EMC Natural Gas, Inc.Download PDFTrademark Trial and Appeal BoardDec 22, 2014No. 85742445 (T.T.A.B. Dec. 22, 2014) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: December 22, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re EMC Natural Gas, Inc. _____ Serial No. 85742445 _____ Nigamnarayan Acharya and Jeffrey D. Cunningham of Seyfarth Shaw LLP for EMC Natural Gas, Inc. Jennifer D. Richardson, Trademark Examining Attorney, Law Office 113, Odette Bonnet, Managing Attorney. _____ Before Kuhlke, Shaw, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: EMC Natural Gas, Inc. (“Applicant”), doing business as Coweta-Fayette EMC, has filed an application1 to register on the Principal Register the mark TRUE NATURAL GAS in standard characters for “utility services, namely, transmission of natural gas,” in International Class 39. Applicant has disclaimed the exclusive right to use NATURAL GAS apart from the mark as shown. 1 Application Serial No. 85742445, filed October 1, 2012, on the basis of Applicant’s asserted bona fide intent to use the mark in commerce, under Trademark Act § 1(b), 15 U.S.C. § 1051(b). Serial No. 85742445 2 The Trademark Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection with Applicant’s services, so resembles the two marks, shown below, which are registered in typed form for the goods indicated in the name of the same owner: TRU-GAS Natural gas, liquefied petroleum gas for use as a fuel, and gasoline, in International Class 4.2 TRU GAS Liquid propane gas for use with gas appliances, in International Class 4.3 When the refusal was made final, Applicant filed a notice of appeal and a request for reconsideration. Upon the Examining Attorney’s denial of the request for reconsideration, this appeal resumed. Applicant and the Examining Attorney filed briefs and Applicant filed a reply brief. (a) Evidentiary matter. The Examining Attorney, in her brief, has attached dictionary definitions of the words “provide,” “provider,” “produce,” and “producer,” and asks that the Board take judicial notice of them. Applicant objects to the admission of such evidence as untimely.4 Under Fed. R. Evid. 201, “The [Board] may judicially notice a fact that is not subject to reasonable dispute because it: (1) is generally known within the [Board’s] 2 Reg. No. 1429782 issued February 24, 1987; renewed. 3 Reg. No. 2932543 issued March 15, 2005. Section 8 affidavit accepted; Section 15 affidavit acknowledged. No claim is made to the exclusive right to use GAS apart from the mark as shown. 4 Reply brief at 2, 10 TTABVUE at 3. Serial No. 85742445 3 territorial jurisdiction; or (2) can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.” Dictionary definitions are a type of matter that can be “accurately and readily determined from sources whose accuracy cannot reasonably be questioned,” and are a type of matter of which the Board will often, sua sponte, take judicial notice.5 There is nothing surprising in the proffered definitions; indeed, the words defined are within the standard vocabulary of nearly all speakers of English. Inasmuch as the dictionary definitions may cast some objective light on the evidence before the Board, it is helpful to our deliberations. Accordingly, we will consider the dictionary definitions provided by the Examining Attorney. (b) Refusal under Section 2(d). Our determination under Section 2(d) is based on an analysis of all of the probative evidence that is relevant to the factors bearing on the issue of likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In the present case, Applicant and the Examining Attorney also have presented arguments relating to classes of 5 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 85742445 4 customers, conditions of sale, trade channels, lack of actual confusion, and extent of potential confusion. We will confine our analysis to the issue of likelihood of confusion between Applicant's mark and the mark in Reg. No. 1429782, because the goods identified in that registration are clearly more closely related to Applicant’s services than are the goods in the other cited registration. If confusion is likely between Applicant's mark and the mark in Reg. No. 1429782, there is no need for us to consider the likelihood of confusion with the other cited mark, while if there is no likelihood of confusion with the mark in Reg. No. 1429782, then there would be no likelihood of confusion with the other cited mark. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). Moreover, we will limit our focus to the goods of Registrant identified as “natural gas,” inasmuch as this is the only type of fuel mentioned in the recitation of Applicant’s services. If we find likelihood of confusion as between Applicant’s use of its mark in connection with its services and Registrant’s mark as applied to any of the goods identified in the registration, then registration of Applicant’s mark will be refused. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). (i) The marks. We first consider the similarity or dissimilarity of the marks at issue 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 Serial No. 85742445 5 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In doing so, we bear in mind that “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.