer programming services for others; power quality
analysis, design, and engineering through the selection,
operation, and installation of devices or equipment to
reduce or eliminate electric power interruptions,
fluctuations, transients, and harmonics in the electrical or
mechanical systems of others; engineering and design of
transmission facilities, energy equipment, energy systems
for others; oil and natural gas exploration; monitoring of
home security systems; consultation services in the field

1 Application Serial No. 85225322 was filed on January 25, 2011, based on an allegation of
first use and first use in commerce on September 1, 1999. The application includes the
following disclaimer: No claim is made to the exclusive right to use LLC apart from the
mark as shown.
2 Registered July 30, 2002; renewed.
Serial No. 85225322

3

of development, control, use and conservation of electrical
energy and natural gas in International Class 42.3
After the examining attorney made the refusal final, applicant appealed to
this Board.4 We affirm the refusal to register.
Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary
matter. For the first time, on appeal, applicant filed copies of third-party
registration certificates of marks containing the word DOMINION, purportedly to
show the mark is weak. The examining attorney objected to the evidence as being
untimely. Applicant argues that the Board should review the third-party
registrations because the examining attorney likely discovered them while
conducting his search of Office records. Regardless of whether the registrations
were considered as part of a search of Office records, and we have no indication
whether or not they were, they have not been made of record in this case. An
applicant may not use its brief as a vehicle to introduce evidence for the first time;
the record must be complete prior to appeal. Trademark Rule 2.142 (d).

3 The mark has also been registered for a variety of services in International Classes 35, 36,
37, 39, 40 and 42. These are:
Business consultation in the field of efficient energy use, power demand control, and building
and facilities management for others; providing billing services for utilities; management
assistance services in the area of energy needs of industry; operation of a business for others,
namely, a power plant, in International Class 35;
Brokerage of electricity and natural gas, in International Class 36;
Public utility services, namely, the transmission and distribution of electrical energy and
natural gas, as well as electric and gas meter reading services, in International Class 39; and
Generation of electricity, in International Class 40.
4 Applicant is reminded that briefs are to be double-spaced, not single-spaced. Trademark
Rule 2.126(a)(1). In addition, all pages are to be numbered. Trademark Rule 2.126(a)(5).
Inasmuch as the brief would have met the page-length restrictions had it been properly
formatted, and despite applicant’s failure to properly number the pages of its brief, we have
considered it. See Trademark Rule 2.128(b).
Serial No. 85225322

4

In order to have made the third-party registrations properly of record,
applicant would have had to have submitted “copies of the registrations themselves,
or the electronic equivalent thereof” prior to the appeal. In re Broadway Chicken
Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB 1996) (citing In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994)).5 See also, TBMP § 801.01 (3d ed. rev. 1 2012). We
hasten to add, however, that registrations are not evidence of use and therefore
they have limited probative value in showing whether another mark is
commercially weak. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB
1987)(“…said registrations do not prove that consumers are accustomed to seeing
various apparel marks containing JM and therefore are careful in distinguishing
them.”).6
We have also not considered the list of these registrations that applicant
submitted with its response of October 31, 2011. The examining attorney properly
objected to the listing in his Final Office action of November 23, 2011. See In re
Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010); and In re Jump Designs LLC, 80
USPQ2d 1370, 1372-73 (TTAB 2006) (mere listings of registrations are not
sufficient to make the registrations of record). Therefore, we have given no further
consideration to these registrations or the listing thereof.

5 After appeal, an applicant seeking to introduce additional evidence may file a motion for
remand of the matter to the examining attorney; the motion may be granted upon a
showing of good cause. Trademark Rule 2.142 (d).
6 Moreover, in this case even a cursory look at the listing of marks shows that they issued
for remote services, unrelated to those involved herein. Had applicant properly made the
third-party registrations of record, their probative value would nonetheless have been
virtually non-existent.
Serial No. 85225322

5

Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
under the first du Pont factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective marks is likely to result.
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, the analysis cannot be predicated on dissecting the
Serial No. 85225322

