Revolution Energy Solutions LLC

Trademark Trial and Appeal BoardJan 5, 2012

No. 76696034 (T.T.A.B. Jan. 5, 2012)

Mailed: January 5, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In Revolution Energy Solutions LLC ________ Serial No. 76696034 _______ Robert C. Bertin of Bingham McCutchin LLP for Revolution Energy Solutions, LLC. Toby E. Bulloff, Trademark Examining Attorney, Law Office 117 (Brett Golden, Managing Attorney). _______ Before Cataldo, Mermelstein, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Revolution Energy Solutions, LLC (“applicant”) filed an application to register on the Principal Register the mark RES SITE FINDER,1 in standard character format, for the following services: International Class 37: Real estate site selection, namely, locating sites with desirable biomass, solar, wind resources, favorable incentives or regulations, electric distribution infrastructure, line capacity and carrying distance to distribution/transmission lines and substations. 1 Serial No. 76696034, filed February 27, 2009, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), alleging dates of first use and first use in commerce of October 31, 2008. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76696033 2 International Class 40: technology consultation research in the field of renewable energy production and energy conservation, and particularly for locating sites with desirable biomass, solar, wind resources, favorable incentives or regulations, electric distribution infrastructure, line capacity and carrying distance to distribution/transmission lines and substations. International Class 42: Providing temporary use of non- downloadable internet based software in the field of renewable energy production and energy conservation, and particularly for locating sites with desirable biomass, solar and/or wind resources, favorable incentives or regulations, electric distribution infrastructure, line capacity and/or carrying distance to distribution/transmission lines and substations; application service provider featuring software for use in the field of renewable energy production and energy conservation, and particularly for locating sites with desirable biomass, solar, and/or wind resources, favorable incentives or regulations, electric distribution infrastructure, line capacity and/or carrying distance to distribution/transmission lines and substations. The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the registered mark RES,2 also in standard character format, for the following services, that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive: International Class 35: Purchasing and procurement services for utility-scale wind farms, namely, procuring of contracts for others for the purchase of goods and labor contracting services. International Class 36: Real estate site selection for utility- scale wind farms; land acquisition, namely, real estate brokerage for utility-scale wind farms; and consultancy concerning financing of wind energy projects, namely, utility- scale wind farms. 2 Registration No. 3346811, issued December 4, 2007. Serial No. 76696033 3 International Class 37: Construction of utility-scale wind farms, namely, erecting wind monitoring equipment, and operation of utility-scale wind farms, namely, providing electricity to others. International Class 40: Operation of utility-scale wind farms, namely, generation of electricity to others. International Class 42: Engineering and design of utility-scale wind farms. The examining attorney also issued a refusal to register under Section 2(d) for the mark RES, and design,3 as shown below, owned by the same registrant, and registered for the same services: The examining attorney also issued a refusal to register under Section 2(d) for the mark RES, and design,4 as shown below, owned by the same registrant, and registered for the services as set forth in relevant part below: 3 Registration No. 3346810, issued December 4, 2007. 4 Registration No. 3685494, issued September 22, 2009. Serial No. 76696033 4 International Class 35: Purchasing and procurement services for wind farms, namely, procuring of contracts for others for the purchase/lease of goods and labor contracting services, and procuring of contracts for others involving interconnection and transmission agreements with utility companies and power off- takers; business services, namely, operation of wind farms for others; business management of environmental studies related to wind farm projects; public relations services in the field of wind farm projects; marketing services, namely, advertising services in the field of wind farms. International Class 37: Real estate site selection for wind farms; construction services in the field of wind farms; installation of meteorological towers, wind turbines, and turbine transformers. International Class 40: Generation of power through the operation of wind farms. International Class 42: Design and development of wind farms; . . . technical analysis and consultation services in the field of wind farm projects, namely, scientific analysis of wind resources, . . . scientific analysis of computational fluid dynamics . . . wind turbines, and turbine transformers. The examining attorney also made final a requirement to disclaim the term “site finder” under Section 6(a) of the Trademark Act, 15 U.S.C. §1056. Upon final refusal of registration under Section 2(d) and requirement of disclaimer under Section 6(a), applicant filed a timely appeal. Both applicant and the examining attorney filed briefs. For the reasons discussed herein, the Board affirms the refusal to register as well as the requirement of disclaimer. Disclaimer Requirement Serial No. 76696033 5 We first discuss the requirement to disclaim the term “site finder.” A term must be disclaimed apart from the mark as shown if it is deemed to be merely descriptive of the subject goods or services. Trademark Manual of Examination Procedure §1213.08(b) (8th ed. 2011) (TMEP); See in re Grass GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006). A term is deemed to be merely descriptive within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That Serial No. 76696033 6 a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the other hand, if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods or services, then the mark is suggestive. