Piedmont Municipal Power Agency

Trademark Trial and Appeal Board

Mar 30, 2009

No. 78934763 (T.T.A.B. Mar. 30, 2009)

Mailed:
March 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Piedmont Municipal Power Agency
________

Serial Nos. 78934758, 78934760 and 78934763
_______

Hunter S. Freeman of McNair Law Firm, P.A. for Piedmont
Municipal Power Agency.

Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Quinn and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Piedmont Municipal Power Agency filed applications for
the following marks, all for “public utility services in
the nature of electricity distribution”:
PIEDMONT MUNICIPAL POWER AGENCY, with
the words MUNICIPAL POWER AGENCY
disclaimed;1

PIEDMONT MUNICIPAL POWER AGENCY and
design, as shown below, with the words

1 Application Serial No. 78934758, filed July 21, 2006,
asserting first use and first use in commerce on January 22,
1979.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 78934758, 78934760 and 78934763
2
MUNICIPAL POWER AGENCY disclaimed. The
mark is described as consisting of “a
box containing the image of an electric
bolt”2;

and PIEDMONT POWER, with the word POWER
disclaimed.3

The examining attorney issued a final refusal of
registration for all three applications pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s marks, as used in connection with
the identified services, so resemble the following marks,
registered by the same entity for the indicated services,
that each of applicant’s marks is likely to cause confusion
or mistake or to deceive.

PIEDMONT NATURAL GAS
(NATURAL GAS disclaimed)

Distribution,
transportation by
pipeline, and storage
of natural gas,
propane, fuel oil and
electricity (Class
39)4

2 Application Serial No. 78934760, filed July 21, 2006,
asserting first use and first use in commerce on March 1, 1986.
3 Application Serial No. 78934763, filed July 21, 2006,
asserting first use and first use in commerce on January 1, 2000.
4 Registration No. 2573768, issued May 28, 2002; Section 8
affidavit accepted.
Ser Nos. 78934758, 78934760 and 78934763
3

PIEDMONT ENERGY COMPANY
(ENERGY COMPANY disclaimed)

Distribution,
transportation by
pipeline, and storage
of natural gas and
propane (Class 39)5

(NATURAL GAS COMPANY disclaimed)6
The mark is lined for the colors blue
and red.

Natural gas (Class 4)
and Public utility
services in the
nature of natural gas
distribution (Class
39)7

Applicant appealed the refusals of registration for
each of its applications. Because the appeals involve
common questions of law and fact, we have decided them in a
single opinion.
In its appeal briefs applicant has, for the first
time, referenced a number of registrations for marks that
include the word PIEDMONT. The examining attorney has
objected to our consideration of these listings because the
registrations were not timely made of record. The
objection is well taken. Trademark Rule 2.142(d) provides

