ION Solar, LLC

Trademark Trial and Appeal Board

Sep 28, 2021

88652972 (T.T.A.B. Sep. 28, 2021)

Mailed: September 28, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re ION Solar, LLC
————
Serial No. 88652972
————
Gregory C. Golla of Merchant & Gould P.C.,
for ION Solar, LLC.

Faith Beaudry-Torres, Trademark Examining Attorney, Law Office 126,
Andrew Lawrence, Managing Attorney.
————
Before Kuczma, Greenbaum, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
ION Solar, LLC (“Applicant”) seeks registration on the Principal Register of the
standard character mark ION SOLAR (“SOLAR” disclaimed) for “Installation of solar
energy systems and alternative energy products for residential and commercial use;
Installation and maintenance of photovoltaic/solar thermal hybrid installations” in
International Class 37.1

1 Application Serial No. 88652972 was filed on October 14, 2019 based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming 2016 as
the date of first use and January 2, 2017 as the date of first use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial No. 88652972
2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the standard character mark ION POWER GROUP
(“POWER GROUP” disclaimed) registered on the Supplemental Register for “Energy
generation services” in International Class 40 and “Research and development of
environmentally friendly forms of energy and power” in International Class 42.2
When the refusal was made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, the appeal
resumed. The appeal is fully briefed. For the reasons explained below, we affirm the
refusal to register under Section 2(d) of the Trademark Act.3
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned

2 Registration No. 4966546 was issued on May 24, 2016.
3 Trademark Status & Document Retrieval (“TSDR”) citations refer to the docket and
electronic file database for the involved application. All citations to the TSDR database are
to the downloadable .pdf version of the documents. References to the briefs on appeal refer to
the Board’s TTABVUE docket system. Before the TTABVUE designation is the docket entry
number; and after this designation are the page references, if applicable.
Serial No. 88652972
3
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular
determination.”).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods [or services] and
differences in the marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but ‘may focus … on dispositive
factors, such as similarity of the marks and relatedness of the goods [or services].’”)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)).
A. Relatedness of the Services
We first compare the parties’ respective services under the second DuPont factor.
In making our determination regarding the relatedness of the services, we must look
to the services as identified in Applicant’s application and the services listed in the
cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous.
Serial No. 88652972
4
Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.”)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991
(TTAB 2011).
It is sufficient that the respective services are related in some manner, 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 source. See Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (internal citation omitted); Hilson
Research, Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423, 1432 (TTAB 1993).
The issue here, of course, is not whether consumers would confuse Applicant’s
services with Registrant’s services, but rather whether there is a likelihood of
confusion as to the source of these services. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). Moreover,
registration must be refused if Applicant’s mark for any of its identified services is
likely to cause confusion with the Registrant’s mark for any of its identified services.
See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983)
(holding that a single good from among several may sustain a finding of likelihood of
Serial No. 88652972
5
confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be
confusion with respect to any item that comes within the identification of goods or
services in the application).
Applicant’s services are “Installation of solar energy systems and alternative
energy products for residential and commercial use; Installation and maintenance of
photovoltaic/solar thermal hybrid installations.” Registrant’s services are “Energy
generation services” and “Research and development of environmentally friendly
forms of energy and power.”
In support of her argument that Applicant’s and Registrant’s services are related,
the Examining Attorney submitted Internet evidence demonstrating that a single
entity commonly promotes and provides Applicant’s type of services and Registrant’s
type of services under the same mark.4 This evidence supports a finding that
Applicant’s and Registrant’s services commonly emanate from a single source. See,
e.g., In re C.H. Hanson Co., 116 USPQ2d 1351, 1355-56 (TTAB 2015) (relatedness
found where Internet evidence demonstrated goods commonly emanated from the
same source under a single mark); Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company
sells the goods and services of both parties, if presented, is relevant to the relatedness
analysis”).