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). A composite term consisting of merely descriptive terms is registrable only if as a unitary mark it has a separate, non-descriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR & SPICE not merely descriptive of bakery products). The term “site” is defined by Webster’s Third New International Dictionary as meaning “the local position of building, town, monument, or similar work either constructed or Serial No. 76696033 7 to be constructed esp. in connection with its surroundings.”5 The term “finder” is defined by the same source as meaning “one that finds.” Applicant’s identification of services in Class 35 includes “real estate site selection, namely locating sites.” Similarly, applicant’s identifications of services in Class 37 and 42 refer to “locating sites.” This difference of nomenclature is minor and is the equivalent of “site finding” or being a “site finder.” Indeed, applicant admits in its brief that “[t]he words Site Finder are simple, well know terms.” (appl’s brief, at 5), Applicant further notes that “Site Finder tends to stand out, . . . and again creates a commercial impression linked to finding sites of some kind, thought [sic] it is unclear what those sites might be.” This does not convince us that the term should not be disclaimed. To be held merely descriptive, a term need not describe all aspects of the relevant goods or services; it “need only describe a single significant quality or property of the goods.” In re Petroglyph Games Inc., 91 USPQ2d 1332, 1336 (TTAB 2009). Rather, we find the term to be highly descriptive of the services for which applicant seeks registration. We have no doubt that the relevant public will immediately understand the term “site finder” as conveying information about 5 The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Serial No. 76696033 8 a feature or function of applicant’s identified services. Accordingly, the requirement to disclaim the term “site finder” is affirmed. Likelihood of Confusion We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). We discuss each of the du Pont factors as to which applicant or the examining attorney submitted argument or evidence. The Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. In Inc., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 76696033 9 re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The question 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 their entireties that confusion as to the source of the goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). The cited registrations consists solely of the term “RES,” or of RES with a design element: We find the design in applicant’s mark to be a less dominant portion of the mark, since consumers are likely to call for, or refer to, the goods by their name. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re Dakin’s Serial No. 76696033 10 Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987); See also In re National Data Corp., 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”). Applicant’s mark incorporates the term RES and adds the words “SITE FINDER.” As discussed earlier regarding the disclaimer requirement for “site finder,” we have found the term to be highly descriptive of the services for which applicant seeks registration, which include finding or locating sites. By contrast, we find the term “RES,” although apparently an acronymn for the name of both registrant and applicant, to be arbitrary for the services in both the application and cited registration. We therefore find “RES” to be the dominant term in applicant’s mark. See In re National Data Corp., 224 USPQ at 750 (descriptive or disclaimed matter is generally considered a less dominant portion of a mark). Applicant argued that the term “RES” is weak, and that there are “over 280 marks that use the term RES in the TESS trademark database.” (appl’s brief at 5) However, applicant has not submitted any evidence in support Serial No. 76696033 11 of this argument.6 Accordingly, we can provide it no further consideration. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. As our precedent dictates, the mere addition of a term to a registered trademark is generally not sufficient to obviate a likelihood of consumer confusion. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Cola-Cola Bottling Co. v. Joseph E. Seagrams & Sons, Inc., 526 F.2d 556 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN); In re U.S. Shoe Corp., 229 USPQ 707(TTAB 1985) (“CAREER IMAGE” AND “CREST CAREER IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”). We find that applicant’s mark RES SITE FINDER is similar to registrant’s marks RES and RES, and design, and the presence of the descriptive and disclaimed term “site finder” in applicant’s mark does little to distinguish the commercial impression of applicant’s mark from that of the marks in the cited registrations. 6 Moreover, absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 Serial No. 76696033 12 Viewing the marks in their entireties, we find that the strong similarities in commercial impression outweigh the differences of the marks as to their sight and sound, and this du Pont factor weighs in favor of finding a likelihood of consumer confusion. The Services and Channels of Trade Next we consider the similarities or dissimilarities of the services. We keep in mind that the test is not whether consumers would be likely to confuse the services, but rather would be likely to be confused into believing that the services emanate from a single source. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Applicant’s identification of services includes the following: International Class 37: Real estate site selection, namely, locating sites with desirable biomass, solar, wind resources, favorable incentives or regulations, electric distribution infrastructure, line capacity and carrying distance to distribution/transmission lines and substations. International Class 40: technology consultation research in the field of renewable energy production and energy conservation, and particularly for locating sites with desirable biomass, solar, wind resources, favorable incentives or regulations, F.2d 1004, 177 USPQ 462, 462-63 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the USPTO). Serial No. 76696033 13 electric distribution infrastructure, line capacity and carrying distance to distribution/transmission lines and substations. International Class 42: Providing temporary use of non- downloadable internet based software in the field of renewable energy production and energy conservation, and particularly for locating sites with