NRG Systems, Inc.

Trademark Trial and Appeal BoardSep 7, 2012

No. 85001796 (T.T.A.B. Sep. 7, 2012)

Mailed: Hearing: September 7, 2012 May 23, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re NRG Systems, Inc. ________ Serial No. 85001796 _______ Elizabeth A Kleinberg of Dinse Knapp & McAndrew P.C., for NRG Systems, Inc. Andrea Koyner Nadelman, Law Office 110 (Chris A.F. Pedersen, Managing Attorney). _______ Before Grendel, Ritchie, and Shaw, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: NRG Systems, Inc. has filed an application to register on the Principal Register the mark WINDLINX,1 in standard character form, for services which were ultimately identified as “computer services, namely, providing customers conducting wind measurement operations utilizing meteorological towers with a web-based system and online portal to remotely manage and monitor their wireless accounts associated with each specific wind measurement THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 85001796 2 communications device,” in International Class 35, and “computer services, namely, providing customers conducting wind measurement operations utilizing meteorological towers with a web-based system and online portal to remotely manage their communications devices in connection with their wind measurement equipment,” in International Class 42. Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when applied to the identified services, so resembles the previously registered mark WINDLINK,2 also in standard character form, for “power, data and telecommunications cables for equipping wind turbines,” in International Class 9, as to be likely to cause confusion, mistake, or to deceive. Applicant and the examining attorney filed briefs, and applicant filed a reply brief. At applicant’s request, an oral hearing was held on May 23, 2012, and presided over by this panel. We reverse the refusal to register. Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts 1 Application No. 85001796, filed March 30, 2010 under Section 1(b) of the Trademark Act, claiming a bona fide intent to use. 2 Registration No. 3583657, issued March 3, 2009. Ser No. 85001796 3 in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Another key factor in this case concerns the conditions under which and buyers to whom sales of the goods and services at issue are made. Applicant, in urging reversal of the refusal to register, argues that consumers will not believe that the goods and services offered by registrant and applicant under their respective marks emanate from the same source because the goods and services are different, applicant’s consumers are sophisticated, the decision to purchase applicant’s goods and services is not made on impulse, and the normal trade channels do not overlap. Applicant has supported its position with two separate affidavits by Barton Merle-Smith, applicant’s Director of Marketing and Sales. Ser No. 85001796 4 We first consider the du Pont factor of 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 mark in cited registration is WINDLINK, in standard character form. Applicant’s mark is WINDLINX, in standard character form. As pointed out by the examining attorney, these marks differ only by their last letter, and they would appear to sound alike. However, when we consider the goods and services on which these marks are used, we note that the commercial impressions of the marks are not identical. The term “windlink” with regard to the goods in the cited registration would be perceived by consumers as a physical “link” to their “wind turbines,” whereas the term “windlinx” with regard to the services in the application would be perceived by consumers as providing virtual “links” to their “wind measurement" equipment. Despite the similarity of the marks, this creates different connotations. Nevertheless, we find the first du Pont factor favors a finding of likelihood of confusion. We next turn to a consideration of the similarity or dissimilarity of the goods and services. It is well-settled Ser No. 85001796 5 that the question of likelihood of confusion must be determined based on an analysis of the goods or services recited in the application vis-à-vis the goods or services recited in the registration. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). It is enough that the goods and services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which would give rise, because of the marks used therewith, 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 registrant’s and applicant’s goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases cited therein. We find in this case, however, that applicant’s goods and services have not been shown to have a clear relation to the registrant’s services for purposes of the second du Pont factor. Applicant’s services are “computer services, namely, providing customers conducting wind measurement operations utilizing meteorological towers with a web-based system and online portal to remotely manage and monitor Ser No. 85001796 6 their wireless accounts associated with each specific wind measurement communications device,” in International Class 35, and “computer services, namely, providing customers conducting wind measurement operations utilizing meteorological towers with a web-based system and online portal to remotely manage their communications devices in connection with their wind measurement equipment,” in International Class 42. The goods in the cited registration are “power, data and telecommunications cables for equipping wind turbines.” Applicant argues that its services are distinctly different from the goods offered under the registered mark and the two will not be used in any overlapping way. (Merle- Smith July 5 decl. at Para. 14). The examining attorney, on the other hand, contends that the respective goods and services are similar because they are both “used on wind farms by wind farmers.” (examining attorney’s brief at unnumbered 7 of 12). The examining attorney did not submit any third-party registrations or websites in support of this position. Rather, the examining attorney seems to rely entirely on a few images from applicant’s own website, which shows that applicant offers for sale various cables. Ser No. 85001796 7 Applicant admits, with regard to this evidence, that it does sell cables, although under a different mark than that at issue in this proceeding. (appl’s brief at 17). With this small modicum of evidence, which does not show the goods and services at issue being sold under the same mark, we do not find, based on this record, sufficient evidence that applicant’s services and the goods in the cited registration are related. It is well established that we must not be concerned with mere “theoretical possibilities” of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1692 (Fed. Cir. 1993); Edwards Ser No. 85001796 8 Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010). For this reason, the second and third du Pont factors weigh against finding a likelihood of confusion. We turn next to the du Pont factor considering the conditions of sale and the sophistication of the purchasers. Although we look to the standard of care of the least sophisticated consumer, we find, based on the Merle-Smith affidavits, that both applicant’s services and the goods in the cited registration are directed toward sophisticated consumers. In particular, the target consumers for applicant’s services are those who would undertake “multi- site wind measurement operations. These users typically are wind energy producers.” (Merle-Smith November 24 Decl. at Para. 5). While these same “wind energy producers” may be operating “wind turbines” Id. at Para. 11, they “generally purchase wind turbines already equipped with cables.” Id. The devices at issue are not inexpensive. The cost to install a complete wind measurement system (including towers, sensors, booms, data loggers, and communications devices) can range from $25,000 to $200,000, depending on factors including the complexity of the terrain, the size of the terrain, and the number of sites. The communications modules alone range from $1,500 to $3,600. The communications modules must be paired with a data logger, which costs approximately $1,500. Id. at Para. 8. Ser No. 85001796 9 Circumstances suggesting care in purchasing may tend to minimize likelihood of confusion. As our principal reviewing Court has pointed out, “sophistication is important and often dispositive because sophisticated end- users may be expected to exercise greater care.” Electronic Design & Sales Inc. v. Electronic Date Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992). Under these circumstances, we find that the purchasers of the goods and services at issue are likely to be knowledgeable and careful in their purchasing decisions. Moreover, since often significant financial investments are involved, as well as sophisticated purchasers, we agree with applicant that its goods and services are not “impulse” buys by consumers, but rather are carefully considered decisions requiring some amount of deliberation. As such, this du Pont factor, as well, weighs against finding a likelihood of confusion. As discussed above, we find that the record as a whole does not support a finding that there is a likelihood of confusion. While the marks are quite similar, they have somewhat different commercial impressions. Moreover, applicant’s services and registrant’s goods have not been shown to be related, and the goods and services are fairly expensive and would be bought only by knowledgeable, Ser No. 85001796 10 discriminating purchasers after deliberation. We therefore conclude that confusion is not likely. Decision: The refusal under Section 2(d) is reversed.