GeoMet, Inc.

Trademark Trial and Appeal Board

Nov 10, 2004

No. 76286578 (T.T.A.B. Nov. 10, 2004)

Mailed: November 10, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re GeoMet, Inc.
________
Serial No. 76286578
_______
H. Graham Beene of Burr & Forman LLP for GeoMet, Inc.
Marlene Bell, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney).
_______
Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
GeoMet, Inc. has appealed from the final refusal of
the Trademark Examining Attorney to register GEOMET, INC.
and design, as shown below, for the following services:1
Public utility services in the nature
of natural gas and coalbed methane gas
distribution (Class 39);
1 Application Serial No. 76286578, filed July 17, 2001, and
asserting first use as of July 5, 1985 and first use in commerce
as of September 1, 1985.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 76286578
Oil and gas well treatment; gas
production services, namely, natural
gas and coalbed methane gas production
services (Class 40); and
Geophysical exploration for the oil and
gas industries; management and design
of oil and gas well drilling; oil and
gas well prospecting, namely, well
logging and testing; coalbed methane
resource assessment; development of
coalbed methane resources (Class 42).
Applicant has disclaimed rights to the exclusive use of the
term "INC."
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark so resembles the marks GEOMET2 and
GEOMET and design,3 as shown below, previously registered by
the same company for "environmental research services;
namely, energy conservation and monitoring indoor air
2 Registration No. 1767756, issued April 27, 1993; Section 8
affidavit accepted; Section 15 affidavit received; renewed. In
the identification of this registration, the term "randon"
appears instead of "radon." This is an obvious typographical
error, and we have treated the services as "radon mitigation and
life cycle assessment," the way they are identified in
Registration No. 1772035.
3 Registration No. 1772035, issued May 18, 1993; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
Ser. No. 76286578
quality, ambient emission control, and technological
research with respect to geographic information systems,
electromagnetic fields, weather characterization and
meterological [sic] systems for utilities, radon mitigation
and life cycle assessment" that, as used in connection with
applicant's services, it is likely to cause confusion or
mistake or to deceive.4
Thus, the Examining Attorney has refused registration
with respect to all three of the classes identified in
applicant's application.
The appeal has been fully briefed, but applicant did
not request an oral hearing.5
We reverse the refusal of registration.
4 The identification in Registration No. 1772035 uses the
language "environmental research services including energy
conservation" rather than "environmental research services namely
energy conservation." The minor difference in language has no
effect on our analysis of the issue of likelihood of confusion,
and we therefore have treated the identifications in both of the
cited registrations as being the same.
5 During the course of prosecution and in its briefs applicant
has cited certain Board cases which have been marked "Not citable
as precedent." No consideration has been given to these cases.
See TBMP §1203.02(f), (2d ed. rev. 2004), and cases cited
therein.
Ser. No. 76286578
As often stated, 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 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, 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 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We have no doubt that applicant's mark is similar to
the marks in the cited registrations. However, because of
the differences in the services, the customers for those
services, and the sophistication of those customers, we
find that, despite the similarity of the marks, confusion
is not likely to occur.
It is the Examining Attorney's position that the
services are related because "the services of both parties
relate to energy." Brief, p. 4.
The Board and our primary reviewing Court have said on
numerous occasions that simply because a term may be found
Ser. No. 76286578
that may generically describe both parties' goods or
services is not a sufficient basis for finding goods or
services to be related. See General Electric Company v.
Graham Magnetics Incorporated, 197 USPQ 690 (TTAB 1977); In
re Cotter and Company, 179 USPQ 828 (TTAB 1973); Spe-De-Way
Products Co., Inc. v. The Stanley Works, 159 USPQ 677 (TTAB
1968). Here, the Examining Attorney has not even shown
that there is such a general word for both applicant's and
registrant's services, only that there are environmental
considerations that may apply to applicant's services.
However, the Examining Attorney does not rely solely
on this general terminology. In order to demonstrate that
the services are related, the Examining Attorney has made
of record evidence taken from the LEXIS/NEXIS data base,
Internet evidence, and evidence of third-party
registrations. She also points to a statement made in
applicant's specimens. We shall examine these categories
of evidence in turn.
With respect to the excerpted articles, the Examining
Attorney asserts that they "indicate that oil, gas and coal
producers must comply with established environmental
standards and requirements during each phase of its
operation that include exploration, production,
distribution and cleanup." Brief, p. 4. The Examining
Ser. No. 76286578
Attorney also states that the articles show that "oil, gas
and coal producers actually conduct environmental research
services." Id.