4 January 29, 2020 Office Action, at TSDR pp. 51-57; August 25, 2020 Final Office Action, at
TSDR pp. 6-13; and March 12, 2021 Denial of Request for Reconsideration, at TSDR pp. 7-
15.
Serial No. 88652972
6
The Examining Attorney also submitted numerous live, use-based registrations
covering services that are identical or very similar to both Applicant’s and
Registrant’s services.5 Third-party registrations are not evidence that the registered
marks are in use or that the public is familiar with them, but they have some
probative value to the extent they serve to suggest that the goods and services listed
in the registrations are of a kind that may emanate from a single source. See, e.g., In
re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp.,
60 USPQ2d 1214, 1217-18 (TTAB 2001)); In re Aquamar, 115 USPQ2d 1122, 1126 n.5
(TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Applicant argues that its identified services are “significantly different” from
Registrant’s services.6 We disagree. As noted above, the parties’ respective services
do not need to be identical in order to find a likelihood of confusion. They just need to
be related in some manner that if offered under similar marks may give rise to the
mistaken belief that they originate from the same source
Here, Registrant’s broadly worded “Energy generation services” encompass the
generation of alternative energy, which is the field of the energy systems and
products that Applicant installs. Therefore, it is reasonable to conclude that
consumers who purchase alternative energy from sources that generate it also seek
installation of alternative energy systems and products. Thus, Applicant’s and

5 January 29, 2020 Office Action, at TSDR pp. 10-50.
6 Applicant’s Appeal Brief, pp. 3-4; 6 TTABVUE 4-6.
Serial No. 88652972
7
Registrant’s respective services are, at a minimum, complementary in nature. Goods
or services that are complementary or likely to be purchased and used together are
deemed to be “related.” See Joseph Phelps Vineyards, LLC v. Fairmont Holdings LLC,
122 USPQ2d 1733, 1737 (Fed. Cir. 2017) (“relatedness is a broad concept; products
may exhibit ‘relatedness' when they are ‘complementary products sold in the same
channels of trade to the same classes of consumers”’).
Notwithstanding, the record before us amply demonstrates that Applicant’s and
Registrant’s services are the type offered by a single entity under the same mark.
Accordingly, the second DuPont factor favors a finding of a likelihood of confusion.
B. Similarity of Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third
DuPont factor. Because there are no limitations or restrictions as to trade channels
or classes of purchasers in the respective identifications of services, we presume that
the parties’ respective services are or would be marketed in all normal trade channels
for such services and to all normal classes of purchasers of such services. In re
i.am.symbolic, 123 USPQ2d at 1750 (quoting In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) and Hewlett-Packard v. Packard Press, 281 F.3d
1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002).
Here, the third-party use Internet evidence7 shows that because of the
complementary nature of the parties’ respective services, these services are offered

7 January 29, 2020 Office Action, at TSDR pp. 51-57; August 25, 2020 Final Office Action, at
TSDR pp. 6-13; and March 12, 2021 Denial of Request for Reconsideration, at TSDR pp. 7-
15.
Serial No. 88652972
8
in the same or overlapping channels of trade. The relevant classes of consumers for
both Applicant’s and Registrant’s services include ordinary consumers who own
residential or commercial spaces that desire to purchase alternative energy from
sources that generate it, as well as seek the installation of alternative energy systems
and products. Accordingly, the trade channels and classes of consumers for the
services at issue, at a minimum, overlap.
C. Strength of the Cited Mark
“A mark’s strength is measured both by its conceptual strength (distinctiveness)
and its marketplace [or commercial] strength (secondary meaning).” In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). For
likelihood of confusion purposes, “the strength of a mark is not a binary factor, but
varies along a spectrum from very strong to very weak.” In re Coors Brewing Co., 343
F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003).
Applicant has raised the sixth DuPont factor, under which we consider the alleged
weakness of the cited registered mark, based on the “[t]he number and nature of
similar marks in use on similar ... goods [or services].”8 DuPont, 177 USPQ at 567.
Applicant argues that the cited mark merits a narrowed scope of protection because
there are numerous “ION”-formative marks that are registered for goods and services
similar or related to the services listed in the cited registration and identified in
Applicant’s involved application.9