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The Examining Attorney contends that TRUE is the dominant component of Applicant’s mark TRUE NATURAL GAS and that TRU- is the dominant component of Registrant’s mark TRU-GAS. Applicant contends that the Examining Attorney’s approach impermissibly dissects the marks, and that the other words in the marks, NATURAL GAS and -GAS, respectively, “have trademark significance, which results in them creating a disparate appearance, sound, and meaning.”6 We agree with the Examining Attorney that the components TRUE and TRU- have stronger source-identifying potential than the other elements of the marks and are likely to make a stronger impression on customers, because NATURAL GAS and -GAS are generic with respect to the services and goods with which the marks are used and, alone, neither has source-indicating capacity. Taking this view of the marks is not impermissible “dissection” of the marks. “[I]n articulating reasons for 6 Applicant’s brief at 2, 7 TTABVUE at 7; Reply brief at 2, 10 TTABVUE at 3. Serial No. 85742445 6 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., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We do not disregard the generic terms NATURAL GAS and -GAS in our consideration of the marks; rather, we consider the impression they are likely to have within the context of the marks in their entireties. When the marks are viewed in the context of the goods and services with which they are used, customers are likely to perceive NATURAL GAS and -GAS to be identical in meaning for a number of reasons. Registrant’s goods are identified in the registration as “natural gas” (as are the goods transmitted by means of Applicant’s services). Further, “gas” is defined to mean “natural gas” in appropriate contexts: c : a combustible gaseous mixture (as for fuel or illumination) -- see LIQUEFIED PETROLEUM GAS, MANUFACTURED GAS, NATURAL GAS. 937 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993).7 Thus, in the relevant commercial contexts, customers will likely interpret -GAS, as it appears in Registrant’s mark, to have either the same meaning as NATURAL GAS, as it appears in Applicant’s mark, or a meaning sufficiently broad as to encompass NATURAL GAS. 7 We take judicial notice of this dictionary definition. Serial No. 85742445 7 Turning to the formatives TRUE and TRU-, the Examining Attorney has submitted Internet evidence to indicate that these terms have the same meaning. A web page from states: TRU Definition / TRU Means The definition of TRU is “True” The meaning of TRU TRU means “True”8 The entry for “tru dat” from DICTIONARY OF AMERICAN SLANG AND COLLOQUIAL EXPRESSIONS (4th ed. 2007) states: Tru dat definition sent. That’s true.; I agree. : Tru dat. I know just what you mean.9 We find the above evidence sufficient to indicate that customers would likely perceive TRUE and TRU- as having similar – and perhaps identical – meanings. Considering all of this together, we find that TRUE NATURAL GAS and TRU-GAS are extremely similar in meaning. In appearance and sound, the two marks at issue are similar to the extent that they begin with the similar terms TRUE and TRU- and end with the identical term GAS. Nonetheless, we acknowledge the differences in appearance and sound arising from the additional word NATURAL in Applicant’s mark and the hyphen in Registrant’s mark. Overall, we find that the similarities between the marks in appearance, sound, and especially meaning outweigh the differences, and that the 8 Office Action of November 18, 2013 at 15-16. 9 Definition found at Dictionary.com, Office Action of November 18, 2013 at 18. Serial No. 85742445 8 two marks have highly similar commercial impressions. Accordingly, we find that the du Pont factor of the similarity or dissimilarity of the marks weighs in favor of a finding of likelihood of confusion. (ii) The goods and services. Next we address the similarity or dissimilarity of Applicant’s services and Registrant’s goods. Applicant argues as follows: The examiner has not shown that Applicant’s services “compete” with Registrant’s [goods] in any way …. The barrier to entry to providing liquefied natural gas or propane is substantial because significant resources are required to process these products. Applicant’s services have nothing to do with liquefied gas as a fuel or gasoline. Likewise, Registrant’s goods have nothing to do with transmission of gases …. The examiner has not shown a single entity that is involved in both the services of transmitting gases and the sales of the gas itself. … Accordingly, the services identified by Applicant’s Mark and the goods identified by Registrant have different functions, have different purposes and may not be substituted for one another, so there is not a likelihood of confusion …. It is well settled that goods or services need not be similar or competitive in character to support a holding of likelihood of confusion. It is sufficient if the goods or services are related in