The articles which were submitted in their entireties
by the Examining Attorney, are several pages long, and the
Examining Attorney did not indicate the specific portions
of the articles that allegedly support her position. The
articles do, however, have certain phrases highlighted, and
we have given these sections extra scrutiny. After
carefully reviewing the articles, we find that they do not
demonstrate that oil and coal producers conduct
environmental research services. Rather, the article
consisting of the May 2, 1996 testimony of Patricia Fry
Godley, an Assistant Secretary at the U.S. Department of
Energy before a Senate Committee (26 pages), printed in the
"Federal Document Clearing House Congressional Testimony,"
refers to that government department's "oil and gas
environmental research program," and her April 27, 1995
testimony (25 pages) from the same publication mentions an
Environmental Research/Regulatory Impact Analysis also done
by the government.6
6 Needless to say, the submission of such long reports without
any discussion by the Examining Attorney of the relevant portions
(and perhaps without a careful reading, since the words in bold-
type are simply the words which were the subject of the search
query, and do not stand for the proposition that she asserts), is
Ser. No. 76286578
Another article deals with an agency called the
Minerals Management Service, and a report it unveiled at a
conference in Scotland about its offshore oil and gas
program. The article included the statement that "MMS and
the oil and gas industry have turned their attention to
protecting the environment," and that "The organizations
[unspecified] monitor the effects of offshore operations,
including a growing emphasis on cutting emissions that
might contribute to climate change and promoting
environmental research." We cannot view this article as
either demonstrating that companies that offer services
such as those identified in applicant's application even
promote, much less conduct, environmental research. Nor
can we assume that the relevant public will be aware of
such activities because of this article, which was
published in the September 13, 1999 issue of "Inside
Energy/with Federal Lands." The fourth, and final, article
submitted by the Examining Attorney is from "Business
Wire," (October 6, 1998), so there is no indication as to
whether this article was ever viewed by the consuming
public. In any event, it discusses a tree-planting
initiative between Exxon Corp. and American Forests in
not helpful to the Board and is a waste of judicial time and
resources.
Ser. No. 76286578
support of the Global ReLeaf 2000 campaign, and mentions
that in 1997 Exxon Corp. provided about $1.8 million to
support environmental research and conservation programs.
Again, this article does not show that oil and gas
producers conduct environmental research.
The Internet evidence consists of excerpts from
websites of companies in the oil and gas industries. The
excerpts essentially state that the companies have a policy
of not harming the environment. For example, the BP
website states that "BP has a simply stated goal--to do no
damage to the environment," and that this "challenge
stimulates us to find innovative ways to manage our
environmental impact at local, regional and global levels."
According to the excerpt from Chevron's website, its
Pascagoula refinery has waste minimization initiatives to
reduce air and water emissions and sold waste. And Exxon
Mobil has an environment policy "to conduct our business in
a manner that is compatible with the balanced environmental
and economic needs of the communities in which we operate."
This includes complying with "with all applicable
environmental laws and regulations."
The mere fact that oil and gas companies' activities
may have an impact on the environment, and potentially an
adverse impact, and the companies therefore attempt to
Ser. No. 76286578
comply with applicable laws and/or attempt not to have an
adverse effect, does not demonstrate that oil and gas
companies offer environmental research services, namely
energy conservation, nor does it show that consumers would
expect such services to be rendered by such companies.
This brings us to the third-party registrations.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The Examining Attorney has not identified which of the
registrations include services which are the same as those
listed in applicant's application and the cited
registrations, despite the fact that applicant, in its
request for reconsideration, stated that "none reflect the
same business providing both Applicant's services and
Registrant's services." We have been unable to identify
any third-party registrations which include applicant's
Class 40 and 42 services and the services listed in the
cited registrations, and therefore do not find them
probative evidence that the services are related.
Moreover, the services identified in Classes 40 and 42
of applicant's application would clearly be directed to
Ser. No. 76286578
people in the oil and gas industries who would be highly
sophisticated and careful purchasers. Applicant has
furnished the declaration of J. Neil Walden, Jr., its vice
president, who has stated that businesses that engage in
the services identified in applicant's application do not
provide the services identified in the cited registrations.
Thus, the purchasers of applicant's services are unlikely
to assume a connection in source between applicant's
services and those of the registrant, even though they are
offered under very similar marks.
The Examining Attorney has also relied on applicant's
specimens, and specifically the statement that "five
critical requirements that GeoMet investigates before
acquisitions are: Gas Content & Permeability vs. Depth...
Environmental Issues...." as evidence that "researching and
evaluating geological and environmental issues are an
inherent part of oil, gas and coal exploration, production
and distribution." Brief, p. 5. From this, the Examining
Attorney concludes that "Applicant's oil, gas and coal
exploration, production and distribution services are
closely related to the Registrant's environmental energy
research services." Id.
