Consumers Energy Company

Trademark Trial and Appeal Board

Jul 28, 2015

No. 86043080 (T.T.A.B. Jul. 28, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Consumers Energy Company
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Serial No. 86043080
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Todd L. Moore of Young Basile Hanlon & MacFarlane PC,
for Consumers Energy Company.
Catherine L. Tarcu, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
_____

Before Taylor, Lykos and Masiello,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On August 20, 2013, Consumers Energy Company (“Applicant”) filed an
application to register on the Principal Register the mark GREEN GENERATION
in standard character format for the following goods and services:1
“renewable energy, namely, solar energy, wind energy, biogas energy, and
geothermal energy” in International Class 4; and

1 Application Serial No. 86043080, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a). Applicant has disclaimed the word “GREEN” apart from the mark as shown.

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“retail energy provider services that allow customers to purchase
renewable energy” in International Class 35.

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 displayed below that, when
used on or in connection with Applicant’s identified goods and services, it is likely to
cause confusion or mistake or to deceive:

for services identified as
“Business consulting and advisory services in the field of energy
efficiency” in International Class 35;

“Installation services in the field of energy efficiency, namely, installation
of energy efficient indoor environmental equipment and fixtures that
improve energy efficiency” in International Class 37; and

“Design services in the field of energy efficiency, namely, design of energy
efficient products for others” in International Class 42.2

When the refusal was made final, Applicant appealed and requested
reconsideration. The Trademark Examining Attorney denied the Request for

2 Registration No. 4201142, registered September 4, 2012, with a disclaimer of the word
“SOLUTIONS” apart from the mark as shown. The description of the mark is as follows:
“The mark consists of a green rectangle that contains a white capitalized ‘G’ connected to a
white, inverted capitalized ‘G’. The grey wording ‘greengeneration’ appears immediately
below the rectangle, the grey word ‘solutions’ appears below the wording ‘greengeneration’
and is separated therefrom by a green line.” The colors green, white and grey are claimed
as a feature of the mark.
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Reconsideration, maintaining the final refusal. Thereafter, the appeal was resumed,
and the case is now fully briefed.
Evidentiary Issues
Before discussing the substance of this appeal, we shall address the Examining
Attorney’s objection to Applicant’s references in its appeal brief for the first time to
the following two websites:
www.greengeneralsolutions.com and www.consumersenergy.com.
The Examining Attorney has objected to the website references on two grounds,
untimeliness and the form of submission of this evidence.
Trademark Rule 2.142(d) provides in relevant part that “[t]he record in the
application should be complete prior to the filing of an appeal. The Trademark Trial
and Appeal Board will ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal is filed.” It is clear that
neither the website addresses noted above nor the underlying pages associated with
each address were made of record during prosecution of the application.
Furthermore, as the Examining Attorney correctly points out, even if the web
addresses were timely made of record, the mere submission of a web address or
hyperlink is insufficient to make the associated web pages of record. See In re
Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013); In re HSB Solomon Assocs.,
102 USPQ2d 1269, 1274 (TTAB 2012).3

