Ergon, Inc.

Trademark Trial and Appeal Board

Nov 26, 2019

87523917 (T.T.A.B. Nov. 26, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: November 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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Ergon, Inc.
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Serial No. 87523917
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Tye Biasco of Patterson Thuente Pedersen, P.A.
for Ergon, Inc.
Kevon L. Chisolm, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
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Before Zervas, Lykos, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Ergon, Inc. (Applicant) seeks registration on the Principal Register of the mark

for services in International Class 37 as set forth below:
Construction consultancy exclusive of distribution and transportation of
energy, steam and water facilities; construction management exclusive of
distribution and transportation of energy, steam and water facilities;
construction of buildings exclusive of distribution and transportation of energy,
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steam and water facilities; construction planning exclusive of distribution and
transportation of energy, steam and water facilities; construction project
management services exclusive of distribution and transportation of energy,
steam and water facilities; construction supervision exclusive of distribution
and transportation of energy, steam and water facilities; building construction
exclusive of distribution and transportation of energy, steam and water
facilities; consultation in building construction supervision exclusive of
distribution and transportation of energy, steam and water facilities;
consulting in the field of building construction exclusive of distribution and
transportation of energy, steam and water facilities; custom construction and
building renovation exclusive of distribution and transportation of energy,
steam and water facilities; general construction contracting exclusive of
distribution and transportation of energy, steam and water facilities.

Application Serial No. 87523917 was filed July 11, 2017 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere and in
commerce on July 3, 2017. The application describes the mark as “the word
‘ALLIANT’ in capital letters above which is a stylized letter ‘A’ consisting of an upside
down ‘V’ on top of a downward-facing arc.
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark ALLIANT ENERGY (standard
characters, ENERGY disclaimed) also on the Principal Register for services including
the following in International Class 37 as to be likely to cause confusion, mistake or
to deceive:
Construction and maintenance of facilities for storage, production, distribution
and transportation of energy, steam and water; construction and installation
of collection and transmission facilities for wind generated electrical power;
repair and maintenance services for energy-related appliances, utility lines
and pipes; installation services, namely, the installation of building-wide
power surge protective systems in homes and businesses, such installation
services being sold directly by the utility company to its energy customers; and
locating and resolving problems of interference and equipment malfunction,
Serial No. 87523917
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namely, diagnosing and repairing industrial electric supply equipment;
installing home security systems.

Registration No. 3063770 issued February 28, 2006, and has been renewed.1

After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities between the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors now
before us, are discussed below. We must consider each relevant du Pont factor for
which there is evidence or argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
A. Similarity or Dissimilarity of the Marks
We consider the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation, and commercial impression. See Palm Bay Imps.,

1 The final refusal cited only the services in International Class 37 of Registration No.
3063770.
Serial No. 87523917
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Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 136, 73 USPQ2d
1689 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to
find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13, 2019) (mem) (citing
In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). The test, under the first du Pont
factor, is whether the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the services offered under
the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning, 101
USPQ2d at 1721 (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82
USPQ2d 1901, 1905 (TTAB 2007)). The proper focus is on the recollection of the
average purchaser, who retains a general impression of trademarks. In re Bay State
Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353
(Fed. Cir.1992)).
The mark ALLIANT ENERGY in standard characters is registered for various
energy-related construction services, and the term ENERGY has been disclaimed.
Merely descriptive matter that is disclaimed has been accorded subordinate status
relative to the more distinctive portions of a mark. In re Nat'l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular feature is descriptive .
. . with respect to the relevant goods or services is one commonly accepted rationale
for giving less weight to a portion of the mark.”). Accordingly, we find ALLIANT to
be the dominant part of the registered mark ALLIANT ENERGY.
Serial No. 87523917
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The stylized letter A in Applicant’s mark does not create a strong impression on
its own or alter the impression created by the term ALLIANT. Because it is a stylized
version of the first letter of the term it precedes, the stylized letter A emphasizes or
reinforces the term ALLIANT in Applicant’s mark. See UMG Recordings, Inc. v.
Mattel, Inc., 100 USPQ2d 1868, 1887 (TTAB 2011) (“The ‘M’ in the first design mark
above merely reinforces the first letter in MOTOWN, and the font and square border
are insignificant.”); In re Continental Graphics Corp., 52 USPQ2d 1374, 1376 (TTAB
1999) (“Indeed, the dominant role of the word CONTINENTAL in the overall
commercial impression created by the registered mark is reinforced, rather than
negated, by the inclusion in the mark of the globe design depicting stylized continents
and the inclusion of the large letter ‘C,’ which is the first letter of the word
CONTINENTAL.”). See also Blue Bell, Inc. v. Jaymar-Ruby, Inc., 497 F. 2d. 433, 182
USPQ 65 (2d. Cir. 1974) (“It is, of course, not uncommon for a trademark holder to
emphasize the initial letter in its name.”). Accordingly, we find ALLIANT to be the
dominant part of Applicant’s mark.
When comparing the marks in their entireties, we find that the dominant part of
each mark is the identical term ALLIANT. The dominant part of each mark thus is
identical in spelling, sound, and meaning. Notwithstanding the additions of the
descriptive term ENERGY in Registrant’s mark and the letter A in Applicant’s mark,
the marks create highly similar commercial impressions. There is nothing improper
in our finding that the identical term ALLIANT is dominant in both marks because
our ultimate conclusion rests upon a comparison of the marks in their entireties. In
Serial No. 87523917
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re Nat’l Data Corp., 224 USPQ at 751 (Fed. Cir. 1985). In short, there is a high degree
of similarity between the marks in sound, appearance, connotation and commercial
impression. As such, this first du Pont factor weighs in favor of finding a likelihood
of confusion.
B. The Number and Nature of Similar Marks in Use on Similar Goods
The inherent, or conceptual, strength of the registered mark is “a consideration
that is connected to ‘the number and nature of similar marks in use on similar goods,’
[the sixth du Pont factor], and is in any event probative of the likelihood of confusion.”
Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674
(Fed. Cir. 2015) (Juice Generation). Accord In re Morinaga Nyugyo Kabushiki Kaisha,
120 USPQ2d 1738, 1745 (TTAB 2016). “In order to determine the conceptual strength
of the cited mark, we evaluate its intrinsic nature, that is, where it lies along the
generic-descriptive-suggestive-arbitrary (or fanciful) continuum of words.” In re
Davia, 110 USPQ2d 1810, 1815 (TTAB 2014). “Marks that are descriptive or highly
suggestive are entitled to a narrower scope of protection, i.e., are less likely to
generate confusion over source identification, than their more fanciful counterparts.”
Juice Generation at 1675. The record includes no evidence that ALLIANT is a term
in the dictionary or a term known in the common parlance. Similarly, there is no
evidence that the term ALLIANT has been used or registered by third parties in the
same or a related field. Applicant thus fails to support its argument2 that the

