Ervin Leasing, Inc.

Trademark Trial and Appeal Board

Jun 30, 2009

No. 78974694 (T.T.A.B. Jun. 30, 2009)

Mailed: June 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ervin Leasing, Inc.
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Serial No. 78974694
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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
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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
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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
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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
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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
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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
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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.