S&C Electric Companyv.NOJA Power Switchgear Pty Ltd

Trademark Trial and Appeal BoardFeb 5, 2020

91229957 (T.T.A.B. Feb. 5, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: February 5, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ S&C Electric Company, v. NOJA Power Switchgear Pty Ltd, _____ Opposition No. 91229957 _____ Gregory J. Chinlund and Michelle Bolos of Marshall Gerstein & Borun LLP for Opposer. Michael A. Penn of Briskin Cross & Sanford LLC for Applicant. _____ Before Zervas, Shaw and Hudis, Administrative Trademark Judges. Opinion by Hudis, Administrative Trademark Judge: NOJA Power Switchgear Pty Ltd (“Applicant”) seeks registration on the Principal Register of the mark VISI-SWITCH (in standard characters) for “pole mounted medium voltage load break switches; electrical devices for electrical distribution Opposition No. 91229957 - 2 - lines, namely sectionalizers” in International Class 9.1 In its Notice of Opposition,2 S&C Electric Company (“Opposer”) opposes registration of Applicant’s VISI-SWITCH mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the basis of alleged likelihood of confusion with Opposer’s registered mark VISI-GAP (in standard characters) for “electrical switches, electric circuit fault interrupters” in International Class 9.3 Applicant denied the salient allegations of the Notice of Opposition in its Amended Answer.4 The single remaining affirmative defense in Applicant’s Amended Answer does not recite a true affirmative defense, but rather an amplification of Applicant’s denials to the Notice of Opposition. The case is fully briefed. Opposer bears the burden of establishing its standing and Section 2(d) claim by a preponderance of the evidence. See Jansen Enters., Inc. v. 1 Application Serial No. 86808337 was filed on November 3, 2015, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). 2 1 TTABVUE. References to the pleadings, the evidence of record and the parties’ briefs refer to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket entry number; and coming after this designation are the page or paragraph references, if applicable. Two docket entries are provided to reference the parties’ arguments, in that Opposer and Applicant filed confidential and public versions of their briefs. 3 Registration No. 4769328 issued on the Principal Register on July 7, 2015. 4 7 TTABVUE. Opposition No. 91229957 - 3 - Rind, 85 USPQ2d 1104, 1107 (TTAB 2007). Having considered the evidentiary record and the parties’ arguments, we sustain the Opposition. I. The Evidentiary Record The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of Applicant’s involved application. The parties stipulated that “[Opposer] … may designate and offer into evidence portions of the discovery depositions of Richard Campanalie and Edward Wilson and … [Applicant] … may designate and offer into evidence portions of the discovery depositions of Spencer Zirkelbach and Phillip Fahey.” (26 TTABVUE) In addition, the parties introduced the following evidence: A. Opposer’s Evidence • Opposer’s Notice of Reliance (“Opp NOR”) (20 and 23 TTABVUE). o Exhibit A: Portions of Discovery Deposition Transcript of Neil O’Sullivan (“O’Sullivan Disc. Dep.”). o Exhibit B: Portions of Discovery Deposition Transcript of Richard Campanalie (“Campanalie Disc. Dep.”). o Exhibit C: Portions of Discovery Deposition Transcript of Edward Wilson (“Wilson Disc. Dep.”). o Exhibit D: Opposer’s Discovery Requests and Applicant’s Discovery Responses. o Exhibit E: Instruction Manual for Opposer’s Vista SD Underground Distribution Switchgear. • Opposer’s Testimony Deposition Transcript and Exhibits of Phillip Fahey (“Fahey Test. Dep.”) (21 and 24 TTABVUE, re-filed as 36 and 37 TTABVUE). • Opposer’s Testimony Deposition Transcript and Exhibits of Spencer Zirkelbach (“Zirkelbach Test. Dep.”) (22 and 25 TTABVUE). • Opposer’s Testimony Cross-Examination Deposition Transcript and Exhibits of Neil O’Sullivan (“O’Sullivan CX Test. Dep.”) (38 TTABVUE). Opposition No. 91229957 - 4 - • Opposer’s Rebuttal Notice of Reliance (39 and 40 TTABVUE). o Exhibit A: Portions of Discovery Deposition Transcript of Spencer Zirkelbach (“Zirkelbach Disc. Dep.”), submitted with a written statement of need pursuant to Trademark Rule 2.120(k)(4), 37 C.F.R. § 2.120(k)(4).5 o Exhibit B: Portions of Discovery Deposition Transcript of Phillip Fahey (“Fahey Disc. Dep.”), submitted with a written statement of need pursuant to Trademark Rule 2.120(k)(4). B. Applicant’s Evidence • Applicant’s Notice of Reliance (“App NOR”) (28 and 29 TTABVUE). o Exhibit A: Portions of Discovery Deposition Transcript of Spencer Zirkelbach (“Zirkelbach Disc. Dep.”). o Exhibit B: Portions of Discovery Deposition Transcript of Phillip Fahey (“Fahey Disc. Dep.”). o Exhibit C: Applicant’s Discovery Requests and Opposer’s Discovery Responses. o Exhibit D: Portions of Discovery Deposition Transcript of Richard Campanalie (“Campanalie Disc. Dep.”), submitted with a written statement of need pursuant to Trademark Rule 2.120(k)(4). o Exhibit E: Portions of Discovery Deposition Transcript of Neil O’Sullivan (“O’Sullivan Disc. Dep.”), submitted with a written statement of need pursuant to Trademark Rule 2.120(k)(4). o Exhibit F: Portions of Discovery Deposition Transcript of Edward M. Wilson (“Wilson Disc. Dep.”), submitted with a written statement of need pursuant to Trademark Rule 2.120(k)(4). • Applicant’s Testimony Declaration and Exhibit of Neil O’Sullivan (“O’Sullivan Test. Dec.”) (27 TTABVUE) 5 Trademark Rule 2.120(k)(4) provides: “If only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. A notice of reliance filed by an adverse party must be supported by a written statement explaining why the adverse party needs to rely upon each additional part listed in the adverse party’s notice, failing which the Board, in its discretion, may refuse to consider the additional parts.” Opposition No. 91229957 - 5 - • Applicant’s Testimony Deposition Transcript and Exhibits of Edward M. Wilson (“Wilson Test. Dep.”) (30 TTABVUE) • Applicant’s Testimony Deposition Transcript and Exhibits of Richard Campanalie (“Campanalie Test. Dep.”) (34 TTABVUE). II. The Parties’ Over-Designation of Evidentiary Material as Confidential Upon review of the TTABVUE docket entries in this Opposition, we see no indication that the parties submitted for approval and entry their own form of protective order. Therefore, the Board’s Standard Protective Order6 is automatically imposed in this proceeding. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g). Neither the Standard Protective Order nor the Trademark Rules of Practice permit the indiscriminate over-designation of evidentiary materials filed with the Board. That, however, is what occurred in this proceeding. In particular, the entire Testimony Deposition Transcripts of Messrs. Zirkelbach and Fahey, and a majority of the filed portions of the Discovery Deposition Transcripts of Messrs. O’Sullivan, Campanalie, Wilson, Zirkelbach and Fahey were marked confidential. These depositions include testimony, for example, on the witnesses’ backgrounds, the promotion and advertising of their respective products, the general technology underlying the products, the types of purchasers of the products, and customer procedures for evaluating, approving and buying the parties’ products. This information can hardly be considered as confidential. 