2 Applicant’s Brief, 7 TTABVUE 6-7. The TTABVUE citation refers to the location on the
USPTO website where the briefs can be found, namely the Board’s electronic docket.
Citations to TSDR (the Trademark Status and Document Retrieval database) refer to the
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registered mark ALLIANT ENERGY is subject to a limited scope of protection, and
that the addition of a distinguishing feature, such as Applicant’s letter A, in
combination with the presence of the term ENERGY in the registered mark, is
sufficient for consumers to differentiate the marks. Because the term ALLIANT is a
coined, or fanciful term, ALLIANT ENERGY has inherent strength as a trademark.
M2 Software, Inc. v. M2 Commc'ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1949 (Fed.
Cir. 2006) (“[Plaintiff] asserts, and [Defendant] does not dispute, that its mark is
fanciful, and, therefore, inherently distinctive and deserving of heightened
trademark protection.”). This du Pont factor also favors a likelihood of confusion.
C. Similarity or Dissimilarity of the Services and Channels of Trade
We turn to the du Pont factors regarding the similarity or dissimilarity of the
respective services and channels of trade, including prospective purchasers. The issue
is not whether the services will be confused with each other, but rather whether the
public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322,
1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). It is sufficient that the services of the
applicant and the registrant are related in some manner or that the conditions
surrounding their marketing are such that they are likely to be encountered by the
same persons under circumstances that, because of the marks used in connection
therewith, would lead to the mistaken belief that they originate from the same source.
See On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 14711,

location where the appeal record for the involved application can be found. TSDR cites are
to the downloadable .pdf version of the documents.
Serial No. 87523917
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1476 (Fed. Cir. 2000) (“although the services are different, it is reasonable to believe
that the general public would likely assume that the origin of the services are the
same”).
Here, the registered mark ALLIANT ENERGY is registered for specialized
construction services in the energy field. Applicant’s A ALLIANT (stylized) mark is
registered for general construction services which specially exclude “distribution and
transportation of energy, steam and water facilities.” As shown by the application
file, Applicant originally identified its goods as unrestricted, and comprising
“construction consultancy; construction management; construction of buildings;
construction planning; construction project management services; construction
supervision; building construction; consultation in building construction supervision;
consulting in the field of building construction; custom construction and building
renovation; general construction contracting.”3 In its response to the refusal of
registration based on likelihood of confusion, Applicant amended its recitation of
services to state after each identified construction service “exclusive of distribution
and transportation of energy, steam and water facilities.” Applicant now contends
that there can be no likelihood of confusion because its amendment to its services
results in its services and the services listed in the cited registration being “mutually
exclusive.” 4