8 Applicant’s Appeal Brief, p. 12, 6 TTABVUE 15.
9 Id. at pp. 13-16, 6 TTABVUE 16-19.
Serial No. 88652972
9
Despite the reference to use, Applicant’s weakness argument is supported only
with third-party registration and application evidence,10 but not with any evidence of
third-party use.11 We first note that third-party applications are evidence only that
the applications were filed; they are not evidence of use of the mark. In re Mr. Recipe,
LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); see In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1270 n.8 (TTAB 2009); TRADEMARK TRIAL AND APPEAL BOARD MANUAL
OF PROCEDURE (TBMP) § 1208.02 (June 2021); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 710.03 (July 2021). Since these third-party applications, i.e.,
applications for the marks BEYOND LI-ION, IONTRA, ISO-IONICS, THE HELL-
ION, and TRACT-ION LITHIM-ION, do not evidence that the marks subject thereto
are in use, they have no probative value in our analysis regarding the strength of the
cited mark. Notwithstanding, the aforementioned marks are quite dissimilar in
connotation and overall commercial impression from the cited mark and, therefore,
are not probative in our strength analysis.
Turning to Applicant’s third-party registrations, we note that this evidence goes
not to the commercial strength of the cited mark, but rather only to its conceptual
strength. Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1057
(TTAB 2017) (“Use evidence may reflect commercial weakness, while third-party
registration evidence that does not equate to proof of third-party use may bear on

10 July 27, 2020 Response to Office Action, at TSDR pp. 26-63; and February 25, 2021 Request
for Reconsideration, at TSDR pp. 37-196.
11 Because there is no evidence of third-party use of marks identical or similar to the cited
mark for identical or similar services, the sixth DuPont factor is neutral.
Serial No. 88652972
10
conceptual weakness if a term is commonly registered for similar goods or services.”)
(citing Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA
1976)); see also In re Guild Mortg. Co., 2020 USPQ2d 10279 *3 (TTAB 2020)
(“[E]vidence of third-party registrations is relevant to ‘show the sense in which . . . a
mark is used in ordinary parlance.”’). Indeed, the Federal Circuit has held that if
there is evidence that a mark, or an element of a mark, is commonly adopted by many
different registrants, that may indicate that the common element has some non-
source identifying significance that undermines its conceptual strength as an
indicator of a single source. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015) (“[E]vidence of third-party registrations is relevant to ‘show the sense
in which a mark is used in ordinary parlance,’ … that is, some segment that is
common to both parties’ marks may have ‘a normally understood and well-recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak’”) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).
Here, out of the approximately 45 third-party registrations submitted by
Applicant, the only probative third-party registered marks for goods and services
identical or similar to the services listed in the cited registration are as follows:
Reg. No. Mark Relevant
Goods/Services
6004446 C-ION Energy production;
generation of energy;
production of energy;
consultancy services
relating to the generation of
Serial No. 88652972
11
Reg. No. Mark Relevant
Goods/Services
electrical power; electricity
generating; electricity
generation; generating of
electricity; generation of
electricity; generation of
electrical power using
carbon sequestration;
generation of power
5570211 IION Energy management
services, namely, providing
a service that allows
customers to purchase
energy from various energy
providers; Energy
management services,
namely, providing a service
that allows customers to
purchase energy, namely,
electricity, natural gas and
renewable energy, at a fixed
price; Consulting services in
the field of energy usage
management and energy
efficiency
4204475 ION GEOPHYSICAL
(GEOPHYSICAL disclaimed)
scientific study and
research in the fields of oil
and gas exploration and
production of oil and gas
2092394 ION12 object oriented computer
program used to transfer
data and information from
remote instrumentation,
metering, control and
protection devices to a
central supervisory control
and data acquisition system
for monitoring, processing
and automatically
controlling the operations of

12 Applicant also submitted status and title copies of registrations owned by this same
registrant for the marks and ION ENTERPRISE (ENTERPRISE
disclaimed) for goods identical or highly similar to those listed in the ION registration
identified above.
Serial No. 88652972
12
Reg. No. Mark Relevant
Goods/Services
power systems or process
control systems located in
institutional, commercial,
industrial and power utility
companies

