NRG Systems, Inc.

Trademark Trial and Appeal Board

Sep 7, 2012

No. 85001796 (T.T.A.B. Sep. 7, 2012)

Mailed: Hearing:
September 7, 2012 May 23, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re NRG Systems, Inc.
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Serial No. 85001796
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Elizabeth A Kleinberg of Dinse Knapp & McAndrew P.C., for
NRG Systems, Inc.

Andrea Koyner Nadelman, Law Office 110 (Chris A.F. Pedersen,
Managing Attorney).
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Before Grendel, Ritchie, and Shaw, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

NRG Systems, Inc. has filed an application to register
on the Principal Register the mark WINDLINX,1 in standard
character form, for services which were ultimately
identified as “computer services, namely, providing
customers conducting wind measurement operations utilizing
meteorological towers with a web-based system and online
portal to remotely manage and monitor their wireless
accounts associated with each specific wind measurement
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 85001796
2
communications device,” in International Class 35, and
“computer services, namely, providing customers conducting
wind measurement operations utilizing meteorological towers
with a web-based system and online portal to remotely manage
their communications devices in connection with their wind
measurement equipment,” in International Class 42.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when applied to the identified
services, so resembles the previously registered mark
WINDLINK,2 also in standard character form, for “power, data
and telecommunications cables for equipping wind turbines,”
in International Class 9, as to be likely to cause
confusion, mistake, or to deceive.
Applicant and the examining attorney filed briefs, and
applicant filed a reply brief. At applicant’s request, an
oral hearing was held on May 23, 2012, and presided over by
this panel.
We reverse the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative facts

1 Application No. 85001796, filed March 30, 2010 under Section
1(b) of the Trademark Act, claiming a bona fide intent to use.
2 Registration No. 3583657, issued March 3, 2009.
Ser No. 85001796
3
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). Another key factor in this case concerns the
conditions under which and buyers to whom sales of the goods
and services at issue are made.
Applicant, in urging reversal of the refusal to
register, argues that consumers will not believe that the
goods and services offered by registrant and applicant under
their respective marks emanate from the same source because
the goods and services are different, applicant’s consumers
are sophisticated, the decision to purchase applicant’s
goods and services is not made on impulse, and the normal
trade channels do not overlap. Applicant has supported its
position with two separate affidavits by Barton Merle-Smith,
applicant’s Director of Marketing and Sales.
Ser No. 85001796
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We first consider the du Pont factor of similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial
impression. In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. The mark in cited registration is
WINDLINK, in standard character form. Applicant’s mark
is WINDLINX, in standard character form. As pointed
out by the examining attorney, these marks differ only
by their last letter, and they would appear to sound
alike. However, when we consider the goods and
services on which these marks are used, we note that
the commercial impressions of the marks are not
identical. The term “windlink” with regard to the
goods in the cited registration would be perceived by
consumers as a physical “link” to their “wind
turbines,” whereas the term “windlinx” with regard to
the services in the application would be perceived by
consumers as providing virtual “links” to their “wind
measurement" equipment. Despite the similarity of the
marks, this creates different connotations.
Nevertheless, we find the first du Pont factor favors a
finding of likelihood of confusion.
We next turn to a consideration of the similarity or
dissimilarity of the goods and services. It is well-settled
Ser No. 85001796
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that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in the application vis-à-vis the goods or services
recited in the registration. Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). It is enough that the
goods and services are related in some manner or that some
circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under
circumstances which would give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of
registrant’s and applicant’s goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases
cited therein.
We find in this case, however, that applicant’s goods
and services have not been shown to have a clear relation to
the registrant’s services for purposes of the second du Pont
factor. Applicant’s services are “computer services,
namely, providing customers conducting wind measurement
operations utilizing meteorological towers with a web-based
system and online portal to remotely manage and monitor
Ser No. 85001796
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their wireless accounts associated with each specific wind
measurement communications device,” in International Class
35, and “computer services, namely, providing customers
conducting wind measurement operations utilizing
meteorological towers with a web-based system and online
portal to remotely manage their communications devices in
connection with their wind measurement equipment,” in
International Class 42. The goods in the cited registration
are “power, data and telecommunications cables for equipping
wind turbines.”
Applicant argues that its services are distinctly
different from the goods offered under the registered mark
and the two will not be used in any overlapping way. (Merle-
Smith July 5 decl. at Para. 14). The examining attorney, on
the other hand, contends that the respective goods and
services are similar because they are both “used on wind
farms by wind farmers.” (examining attorney’s brief at
unnumbered 7 of 12). The examining attorney did not submit
any third-party registrations or websites in support of this
position. Rather, the examining attorney seems to rely
entirely on a few images from applicant’s own website, which
shows that applicant offers for sale various cables.
Ser No. 85001796
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Applicant admits, with regard to this evidence, that it does
sell cables, although under a different mark than that at
issue in this proceeding. (appl’s brief at 17). With this
small modicum of evidence, which does not show the goods and
services at issue being sold under the same mark, we do not
find, based on this record, sufficient evidence that
applicant’s services and the goods in the cited registration
are related. It is well established that we must not be
concerned with mere “theoretical possibilities” of
likelihood of confusion. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1692 (Fed. Cir. 1993); Edwards
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Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB
2010).
For this reason, the second and third du Pont factors
weigh against finding a likelihood of confusion.
We turn next to the du Pont factor considering the
conditions of sale and the sophistication of the purchasers.
Although we look to the standard of care of the least
sophisticated consumer, we find, based on the Merle-Smith
affidavits, that both applicant’s services and the goods in
the cited registration are directed toward sophisticated
consumers. In particular, the target consumers for
applicant’s services are those who would undertake “multi-
site wind measurement operations. These users typically are
wind energy producers.” (Merle-Smith November 24 Decl. at
Para. 5). While these same “wind energy producers” may be
operating “wind turbines” Id. at Para. 11, they “generally
purchase wind turbines already equipped with cables.” Id.
The devices at issue are not inexpensive.
The cost to install a complete wind measurement
system (including towers, sensors, booms, data
loggers, and communications devices) can range
from $25,000 to $200,000, depending on factors
including the complexity of the terrain, the size
of the terrain, and the number of sites. The
communications modules alone range from $1,500 to
$3,600. The communications modules must be
paired with a data logger, which costs
approximately $1,500.
Id. at Para. 8.

Ser No. 85001796
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Circumstances suggesting care in purchasing may tend to
minimize likelihood of confusion. As our principal
reviewing Court has pointed out, “sophistication is
important and often dispositive because sophisticated end-
users may be expected to exercise greater care.” Electronic
Design & Sales Inc. v. Electronic Date Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992). Under
these circumstances, we find that the purchasers of the
goods and services at issue are likely to be knowledgeable
and careful in their purchasing decisions. Moreover, since
often significant financial investments are involved, as
well as sophisticated purchasers, we agree with applicant
that its goods and services are not “impulse” buys by
consumers, but rather are carefully considered decisions
requiring some amount of deliberation.
As such, this du Pont factor, as well, weighs against
finding a likelihood of confusion.
As discussed above, we find that the record as a whole
does not support a finding that there is a likelihood of
confusion. While the marks are quite similar, they have
somewhat different commercial impressions. Moreover,
applicant’s services and registrant’s goods have not been
shown to be related, and the goods and services are fairly
expensive and would be bought only by knowledgeable,
Ser No. 85001796
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discriminating purchasers after deliberation. We therefore
conclude that confusion is not likely.
Decision: The refusal under Section 2(d) is reversed.