3 July 11, 2017 application, TSDR 1.
4 Applicant’s Brief, 7 TTABVUE 5.
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It is plain from the recitation in the application and registration that Applicant
and Registrant both offer services related to the construction industry. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002) (“The ‘data and information processing’ description in the ITU application is
very similar to HP's registrations covering consulting services, whether for data
processing or for data processing products.”). The problem with Applicant’s argument
that it does not offer the same subset of energy services related to the construction
industry offered by the Registrant, and vice versa, is that there is no evidence that
the construction industry is divided into those who specialize in energy construction
and those who do not. In fact, the Examining Attorney provides persuasive evidence
that the construction industry includes sources that offer, under the same mark or
trade name, both specialized energy construction and general construction services
not related to energy.
Registration 5132777 shows the same mark for services identified as
“construction management; construction project management services” and
“repair and installation services, namely, the installation of heating, cooling
and environmental control systems primarily using solar energy, renewable
energy resources and rainwater.”5

Registration 5286444 shows the same mark for services identified as
“construction consulting services” and “installation of renewable energy
generation equipment.”6

Registration 5290838 shows the same mark for services identified as
“construction project management services” and “plant construction,

5 April 16, 2018 Office Action, TSDR 6.
6 April 16, 2018 Office Action, TSDR 28.
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maintenance and construction project management services for businesses in
the energy production and transmission sector.”7

Registration 5344272 shows the same mark for services identified as
“construction project management services” and “consultation services in the
field of construction of environmentally-conscious buildings; consulting
services in the field of construction of wind energy facilities; hydro-electric
factory construction.”8

Registration 5385677 shows the same mark for services identified as
“construction project management services” and “installation of solar energy
systems and alternative energy product for residential and commercial use.”9

Registration 5391851 shows the same mark for services identified as “building
construction, remodeling, and repair” and “installation of solar energy systems
and alternative energy product for residential and commercial use.”10

Registration 5444556 shows the same mark for services identified as “building
construction” and “construction project management services in the field of
construction of renewable energy and energy generation equipment support
structures,” and “consulting services in the field of construction of wind energy
facilities.”11

As a general proposition, third-party registrations that cover services from both the
cited registration and the subject application are relevant to show that the services
are of a type that may emanate from a single source under one mark. See, e.g., Detroit
Athletic, 128 USPQ2d at 1051; Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Infinity Broad. Corp., 60 USPQ2d
1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-

7 April 16, 2018 Office Action, TSDR 25.
8 April 16, 2018 Office Action, TSDR 15.
9 April 16, 2018 Office Action, TSDR 31.
10 April 16, 2018 Office Action, TSDR 34.
11 April 16, 2018 Office Action, TSDR 21-23.
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86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).
The Examining Attorney also supports the refusal with evidence from third-party
websites showing that the same entity may be the source of both general construction
services and specialized energy-related construction services. More specifically, the
record shows one company offering both construction services for civil engineering
projects and also “a full range of engineering and environmental services to the
electric industry, which result in skilled completion of a wide range of overhead and
underground electric transmission and distribution projects.”
https:/www.blcompanies.com/.
Another company advertises “When you hire Barton Malow, you get an ISO 9001-
2001 quality certified firm with a business unit for every market!” and “Since 1999,
Barton Malow has successfully installed over 6,000 MW of new generating power
through our energy construction services. We understand the energy industry and
the challenges that face our customers.” https://www.bartonmalow.com.
A third company website states “Reynolds is a leading provider of construction
management services’ and “We’ve been trusted with a broad range of projects for K-
12 schools, healthcare facilities, government buildings and central power plants.”
https://reynoldssolutions.com.
In short, a commercial relationship exists despite Applicant’s addition of trade
channel restrictions in the recitation of services. Trade channel limitations may not
be sufficient to distinguish services so as to avoid a likelihood of confusion. See In re
Serial No. 87523917
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i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017) (affirming Board
finding that an identification restricting the goods to those “associated with William
Adams, professionally known as ‘will.i.am,’” imposed no meaningful limitation on the
nature of the goods or the trade channels or classes of purchasers of the goods); Bd.
of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190-93 (TTAB
2014) (finding that although opposer’s clothing items were limited by the wording
“college imprinted” and the applicant’s identical or highly similar items were limited
by the wording “professional baseball imprinted,” these restrictions did not
distinguish the goods, their trade channels, or their relevant consumers in any
meaningful way).We find that the second and third du Pont factors also weigh in favor
of finding a likelihood of confusion.
II. Decision
In conclusion, we have considered all of the arguments and evidence of record, and
all relevant du Pont factors. Insofar as each of the du Pont factors discussed above
all weigh in favor of finding a likelihood of confusion, we conclude that confusion is
likely to occur between Applicant’s mark for its services and Registrant’s mark for its
services.
Decision: The refusal to register Applicant’s mark A ALLIANT (stylized) is
affirmed.