6 The Board’s Standard Protective Order is on the USPTO’s website at https://www.uspto.gov/trademarks-application-process/appealing-trademark-decisions/ standard-documents-and-guidelines-0. Opposition No. 91229957 - 6 - Board proceedings are designed to be conducted in public and transparent to the public. Trademark Rule 2.27(c), 37 C.F.R. § 2.27(c); Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416 n.21 (TTAB 2016) (it is intended that filings in Board proceedings be publicly available). Records of Board proceedings are open to public view and available for access by the public, Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458 (TTAB 2014) (contents of proceeding files publicly available), subject only to the exception of limited submissions (exhibits, testimony portions of a brief, or other documents) which contain information that is truly confidential in nature. Swiss Watch Int’l Inc. v. Fed’n of the Swiss Watch Indus., 101 USPQ2d 1731, 1736 n.12 (TTAB 2012) (“[B]ecause proceedings before the Board are public, all papers should be available to the public, except for information that is truly confidential.”). Improper designation of materials filed in Board proceedings as confidential thwarts the intention of allowing the public the right to inspect judicial records and documents (Noble House, 118 USPQ2d at 1416 n.21) and is “an improper casual approach” to a party’s good faith requirement to designate only material that is truly confidential as “confidential.” In re Violation of Rule 28(d), 635 F.3d 1352, 98 USPQ2d 1144, 1149 (Fed. Cir. 2011) (where counsel took an “improper casual approach” to marking the non-confidential version of the brief making it virtually incomprehensible). At final decision, improper confidentiality designations make it more difficult to make findings of fact, apply the facts to the law, discuss evidence, and write decisions Opposition No. 91229957 - 7 - that make sense. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010). In its final decision, the Board needs to be able to discuss the evidence of record, unless there is an overriding need for confidentiality, so that the parties and a reviewing court will know the basis of the Board’s decisions. Swiss Watch, 101 USPQ2d at 1736 n.12. Improper confidentiality designations have been found where parties have filed entire depositions or portions thereof as confidential, Couch/Braunsdorf Affinity, 110 USPQ2d at 1460-61 (discussing improper designation as confidential of testimony and exhibits submitted in Board proceeding), which is what occurred in this proceeding. As discussed in TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 412.01(c) (June 2019), the Board addresses improper designation of filed submissions in a number of ways. For example, the Board may disregard the designation as “confidential” for those matters which “cannot reasonably be considered confidential,” Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1476 (TTAB 2017) (Board not bound by inappropriate designations of material as confidential), or the Board may choose not to consider the improperly designated matter in rendering its decision. Hunter Inds., Inc. v. Toro Co., 110 USPQ2d 1651, 1656 (TTAB 2014) (improperly designated declaration testimony not considered and stricken from record), on appeal, No. 14- CV-4463 (D. Minn.). We choose the former course, taking care in our decision below Opposition No. 91229957 - 8 - to shield from public view only that testimony and those exhibits which truly warrant the protection of confidentiality. III. The Parties’ Evidentiary Objections A. Objections to Expert Witness Testimony In litigation and trial-type administrative proceedings, there are two types of recognized experts: scientific and technical experts of the type discussed in Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 27 USPQ2d 1200, 1201-02 (1993) (expert on whether the pregnancy anti-nausea drug Bendectin caused birth defects), and non- scientific experts who possess a degree of “other specialized knowledge” of the type discussed in Kumho Tire Co. v. Carmichael, 526 U.S. 137, 50 USPQ2d 1177, 1180 (1999) (expert on tire failure analysis). The expert testimony proffered by both parties in this case is of the latter, Kumho Tire, type. In this Opposition grounded on the sole claim of priority and likelihood-of- confusion, neither party offered scientific evidence of any type – such as, for example, a survey testing for relevant customer confusion or the relative strength or weakness of either party’s mark. Rather, each party submitted the testimony of its fact witnesses, tasking them with the double-duty of providing expert witness testimony on the issues of likely confusion and the possible perceptions of typical workers in the electricity distribution industry (a/k/a possible actual confusion) upon encountering the parties’ marks. In Appendices attached to parties’ trial briefs, Opposer and Applicant each object to the other party’s witnesses as lacking competence to testify as experts on the Opposition No. 91229957 - 9 - subjects of trademarks, brand recognition, likely trademark confusion and consumer perceptions upon encountering trademarks.7 1. Opposer’s Witnesses Proffered as Experts Phillip Fahey has been employed with Opposer since 1988, chiefly in an engineering capacity with ever-greater managerial responsibilities over the passage of time.8 At the time of his testimony deposition, Mr. Fahey’s position with Opposer was Vice President of Underground Switching and Protection.9 On cross- examination, and during his discovery deposition, Applicant’s counsel demonstrated that Mr. Fahey is not sufficiently qualified in the areas of trademarks, brand recognition, likely trademark confusion and consumer perceptions upon encountering trademarks to testify in these areas.10 Spencer Zirkelbach has been employed with Opposer since 2010 in a marketing capacity, and prior to his employment with Opposer had worked for other companies to assist with their product marketing efforts since 2007.11 At the time of his testimony deposition, Mr. Zirkelbach’s position with Opposer was Senior Manager of Marketing Communications.12 Mr. Zirkelbach’s speaking engagements and 7 Opposer’s Trial Brief, 43/44 TTABVUE 38-43; Applicant’s Trial Brief, 47/48 TTABVUE 47- 49. 8 Fahey Test. Dep., 24 TTABVUE 21-31. 9 Fahey Disc. Dep., App NOR, Exh. B, 29 TTABVUE 67. 10 Fahey Test. Dep., 24 TTABVUE 135-38; Fahey Disc. Dep., App NOR, Exh. B, 29 TTABVUE 62-65. 11 Zirkelbach Test. Dep., 25 TTABVUE 20-25. 12 Zirkelbach Test. Dep., 25 TTABVUE 25. Opposition No. 91229957 - 10 - publications to which he testified had no relation to trademarks or branding.13 Mr. Zirkelbach’s testimony regarding his day-to-day responsibilities for Opposer did not provide us with enough information persuade us of his expertise in the areas of brand recognition and consumer perceptions upon encountering trademarks.14 On cross- examination, and during his discovery deposition, Applicant’s counsel demonstrated that Mr. Zirkelbach is not sufficiently qualified in the areas of brand recognition, likely trademark confusion and consumer perceptions upon encountering trademarks to testify in these areas.15 2. Applicant’s Witnesses Proffered as Experts Neil O’Sullivan, since 2002, has been and is the founder, Group Managing Director and Chairman of the Board of Applicant. He is responsible for the general management of the entirety of Applicant’s business, including its global sales and marketing strategies.16 Mr. O’Sullivan’s testimony declaration regarding his current and prior experience in the marketing of electrical products did not provide us with enough information to understand his expertise in the areas of brand recognition and consumer perceptions upon encountering trademarks.17 On cross-examination, and during his discovery deposition, Opposer’s counsel demonstrated that Mr. O’Sullivan is not sufficiently qualified in the areas of trademarks, brand recognition, likely 13 Id., 25 TTABVUE 17-19. 14 Id., 25 TTABVUE 27-29. 15 Id., 25 TTABVUE 103-15; Zirkelbach Disc. Dep., App NOR, Exh. A, 29 TTABVUE 3-6. 16 O’Sullivan Test. Dec., 27 TTABVUE 5, ¶ 5. 