The “existence of [third-party] registrations is not evidence of what happens in the
market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). While there is no
minimum number of third-party marks required to show weakness, six registrations
owned by four registrants, coupled with no evidence of uses of ION or ION-formative
marks, are a relatively small number compared to the number of such marks in cases
that have found weakness based on those marks. See, e.g., In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1746 (four third-party registrations and no third-party uses
were “a far cry from the large quantum of evidence of third-party use and third-party
registrations that was held to be significant” in Jack Wolfskin and Juice
Generation).13 Cf. TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409,
1427-28 n.92 (TTAB 2018) (67 third-party registrations and numerous uses of
TRADER-formative marks showed that the formative was weak and could not form
the basis of petitioner’s claimed family of marks); i.am.symbolic, 123 USPQ2d 1744,
1751 (Fed. Cir. 2017) (where the conflicting marks were identical, evidence of the

13 In Jack Wolfskin, there were at least 14 third-party registrations and uses of paw print
marks that showed the weakness of that design element in the opposer’s mark, 116 USPQ2d
at 1136 n.2, while in Juice Generation, there were approximately 26 third-party registrations
and uses of marks containing the words “Peace” and “Love” that showed the weakness of
those words in the opposer’s marks. 115 USPQ2d at 1673 n.1.
Serial No. 88652972
13
coexistence of the cited registered mark with two third-party registrations of the same
mark for the same or similar goods “falls short of the ‘ubiquitous' or ‘considerable’ use
of the mark components present in” Jack Wolfskin and Juice Generation). The
Federal Circuit has held that “extensive evidence of third-party use and registration
‘is powerful on its face,’ even where the specific extent and impact of the usage has
not been established,” Jack Wolfskin, 116 USPQ2d at 1136 (quoting Juice Generation,
115 USPQ2d at 1674-75), but because there is no such “extensive” evidence here, we
must scrutinize the third-party marks carefully to determine whether they show that
the term ION for the services listed in the cited registrations is weak. We find that
they do not.
As for the remaining third-party registrations submitted by Applicant, we find
that they have little, if any, probative value because (1) they are for marks that have
differing connotations and overall commercial impressions when compared to the
cited mark, i.e., ADVANCION, GUARD ION, IONEX, FRONTERION, GELION,
IONADA, IONICON, IONSDS, LI-ION LITHIUM-ION, LI-ON TECHNOLOGY and
design, PHOTO IONIC OXIDATION, PSI EVOLUTION LI-ION, and PXS PHOTO
IONIC OXIDATION (stylized), , and , or (2)
they list goods or services that are sufficiently unrelated to the services identified in
the cited registration, i.e., batteries; electrical parts for hvac units for buildings,
namely, lighting ballasts; electric storage batteries; electric lighting control consoles;
gas scrubbers; electric light bulbs; proppants for use in oil well and gas well hydraulic
Serial No. 88652972
14
fracturing operations; fuels and non‐chemical motor fuel additives; thermostats;
electric capacitors; electrical control panels for ion processing industrial heat treat
furnaces; industrial furnaces; power lines; laboratory equipment and imaging
software; and telecommunications and distributed antenna system equipment.14 In
re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (third-party registrations for
goods that appear to be in fields which are far removed from the goods at issue are of
limited probative value).
In view of the foregoing, we find that Applicant, based on the evidence of record,
has not established that the term ION or the cited mark as a whole, when used in
connection with services identical or similar to those listed in the cited registration,
has been so extensively adopted by third-party registrants to allow Applicant’s
proposed mark to register. That being said, while we acknowledge that Registrant’s
mark is registered on the Supplemental Register and, therefore, is not inherently
distinctive, we note that even marks on the Supplemental Register are afforded
protection, in particular, where the marks are very similar and the services are
related and complementary in nature, as is the case here. In re Clorox Co., 578 F.2d
305, 198 USPQ 337 (CCPA 1978). See also King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Indeed, “a mark registered on the
Supplemental Register can be used as a basis for refusing registration to another
mark under §2(d) of the Act.” In re Clorox Co., 198 USPQ at 340-41.

