IES Industries Inc.

Trademark Trial and Appeal Board

Apr 15, 1998

No. 74638378 (T.T.A.B. Apr. 15, 1998)

Paper No. 12
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 14, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re IES Industries Inc.
________
Serial No. 74/638,378
_______
James C. Nemmers for IES Industries Inc.
Andrew J. Benzmiller, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______
Before Cissel, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On February 27, 1995, applicant applied to register the
mark shown below
on the Principal Register for “public utility services in
the nature of supplying electrical power, steam and natural
Ser No. 74/638,378
2
gas; and transportation of goods by rail and barge,” in
Class 39; and for other services which were subsequently
deleted by amendment. The application was based on
applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce in connection with
these services.
The application claimed ownership of Registration Nos.
1,630,353 and 886,043. These two registrations were issued
in 1990 and 1991, respectively, for the same mark, the
letters “IE” and a design. The former was canceled under
the provisions of Section 8 of the Act in 1997, while the
later apparently remains in effect. The services are
identified in the subsisting registration as “public utility
supplying electricity.” Applicant explains in its brief
that its original name was “Iowa Electric Light and Power
Company,” and that the letters “IE” in the previously
registered marks stood for the initial letters in its prior
name.
The instant application is now before the Board on
appeal from the final refusal to register based on Section
2(d) of the Lanham Act. The Examining Attorney has
determined that if applicant’s mark were used in connection
with the electric utility services set forth in the
application, namely “supplying electrical power,”
applicant’s mark would so resemble the mark “IES,” which is
Ser No. 74/638,378
3
registered1 for “consulting services in the field of
electric energy,” in Class 42, that confusion would be
likely.
Based on the record before us, we agree that confusion
would be likely because the marks create very similar
commercial impressions and the services set forth in the
application are closely related to those identified in the
cited registration.
Notwithstanding applicant’s argument to the contrary,
when these two marks are considered in their entireties,
they are quite similar. The dominant portion of applicant’s
mark, i.e., the part which is more likely to be noticed,
remembered and used in reference to it, is plainly the
literal portion of the mark, the letters “IES,” and it is
these very same letters that constitute the registered mark
in its entirety.
The curved line design in applicant’s mark does not
alter our conclusion that the two marks are likely to be
confused. Applicant’s mark is essentially the letters
“IES,” and there is nothing particularly unusual or
distinctive about the design or the way the letters are
presented in it. The design does not add or detract much
from the letters. The letters plainly dominate applicant’s

1 Reg. No. 1,760,417, issued to International Energy Services
U.S.A., Inc. on March 23, 1993, based on a claim of use in
commerce since July 1, 1991.
Ser No. 74/638,378
4
mark. See: Jaybee Mfg. Corp. v. L. E. Johnson Products,
Inc., 154 USPQ 246 (TTAB 1967); and Edison Brothers Stores,
Inc. v. Brutting E.B. Sport International GmbH, 230 USPQ 530
(TTAB 1986).
As the Examining Attorney points out, the issue is not
whether the marks are identical or whether they might be
confused if they were to be compared on a side-by-side
basis. Instead, the question for us to answer is whether
they create similar overall commercial impressions. If both
of these two “IES” marks were to be used in connection with
closely related services, confusion would be likely.
Our inquiry thus turns to the services set forth in the
application and the cited registration. As noted above, the
registered mark is for consulting services in the field of
electric energy, and the application specifies that one of
the services with which the applicant, a public utility
company, intends to use its mark is supplying electrical
power. These services are closely related. Applicant
itself admits that it renders both consulting services
relating to the efficient use of energy, on one hand, and
the service of supplying electricity, on the other.
Additionally, the Examining Attorney made of record third-
party registrations wherein the services listed include both
public energy utility services and energy consultation
services. These registrations are probative of the
Ser No. 74/638,378
5
contention that consumers have a basis upon which to expect
that the use of similar marks on both types of services
indicates that they emanate from a single source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Even without the evidence that applicant and other
electric utilities both supply power and provide consulting
services with regard to its use, it is reasonable to
conclude that the consultation services in the field of
electrical energy which are rendered under the registered
mark could involve consulting with respect to the use of the
electrical power provided by a public utility such as
applicant. Because of the close relationship between these
activities, consumers are likely to view the use of similar
marks in connection with such services as indicating that
they are rendered by one entity.
Applicant’s arguments that its services are limited and
are not rendered to the same customers through the same
trade channels as registrant’s services are is not based on
any evidence. Moreover, the respective recitations of
services in the application and the registration do not
reflect the narrower descriptions of the respective services
on which applicant predicates this argument. In the absence
of limitations or restrictions in the registration and the
application, respectively, this argument is not persuasive.
We must consider the services as they are identified in the
Ser No. 74/638,378
6
registration and application, without unspecified
restrictions. In re Elbaum, 211 USPQ 639 (TTAB 1981). When
we take this approach, as noted above, we find the services
to be closely related.
To whatever extent applicant’s arguments could be
interpreted as contending that confusion would not be likely
because its customers are familiar with its previously
registered marks consisting of the letters “IE” and a
design, we note for the record that this position is not
supported by either evidence or logic. The logical
extension of this argument is that customers will not be
confused no matter how similar applicant’s mark is to the
cited registered mark because applicant’s customers know
with whom they are dealing. However, we must determine
whether applicant’s mark is likely to cause confusion with
the previously registered mark, not whether the mark will be
ignored.
Ser No. 74/638,378
7
In summary, confusion would be likely if applicant were
to use its “IES” and design mark in connection with its
electric utility service of supplying electricity in view of
the registered mark “IES” for consulting services in the
field of electric energy. The marks, when considered in
their entireties, create similar commercial impressions, and
the services are closely related. Accordingly, the refusal
to register under Section 2(d) of the Act is affirmed and
registration to applicant is refused.
R. F. Cissel
E. J. Seeherman
E. W. Hanak
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser No. 74/638,378
8