17 Id., 27 TTABVUE 4-5, ¶¶ 3-5. Opposition No. 91229957 - 11 - trademark confusion and consumer perceptions upon encountering trademarks to testify in these areas.18 Richard Campanalie, after a long sales career at other electricity transmission and distribution product companies, was hired by Applicant in 2014 as an in-house salesperson to develop a market for Applicant’s products in the U.S.19 At the time of his testimony deposition in 2018, he had recently retired from his employment with Applicant.20 During his discovery deposition, Opposer’s counsel demonstrated that Mr. Campanalie is not sufficiently qualified in the areas of trademarks, brand recognition, likely trademark confusion and consumer perceptions upon encountering trademarks to testify in these areas.21 Edward Wilson, at the time of his testimony deposition, was the Operations Manager of a third-party manufacturers’ representative; whose business is promoting the sale of industrial grade electrical equipment produced by his clients.22 Applicant is among one of Mr. Wilson’s manufacturer clients.23 Mr. Wilson’s past work experience includes employment as an in-house buyer of electrical equipment for a large utility company in Washington State.24 On cross-examination, and during 18 O’Sullivan CX Test. Dep., 38 TTABVUE 50-53; O’Sullivan Disc. Dep., Opp NOR Exh. A, 23 TTABVUE 14-20, 60-61. 19 Campanalie Test. Dep., 34 TTABVUE 8-24. 20 Id., 34 TTABVUE 26-27. 21 Campanalie Disc. Dep., Opp NOR Exh. B, 23 TTABVUE 175-77. 22 Wilson Test. Dep., 30 TTABVUE 27-28. 23 Id., 30 TTABVUE 30-31. 24 Id., 30 TTABVUE 15-18. Opposition No. 91229957 - 12 - his discovery deposition, Opposer’s counsel demonstrated that Mr. Wilson is not sufficiently qualified in the areas of trademarks, brand recognition, likely trademark confusion and consumer perceptions upon encountering trademarks to testify in these areas.25 3. Rulings on the Parties’ Expert Witness Testimony Without question, Opposer’s and Applicant’s witnesses have long employment histories in the promotion and sale of industrial grade (i.e., non-consumer) electrical equipment. We have no concern with accepting their testimony – subject to limiting considerations of reliability, helpfulness, and support by the record as a whole – regarding the parties’ products, including their promotion, customers’ evaluation, purchase, sale, purpose and uses. We equally find helpful their explanations of the meanings of the parties’ marks (and portions thereof) relative to the products in issue. We therefore accept the testimony of the parties’ witnesses for these purposes. However, their opinions as to the ultimate commercial impressions of the marks “are not controlling.” Jones & Laughlin Steel Corp. v. Jones Eng’g Co., 292 F.2d 294, 130 USPQ 99, 100 (CCPA 1961). Likewise, testimony of “an [industry] expert regarding actual consumer perception [of the parties’ marks cannot] … serve as a substitute for the Board’s judgment on the legal claims before us.” Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1757 (TTAB 2013). Moreover, expert opinion testimony whether the parties’ marks are (or are not) “likely to cause confusion … amounts to nothing more than an expression of opinion 25 Id., 30 TTABVUE 87-90, 92; Wilson Disc. Dep., Opp NOR, Exh. C, 23 TTABVUE 222-25. Opposition No. 91229957 - 13 - by [each] … witness, which obviously is not binding” on us. Quaker Oats Co. v. St. Joe Processing Co., 232 F.2d 653, 109 USPQ 390, 391 (CCPA 1956). The opinions of witnesses, even that of experts, cannot serve as a substitute for our own judgment with regard to whether a likelihood of confusion exists. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1190 (TTAB 2017); Edwards Lifesciences, 94 USPQ2d at 1401-02 (“[T]he Board is responsible for determining whether the marks are similar, and we will not substitute the opinion of a witness, even an expert witness, for our evaluation of the facts”) (citing The Mennen Co. v. Yamanouchi Pharma. Co., Ltd., 203 USPQ 302, 305 (TTAB 1979) (holding the “opinions of witnesses, including those qualified as expert witnesses, on the question of likelihood of confusion are entitled to little if any weight and should not be substituted for the opinion of the tribunal charged with the responsibility for the ultimate opinion on the question.”)). We therefore give no weight to the testimony of the parties’ witnesses on the question of likelihood of trademark confusion. We further are not persuaded that any of the parties’ witnesses are qualified experts in the areas of brand recognition or consumer perceptions upon encountering the parties’ marks. In separating out those portions of the witnesses’ testimony that we do (and do not) consider, the parties should be assured that the Board ultimately is “capable of weighing the relevance and strength or weakness of the objected-to testimony and evidence, including any inherent limitations ...” Shael Norris v. PAVE: Promoting Awareness, Victim Opposition No. 91229957 - 14 - Empowerment, 2019 USPQ2d 370880, *2 (TTAB 2019) (quoting Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1737 (TTAB 2014)). B. Opposer’s Objections to Admission of Opposer’s Documents attached to Applicant’s Notice of Reliance Opposer objects to the admission, via Applicant’s Notice of Reliance,26 of documents that Opposer produced to Applicant during discovery.27 Applicant responds that Opposer produced these documents as part of Opposer’s Answers to Applicant’s Interrogatories,28 and in its Reply Brief Opposer does not argue otherwise. Discovery documents produced by the responding party as part of its interrogatory answers may be offered into evidence via a Notice of Reliance by the requesting party. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). Opposer’s objection to the admission, via Applicant’s Notice of Reliance, of Opposer’s discovery documents is overruled. C. Opposer’s Objections to Admission of Documents attached to Applicant’s Notice of Reliance, marked as Exhibits during the Discovery Depositions of Opposer’s Witnesses Opposer objects to the following documents, submitted via Applicant’s Notice of Reliance (Exhibit A), that were marked as exhibits during the discovery deposition of Spencer Zirkelbach: • Discovery Deposition Exhibit 3 – Vista SD Switchgear Business Plan (29 TTABVUE 42-44, discussed during Mr. Zirkelbach’s discovery deposition at 29 TTABVUE 10-13). 26 App NOR, Exh. C(vi), 29 TTABVUE 227-311. 27 Opposer’s Trial Brief, 43/44 TTABVUE 43-44. 28 47/48 TTABVUE 42. Opposition No. 91229957 - 15 - • Discovery Deposition Exhibit 10 – Opposer’s Product Portfolio Competitive Analysis (29 TTABVUE 157-60, discussed during Mr. Zirkelbach’s discovery deposition at 29 TTABVUE 20-22). • Discovery Deposition Exhibit 11 – Eaton Specification Sheet for their VISI- FLEX Disconnect Switches (29 TTABVUE 56, discussed during Mr. Zirkelbach’s discovery deposition at 29 TTABVUE 34-35). The basis for Opposer’s objection is that Applicant did not sufficiently authenticate these three documents, because Mr. Zirkelbach was not familiar with them. However, these same three discovery deposition exhibits were also discussed during the discovery deposition of Phillip Fahey (29 TTABVUE 72, 119-22 and 130- 31), and submitted via Applicant’s Notice of Reliance as part of Exhibit B thereof (29 TTABVUE 136-38, 157-60 and 161). Mr. Fahey sufficiently authenticated Discovery Deposition Exhibits 3 and 10 during his discovery deposition, such that Opposer’s objections to the admission of these documents is overruled. On the other hand, neither Mr. Fahey nor Mr. Zirkelbach was at all familiar with Discovery Deposition Exhibit 11, the Eaton VISI-FLEX Specification Sheet. We found no other mention of this document anywhere else in the evidentiary record. Therefore, Opposer’s objection to the admission of the Eaton Specification Sheet is sustained for lack of authentication. Fed. R. Evid. 901(a). Opposer also objects to the admission of Discovery Deposition Exhibit 2 – a portion of Opposer’s website listing its product lines (29 TTABVUE 134-35) – on the