5 Registration No. 2499678, issued October 23, 2001; Section 8
affidavit accepted.
6 Office records show that the mark was amended under Section 7
after the registration issued to delete the word COMPANY;
however, the word COMPANY is still listed in the disclaimer.
7 Registration No. 2014834, issued November 12, 1996; Section 8
affidavit accepted; renewed.
Ser Nos. 78934758, 78934760 and 78934763
4
that the record in the application should be complete prior
to the filing of the appeal.
We now turn to the substantive issue in these appeals,
namely, whether applicant’s use of its marks for its
identified services is likely to cause confusion with the
cited registrations. Our determination of this issue is
based on an analysis of all of the probative facts 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 Co.,
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).
We first consider whether applicant’s marks are likely
to cause confusion with the registration of PIEDMONT
NATURAL GAS for “distribution, transportation by pipeline,
and storage of natural gas, propane, fuel oil and
electricity.” Applicant’s services are identified as
“public utility services in the nature of electricity
Ser Nos. 78934758, 78934760 and 78934763
5
distribution.” Thus, applicant’s services are encompassed
by the registrant’s identified services, which include
“distribution of electricity,” and therefore the services
must be presumed to be legally identical in part. The du
Pont factor of the similarity of the services favors a
finding of likelihood of confusion.
Applicant has stated that its services and those of
the registrant are rendered in separate channels of trade.
Applicant has explained that it is a joint action agency
formed by ten municipal electric utilities which own part
of a nuclear power plant and provide the member
municipalities with electricity. As a result, applicant
argues that these municipalities, which are also members of
applicant, are the only customers that could be exposed to
the services of both applicant and the registrant.
Further, applicant states that these customers are
sophisticated.
The problem with applicant’s argument is that we must
determine likelihood of confusion based on the
identifications in the applications and registrations,
rather than what the evidence shows the goods and/or
services to be. See Canadian Imperial See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). If there are no
Ser Nos. 78934758, 78934760 and 78934763
6
restrictions as to the channels of trade recited in the
identifications, we must presume that the goods or services
travel in all channels appropriate for those goods or
services, and that the goods or services would be purchased
by all potential customers. See In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). Thus, because the services are, in
part, legally identical, they must be presumed to travel in
the same channels of trade to the same classes of
consumers.
With respect to the customers, as noted, applicant
argues that its customers are sophisticated because they
are municipalities that are part owners of applicant.
Whatever arrangements that may be peculiar to applicant’s
own situation (and presumably the municipalities would make
the electricity available to the residents of those
municipalities for use in their homes, so that the ultimate
users would also come into contact with the trademarks), we
must consider the customers in terms of the identified
services. Electricity, whether offered by a public utility
or a private company, can be distributed to and purchased
by ordinary consumers, members of the public at large, for
their personal use. Such consumers cannot be viewed as
having any particular sophistication.
Ser Nos. 78934758, 78934760 and 78934763
7
The du Pont factors of channels of trade and
conditions of purchase favor a finding of likelihood of
confusion.
We next consider the factor of the similarity of the
marks, keeping in mind that when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Applicant’s marks are PIEDMONT MUNICIPAL
POWER AGENCY, PIEDMONT MUNICIPAL POWER AGENCY with an
electric bolt design, and PIEDMONT POWER; the cited mark is
PIEDMONT NATURAL GAS. Although marks must be compared in
their entireties, there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). The words MUNICIPAL POWER AGENCY in applicant’s
marks, which have been disclaimed by applicant, are at
least highly descriptive, while the disclaimed word POWER
in PIEDMONT POWER is generic for the services. Similarly,
the disclaimed words NATURAL GAS in the cited mark are also
generic for the services. Because of this, the word
PIEDMONT in all the marks is the source-indicating element,
Ser Nos. 78934758, 78934760 and 78934763
8
and therefore deserves far greater weight in the likelihood
of confusion analysis. As for the electric bolt design in
applicant’s mark PIEDMONT MUNICIPAL POWER AGENCY and
design, this word is merely a pictorial representation of
the services, and therefore does not have strong source-
identifying significance. Furthermore, if a mark comprises
both a word and a design, the word is normally accorded
greater weight because it would be used by purchasers to
request the goods or services. In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987).
Applicant has argued, with respect to its PIEDMONT
MUNICIPAL POWER AGENCY marks, that although MUNICIPAL POWER
AGENCY is disclaimed, “even relatively unsophisticated
consumers are able to correctly determine that these power
distribution services are being provided by a governmental
agency rather than a private company such as Registrant,”
and that “Consumers will simply know that Appellant is a
government agency and that its services are not originating
from a private business as Registrant’s services do.”
Brief, p. 13. In response to the examining attorney’s
statement that there is no indication in the cited marks
that the registrant is a private company, applicant asserts
that “it is highly unlikely that a governmental agency
would provide electricity under a mark that clearly
Ser Nos. 78934758, 78934760 and 78934763
9
delineates its governmental status while simultaneously
providing natural gas under a mark that does not indicate
this governmental status.” Id.
We are not persuaded by these arguments. Applicant’s
argument is belied by the fact that applicant itself uses a
mark, PIEDMONT POWER, that does not delineate its
government status, at the same time that it is using other
marks that do indicate its governmental status. Second,
although applicant has discussed its consumers in terms of
the municipalities to which it furnishes its power
distribution services, and the attention these
sophisticated purchasers would pay to the descriptive words
MUNICIPAL POWER AGENCY in the marks, as discussed above,
the identification of services does not restrict
applicant’s customers to municipalities, and the
electricity distribution services must be deemed to be
offered to the general public as well.
We do agree that the words NATURAL GAS in the
registrant’s mark convey somewhat different information
about the nature of the service than do applicant’s marks.
However, that information will not be viewed as indicating
a difference in the source of the services. Because the
dominant and source-identifying element in each of
applicant’s marks and in the cited mark is the identical
Ser Nos. 78934758, 78934760 and 78934763
10
word PIEDMONT, the marks are very similar in appearance,
pronunciation and connotation, and they convey the same
commercial impression.
The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
Applicant has argued that the word PIEDMONT is
geographically descriptive and therefore deserves limited
protection. There is a certain irony in applicant’s
position, since under applicant’s argument its marks would
not be registrable, while we have the examining attorney
asserting that PIEDMONT is not geographically descriptive
and therefore they are not barred from registration by
Section 2(e)(2) of the Trademark Act. If PIEDMONT were
geographically descriptive, applicant’s marks PIEDMONT
MUNICIPAL POWER AGENCY and PIEDMONT POWER, in which the
words other than PIEDMONT have been disclaimed, would be
composed entirely of unregistrable terms. This argument
would also constitute an impermissible collateral attack on
the cited registrations. In any event, the examining
attorney has pointed out that “piedmont” has non-geographic
meanings.8 Thus, we cannot treat the term PIEDMONT as
geographically descriptive.