some manner such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978). We cannot accept Applicant’s contention that Serial No. 85742445 9 Registrant’s natural gas has “nothing to do with transmission of gases.” After all, the service of “transmission of natural gas” is one of the ways in which a purchaser of “natural gas” receives delivery of the purchased goods. In order to demonstrate a commercial relationship between natural gas transmission services and the offering of natural gas as a product, the Examining Attorney has submitted internet web pages of DTE Energy, showing that this company “is engaged in the … transmission, distribution and sale of natural gas to approximately 1.2 million customers in Michigan” and also “operates approximately 200 wells” for production of natural gas from shale formations.10 The evidence also shows that Oneok Partners sells processed natural gas to “companies that market or consume natural gas”; and also operates extensive interstate “natural gas transmission pipelines.”11 The other internet evidence either does not refer directly to natural gas12 or provides too little information to persuasively show that a single company performs both transmission and production of natural gas.13 The Examining Attorney has also submitted a number of use-based, third-party registrations that individually cover both natural gas as a product and the service of 10 Office Action of January 31, 2013 at 43-46. 11 Office Action of November 18, 2013 at 26-27. 12 We acknowledge that the Examining Attorney has submitted evidence showing that Dominion Transmission, Inc. provides natural gas transmission and also produces natural gas liquids, a product that apparently encompasses Registrant’s “liquefied petroleum gas” (January 31, 2013 Office Action at 41-42); and that West Texas Gas is a utility company providing “natural gas transmission services” and also produces and sells gasoline. (November 18, 2013 Office Action at 28-29). As noted above, we have chosen not to address Registrant’s goods identified as liquefied petroleum gas and gasoline. 13 The dictionary definitions of “provide,” “provider,” “produce,” and “producer” do not persuade us to give as broad an interpretation to the evidence as the Examining Attorney urges. Serial No. 85742445 10 transmitting or distributing natural gas. Among these, we note in particular Reg. Nos. 4328712,14 2058942, 2478312, 3419002, 3431018, 4099287, and 4173711.15 Applicant correctly points out that such registrations “are not evidence of what happens in the market place or that consumers are familiar with them.”16 However, such third-party registrations may have some probative value to the extent that they serve to suggest that the listed goods and services are of types that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The Examining Attorney’s internet evidence and third-party registration evidence, considered together with the fact that Registrant’s goods (natural gas) are the very goods that are delivered to customers by means of Applicant’s services (natural gas utility services), are sufficient to persuade us that Applicant’s services are commercially related to Registrant’s goods. We believe that if consumers were to hear of a natural gas producer that uses a trademark similar to the service mark of the utility through which they obtain their natural gas, they would readily believe that there is a relationship between the two. Accordingly, we find that the du Pont factor of the similarity or dissimilarity of the goods and services at issue favors a finding of likelihood of confusion. 14 Office Action of November 18, 2013 at 39-41. 15 Office Action of January 31, 2013 at 11-38. 16 Reply brief at 2-3, 10 TTABVUE at 3-4. Serial No. 85742445 11 (iii) Customers and conditions of sale. Applicant contends that the customers of Applicant and Registrant are sophisticated and careful: Applicant’s consumers and Registrant’s consumers are likely to use care when purchasing Applicant’s services and Registrant’s goods…. None of these goods or services are purchased on impulse. Natural gas, liquefied natural gas and propane are purchased carefully by sophisticated purchasers, namely, corporate resellers in the case of liquefied gases and consumers in the case of natural gas. … Applicant’s Services and Registrant’s goods are not purchased by the public but rather are purchased by buyers that are looking for an end use. Applicant’s purchasers or consumers will be consumers looking for natural gas, whereas Registrant’s goods will be purchased by reseller entities in the case of liquefied products and propane consumers, which is a distinct niche from natural gas markets.17 For purposes of an orderly analysis of the relevant customers, it is not helpful to conflate the class of customers who would purchase natural gas (which would include ordinary consumers) with the very different class of customers that would purchase liquefied natural gas. We focus our attention on customers of natural gas only, who are customers of both Registrant (which offers natural gas under its mark) and Applicant (which delivers the gas to the customers).18 There is no evidence of record to support Applicant’s contention that Registrant’s goods are offered only to resellers and not to the ultimate users of natural gas. Neither the application nor the cited registration contains any limitation as to the classes of 17 Applicant’s brief at 7, 7 TTABVUE at 12. 