grounds that this document was never introduced or discussed at Mr. Zirkelbach’s deposition. While true, this same document was introduced, discussed and authenticated during Mr. Fahey’s deposition at 29 TTABVUE 69-70. Therefore, Opposer’s objection to the admission of this document is overruled. Opposition No. 91229957 - 16 - IV. The Parties Founded in 1911 and based in Chicago, Illinois, Opposer is a provider of equipment and services for electric power systems. Opposer offers its goods and services to the electric power industry, including electric switches and switchgear.29 Applicant, an Australian company founded in 2002, is in the business of manufacturing and selling electrical switches and switchgear to electric utilities. Noja Power, LLC, a Georgia limited liability company, is a wholly owned subsidiary of Applicant responsible for the marketing and sales of Applicant’s products in the United States.30 V. Standing and Priority Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co. Inc., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). An Opposer may establish its standing by properly making of record its pleaded registration, if it is the basis for a likelihood of confusion claim that is not wholly without merit. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); see also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012). Here, Opposer properly made its VISI-GAP registration of record under Trademark 29 Notice of Opposition, 1 TTABVUE 3, ¶ 2; Fahey Disc. Dep., App NOR, Exh. B, 29 TTABVUE 68-70 and portion of Opposer’s website, App NOR, Exh. B, 29 TTABVUE 134-35. 30 O’Sullivan Test. Dec., 27 TTABVUE 5, ¶¶ 5-7. Opposition No. 91229957 - 17 - Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1),31 showing its current active status and its ownership thereof, establishing its standing. Because Opposer’s pleaded registration is of record, and Applicant did not counterclaim to cancel it, priority is not at issue as to the mark and goods covered by the registration. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1436 n.7 (TTAB 2012). VI. Likelihood of Confusion We now consider the substantive claim before us. Trademark Act Section 2(d), 15 U.S.C. § 1052(d), prohibits the registration of a mark that [c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. Our analysis is based on all of the probative evidence of record. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In making our determination, we consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 31 Notice of Opposition, Exh. A, 1 TTABVUE 8-12. Opposition No. 91229957 - 18 - 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in any particular determination”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”). These factors, and the other DuPont factors argued by each party, are discussed below. A. The Parties’ Goods We initially turn to the comparison of the goods at issue, the second DuPont factor. Before engaging in this comparison of the parties’ specific goods, in view of their highly technical nature we believe it helpful to provide a set of relevant definitions of terms based on the evidentiary record. To reiterate, the goods identified in Opposer’s VISI-GAP registration are “electrical switches, electric circuit fault interrupters;” while the goods identified in Applicant’s VISI-SWITCH application are “pole mounted medium voltage load break switches; electrical devices for electrical distribution lines, namely sectionalizers.” In the electrical transmission and distribution industry, a contact is a transfer point for electrical current between a stationary point (the stationary contact) and a movable point on the electrical conductor (the movable contact).32 An electrical 32 Fahey Test. Dep., 24 TTABVUE 40-41. Opposition No. 91229957 - 19 - switch is any device that can interrupt or disconnect (open and close) an electrical circuit.33 When the contacts of a switch are open, no power is flowing between the contact points; and when the contacts of a switch are closed, electricity is flowing between the contact points.34 Sectionalizers are the same as switches; that is, any device that can disconnect an electrical circuit in section to isolate a section of an electrical grid – typically related to load break switches (see below).35 Electrical switches generally operate within three voltage levels. Low voltage is considered any power voltage level below 4.5 kV (kilovolts). Medium voltage is 4.5 kV (kilovolts) up through 38 kV. Anything above 38 kV is high voltage.36 Bushings comprise an insulated device within which the contacts of the switch are housed and through which electricity flows.37 The insulation barrier is the barrier between the high voltage part of the switch and the ground.38 Known insulating mediums for electrical switches include oil, SF6 (sulfur hexafluoride) gas and air. Air insulation requires a larger volume of space (and thus larger equipment) to effectively disconnect the circuit or interrupt fault currents.39 SF6 gas insulation requires a smaller volume of space (and thus smaller equipment), but it 33 Zirkelbach Test. Dep., 25 TTABVUE 33; Fahey Test. Dep., 24 TTABVUE 42; O’Sullivan CX Test. Dep., 38 TTABVUE 26. 34 O’Sullivan Disc. Dep., Opp NOR, Exh. A, 23 TTABVUE 52-54. 35 Zirkelbach Test. Dep., 25 TTABVUE 58. 36 Fahey Test. Dep., 24 TTABVUE 51. 37 Campanalie Disc. Dep., Opp NOR, Exh. B, 23 TTABVUE 121-22. 38 O’Sullivan CX Test. Dep., 38 TTABVUE 26. 39 Zirkelbach Test. Dep., 25 TTABVUE 42-43. Opposition No. 91229957 - 20 - is a potent greenhouse gas and its usage (including time-consuming reporting requirements) is heavily regulated.40 Oil insulation, the original insulation medium, also has environmental issues.41 Solid dielectric insulation means there is no insulating medium because the on-and-off electrical switching is done within a vacuum tube – and this is the current insulation alternative being pursued today by manufacturers.42 A load-interrupting switch is a switch that is able to disconnect the circuit under normal load conditions; that is, under circumstances where normal electric current is flowing at a level for which the electrical system was designed.43 A fault- interrupting switch is a switch that is able to disconnect the circuit under high- current scenarios, such as when a fault or short-circuit occurs causing a power surge within the electrical system.44 Switchgear is an assembly of control (load- interrupting) switch equipment and protection (fault-interrupting) switch equipment put together in customized arrangements. Switchgear typically contains more than one switching ways; that is, control (load-interrupting) and protection (fault- interrupting) switches.45 40 Id., 25 TTABVUE 43-44, 146; O’Sullivan CX Test. Dep., 38 TTABVUE 27. 41 O’Sullivan CX Test. Dep., 38 TTABVUE 27. 42 Zirkelbach Disc. Dep., App NOR, Exh. A, 29 TTABVUE 8-9; Zirkelbach Test. Dep., 25 TTABVUE 37; O’Sullivan CX Test. Dep., 38 TTABVUE 26-27. 43 Zirkelbach Test. Dep., 25 TTABVUE 34-35; Fahey Test. Dep., 24 TTABVUE 42. 44 Id., 25 TTABVUE 35; 24 TTABVUE 44-45. 45 Zirkelbach Test. Dep., 25 TTABVUE 35-36, 44; App NOR, Exh. B, Fahey Disc. Dep., 29 TTABVUE 75-76. Opposition No. 91229957 - 21 - In the electric industry, it is common practice for the line workers who are working on the electrical distribution system to want the ability to see what is called a visible gap or break which is a visual disconnection of the circuit between the energized parts of the electrical equipment. When the two contacts are connected, the circuit is closed and electricity is flowing. When the circuit is open (the load break switch opens or the fault interrupters open), the connection is broken such that there is no flow of electricity. The desired functionality is a window through which the line worker can actually see the gap between the two contacts, allowing the line worker to know that the electricity is or is not disconnected.46 Switching devices can be used in connection with the distribution of electricity either by being mounted overhead on utility poles, coming up from or going down to the underground on riser poles, on ground-level concrete platforms (pad-mounted) or underground in vaults (enclosures).47 1. Opposer’s Vista SD Switchgear with VISI-GAP Switches Opposer’s VISI-GAP load-interrupter switches and VISI-GAP fault interrupters are the components48 that are installed into Opposer’s Vista SD switchgear assembly, connected together by a solid insulated dielectric bus to form a package that an 46 Zirkelbach Test. Dep., 25 TTABVUE 40-41; Campanalie Disc. Dep., Opp NOR, Exh. B, 23 TTABVUE 123-26. 