Applicant's specimen does discuss how applicant
evaluates potential projects, and lists "Environmental
Ser. No. 76286578
Issues" as one of the requirements. The text goes on to
explain: "minimum environmental consequences related to
well drilling, installation of production facilities and
disposal of produced waters." Again, the fact that
applicant's services can have an environmental impact is
not the same as showing that applicant performs
environmental research services, namely, energy
conservation, or that environmental research services in
the nature of energy conservation is related to applicant's
identified services, any more than the fact that eating
high-fat foods may have a deleterious effect on one's
health would demonstrate that ice cream and health club
services or that butter and medical services are related.
This brings us to a consideration of applicant's Class
39 services. The Examining Attorney has submitted several
third-party registrations, which appear to be owned by
utility companies, and which include utility services,
namely, the transmission and distribution of electricity
and natural gas. Applicant's Class 39 services include
"Public utility services in the nature of natural gas
distribution." The third-party registrations which list
utility services including the distribution of natural gas
also make reference to energy conservation. However, none
of the third-party registrations refers to environmental
Ser. No. 76286578
research services with respect to energy conservation (as
noted above, the cited registrations list, in their
identifications of services, "environmental research
services; namely, energy conservation.") Instead, they
list "assistance and counseling services for customers with
regard to energy usage, energy safety and energy
conservation" (Reg. No. 2748304); "consultation services in
the field of energy use, distribution, conservation and
management" (Reg. No. 2779749); "consultation in the field
of energy and energy conservation and monitoring of
property security systems" (Reg. No. 2373991);
"consultation in the field of energy, energy conservation,
and environmental issues related to energy use" (Reg. No.
2513132); and "consulting services in the field of energy
use, energy management, energy conservation and
telecommunications for residential, wholesale, industrial
and commercial customers" (Reg. No.2280389). Obviously,
there is a difference between research services regarding
energy conservation and consultation services, a difference
underscored by the fact that none of the third-party
registrations use the term "research" in describing their
energy conservation services. Accordingly, we find that
the Examining Attorney has failed to establish that public
utility services in the nature of natural gas distribution
Ser. No. 76286578
and environmental research services, namely, energy
conservation are sufficiently related that consumers will
assume that both services emanate from the same source if
offered under confusingly similar marks.7
We also note that, on this record, we cannot say that
applicant's Class 39 services and the registrant's
environmental research services are the types of services
that are likely to be offered to the same classes of
customers. Applicant's public utility services in the
nature of natural gas distribution can, as identified, be
deemed to be services that are offered to the general
public. As a result, applicant's arguments with respect to
the sophistication of purchasers would not apply to these
services. However, it does not appear that the general
public would obtain the environmental research services
that are identified in the cited registrations. Certainly
the Examining Attorney has not submitted any evidence to
this effect, while applicant has submitted evidence from
the registrant's website that indicates its clients are
utilities, government agencies and energy industry clients.
For example, the website states that registrant "has been a
7 We have limited our discussion to the environmental research
services identified in the cited registrations. It is obvious
that the other listed services are even less related to
applicant's services, and the Examining Attorney has not even
discussed them in terms of arguing likelihood of confusion.
Ser. No. 76286578
Commercial/Industrial Performance Program (CIPP) Contractor
for NYSERDA (New York State Energy Research and Development
Authority) since 1999"; that it "can be of service to
energy Conservation projects in facilities and to Energy
performance contractors"; that it "is a qualified
Performance Contractor for DoD/Federal government Energy
Savings Performance Contract (ESPC) projects"; and that "we
have performed research work for both the U.S. Army
Construction Engineering Research Laboratory (USACERL) and
for Virginia Department of Mines, Minerals, and Energy
(VDMME) under the sponsorship of the Federal Energy
Management Program (FEMP)."
Accordingly, we find that, on this record, to the
extent there would be any overlap in the classes of
customers for applicant's and the registrant's services,
the common customers would be highly sophisticated and
would not assume that such services would emanate from a
single source.
In view of the differences in the services, and the
highly sophisticated customers for the services, we find
that confusion is not likely despite the similarity of the
marks involved. We also point out that we have considered
applicant's argument that it and the registrant have been
using their respective marks since 1985 without any
Ser. No. 76286578
evidence of actual confusion. We have given this duPont
factor little weight because we have no information as to
the registrant's experience, or any information about the
extent (including geographic areas) of applicant's and the
registrant's activities.
Decision: The refusal of registration is reversed
with respect to all three classes in the application.