Northern Oil and Gas, Inc.Download PDFTrademark Trial and Appeal BoardMar 5, 2013No. 85188046 (T.T.A.B. Mar. 5, 2013) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 5, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Northern Oil and Gas, Inc. _____ Serial No. 85188046 _____ Benjamin Armitage of Clise, Billion & Cyr, P.A. for Northern Oil and Gas, Inc. Fong Hsu, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _____ Before Cataldo, Wolfson, and Adlin, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Northern Oil and Gas, Inc. (“applicant”) seeks registration on the Principal Register of the mark PRODUCING OIL IN AMERICA, FOR AMERICA (in standard characters) for “oil production services,” in International Class 40 and “oil exploration” in International Class 42.1 The Trademark Examining Attorney has refused registration of applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), having 1 Application Serial No. 85188046 was filed on December 1, 2010, on the basis of applicant’s assertion of its bona fide intent to use the mark in commerce. Serial No. 85188046 2 determined that registration would lead to a likelihood of confusion in view of the services recited in Reg. No. 3474178 for the mark PRODUCING OIL & GAS IN THE USA FOR THE USA (in standard character format) for “acquisition of oil and gas assets, namely, acquiring oil and gas assets on behalf of shareholders” in International Class 36; “oil and natural gas production services” in International Class 40; and “exploration, searching, and prospecting of oil and gas; analysis services for oil and gas exploration” in International Class 42.2 After the examining attorney made the refusal final, applicant appealed to this Board. We affirm the refusal to register.3 Applicable Law Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential 2 Registered on July 22, 2008 on the Supplemental Register. 3 By way of his brief, the examining attorney withdrew the refusal under Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2). Accordingly, the issue is not before us, and we make no determination as to whether the applied-for might be considered primarily geographically descriptive under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2). Serial No. 85188046 3 characteristics of the services and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). A. Comparison of the Services We base our evaluation on the services as they are identified in the registration and application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is not necessary that the respective services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis, it being sufficient that the services are related in some manner and/or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under circumstances that would give rise, because of the marks employed thereon, to the mistaken belief that they originate from or are in some way associated with the same producer. In re Home Builders Assn. of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). The services identified by applicant’s mark are “oil production services” and “oil exploration.” The registrant’s services cover, inter alia, “oil and natural gas production services” and “exploration, searching, and prospecting of oil and gas.” The services are thus in part identical. In addition, the remaining services are sufficiently related to oil and gas production and exploration that consumers would be likely to assume, upon encountering the services under similar marks, that the services originate from, are sponsored or authorized by, or are otherwise connected Serial No. 85188046 4 to the same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Accordingly, this du Pont factor weighs heavily in favor of a finding of likelihood of confusion. B. Comparison of the Marks We first take note that where, as here, the services are identical in part and closely related in part, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). See also, Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); and Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). In considering whether there is a confusing similarity in appearance, sound, connotation, and commercial impression between the marks, the fact that applicant seeks registration of its mark for services identical to opposer’s registered mark “accentuates the likelihood of consumer confusion about the sources of services marketed under similar marks.” Century 21, 23 UPSQ2d at 1700. Applicant has applied to register the mark PRODUCING OIL IN AMERICA, FOR AMERICA. The registered mark is PRODUCING OIL & GAS IN THE USA FOR THE USA. In comparing the marks, we must consider the marks in their entireties as to appearance, sound, connotation and commercial impression, to determine the similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. Although our decision cannot be predicated on dissecting the marks into their Serial No. 85188046 5 various components, different features may be analyzed to determine whether the marks are similar. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, consumers are likely to focus on the first word of each mark, which is the identical verb: PRODUCING. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”). Even if consumers are more likely to perceive “oil & gas” as a single unitary phrase, and recall the registered mark by the words PRODUCING OIL & GAS rather than simply PRODUCING OIL, as will be the case with applicant’s mark, inasmuch as the parties’ energy products are typically found in underground deposits, both phrases, “PRODUCING OIL” and “PRODUCING OIL & GAS” create the same impression of a company that extracts these resources from underground or offshore fields containing oil and/or natural gas.4 In addition, the remainder of 4 The fact that “oil and gas” would be perceived as related products is bolstered by the entry for “oil and gas lease” that appears in the dictionary as a defined term: “a deed by which a landowner authorizes exploration for and production of oil and gas on his land usu. in consideration of a royalty.” At www.merriam-webster.com. The Board may take judicial Serial No. 85188046 6 applicant’s mark: “IN AMERICA, FOR AMERICA” has a similar appearance and cadence, and importantly, the same meaning, as the remainder of the cited mark: “IN THE USA FOR THE USA.” This remainder portion of each mark adopts the same grammatical sequence of: “in …, for ….,” and the term that follows “in” and “for” is the same term, repeated once. Further, the geographic terms “America” and “USA” have interchangeable connotations.5 Finally, both marks create the same commercial impression in that each promotes services intended to increase the exploration and production of natural underground resources, namely, oil and gas, in the United States for the benefit of the United States economy. This du Pont factor favors a finding of likelihood of confusion. C. Sophistication of Purchasers Applicant argues that “purchasers of either companies’ [sic] services are extremely careful, sophisticated buyers as they include investors and energy executives.”6 Aside from the fact that there is no evidence supporting applicant’s argument, given the nature of the services involved, we do not find it entirely unreasonable to assume the purchasers may be sophisticated. However, even assuming that purchasers are sophisticated when it comes to their buying decisions, notice of dictionary definitions, including definitions or entries from references that are the electronic equivalent of a print reference work. See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). 5 The examining attorney attached a copy of the definition of “America” from www.merriam-webster.com that gives “United States of America” as a definition of the term, along with indicating that the definition of “America” includes “the Americas.” This evidence supports the interchangeable meanings of “America” and “USA.” Attached to Office action dated March 9, 2011. 6 Reply Brief, p. 2 (unnumbered). Serial No. 85188046 7 it is settled that sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving marks consisting of highly similar slogans and identical services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the similarities between the marks and the services sold thereunder outweigh any sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Thus, this factor is neutral or, at best, only slightly favors a finding of no likelihood of confusion. D. Actual Confusion; Similar Marks in Use on Similar Services Applicant further argues that there is no evidence of actual confusion or evidence of any similar marks in the industry. Suffice it to say, the contemporaneous use of applicant’s and registrant’s marks for a period of only 18 months, as alleged by applicant, is insufficient to establish such long and continuous contemporaneous use that would compel a finding that there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, Serial No. 85188046 8 1774 (TTAB 1992). Moreover, the record is devoid of evidence relating to the extent of use of any similar marks by others. Accordingly, the du Pont factors of the number and nature of similar marks in use on similar goods, and the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion is considered neutral. E. Balancing the factors. In view of the fact that applicant’s mark PRODUCING OIL IN AMERICA, FOR AMERICA and the cited mark PRODUCING OIL & GAS IN THE USA FOR THE USA are similar in sight, sound, meaning and commercial impression, the services are identical in part, and closely related in part, and there is no evidence of meaningful contemporaneous use or evidence that the purchasers are, in fact, sophisticated, we find that applicant’s registration of the mark PRODUCING OIL IN AMERICA, FOR AMERICA is likely to cause confusion with the cited mark PRODUCING OIL & GAS IN THE USA FOR THE USA. Decision: The refusal to register applicant’s mark PRODUCING OIL IN AMERICA, FOR AMERICA is affirmed. Copy with citationCopy as parenthetical citation