desirable biomass, solar and/or wind resources, favorable incentives or regulations, electric distribution infrastructure, line capacity and/or carrying distance to distribution/transmission lines and substations; application service provider featuring software for use in the field of renewable energy production and energy conservation, and particularly for locating sites with desirable biomass, solar, and/or wind resources, favorable incentives or regulations, electric distribution infrastructure, line capacity and/or carrying distance to distribution/transmission lines and substations. The identification of services in cited Registration Nos. 3346810 and 3346811 are as follows: International Class 35: Purchasing and procurement services for utility-scale wind farms, namely, procuring of contracts for others for the purchase of goods and labor contracting services. International Class 36: Real estate site selection for utility- scale wind farms; land acquisition, namely, real estate brokerage for utility-scale wind farms; and consultancy concerning financing of wind energy projects, namely, utility- scale wind farms. International Class 37: Construction of utility-scale wind farms, namely, erecting wind monitoring equipment, and operation of utility-scale wind farms, namely, providing electricity to others. International Class 40: Operation of utility-scale wind farms, namely, generation of electricity to others. International Class 42: Engineering and design of utility-scale wind farms. Serial No. 76696033 14 The identification of services in cited Registration No. 3685494 is, in relevant part, as follows: International Class 35: Purchasing and procurement services for wind farms, namely, procuring of contracts for others for the purchase/lease of goods and labor contracting services, and procuring of contracts for others involving interconnection and transmission agreements with utility companies and power off- takers; business services, namely, operation of wind farms for others; business management of environmental studies related to wind farm projects; public relations services in the field of wind farm projects; marketing services, namely, advertising services in the field of wind farms. International Class 37: Real estate site selection for wind farms; construction services in the field of wind farms; installation of meteorological towers, wind turbines, and turbine transformers. International Class 40: Generation of power through the operation of wind farms. International Class 42: Design and development of wind farms; . . . technical analysis and consultation services in the field of wind farm projects, namely, scientific analysis of wind resources, . . . scientific analysis of computational fluid dynamics . . . wind turbines, and turbine transformers. Applicant does not truly dispute that the services on which it intends to use its marks are related to those in the cited registrations. Rather, applicant admits that “[t]here is some similarity in services in the sense that the registrant’s services may include siting for wind generation equipment and wind farms and applicant [sic] services may be deployed more broadly for siting and evaluating overall renewable energy benefits of different locations, including wind, solar, and Serial No. 76696033 15 biomass.” (appl’s brief at 6). Indeed, applicant’s “real estate site selection” including for “wind resources” in Class 37 directly encompass the “real estate site selection for wind farms” identified in all of the cited registrations. Similarly, applicant’s “technology consultation research” for “locating sites with . . . wind resources” in Class 40 is at least complementary to, if not overlapping with, the “consultancy concerning financing of wind energy projects” identified in cited Registration Nos. 3346810 and 3346811. Finally, applicant’s “software” for “locating sites with . . . wind resources” in Class 42” is also at least complementary to “consultancy” as well as the “engineering and design of utility- scale wind farms” identified in all of the cited registrations. Regarding channels of trade, we note again that the services in the cited registrations are more specific than those identified in the application, and may be sold through more specific channels of trade, particularly those for “utility- scale wind farms.” However, since the services in the application do not have any such limitations, and indeed specifically mention “wind resources” in all classes, they clearly overlap, and are therefore identical, at least in part. In other words, the cited registrations cover site finding of renewable energy services offered through the same channels of trade and to the same consumers who purchase registrant’s Serial No. 76696033 16 site finding services more specifically utilizing “wind monitoring equipment” on “wind farms.” Accordingly, we find that these du Pont factors also weigh in favor of finding a likelihood of consumer confusion. Consumer Sophistication Applicant urges us to consider consumer sophistication. There is nothing in the record that would give us insight as to the possible sophistication of consumers of the relevant services. To the extent we accept that the overlapping services may be marketed to more careful purchasers with some advanced knowledge of renewable energy on wind farms, we expect that with highly similar marks used on similar services, even a careful, sophisticated consumer of these services is not likely to note the differences in the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000). Furthermore, given the descriptive nature of the term “site finder,” which is the sole or primary difference between the marks, even careful purchasers who do notice the difference in the marks will not ascribe it to differences in the source of the services, but will see the marks as variations of each other, pointing to a single source. Accordingly, we deem this du Pont factor to be neutral. Balancing the Factors In summary, we have carefully considered all of the evidence of record pertaining to the du Pont likelihood of Serial No. 76696033 17 confusion factors, as well as applicant’s arguments with respect thereto. We conclude that there is a likelihood of confusion between applicant’s RES SITE FINDER mark for the services sought to be registered and the registered marks RES, and RES, and design, as discussed herein. Decision: The refusal to register is affirmed, and the requirement for a disclaimer of the term “site finder” is affirmed.