3 The Examining Attorney is also correct that it would be improper for the Board to take
judicial notice of this evidence. Judicial notice may be taken of facts that are not subject to
dispute; evidence obtained from Internet websites does not fall under this category. Cf. Fed.
R. Evid. 201.
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Insofar as the Examining Attorney has timely interposed an objection to
Applicant’s late-filed evidence in improper form, the objection is sustained, and the
references noted in Applicant’s appeal brief have been given no consideration. See
e.g., In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d
1593, 1596 (TTAB 2014) (examining attorney’s objection to applicant’s submission of
registrations with appeal brief sustained).
Likelihood of Confusion Analysis
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) (“du Pont”). 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, however, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976). These factors and others are discussed below.
Similarity of the Marks
The first du Pont likelihood of confusion factor involves an analysis of the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but
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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.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Our analysis
cannot be predicated on dissecting the marks into their various components; that is,
the decision must be based on the entire marks, not just part of the marks. In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also
Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA
1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). “On the other hand, in articulating reasons for reaching a conclusion
on the issue of confusion, there 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. Indeed, this type of analysis appears to be unavoidable.” In re Nat’l Data
Corp., 224 USPQ at 751.
At the outset, we note that Applicant’s and Registrant’s marks are comprised,
either in whole or in part, of the two word phrase GREEN GENERATION or the
compound word variation thereof, GREENGENERATION. Because
GREENGENERATION is the first clearly recognizable literal element in the cited
mark, we find that it constitutes the dominant portion. Consumers are generally
more inclined to focus on the first word, prefix, or syllable in any trademark or
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service mark. See id. See also Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (stating that “it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered”). While
we acknowledge that one could argue that the letters “GG” presented in design
format constitute the first element of the mark, the letters are stylized to such a
degree that their significance cannot be discerned. When a mark consists of a literal
portion and a design portion, the literal portion is more likely to be impressed upon
a purchaser’s memory and to be used in calling for the goods and/or services;
therefore, the literal portion is normally accorded greater weight in determining
whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218
USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261,
1267-68 (TTAB 2011).
Applicant argues that the Examining Attorney has improperly dissected the
marks by placing too much emphasis on the shared literal element GREEN
GENERATION and failing to account for the distinctions in the registered mark,
namely, the additional word “SOLUTIONS”, the spacing omission between the first
two words “green” and “generation”, and the design element.
Applicant’s arguments are unconvincing. First, in comparing the marks, the
additional descriptive wording SOLUTIONS in Registrant’s mark does little to alter
the connotation and commercial impression vis-à-vis Applicant’s mark. Disclaimed
matter that is descriptive of or generic is typically less significant or less dominant
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when comparing marks. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 224 USPQ at
752); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”). As noted above, the Board has the discretion to place more weight on
a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
See, e.g., In re Dixie Rests., Inc., 41 USPQ2d at 1533-34. While we acknowledge the
obvious differences in appearance, we think that prospective consumers
encountering Registrant’s mark will focus primarily on the literal element “GREEN
GENERATION” which is identical.
The lack of a space between the words “GREEN” and “GENERATION” in the
cited mark is immaterial. The visual appearance between the wording “GREEN
GENERATION” and “GREENGENERATION” is virtually identical, and clearly the
words are pronounced in an identical manner. See, e.g., Seaguard Corp. v. Seaward
Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA
GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re
Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be
little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically
identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983),
aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the
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marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The
word marks are phonetically identical and visually almost identical.”).
As to the additional design element in Registrant’s mark, we find that it fails to
mitigate the identical sound and nearly identical appearance of the phrase GREEN
GENERATION in the involved marks. The shaded green rectangle serves merely as
a backdrop for the highly stylized letters “GG” which appear in the color white. We
further reiterate that the letters “GG” are stylized in such a manner so as to make
their appearance as letters almost imperceptible. The line which separates the
wording “greengeneration” from “solutions” serves merely as a border which
customers are unlikely to perceive as a source identifying characteristic.
Hence, in comparing Applicant’s mark as a whole to the registered mark, we
find that Applicant’s mark is similar in sound, connotation and commercial
impression to the cited registered mark. Indeed, the marks are so similar that
consumers may perceive Applicant’s mark as a variant mark introducing additional
energy-related services sponsored by or approved by Registrant. This first du Pont
factor weighs in favor of finding a likelihood of confusion.
The Goods and Services
We turn now to the second du Pont factor, a comparison of Applicant’s and
Registrant’s respective goods and services as they are identified in the application
and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). The goods and/or services
of the parties need not be identical or directly competitive to find a likelihood of
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confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186
USPQ 476, 480 (CCPA 1975). Rather, it is sufficient to show that because of the
conditions surrounding their marketing, or because they are otherwise related in
some manner, the goods and/or services would be encountered by the same
consumers under circumstances such that offering the goods and/or services under
confusingly similar marks would lead to the mistaken belief that they come from, or
are in some way associated with, the same source. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984). The
examining attorney must provide evidence showing that the goods and/or services
are related to support a finding of likelihood of confusion. See, e.g., In re White Rock
Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to
establish that wine and vodka infused with caffeine are related goods). Evidence of
relatedness may include news articles and/or evidence from computer databases
showing that the relevant goods/services are used together or used by the same
purchasers; advertisements showing that the relevant goods/services are advertised
together or sold by the same manufacturer or dealer; and/or copies of prior use-
based registrations of the same mark for both applicant’s goods/services and the
goods/services listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d
1810, 1817 (TTAB 2014) (finding pepper sauce and agave related where evidence
showed both were used for the same purpose in the same recipes and thus
consumers were likely to purchase the products at the same time and in the same
stores).
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To show the relatedness of the Applicant’s and Registrant’s identified services,
the Examining Attorney has made of record the following relevant use-based third-
party registrations:4
● Registration No. 4403706 for the mark CASTLE ENERGY
SOLUTIONS for:

“Energy usage management services, namely, analysis of customers'
historical energy usage; market analysis, namely, analysis of current
market information in the field of energy; consulting in the field of
energy usage management and energy usage management services to
industrial, commercial, and residential end users; retail energy
provider services, namely, providing a service that allows customers to
purchase energy, namely, natural gas, electricity, and renewable
energy” in International Class 35;

“Procurement, namely, purchasing energy products for others;
financing of home and commercial energy appliances and equipment;
brokerage of energy products to industrial, commercial, and residential
end users, consumers, and customers; trading of energy futures and
energy contracts” in International Class 36;

“Installation, maintenance, and repair services of commercial,
industrial, and residential energy equipment” in International Class
37; and

“Transportation and distribution of natural gas by pipeline to and on
behalf of retail and wholesale customers” in International Class 39.

● Registration No. 4445212 for the mark EXELON and design for
“Business management services in the fields of power generation,
renewable energy, energy efficiency, energy conservation, energy use
management, energy consumption, public utility services, nuclear
energy and nuclear power plants; retail energy provider services that
allow customers to purchase electricity, natural gas and renewable
energy; business services, namely, operation of electricity generation
and transmission facilities for others” in International Class 35;

4 USPTO TSDR Case Viewer, Application Serial No. 86043080, entry dated December 5,
2013 (Office Action).
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“Distribution and transmission of electricity and renewable energy;
public utility services” in International Class 39;

“Generation of electrical energy” in International Class 40; and

“Technology consultation in the field of nuclear power plant
technology” in International Class 42.

Emphasis added. As a general proposition, although third-party registrations are
not evidence that the marks shown therein are in use or that the public is familiar
with them, they nonetheless may have probative value to the extent they are based
on use in commerce and may serve to suggest that the services are of a kind that
may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d
1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at
n.6 (TTAB 1988).
In addition, we direct our attention to the Examining Attorney’s evidence
obtained from third-party Internet websites, highlighting the following:5
● Avista (avistautilites.com): A retail energy provider that allows
customers to purchase renewable energy such as wind power as well as
providing energy efficiency advice.

● Duke Energy (www.duke-energy.com): An energy efficiency and
energy provider that among other services provides customers with
energy assessments to improve energy efficiency as well as owning and
operating wind farms.

● PSEG (www.pseg.com): An energy efficiency and energy
provider that among other services assists hospitals in improving
energy efficiency, and provides energy efficient upgrades to

5 USPTO TSDR Case Viewer, Application Serial No. 86043080, entry dated January 13,
2015 (Denial of Request for Reconsideration).
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government and non-profit facilities. It also develops, constructs, owns
and operates large scale solar facilities.

The evidence noted above supports a finding that consumers may encounter some of
Applicant’s identified goods and services and Registrant’s services offered under the
same mark. We find this evidence sufficient to show a commercial relationship
between both Applicant’s Class 4 goods and Class 35 services and Registrant’s Class
35 services. Furthermore, the goods and services as identified on their face are
complementary in nature because Registrant’s advisory and installation services
could feature Applicant’s renewable energy and could advise consumers to utilize
Applicant as the energy provider. Thus, the second du Pont factor also weighs in
favor of finding a likelihood of confusion.
We now address the fourth du Pont factor, the conditions under which the goods
are likely to be purchased, e.g., whether on impulse or after careful consideration,
as well as the degree, if any, of sophistication of the consumers. Applicant argues
that because the relevant consumers are highly sophisticated and knowledgeable,
confusion is unlikely. The fact, however, 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. See Stone Lion, 110 USPQ2d at 1163-64. We therefore deem this factor to
be neutral.
Moreover, to the extent that there are any other du Pont factors which may be
relevant, we treat them as neutral as well.
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In conclusion, after considering all of the evidence properly of record and
arguments pertaining to the du Pont likelihood of confusion factors, we find that
there is a likelihood of confusion between Applicant’s applied-for and Registrant’s
registered mark.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.