6

marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). On the other hand, different features may be
analyzed to determine whether the marks are similar. Price Candy Company v.
Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955); In
re National Data Corp., 224 USPQ at 751 (nothing improper in giving more or less
weight to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties). The focus is on the recollection of
the average purchaser, who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
Bearing these principles in mind, the registered mark in its entirety is the
word DOMINION. Because there is no evidence that the word “dominion” has a
recognized meaning when used in connection with registrant’s services, we find that
it is arbitrary in association with oil and gas exploration services, and that
registrant’s mark is inherently strong. Applicant’s mark is NEW DOMINION, LLC
A NATURAL RESOURCE PRODUCER. The first part of applicant’s mark, the
words NEW DOMINION, is the dominant and most distinctive portion; these words
are “most likely to be impressed upon the mind of a purchaser and remembered.”
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
See also, Palm Bay 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the
Serial No. 85225322

7

first word to appear on the label); Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629,
1639 (TTAB 2007). The addition of the wording A NATURAL RESOURCE
PRODUCER in applicant’s mark is highly suggestive of the nature of applicant’s
services. As such, it is accorded far less significance in creating the mark’s overall
commercial impression and does not serve to distinguish applicant’s mark from the
cited mark. The letters LLC merely identify the corporate structure of applicant,
are disclaimed and carry little, if any source-indicating significance. See In re Dixie
Restaurants Inc. 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(disclaimed term “cafe” in mark THE DELTA CAFE accorded less weight than
dominant portion, “delta”); In re Wm. B. Coleman Co., Inc, 93 USPQ2d 2019, 2026
(TTAB 2010) (“Tacking a company organizational designation such as ‘Company,’ or
‘Inc.’ or ‘Partners’ cannot transform a generic name into a protectable trademark.”).
Obviously, the two marks differ in the number of words utilized, but the
dominant portion of applicant’s mark and the entire mark of the registration are
virtually identical. The inclusion of the elements LLC and A NATURAL
RESOURCE PRODUCER do not obviate the likelihood of confusion. “When one
incorporates the entire arbitrary registered mark of another into a composite mark,
inclusion in the composite mark of a significant non-suggestive element does not
necessarily preclude the marks from being so similar as to cause a likelihood of
confusion.” Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975); see also, The
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
Serial No. 85225322

8

1977) (“An inclusion of a merely suggestive or descriptive element, of course, is of
much less significance in avoiding a likelihood of confusion”; CALIFORNIA
CONCEPT and surfer design is similar to the mark CONCEPT); Hunt Control
Systems Inc. v. Koninklijke Philips Electronics N.V., 2011, 98 USPQ2d 1558, 1566
(TTAB 2011) (SENSE AND SIMPLICITY similar to the mark SIMPLICITY).
Applicant argues that the words NEW DOMINION create a different
commercial impression from the word DOMINION by itself. Because the registrant
is incorporated in Virginia, the commonwealth being known as the OLD
DOMINION, applicant argues that the registration will be perceived as relating to
Virginia, a perception that will not be made in connection with applicant’s mark.
Suffice it to say, there is nothing in the record to suggest that consumers are aware
of the state of incorporation of registrant as being in Virginia, or that they accord
any relevance to such fact. Even if there were such noticeable distinctions between
these terms, and we are not suggesting that there are, consumers could nonetheless
perceive the services as being two branches of the same line, and that applicant’s
services are part of a newer line of registrant’s existing services or that applicant is
affiliated with, or an offshoot of, registrant.
Applicant further argues that the marks may be distinguished based on its
actual use of its mark “in proximity to the design mark ‘NDL,’ Registration No.
4018928.”7 This argument is not persuasive. We have often said that “in
determining the applicant’s right to registration, only the mark as set forth in the
application may be considered; whether or not the mark is used with an associated

7 Applicant’s Brief, p. 1 (unnumbered).
Serial No. 85225322

9

house mark is not controlling.” Frances Denney v. Elizabeth Arden Sales Corp., 263
F.2d 347, 120 USPQ 480, 481 (CCPA 1959); see also, Blue Cross and Blue Shield
Association v. Harvard Community Health Plan Inc., 17 USPQ2d 1075, 1077 (TTAB
1990). The mark, as applied-for, does not include applicant’s NDL house mark, and
whether applicant uses its mark in association with the house mark is irrelevant to
the present inquiry.
Viewing the marks in their entireties, we find them to be similar overall in
sight, sound, meaning and commercial impression. For these reasons, the first du
Pont factor regarding the similarity of the marks weighs in favor of a finding of
likelihood of confusion.
B. Comparison of the Services
We next turn our attention to a comparison of the similarity or dissimilarity
and nature of the services described in the application and registration. It is settled
that it is not necessary that the respective services be identical or even competitive
in order to find that they are related for purposes of our likelihood of confusion
analysis, it being sufficient that the services are related in some manner and/or that
the circumstances surrounding their marketing are such that they would be likely
to be encountered by the same persons under circumstances that would give rise,
because of the marks employed thereon, to the mistaken belief that the services
originate from or are in some way associated with the same producer. In re Home
Builders Assn. of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990).
In this case, we have legally identical, overlapping services. Applicant’s
services include “gas exploration; oil field exploration.” Registrant’s services include
Serial No. 85225322