8 We grant the examining attorney’s request that we take
judicial notice of the definition of “piedmont.” It is defined
Ser Nos. 78934758, 78934760 and 78934763
11
We do recognize that PIEDMONT has a suggestive
connotation, in that it refers, inter alia, to an 80,000
square foot region of the eastern United States. See
listing in The Columbia Gazetteer of North America, © 2000,
of which we also take judicial notice. Thus, we agree with
applicant that the cited registrations cannot be treated as
arbitrary marks. However, suggestive marks are still
entitled to protection, and in the present case, because
the additional elements in applicant’s and the registrant’s
marks are descriptive or generic, they are not sufficient
to distinguish the marks. Cf. In re Broadway Chicken Inc.,
38 USPQ2d 1559 (TTAB 1996 ). Consumers will view PIEDMONT
in applicant’s marks and the cited mark as the source-
identifying element.
Finally, applicant argues that the du Pont factor of
the length of time during and conditions under which there
has been concurrent use without evidence of actual
confusion should carry great weight in this case.
Applicant has submitted declarations of Coleman F. Smoak,
Jr., its general manager, attesting to its use of PIEDMONT

in The American Heritage Dictionary of the English Language, 4th
ed. © 2000, as meaning “An area of land formed or lying at the
foot of a mountain or mountain range.” The Board may take
judicial notice of dictionary definitions. University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Ser Nos. 78934758, 78934760 and 78934763
12
MUNICIPAL POWER AGENCY since 1979; PIEDMONT MUNICIPAL POWER
AGENCY and design since 1986; and PIEDMONT POWER since
2000. Referencing the dates of use claimed in the cited
registrations of 1980 for PIEDMONT NATURAL GAS and design
and of 1994 for PIEDMONT ENERGY COMPANY,9 Mr. Smoak stated
that he was unaware of any instances of actual consumer
confusion arising during the parties’ concurrent use of
their respective marks. However, it is not at all clear
that the parties operate in the same geographic area:
although applicant states that applicant and the registrant
“operate and provide their goods/services in overlapping
market areas,” brief, p. 8, Mr. Smoak’s declaration uses
the language “Assuming that [registrant] has continued to
use both of these marks in commerce without abandoning
either of the marks,” which implies that Mr. Smoak is not
actually familiar with the registrant’s use of its marks.
More importantly, the lack of instances of actual confusion
can be due to the marketing practices that applicant
currently engages in. As discussed above, applicant was
formed by ten municipalities who are also its sole
customers. If applicant does not offer its electricity

9 At the time the declarations were submitted, the examining
attorney had not yet refused registration on the basis of the
registration for PIEDMONT NATURAL GAS and design.

Ser Nos. 78934758, 78934760 and 78934763
13
distribution services in the same geographic areas or to
the same customers to whom the registrant offers its
services, we cannot say that there has been an opportunity
for confusion to occur, such that we can presume from the
lack of evidence of actual confusion that such confusion is
not likely. And the fact that there has been no confusion
as a result of applicant’s current practices does not mean
that there would not be confusion if applicant were to
expand its customer base or its geographic area, or if the
registrant were to offer its services in the same
geographic area. Neither applicant’s applications nor the
cited registration is restricted either geographically or
as to channels of trade, and therefore if applicant were to
obtain registrations it would be free to use its marks in
any area of the country, including the area where the
registrant operates, and to sell to all consumers, not only
the municipalities that formed applicant.
We also think the comments made by the Court of
Appeals for the Federal Circuit in In re Majestic
Distilling Co., 65 USPQ2d at 1205, are applicable here:
With regard to the seventh DuPont
factor, we agree with the Board that
Majestic's uncorroborated statements of
no known instances of actual confusion
are of little evidentiary value. See
In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973)
Ser Nos. 78934758, 78934760 and 78934763
14
(stating that self-serving testimony of
appellant's corporate president's
unawareness of instances of actual
confusion was not conclusive that
actual confusion did not exist or that
there was no likelihood of confusion).
A showing of actual confusion would of
course be highly probative, if not
conclusive, of a high likelihood of
confusion. The opposite is not true,
however. The lack of evidence of
actual confusion carries little weight,
J.C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 964, 144 USPQ 435, 438
(CCPA 1965), especially in an ex parte
context.