47 Zirkelbach Disc. Dep., App NOR, Exh. A, 29 TTABVUE 24-25; Fahey Disc. Dep., App NOR, Exh. B, 29 TTABVUE 68-69, 77-78, 128-29; Campanalie Test. Dep., 34 TTABVUE 30-32; Zirkelbach Test. Dep., 25 TTABVUE 56, 85-86, 120-25, 154-56; Fahey Test. Dep., 24 TTABVUE 154-56, 184-86. 48 Broadly speaking, both load-interrupters and fault-interrupters are defined as switches. Fahey Test. Dep., 24 TTABVUE 147-48. Opposition No. 91229957 - 22 - electrical utility company can use when it is working on its underground system, and which may have different combinations of the number of load break switches versus the number of fault interrupters in it. Anywhere from one up to six VISI-GAP load- break switches or fault interrupters constitute a Vista SD package. It is up to the end user (the utility) as to how many load-interrupter switches or fault interrupters are used in a particular assembly. This depends on what the end user is trying to accomplish to interconnect everything on its electrical distribution system to feed its customers with electricity.49 Opposer’s Vista SD switchgear package containing VISI-GAP switches has been sold to customers since 2015.50 Vista SD switchgear, containing one or more VISI- GAP switches, is installed in an electrical grid between the substation and the transformer that is reducing the voltage down to utilization voltage which the customer uses.51 Vista SD/VISI-GAP units are installed on medium-voltage distribution systems,52 either on the surface (pad-mounted) or underground (vault- style), use solid-dielectric insulating material, and the VISI-GAP switching units feature viewing windows to provide the line worker with a clear view of the isolating disconnects (that is, showing the contacts being closed or open, with the flow of electricity being on or off).53 From the evidence of record, to date VISI-GAP switching 49 Fahey Test. Dep., 24 TTABVUE 46-47, 141-42. 50 Fahey Test. Dep., 24 TTABVUE 70-73 and Test. Exh. 13, 24 TTABVUE 263. 51 Fahey Test. Dep., 24 TTABVUE 57-58. 52 Zirkelbach Test. Dep., 25 TTABVUE 38. 53 Campanalie Test. Dep., 34 TTABVUE 41-47 and Test. Exh. 2, 34 TTABVUE 100-02. Opposition No. 91229957 - 23 - units have been offered only as part of the Vista SD switchgear for on-the-surface or below-the-surface uses and it is unclear whether Opposer will offer the VISI-GAP switching units as stand-alone products and/or for overhead uses (or even riser pole applications) in the future.54 2. Applicant’s VISI-SWITCH Switches Applicant’s VISI-SWITCH product is an overhead (utility pole) mounted, enclosed, solid dielectric, vacuum interrupter load break switch with a visible isolation. The VISI-SWITCH is intended for use on a medium voltage line.55 A noted feature of the VISI-SWITCH switch is that the operator can view the isolator contacts through a viewing window, such that the operator can confirm whether the contacts of the switch are open (with no electricity flowing) for safety purposes. VISI-SWITCH is marketed and sold as a stand-alone overhead switch product, and Applicant has no plans or intent to utilize the VISI-SWITCH mark for pad-mounted or underground switches or switchgear.56 As we have already noted, Applicant’s VISI-SWITCH trademark application was filed on an intent-to-use basis. Applicant’s first promotion of its VISI-SWITCH device in the U.S. was in 2018 at a trade show.57 To date, Applicant has only sold less than 54 Zirkelbach Test. Dep., 25 TTABVUE 56-58, 159-60, 175; Fahey Test. Dep. 24 TTABVUE 59-60, 83-84, 148-50, 154-56, 184-90. 55 O’Sullivan CX Test. Dep., 38 TTABVUE 28. 56 O’Sullivan Test. Dec., 27 TTABVUE 6-7, ¶¶ 13-16; O’Sullivan CX Test. Dep., 38 TTABVUE 26. 57 O’Sullivan CX Test. Dep., 38 TTABVUE 18-19, 34. Opposition No. 91229957 - 24 - five sample VISI-SWITCH units to U.S. customers, and its gross revenues from U.S. sales for the product have been infinitesimal.58 3. The Parties’ Goods are Highly Related to Nearly Identical In making our determination regarding the relatedness of the parties’ goods, we must look to the goods as identified in Applicant’s application and Opposer’s registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”)); see also Paula Payne Prods. Co. v. Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”). We do not read limitations into the identifications of either party. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation here, and nothing in the inherent nature of [registrant’s] mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The board, thus, improperly read limitations into the registration.”). Moreover, we need not consider whether each of Opposer’s identified goods is related to Applicant’s goods for 58 O’Sullivan CX Test. Dep., 38 TTABVUE 35-36. Opposition No. 91229957 - 25 - purposes of a DuPont analysis, it is sufficient if likelihood of confusion is found with respect to use of an applicant’s mark in connection with any product or service in a particular International Class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007). In other words, the fundamental principle of registration practice is that regardless of the parties’ actual business activities, the goods in an application or registration are construed to include all goods of the type identified, sold in all normal channels of trade for such goods, to all usual purchasers of them. Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1825-26 (TTAB 2009). While conceding there is a degree of relatedness between Applicant’s goods and Opposer’s goods, Applicant seeks to distinguish the parties’ goods largely on the basis of Applicant’s overhead electrical distribution applications as to its goods versus Opposer’s on-the-ground or underground electrical distribution applications as to those goods.59 However, as Opposer correctly notes, Applicant’s recitation of goods in its Application falls within the scope of Opposer’s goods recited within its Registration, regardless of what the record reveals as to the particular nature of the parties’ goods. Int’l Paper Co. v. Valley Paper Co., 468 F.2d 937, 175 USPQ 704, 705 (CCPA 1972) (“[Opposer’s] … registration description is broad enough to cover the goods for which [Applicant’s mark] … is sought to be registered. … [T]he legal effect of this fact is that the goods … are to be considered the same for the purposes of this 59 Applicant’s Brief, 47/48 TTABVUE 17-21. Opposition No. 91229957 - 26 - opposition.”). Even as the parties’ marks are currently used, they are both associated with electrical switches employing solid dielectric insulation, deployed on medium- voltage distribution lines, and utilizing a visible window to allow a lineworker to visually determine if electricity is flowing through the switch.60 We therefore find that the parties’ goods are legally identical, thus supporting an ultimate finding that confusion is likely. B. The Similarity or Dissimilarity of the Parties’ Established, Likely-To-Continue Trade Channels We next examine the parties’ respective established, likely-to-continue trade channels, the third DuPont factor. This factor considers the media and other ways the parties’ goods are advertised and promoted, the types of purchasers of the parties’ goods, and the means by which the parties’ products are distributed and sold. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). When, as here, the respective identifications of goods are for all purposes legally identical, without restrictions as to nature, type, channels of trade, or classes of purchasers, the identified goods are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“[A]bsent restrictions in the application and registration, goods and services are presumed to travel in the same channels of trade to the same class of purchasers.”) (citing Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 60 Opposer’s Brief, 43/44 TTABVUE 20-26. Opposition No. 91229957 - 27 - 1268 (Fed. Cir. 2002)). Thus, without regard to Applicant’s argument and evidence of marketplace use, we must presume the trade channels and classes of purchasers are the same for both the goods sold by Applicant and the goods sold by Opposer. It also is well-settled that the goods of Opposer and Applicant need not be identical or competitive, or even be offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some manner, or that the conditions and activities surrounding the marketing of the goods 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 source. See Coach Servs., 101 USPQ2d at 1722; Hilson Research, Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423, 1432 (TTAB 1993). The issue is not whether potential purchasers would confuse the parties’ products, but rather whether there is a likelihood of confusion as to the source of the parties’ goods. L’Oreal S.A., 102 USPQ2d at 1439; In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). Over and above these legal presumptions, there is notable evidence of record that the parties’ channels of trade do overlap. The vast majority of overlapping customers and intended customers are electric utilities.61 In addition to its own web site, Opposer advertises its Vista SD switchgear with VISI-GAP switches through industry publications, online advertising through search engines, industry trade 61 Zirkelbach Test. Dep., 25 TTABVUE 72-73, 92-96, 128-33; O’Sullivan Test. Dec. 27 TTABVUE 6, ¶ 12; Opp NOR, Exh. D, App’s Suppl. Int. Ans. No. 16, 20 TTABVUE 213-14. Opposition No. 91229957 - 28 - shows, manufacturers’ sales representatives and in-person demonstrations at customer locations.62 In addition to its own web site, Applicant advertises its VISI- SWITCH switches at trade shows (in fact, some of the same trade shows attended by Opposer), press releases picked up by the trade press, online Google® ad campaigns, independent manufacturers’ sales representatives, e-mail advertising, trade magazines and direct sales calls to potential customers.63 We therefore find that the parties’ presumed, and established, likely-to-continue trade channels and classes of purchasers overlap, thus supporting an ultimate finding that confusion is likely. C. Conditions of Sale and Post-Sale – Customer Sophistication We also consider the conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing, the fourth DuPont factor. Circumstances suggesting care in purchasing may tend to minimize a likelihood of confusion. In re N.A.D., Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985) (confusion is unlikely when sophisticated purchasers are buying goods with great care). Nonetheless, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. Stone Lion, 110 USPQ2d at 1163-64; Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 62 Zirkelbach Test. Dep., 25 TTABVUE 69-81; Fahey Test. Dep., 24 TTABVUE 85-92, 161-64. 63 O’Sullivan CX Test. Dep., 38 TTABVUE 18-19, 34; Opp NOR, Exh. A, O’Sullivan Disc. Dep., 23 TTABVUE 28-31, 37-43, 50-51. Opposition No. 91229957 - 29 - 1163, 1170 (TTAB 2011). Even discerning and sophisticated purchasers are likely to be confused between the sources of identical goods when offered under similar marks. Insofar as the record shows, the parties’ goods are not inexpensive. Applicant’s VISI-SWITCH switches are priced at approximately $5,000.64 Opposer’s Vista SD switchgear with VISI-GAP switches, depending upon the configuration of the switchgear package, can cost anywhere between $16,000 and $120,000.65 “In making purchasing decisions regarding ‘expensive’ goods, the reasonably prudent person standard is elevated to the standard of the ‘discriminating purchaser.’” Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990). The parties agree that their overlapping products are sold to electric utilities through a lengthy two-stage process. First, the utility’s engineering team reviews what the vendor’s product can and cannot do, including its main features and functions; whether the product is capable of performing the applications that the utility wants to cover; how the product is manufactured; whether the product has passed certain certification tests to prove the equipment is usable on the utility’s system per engineering standards; whether the product can be customized; and, before committing to any large volume purchase, whether the product can in fact 64 Opp NOR, Exh. C, Wilson Disc. Dep., 23 TTABVUE 248; Campanalie Test. Dep., 34 TTABVUE 37. 65 App NOR, Exh. B, Fahey Disc. Dep., 29 TTABVUE 101-02, 112. In connection with the marks at issue, neither party is in the business of selling inexpensive low-voltage switches of the type that would be found in a consumer’s home. Zirkelbach Test. Dep., 25 TTABVUE 34, 36-7, 158-9; Fahey Test. Dep., 24 TTABVUE 51, 183-84; O’Sullivan CX Test. Dep., 38 TTABVUE 19-20; Campanalie Test. Dep., 34 TTABVUE 82; Wilson Test. Dep. 30 TTABVUE 81-2. Opposition No. 91229957 - 30 - perform on the utility’s electrical system after some pilot units are installed for monitoring.66 Only after the utility’s engineering team approves the specifications of the product does the utility’s procurement team become involved, negotiating the best purchase price, terms and conditions favorable to the utility – many times on the basis of multiple source competitive bidding from a list of approved product vendors.67 The approval process can take from three months up to a year or more.68 Opposer contends that, due to the similarities in the parties’ marks, an inexperienced utility buyer might be confused as to whether he or she is buying a switchgear package or an individual switch. On the other hand, if one day Opposer offers VISI-GAP switches as standalone products, confusion with Applicant’s VISI- SWITCH switches becomes more likely.69 Alternatively, because of the similar “VISI-” prefixes of the parties’ marks, Opposer contends that utility lineworkers might be confused about the source of either party’s product. This is of particular concern to Opposer should a faulty VISI-SWITCH product installed on a utility’s electric distribution line be associated with Opposer thus compromising Opposer’s reputation for quality switching products.70 66 Fahey Test. Dep., 24 TTABVUE 97-98, 117-18; Wilson Test. Dep., 30 TTABVUE 47-48; O’Sullivan Test. Dec., 27 TTABVUE ¶¶ 8-10. 67 Fahey Test. Dep., 24 TTABVUE 98-99, 102-03, 111-14, 165-70; Wilson Test. Dep., 30 TTABVUE 48-53, 78-80; O’Sullivan Test. Dec., 27 TTABVUE 6, ¶¶ 10-11. 68 Fahey Test. Dep., 24 TTABVUE 101-02; O’Sullivan Test. Dec., 27 TTABVUE 6, ¶ 10. 69 Fahey Test. Dep., 24 TTABVUE 177-79, 187-90; App NOR Exh. A, Zirkelbach Disc. Dep., 29 TTABVUE 32-34, 37-38. 