10

“oil and natural gas exploration” and “drilling and pumping oil and natural gas.”
Such overlap is sufficient to find that the services are related. Compare Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA
1981) (it is sufficient for a finding of likelihood of confusion if the relatedness is
established for any item encompassed by the identification of goods within a
particular class in the application.). In addition, the remaining services are
complementary. For example, registrant provides “consultation services in the field
of development, control, use and conservation of electrical energy and natural gas”
and applicant provides “analysis services for oil field exploration; providing
technology information in the oil and gas industry.” Both applicant and registrant
thus offer advice and guidance in the field of oil and gas, in addition to the legally
identical services of oil and gas exploration.
Applicant argues that the services are nonetheless dissimilar because
registrant is a “utility,” which provides electricity and natural gas to utility
consumers, while applicant drills for oil and gas using a “new method known as de-
watering.”8 The purpose of “de-watering” is to remove water from solid material or
soil, such as at construction sites.9 As applied to applicant’s services, it describes a
means of removing water from oil and gas reservoirs in order to locate and extract
the natural resources. Applicant claims to be the “preeminent expert” in this
area.10 As applicant’s literature explains: “By removing water at an extremely fast
rate, the shift in pressure can pull oil from the rock. In this way, new oil fields can

8 Brief, p. 3 (unnumbered).
9 See at http://en.wikipedia.org, attached to Office action dated November 23, 2011.
10 Brief, p. 3 (unnumbered).
Serial No. 85225322

11

be created.”11 Regardless of the means used to extract the natural resources,
however, both parties provide the same services, that of oil and gas exploration, and
related consultation and advisory services, whether or not registrant is a utility.
The fact that applicant may utilize, even be known for, a different method of
extraction does not yield a different result.
In addition, the examining attorney has submitted copies of the following
use-based, third-party registrations showing that a single entity may provide utility
services and also oil and gas exploration services:
Reg. No. 3242505 for the mark BUILDING A STRONG
AMERICA for, inter alia, “utility services, namely
transmission and distribution of electricity; and
distribution of natural gas” in International Class 39, and
“oil field survey and exploration” in International Class
42;12
Reg. No. 1568733 for the mark ENRON for, inter alia,
“development and construction services in the field of
cogeneration and other non-regulated electric generation
facilities” in International Class 37, and “geophysical
exploration services for the oil and gas industries; drilling
and pumping of oil; engineering services, namely oil and
natural gas extraction” in International Class 4213; and
Reg. No. 3301719, for the mark DIRECT ENERGY and
design, for inter alia, “construction of electrical generation
facilities” in International Class 37; public utility services
in the nature of electricity and natural gas in
International Class 39; and “exploration for petroleum,

11 From the specimen submitted with applicant’s application, a copy of which was attached
to applicant’s response (filed October 31, 2011) to the Office action dated April 29, 2011.
12 Registered May 15, 2007. The owner of this registration has also registered the mark
MDU RESOURCES GROUP, INC. BUILDING A STRONG AMERICA for the same
services. Reg. No. 3242506; registered May 15, 2007.
13 Registered November 28, 1989; renewed.
Serial No. 85225322

12

natural gas and natural gas liquids” in International
Class 42.14
While these registrations do not demonstrate that the marks involved are in actual
use, they serve to suggest that utility services and oil/gas exploration services are of
a type which may emanate from a single source. In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
For these reasons, we find that applicant’s services are highly similar, and
indeed legally identical in part, to the services recited in the cited registration. The
second du Pont factor accordingly weighs heavily in favor of a finding of likelihood
of confusion.15
C. Trade Channels; Purchaser Sophistication
Because there are no limitations as to trade channels in either applicant’s
application or the registrant’s registration, and because each recitation covers
identical services, namely, oil and gas exploration, it necessarily follows that these
services would be offered through the same, normal channels of trade and be offered
to all usual purchasers for such services. See Canadian Imperial Bank of Commerce
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987) (since
application and registration both cover “banking services” with no restrictions, court
considers likelihood of confusion in the context of the “normal and usual channels of