18 There is no evidence to suggest that the customer classes for Applicant’s natural gas transmission services are distinct from the customer classes for Registrant’s natural gas. Serial No. 85742445 12 customers to whom the respective goods and services are offered. Accordingly, it is presumed that the goods and services at issue are available to all normal classes of potential customers for such goods and services. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014). Such customers would include ordinary consumers; and as the Examining Attorney correctly points out, the standard of care to be considered “is that of the least sophisticated potential purchaser.”19 Id. Applicant’s contention that the relevant customers are careful and sophisticated is unsupported by any evidence and is, moreover, counterintuitive. Ordinary consumers who need natural gas for home heating purposes do not necessarily have any special degree of knowledge about the product, and consumers dealing with a public utility often have no alternative source for the desired service and product. We find the factor of customers and conditions of sale to be neutral. (iv) Trade channels. Applicant argues that the separateness of the trade channels of Applicant and Registrant “dispel[s] any opportunity for confusion.” Applicant argues: Applicant deals directly with end consumers of natural gas, whereas Registrant’s goods are sold to dealerships and wholesale buyers of gas. Applicant’s natural services are advertised and marketed by traditional media directly by Applicant to its consumers, whereas Registrant’s goods are sold through propane outlets.20 19 Examining Attorney’s brief, 9 TTABVUE at 19. 20 Applicant’s brief at 8, 7 TTABVUE at 13. Serial No. 85742445 13 The Examining Attorney, for his part, argues that “the identifications set forth in the application and registrations have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and services ‘travel in the same channels of trade to the same class of purchasers.’”21 We question whether the services of Applicant are sufficiently similar in nature to the goods of Registrant to justify such a presumption in this case. Aside from the arguments of Applicant and the Examining Attorney, there is no evidence of record relating to actual trade channels of the goods and services at issue. However, we note that Applicant’s services are, as identified, a trade channel through which Registrant’s goods travel, in that Applicant literally delivers to the end consumer goods of the type offered by Registrant, namely natural gas. This degree of commercial overlap provides at least some opportunity for end consumers to be exposed to the mark and goods of Registrant in close proximity to the mark and services of Applicant. Accordingly, we find that the du Pont factor of trade channels weighs in favor of a finding of likelihood of confusion. (v) Lack of confusion; Extent of potential confusion. Applicant points out that it has used its mark “continuously for at least the last sixteen years and so has Registrant,” without any incidence of confusion.22 Applicant has submitted no evidence to support this contention. In any event, uncorroborated statements of no known instances of actual confusion are of little 21 Examining Attorney’s brief, 9 TTABVUE at 19-20, citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). 22 Applicant’s brief at 9, 7 TTABVUE at 14. Serial No. 85742445 14 evidentiary value. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). This is particularly true in this ex parte proceeding in which we do not have the benefit of Registrant’s input as to any instances of confusion. Applicant also argues that if there is to be confusion, it “is likely to be fleeting and de minimis,” suggesting that the overlap in customers is too small to give rise to more than a negligible level of potential confusion.23 We disagree. Because of the nature of the goods and services at issue, i.e., natural gas versus the transmission of natural gas, the overlap between the customers for Applicant’s service and the customers for Registrant’s goods is likely to be substantial. Accordingly, we find the du Pont factors of the lack of confusion and the extent of potential confusion to be neutral in our analysis. (vi) Conclusion. We have considered all of the arguments and evidence of record, including those not specifically discussed herein,24 and all relevant du Pont factors. We find that Applicant’s mark is likely to cause confusion, mistake or deception as to the source of Applicant’s services. Decision: The refusal to register is affirmed. 23 Id. at 9-10, 7 TTABVUE at 14-15. 24 In view of our determination, we find it unnecessary to consider Reg. No. 2932543 as a basis for refusing registration under Section 2(d). Copy with citationCopy as parenthetical citation