Ervin Leasing, Inc.Download PDFTrademark Trial and Appeal BoardJun 30, 2009No. 78974694 (T.T.A.B. Jun. 30, 2009) Copy Citation Mailed: June 30, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Ervin Leasing, Inc. ________ Serial No. 78974694 _______ John G. Posa of Gifford, Krass, Groh, Sprinkle, Anderson for Ervin Leasing, Inc. Robert Clark, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Quinn, Cataldo and Taylor, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: An application was filed by Ervin Leasing, Inc. to register the mark ERVIN LEASING in standard characters on the Principal Register for the following services: “leasing of office equipment” in International Class 35; and “leasing of construction equipment” in International Class 37.1 1 Application Serial No. 78974694 was filed on September 14, 2006 based on applicant’s assertion of February 1, 1990 as a date of first use of the mark anywhere and in commerce in connection with both classes of services. In response to a requirement by the THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser No. 78974694 2 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s mark, solely as used in connection with its services recited in International Class 37, so resembles the marks ERVIN CABLE2 and ERVIN CONSTRUCTION,3 previously registered by the same entity on the Principal Register in standard characters for the following services: “installation and maintenance of power, gas, cable, fiber optic, and various other telecommunication systems of others” in International Class 37; and “engineering and design of communication and cable transmission systems of others; mapping and engineering surveying,” in International Class 42, as to be likely to cause confusion, mistake or deception. The services recited in International Class 35 of the application are not subject to the Section 2(d) refusal. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs on the issue on appeal, and applicant filed a reply brief. examining attorney, applicant disclaimed the exclusive right to use LEASING apart from the mark as shown. 2 Registration No. 3106800 issued with a disclaimer of CABLE on June 20, 2006. 3 Registration No. 3106814 issued with a disclaimer of CONSTRUCTION on June 20, 2006. Ser No. 78974694 3 Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in 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., 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/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). The Marks We first consider the similarity of the marks. In this case applicant’s mark, ERVIN LEASING, consists of the distinctive term ERVIN and the disclaimed word LEASING. The term ERVIN in applicant’s mark is identical to the distinctive term in registrant’s marks ERVIN CABLE and ERVIN CONSTRUCTION. As a result, the distinctive portion of applicant’s mark is identical in appearance and sound to the distinctive portion of the marks in the cited registrations. Ser No. 78974694 4 As for the presence of LEASING in applicant’s mark, as well as CABLE and CONSTRUCTION in the marks in the cited registrations, these terms, which have been disclaimed, obviously are descriptive of the respective services. It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood 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 a consideration of the marks in their entireties. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In view of the descriptive nature of the wording LEASING, CABLE and CONSTRUCTION, these terms have little, if any, source- indicating significance, and are entitled to less weight in the likelihood of confusion analysis. Thus, despite the presence of the disclaimed wording in the involved marks, when viewed in their entireties the marks ERVIN LEASING on the one hand and ERVIN CABLE and ERVIN CONSTRUCTION on the other are more similar than dissimilar in appearance, sound and connotation, and convey highly similar commercial impressions. Accordingly, this du Pont factor favors a finding of likelihood of confusion. Ser No. 78974694 5 The Services in International Class 37 We next turn to the similarity or dissimilarity between applicant’s Class 37 services and the Class 37 services in the cited registrations.4 It is not necessary that the services at issue be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective services are related in some manner, and/or that the conditions and activities surrounding the marketing of the services 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 producer. See In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). As identified, applicant’s “leasing of construction equipment” does not appear to be related to registrant’s “installation and maintenance of power, gas, cable, fiber optic, and various other telecommunications systems of others.” That is to say, on the face of the respective recitations, it is clear that applicant’s services are 4 It is noted that the examining attorney does not assert or present evidence in his Office actions or argue in his brief that applicant’s services are related to the services recited in International Class 42 of the cited registrations. Nor do we find on the facts before us that such services are related. Ser No. 78974694 6 different from those of registrant. We therefore look to the evidence of record to determine whether these services are related. In this case, the examining attorney has made of record four third-party registrations purporting to show that “entities have registered a single mark for both leasing and maintenance and repair services” (brief, p. 10). However, all four of these registrations are based on Section 44 the Trademark Act, and none are based on Section 1(a) use in commerce. Because these registrations are not based on use in commerce they have no probative value in showing the relatedness of the services, and they have not been considered. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). In addition, two of the four third-party registrations submitted by the examining attorney are now cancelled. Such registrations are not evidence of anything except that they issued. See TBMP §704.03(b) (2d ed. rev. 2004) and cases cited therein. See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). Any benefits conferred by the registrations, including the evidentiary presumptions afforded by Section 7(b) of the Trademark Act were lost when the registrations expired. See, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46 (CCPA 1973). Ser No. 78974694 7 Nor do we find persuasive the printout from a single commercial Internet website (go-ac.com) submitted by the examining attorney because while the services offered therein include some of the services identified in the cited registration, they do not refer to the services recited in the challenged application. In short, none of the evidence submitted by the examining attorney demonstrates or suggests that applicant’s “leasing of construction equipment” and registrant’s “installation and maintenance of power, gas, cable, fiber optic, and various other telecommunications systems of others” emanate from a common source. Thus, in the present case, there is no evidence to support the examining attorney’s conclusory statement that registrant’s and applicant’s services are related. Nor, as we noted above, are applicant’s services, as identified, so closely related to registrant’s services that we may find upon the face thereof that they are complementary or that a viable relationship exists between them. Based on this record and the mere conclusory statement of the examining attorney, we see the likelihood of confusion claim asserted by the examining attorney as amounting to only a speculative, theoretical possibility. Ser No. 78974694 8 Language by our primary reviewing court is helpful in resolving the likelihood of confusion issue in this case: We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal. Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), citing Witco Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g 153 USPQ 412 (TTAB 1967). Further, we are not persuaded that applicant’s services are within the normal field of expansion for registrant’s recited services. Simply put, there is nothing in the record to support a finding that purchasers are likely to believe that registrant will expand its services to encompass the services recited in the application at issue. Cf. In re General Motors Corp., 196 USPQ 574 (TTAB 1977). Accordingly, based upon the record before us this du Pont factor weights heavily against a finding of likelihood of confusion. Sophistication of Purchasers In reaching our decision on likelihood of confusion we have not relied upon applicant’s arguments regarding sophistication of purchasers. With respect thereto, Ser No. 78974694 9 applicant asserts that purchasers of its services are capable of discriminating between its services and the services of registrant. In that regard, we note that there is no evidence of record that applicant’s or registrant’s services would be purchased only by highly sophisticated persons. Further, it is settled that even sophisticated purchasers are not necessarily knowledgeable in the field of trademarks or immune from source confusion. See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988). As a result, this du Pont factor appears to be, at best, neutral. In view primarily of the dissimilarity between applicant’s Class 37 services and the services recited in Class 37 in the cited registrations, we find that the examining attorney has not met his burden of demonstrating that a likelihood of confusion exists between applicant’s mark ERVIN LEASING and registrant’s ERVIN CABLE and ERVIN CONSTRUCTION marks as used in connection with the services identified thereby. Decision: The refusal of registration is reversed. Accordingly, the involved application will be forwarded for publication in due course. Copy with citationCopy as parenthetical citation