14 Registered October 2, 2007.
15 We note applicant’s offer to “adopt a more narrow description of the services to the extent
useful in addressing the concerns of the examining attorney.” Reply Brief, p. 8. While
applicant may have amended its description of services prior to appeal, or filed a motion to
remand the case for such purpose upon a good cause showing, at this stage the services may
no longer be amended.
Serial No. 85225322

13

trade and methods of distribution”); cf., In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994) (legally identical goods presumed to travel in same
channels of trade and be sold to same class of purchasers).
Applicant asserts that the “fact that both the Applicant’s Mark and the Cited
Mark are, in part, related to a general ‘exploration’ category is not determinative,”
arguing that because its services are highly specialized exploration services
whereas the registrant’s services are not, “applicant will be marketing its services
[to] a completely different group of customers.”16 This argument is unavailing.
Even if evidence supported applicant’s contention that the parties’ actual trade
channels differ, it is settled that in making our determination regarding the
channels of trade, we must look to the services as identified in the involved
application and cited registrations. See, e.g., Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and
The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715, 1717 (TTAB
1991) (“[I]n the absence of any restriction in the recitation of services, applicant’s
services must be assumed to move through all of the normal channels of trade for
services of this type and reach all of the normal purchasers of such services.”).
Accordingly, this du Pont factor further favors a finding of likelihood of
confusion.
As to purchaser sophistication, the evidence does suggest that oil exploration
is an “expensive, high risk operation.”17 However, it is settled that even

16 Brief, p. 4 (unnumbered).
17 At http://en.wikipedia.org, attached to Office action dated November 23, 2011.
Serial No. 85225322

14

sophisticated purchasers are not immune from source confusion, especially in cases
such as the instant one involving highly similar marks and legally identical
services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers...are not infallible.”). Given these considerations, we
regard this factor as neutral.
D. Lack of Actual Confusion
Applicant claims to have used his mark concurrently with the mark in the
cited registration since January 31, 2000 without confusion. Nonetheless, applicant
has failed to provide any evidence showing the nature and extent of applicant’s use
or that of the cited registrant within which context we could ascertain whether or
not confusion would have had an opportunity to take place. No evidence has been
placed in the record tending to establish whether or not applicant and the
registrant operate in the same geographical region, whether each advertises
through similar media, the level of sales each has maintained over the years or the
degree of public renown each mark has garnered. As we have often stated,
“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value.” In re Majestic Distilling, 65 USPQ2d at 1205, citing In re
Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973).
Moreover, actual confusion is not necessary to show a likelihood of confusion.
See Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ
390, 396 (Fed. Cir. 1983). Whatever presupposition we could make regarding any
Serial No. 85225322

15

lack of confusion would be purely speculative at this point. As this is an ex parte
proceeding, registrant has not had an opportunity to contradict applicant’s
statements.
Accordingly, we conclude that the actual-confusion factor is neutral.
E. Balancing the factors.
The cited mark DOMINION is inherently strong as an arbitrary term for the
relevant services. Applicant’s mark is dominated by the words NEW DOMINION,
which are confusingly similar to the cited mark. The remaining elements in
applicant’s mark consist of the highly suggestive phrase, A NATURAL RESOURCE
PRODUCER and the corporate designation LLC. These additional features fail to
distinguish applicant’s mark from the cited mark. Moreover, the marks are used in
connection with legally identical services; the trade channels are presumed to be the
same and the classes of purchasers, while potentially sophisticated, are not immune
from source confusion. Finally, the apparent lack of actual confusion is neutral.
Registration of the mark NEW DOMINION, LLC A NATURAL RESOURCE
PRODUCER is likely to cause confusion with the registered mark DOMINION for
the respective services offered under each mark.
Decision: The refusal to register applicant’s mark NEW DOMINION, LLC
A NATURAL RESOURCE PRODUCER under Section 2(d) of the Trademark Act is
affirmed.