70 Zirkelbach Test. Dep., 25 TTABVUE 173-74; Fahey Test. Dep., 24 TTABVUE 173-77; App NOR Exh. B, Fahey Disc. Dep., 29 TTABVUE 126-27. Opposition No. 91229957 - 31 - Applicant, on the other hand, asserts that the detailed dual-level evaluation and purchase process for the parties’ goods precludes buyer confusion.71 Linemen confusion about the source of a faulty switch product due to similar product names, if it were to occur at all, would shortly be remedied once the product was reported up the chain of command to the utility’s operations engineer who would quickly discern the manufacturer that produced the product.72 We find, “as demonstrated by the facts of this case, the purchasing process is so attenuated and lengthy for both [parties’] products that there is time for all involved [, the customers’ engineers and buyers,] to understand clearly and completely the vendors with whom they are dealing.” Edwards Lifesciences, 94 USPQ2d at 1411. Based upon the facts of record, source confusion at the point-of-purchase is unlikely. As to confusion by linemen, “[t]he Board has, in the past, found likelihood of confusion where source confusion occurred even after the point of purchase. For example, such post-sale confusion may exist among the ultimate users of the goods.” HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1822 (TTAB 1989) (citing In re Artic Elecs. Co., Ltd., 220 USPQ 836 (TTAB 1983)). Here, however, both parties appear to be speculating whether meaningful linemen confusion as to the source of the products would or would not occur should one of the parties’ products turn out to be defective. As previously noted, none of the parties’ witnesses qualify as experts as 71 O’Sullivan Test. Dec., 27 TTABVUE 8-9, ¶ 21; Campanalie Test. Dep., 34 TTABVUE 61- 62. 72 Campanalie Test. Dep., 34 TTABVUE 63; Wilson Test. Dep., 30 TTABVUE 58-61. Opposition No. 91229957 - 32 - to the possible perceptions of typical workers in the electricity distribution industry (a/k/a possible actual confusion) upon encountering the parties’ marks. We therefore find that the conditions of sale and customer sophistication support an ultimate finding that confusion is not likely, but this factor is not controlling. On the other hand, possible post-sale confusion by utility lineworkers is a neutral factor as to whether confusion is likely. D. Strength of Opposer’s Mark Under the fifth and sixth DuPont likelihood of confusion factors, we consider the strength of Opposer’s mark by considering its “fame” and the number and nature of similar marks in use on similar goods. In modern parlance, in determining strength of a mark, we consider both conceptual strength, based on the nature of the mark itself, and its commercial strength or recognition. Couch/Braunsdorf Affinity 110 USPQ2d at 1476; see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”); MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. 2019) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”). Since Opposer’s VISI-GAP mark was registered on the Principal Register, and Applicant did not counterclaim to cancel the registration, Opposer’s mark is presumed to be valid. Trademark Act Section 7(b), 15 U.S.C. § 1057(b). Nonetheless, Opposition No. 91229957 - 33 - Applicant contends that Opposer’s mark is inherently conceptually weak and therefore entitled to a narrow scope of protection.73 The connotation of Opposer’s VISI-GAP mark is a textual representation that Opposer’s switches promoted and sold in connection with the mark have a perceptible isolating disconnect (or set of contacts) that lineworkers can see to determine whether the contacts are closed (and electricity is flowing) or open (forming a break or gap between the contacts indicating that electricity is not flowing) through the switch – in other words, a “visible gap.”74 We thus agree with Applicant and find that, at best, VISI-GAP is highly suggestive of a feature of Opposer’s goods and thus inherently conceptually weak as a designation of source. Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *7 (TTAB 2019) (finding the term ROAD in Respondent’s ROAD WARRIOR mark highly suggestive and thus weak as a source identifier in connection with Respondent’s tires). Market strength is the extent to which the relevant public recognizes a mark as denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). “Acquired distinctiveness, i.e., secondary meaning, is a term of art which denotes that there is an association formed in the minds of the consumers between the mark and the source or origin of the product. … To determine whether a mark has acquired secondary meaning, courts consider: advertising expenditures and 73 Applicant’s Brief, 47/48 TTABVUE 13, 22. 74 Fahey Test. Dep., 24 TTABVUE 40-41, 138-39; App NOR, Exh. A, Zirkelbach Disc. Dep., 29 TTABVUE 17-18, 26-32; App NOR, Exh. B, Fahey Disc. Dep., 29 TTABVUE 112-14 and Disc. Dep. Exh. 5, 29 TTABVUE 146-51, in particular 29 TTABVUE 148. Opposition No. 91229957 - 34 - sales success; length and exclusivity of use; unsolicited media coverage; copying of the mark ...; and consumer studies ….” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1377 (Fed. Cir. 2018) (internal quotations and citations omitted). Opposer has promoted its Vista SD switchgear featuring the VISI-GAP switches since 2014,75 and has been selling these switchgear packages since 2015.76 Opposer’s advertising and sales figures have been marked confidential, so we do not discuss them here with any specificity. The confidentiality of Opposer’s advertising and sales statistics matters not, however, because we have nothing against which to compare them. That is, raw advertising and sales numbers alone can be misleading. Thus, some context in which to place raw financial data is necessary; for example, market share or sales or advertising figures for comparable types of goods, Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002), neither of which Opposer provided. Opposer also did not provide unsolicited media coverage of the VISI-GAP switches or electric industry purchaser studies (surveys) testing customer recognition of the mark. On the other hand, Applicant did not establish the marketplace weakness of Opposer’s VISI-GAP mark, or the weakness of the “VISI-” prefix shared by the parties’ marks. During discovery depositions, Applicant presented Opposer’s 75 Zirkelbach Test. Dep., 25 TTABVUE 85-92 and Opp Test. Exh. 6, promotional budget summary, 25 TTABVUE 231. 76 Zirkelbach Test. Dep., 25 TTABVUE 154-65 and App Test. Exh. 1, promotional budget summary, 25 TTABVUE 5. Opposition No. 91229957 - 35 - witnesses with an Eaton specification sheet for VISI-FLEX disconnect switches (which we found above to be inadmissible for lack of authentication), a registration for the mark VISI-TRIP (Reg. No. 870,395) for molded case circuit breakers, and a registration for the mark VISI ROCKER (Reg. No. 1,302,457) for electrical switches,77 none of which were recognized or authenticated by Opposer’s witnesses.78 This paucity of evidence is woefully insufficient to demonstrate the marketplace weakness of Opposer’s VISI-GAP mark or the “VISI-” prefix in the electric power distribution device industry. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). We therefore find that Opposer’s VISI-GAP mark to be inherently conceptually weak, and only of moderate strength (by acquired distinctiveness) through marketplace use. While Opposer’s VISI-GAP mark is rather weak, such marks are still entitled to protection under Trademark Act Section 2(d) against the registration by a subsequent user of a similar mark for goods that are legally identical, as is the case here. See King Candy, 182 USPQ at 109; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). 77 App NOR, Exh. A, Disc. Dep. Exhs. 11-13, 29 TTABVUE 56-58. 78 App NOR, Exh. A, Zirkelbach Disc. Dep., 29 TTABVUE 35-37; App NOR, Exh. B, Fahey Disc. Dep., 29 TTABVUE 130-32. Opposition No. 91229957 - 36 - E. Comparison of the Parties’ Marks We next consider the similarity or dissimilarity of the parties’ VISI-GAP and VISI- SWITCH marks in their entireties as to appearance, sound, connotation, and commercial impression, the first DuPont factor. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. Krim-Ko Div. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs., 101 USPQ2d at 1721 (internal quotation omitted)). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). While likelihood of confusion cannot be predicated on dissecting the marks into their various components, different features may be analyzed and given more or less weight, provided the ultimate conclusion rests on a consideration of the marks in their entireties. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Opposition No. 91229957 - 37 - Cir. 1985); see also Coach Servs., 101 USPQ2d at 1721 (“It is well-established that it is improper to dissect a mark, and that marks must be viewed in their entireties. … In some circumstances, however, one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark.”) (internal quotations and citations omitted); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). As the first term, or prefix, in the marks, “VISI-” is the identical dominant term. Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). Moreover, the term or prefix “VISI-” in Applicant’s mark is entitled to greater weight than the second term or suffix SWITCH, both because “VISI-” comes first and because SWITCH is generic with respect to the goods.79 In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“The identity of the marks’ initial two words is particularly significant because consumers typically notice those words first.”); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this 79 “[Applicant] uses the mark ‘VISI-SWITCH’ … as the brand name for [a] … load break switch with a visible isolation.” O’Sullivan Test. Dec. 27 TTABVUE 6, ¶ 13 (emphasis added). “A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. … [A] generic name [is not] … entitled to legal protection.”). Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 764 (2d Cir. 1976) (citing Delaware & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 323 (1872)) (internal quotations omitted). Opposition No. 91229957 - 38 - court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting Nat’l Data, 224 USPQ at 752). Moreover, because the VISI-GAP and VISI-SWITCH marks are associated with legally identical goods, the degree of similarity of the marks necessary to support a finding that confusion is likely is lessened. Coach Servs., 101 USPQ2d at 1722 (“When trademarks would appear on substantially identical goods, ‘the degree of similarity necessary to support a conclusion of likely confusion declines.’”) (internal citations omitted). See also Century 21, 23 USPQ2d at 1701. In any event, Applicant concedes that connotation and overall commercial impression of the marks is highly similar, if not identical.80 We therefore find, when judged by the elements of appearance, sound, connotation, and commercial impression, that the similarity of the parties’ VISI-GAP and VISI-SWITCH marks supports an ultimate finding of likely confusion. F. The Absence of Actual Confusion Since Applicant raised the issue in its brief, we consider the nature and extent of any actual confusion between the parties’ marks and products, and the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion, the seventh and eighth DuPont factors. Applicant argues that the parties have been concurrently marketing their respective VISI-GAP and VISI-SWITCH products in Australia for a least a year, with 80 Campanalie Test. Dep., 34 TTABVUE 70-72; Wilson Test. Dep., 30 TTABVUE 74-76. Opposition No. 91229957 - 39 - no evidence of actual confusion.81 However, neither party made of record the types or extent of their respective uses of the marks in Australia during this time period. Moreover, Applicant concedes that this is a “relatively short period of time that the goods have coexisted in the market.”82 In any event, any confusion that might have occurred between the parties’ marks and goods in Australia is irrelevant to the U.S. marketplace. Applicant also makes much of the concessions of Opposer’s witnesses, Messrs. Zirkelbach and Fahey, that no instances of actual confusion between the VISI-GAP and VISI-SWITCH marks and products have come to their attention to date.83 However, as we discussed earlier, Applicant’s first promotion of its VISI-SWITCH device in the U.S. was in 2018; and to date, Applicant’s sales of VISI-SWITCH units to U.S. customers has been negligible. Since 2018, moreover, the extent of Applicant’s U.S. promotion of its VISI-SWITCH device has been minimal.84 Overall, Applicant concedes that “the opportunity for actual confusion in this case is somewhat limited.”85 Thus, Applicant’s reliance on the lack of actual confusion under the circumstances of this case is misplaced. “The absence of any reported instances of confusion is meaningful only if the record indicates appreciable and 81 Applicant’s Brief, 47/48 TTABVUE 36-37. 82 Id., 47/48 TTABVUE 37. 83 Id., 47/48 TTABVUE 37. 84 Campanalie Test. Dep., 34 TTABVUE 77-81; Opp NOR, Exh. B, Campanalie Disc. Dep., 23 TTABVUE 129-36; Opp NOR, Exh. C, Wilson Disc. Dep., 23 TTABVUE 233-36. 85 Applicant’s Brief, 47/48 TTABVUE 37. Opposition No. 91229957 - 40 - continuous use by applicant of its mark for a significant period of time in the same markets as those served by opposer under its marks.” Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion depends upon there being a significant opportunity for actual confusion to have occurred). Since there is no evidence that would allow us to assess the extent to which there has been a meaningful opportunity for confusion to occur, we find the absence of actual confusion does not weigh in Applicant’s favor, and thus consider this factor neutral. G. Balancing the Likelihood of Confusion Factors The first, second and third DuPont factors favor finding a likelihood of confusion. We find that, when judged by the elements of appearance, sound, connotation and commercial impression, the parties’ VISI-GAP and VISI-SWITCH marks are similar. The parties’ goods are legally identical. The parties’ respective presumed and established, likely-to-continue trade channels and classes of purchasers overlap. On this evidentiary record, the conditions of sale and customer sophistication do not overcome the other factors supporting an ultimate finding that confusion is likely. The fact “[t]hat the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks Opposition No. 91229957 - 41 - for similar goods. ‘Human 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) (affirming refusal to register ROPELOK for safety fall protection equipment on basis of likelihood of confusion with registration of ROPELOCK for releasable locking buckles for ropes particularly for industrial purposes) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). We find on the basis of the evidence on the pertinent DuPont factors that the “[s]ophistication of buyers and purchaser care are relevant considerations, but are not controlling on this factual record.” Id. Opposer’s VISI-GAP mark is inherently conceptually weak, and only of moderate strength through marketplace use. However, Applicant did not demonstrate the marketplace weakness of Opposer’s VISI-GAP mark, or the weakness of the “VISI-” prefix shared by the parties’ marks. Although Opposer’s mark is neither conceptually nor commercially strong, it is still entitled to protection. Under the circumstances of this case, possible post-sale confusion and the absence of actual confusion are neutral factors as to whether confusion is likely. Upon balancing the relevant DuPont likelihood of confusion factors for which there has been evidence and argument, we find that Applicant’s VISI-SWITCH mark, used in connection with Applicant’s goods, so closely resembles Opposer’s registered VISI-GAP mark as to be likely to cause confusion, mistake or deception as to the source of Applicant’s goods. Opposition No. 91229957 - 42 - VII. Decision The opposition to registration of Applicant’s VISI-SWITCH mark on grounds of likelihood of confusion is sustained.

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