14 See generally fn. 10, supra.
Serial No. 88652972
15
D. Similarity of the Marks
We next consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73
USPQ2d 1689, 1691 (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 at 1746 (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014), aff’d
mem., 777 F. App’x 516 (Fed. Cir. 2019)).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” In re i.am.symbolic, 123 USPQ2d at 1748 (quoting Coach Servs.,
Inc., 101 USPQ2d at 1721 (internal quotation marks omitted)). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089
(TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on a comparison of the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
Serial No. 88652972
16
likelihood of confusion.”). However, “in articulating reasons for reaching a conclusion
on the issue 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 consideration of the marks in their entireties.” In re
Nat’l Data, 224 USPQ at 751.
Applicant’s mark is ION SOLAR in standard characters. The cited mark is ION
POWER GROUP, also in standard characters. Given that both marks begin with the
identical wording, the marks are similar in sound, appearance, connotation and
commercial impression. Furthermore, it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered when making
purchasing decisions. Palm Bay Imps., 73 USPQ2d at 1692; see also Presto Prods., v.
Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). As such, consumers will
focus more on the ION portion of both Applicant’s mark and the cited mark as the
source-indicator for the services at issue. This especially holds true since the inclusion
of the descriptive, if not generic, and disclaimed wording SOLAR in Applicant’s mark
and POWER GROUP in the cited mark will not detract from the overall similarities
between Applicant’s mark and the cited mark. Disclaimed matter that is descriptive
of or generic for a party’s goods or services is typically less significant or less dominant
when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP § 1207.01(b)(viii).
Additionally, consumers who are familiar with Registrant’s ION POWER
Serial No. 88652972
17
GROUP mark for the listed services and who then encounter Applicant’s ION SOLAR
mark for Applicant’s identified services may think Applicant’s services are an
extension of the services offered under the cited mark. See, e.g., Double Coin Holdings
Ltd. v. Tru Dev., 2019 USPQ2d 377409, *7 (TTAB 2019) (“ROAD WARRIOR looks,
sounds, and conveys the impression of being a line extension of WARRIOR”); Joel
Gott Wines LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1433 (TTAB 2013)
(“Purchasers of opposer’s GOTT and JOEL GOTT wines are likely to assume that
applicant’s goods, sold under the mark GOTT LIGHT and design, are merely a line
extension of goods emanating from opposer”); Schieffelin & Co. v. Molson Cos., 9
USPQ2d 2069, 2073 (TTAB 1989) (“Those consumers who do recognize the differences
in the [BRADOR and BRAS D’OR] marks may believe that applicant’s mark is a
variation of opposer’s mark that opposer has adopted for use on a different product.”).
Quite simply, the dominant portion of both the cited mark and Applicant’s mark
consists of the identical wording, i.e., ION. For the reasons discussed above,
consumers are more likely to remember the term ION than the other elements of
Applicant’s mark or the cited mark. Nat’l Data, 224 USPQ at 751. While we have not
overlooked the wording SOLAR in Applicant’s mark or the terms POWER GROUP in
the cited mark, we nonetheless conclude that Applicant’s ION SOLAR mark and the
cited mark ION POWER GROUP, when considered in their entireties, are more
similar than dissimilar.
Thus, the first DuPont factor favors a finding of likelihood of confusion.
Serial No. 88652972
18
II. Consistency of Examination – Thirteenth DuPont Factor
Applicant maintains that it is the owner of a prior registration for the standard
character mark ION EARTH for the identical services listed in its involved
application. Applicant submitted a status and title copy of its claimer prior
registration.15 Applicant contends that since its proposed mark ION SOLAR is very
similar to its previously registered mark, this factor alone should lead to the
allowance of Applicant’s current application.16
We consider Applicant’s prior registration under the thirteenth DuPont factor,
which “relates ‘to any other established fact probative of the effect of use.’” DuPont,
177 USPQ at 567. Our decision in In re Strategic Partners, Inc., 102 USPQ2d 1397
(TTAB 2012) is instructive. In Strategic Partners, applicant owned a registered mark
that had coexisted with the cited mark for over five years. Because applicant’s prior
registration was over five years old, it was not subject to challenge by the owner of
the cited registration based on a claim of likelihood of confusion. Id. at 1399.
In finding no likelihood of confusion in Strategic Partners, the Board provided the
following explanation:
[T]he present case involves the unique situation presented
by the coexistence of applicant’s existing registration with
the cited registration for over five years, when applicant’s
applied-for mark is substantially similar to its existing
registered mark, both for identical goods. When we
consider these facts under the thirteenth du Pont factor,
we find in this case that this factor outweighs the others
and leads us to conclude that confusion is unlikely.