Thus, this du Pont factor is neutral.
The foregoing are the only factors on which applicant
and the examining attorney have provided evidence or
argument. To the extent that any other du Pont factors are
applicable, we treat them as neutral.
After considering all the relevant du Pont factors, we
find that applicant’s marks are likely to cause confusion
with the cited registration for PIEDMONT NATURAL GAS.
We next turn to the issue of whether applicant’s marks
are likely to cause confusion with the cited registration
for PIEDMONT ENERGY COMPANY for “distribution,
transportation by pipeline, and storage of natural gas and
propane.” Here, the registrant’s services do not include
electricity, so we must consider whether these services and
applicant’s services, which are limited to electricity
Ser Nos. 78934758, 78934760 and 78934763
15
distribution, are similar. In doing so, we recognize the
well-established rule that it is not necessary that the
goods or services of applicant and the registrant be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods or
services are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
The examining attorney has submitted evidence of such
relatedness in the form of third-party registrations which
show that entities have adopted a single mark for services
that are the same as those of applicant and the registrant,
and pages from websites indicating that companies provide
both types of services. The third-party registrations
include Registration No. 3092648 for natural gas utility
services, namely, distribution, transmission and storage of
natural gas and electrical utility services, namely, the
transmission and distribution of electricity; Registration
No. 3178334 for distribution of energy, namely electricity
and natural gas, to commercial and residential consumers;
Ser Nos. 78934758, 78934760 and 78934763
16
Registration No. 3120239 for utility services, namely, the
transmission of electricity and natural gas; and
Registration No. 3180552 for distribution of energy
commodity products, namely, natural gas, electricity, oil,
propane, and green energy fuel sources. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The website evidence includes a webpage from Duke
Energy, which states that “Duke Energy is one of the
largest electric power companies in the United States. ...
We have approximately 36,000 megawatts of electric
generating capacity in the Midwest and the Carolinas, and
natural gas distribution services in Ohio and Kentucky.” A
webpage from ConEdison, Inc. states that it provides
“electric and natural gas service to seven counties in New
York, northern New Jersey and northeastern Pennsylvania.”
The webpage for CoServ states that “as the second largest
electric cooperative in Texas, CoServ Electric provides
services” to 120,000 residents in various Texas counties,
and that CoServ Gas provides natural gas services to more
than 53,000 customers in North Texas. The webpage for
Ser Nos. 78934758, 78934760 and 78934763
17
Florida Public Utilities lists natural gas, electric and
propane, while the webpage for Rochester Gas and Electric
states that it “provides electricity and natural gas energy
and related services.”
The above evidence not only suggests that companies
offer both electricity and natural gas services under a
single mark, but that this information is made known to
consumers through their websites. In view of this, we find
that the examining attorney has shown that the services are
related, and that this du Pont factor favors a finding of
likelihood of confusion.
The Internet evidence also shows that the services are
offered through the same channels of trade. We have
already explained why applicant’s arguments about its
specific channels of trade are not persuasive, and we need
not repeat that discussion here. Similarly, our comments
with respect to the conditions of purchase are applicable
here. The public at large must be considered the consumers
of natural gas and electricity services, and they cannot be
deemed to have any particular sophistication or expertise
with respect to the purchase of these services.
As for the marks, if anything, applicant’s marks are
closer to PIEDMONT ENERGY COMPANY than they are to PIEDMONT
NATURAL GAS, since the words ENERGY COMPANY would be more
Ser Nos. 78934758, 78934760 and 78934763
18
applicable to applicant’s electricity services, and
therefore would not have even the small difference in
connotation that PIEDMONT NATURAL GAS has. The word
PIEDMONT in the registrant’s mark is, as with the other
marks, the dominant element, since the disclaimed words
ENERGY COMPANY are generic for a company that offers the
services identified in the registration. We find
applicant’s marks to be very similar to PIEDMONT ENERGY
COMPANY in appearance, pronunciation and connotation, and
to have the same commercial impression. This du Pont
factor favors a finding of likelihood of confusion.
Our comments with respect to the strength of the
registrant’s mark, and applicant’s arguments and evidence
regarding the lack of instances of actual confusion, are
equally applicable here.
In short, we find that applicant’s marks are likely to
cause confusion with the cited registration for PIEDMONT
ENERGY COMPANY.
As for the cited registration for PIEDMONT NATURAL GAS
and design, in view of our findings with respect to the
other registrations we see no need to reach the question of
likelihood of confusion with respect to this mark. We have
already found that applicant’s marks are barred from
registration because of the other registrations, and
Ser Nos. 78934758, 78934760 and 78934763
19
therefore any discussion of this registration would be
superfluous. Because the mark and the services are, taken
together, more different from the other registrations, if
on appeal a court were to find no likelihood of confusion
with respect to the other registrations, there would be no
likelihood of confusion with respect to this registration.
Decision: The refusals of registration for
applications Serial Nos. 78934758, 78934760 and 78934764
are affirmed.