15 July 27, 2020 Response to Office Action, at TSDR pp. 20-21.
16 Id.
Serial No. 88652972
19
Id. at 1400. (emphasis added).
Although we are sympathetic to Applicant’s argument that refusing registration
of the mark now before us is inconsistent with the issuance of Applicant’s earlier
registration, we disagree. First, unlike the circumstances in Strategic Partners,
Applicant’s prior registration is not over five years old (the mark registered on June
2, 2020) and, therefore, remains subject to a potential cancellation proceeding
asserting a claim of likelihood of confusion brought by Registrant. Second, we do not
consider the issuance of Applicant’s prior registration to be a dispositive factor
against a finding of likelihood of confusion because, contrary to the situation in
Strategic Partners, Applicant’s earlier registered mark is not substantially similar to
its currently proposed mark. See, e.g., In re Nuclear Research Corp., 16 USPQ2d 1316
(TTAB 1990) (finding that a prior mark is substantially similar to an applicant’s
current mark if the prior mark has presented the same, continuing commercial
impression as applicant’s currently proposed mark). We find that the term EARTH
in Applicant’s prior registered mark creates a connotation and an overall commercial
impression that differs from Applicant’s currently proposed mark and, therefore, the
prior registered mark is not substantially similar to Applicant’s currently involved
ION SOLAR mark. Thus, the existence of this prior registration does not outweigh
the other DuPont factors. To hold otherwise would give preclusive effect to the
decision of the examining attorney in granting Applicant’s prior registration, and the
Board is not bound by the decisions of examining attorneys. To the contrary, “the
[US]PTO must decide each application on its own merits, and decisions regarding
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20
other registrations do not bind either the [USPTO] or [the reviewing] court.” See In
re Boulevard Entm’t, 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003). The
issuance of Applicant’s prior registration does not compel the issuance of a second
registration if it would otherwise be improper to do so. Cf. In re Shinnecock Smoke
Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009).
In that regard, Applicant was not without any remedy against the refusal of
registration in this case. Applicant could have sought a suspension of this appeal or
the prosecution of its application after receiving the Section 2(d) refusal to pursue (1)
a cancellation proceeding or civil action against the cited registration, if appropriate,
or (2) possibly a consent agreement with the Registrant. The record demonstrates,
however, that Applicant pursued none of these alternatives. Overall, this is not a case
in which the existence of Applicant’s earlier registration outweighs the impact of the
other DuPont factors on the issue of a likelihood of confusion, particularly since the
Examining Attorney’s refusal is justified on the record in this case. Thus, the
thirteenth DuPont factor is neutral.
III. Conclusion
We have considered all of the evidence made of record pertaining to the likelihood
of confusion issue, as well as all of the arguments related thereto. We have found that
(1) Applicant’s mark is similar to Registrant’s mark, (2) the parties’ respective
services are related and complementary in nature, (3) the channels of trade and
classes of purchasers, at a minimum, overlap, and (4) since the evidence of record
does not demonstrate that third parties have extensively used or registered marks
with the term ION as a constituent component thereof for services identical or similar
Serial No. 88652972
21
to those listed in the cited registration, we find, under the relevant DuPont factors,
that confusion is likely between the marks. In reaching our decision, we recognize
that this is a close case, particularly since Registrant’s mark is registered on the
Supplemental Register. However, to the extent that any of the points presented by
Applicant raise a doubt about likelihood of confusion, that doubt is resolved in favor
of the prior Registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290-91 (Fed. Cir. 1984).
Decision: The refusal to register Applicant’s ION SOLAR mark under Section
2(d) of the Trademark Act is affirmed.