Pacific Solar Co., Inc.v.Pacific Solar Pty., Ltd.

Trademark Trial and Appeal Board

May 24, 2002

No. 92030378 (T.T.A.B. May. 24, 2002)

5/24/02
Paper No. 20
TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Pacific Solar Company, Inc.
v.
Pacific Solar Pty., Ltd.
_____

Cancellation No. 30,378
_____

Carla B. Oakley of Brobeck, Phleger & Harrison for
Pacific Solar Company, Inc.

Gary J. Nelson of Christie, Parker & Hale for Pacific
Solar Pty., Ltd.
_____

Before Simms, Seeherman and Quinn, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Pacific Solar Company, Inc. has petitioned to cancel
a registration owned by Pacific Solar Pty., Ltd. for the
mark shown below

THIS DECISION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Cancellation No. 30,378
2
for “solar cell panels used for converting sunlight into
electricity.”1 As grounds for cancellation, petitioner
asserts priority and likelihood of confusion under
Section 2(d) of the Trademark Act. More specifically,
petitioner asserts that respondent’s mark, when applied
to respondent’s goods, so resembles petitioner’s
previously used trade name and trademark PACIFIC SOLAR
for solar power systems comprising photovoltaic modules,
batteries, battery charge regulators, wiring harnesses,
voltage regulators, inverters and structural hardware,
and for design and technical consultation services for
others in the field of solar electric systems, as to be
likely to cause confusion.
Respondent, in its answer, denied the salient
allegations in the petition for cancellation.
The record includes the pleadings; the file of the
involved registration; trial testimony, with related
exhibits, taken by petitioner; photocopies of
petitioner’s two pending applications,2 and respondent’s

1 Registration No. 2,258,341, issued July 6, 1999, alleging a
claim of priority under Section 44(d) of the Act based on
Australian application no. 657,908, filed April 6, 1995, which
issued as registration no. 657,908.
2 Application Serial Nos. 75/402,205 and 75/402,206 to register
the mark PACIFIC SOLAR for, respectively, “solar electric
systems design, and consulting and installation services”
(alleging first use and first use in commerce in October 1991)
and “solar electric systems and components” (alleging first use
Cancellation No. 30,378
3
responses to certain of petitioner’s interrogatories and
requests for admissions,3 all introduced by way of
petitioner’s notices of reliance.4 Respondent neither
took testimony nor introduced any other evidence. Both
parties filed briefs.5 An oral hearing was not requested.

in December 1991 and first use in commerce in April 1992).
After respondent’s registration was cited as a bar to
registration under Section 2(d) of the Trademark Act, action on
the applications was suspended pending the final disposition of
this cancellation proceeding.
3 Petitioner filed, on the same day, two notices of reliance on
its requests for admissions. In one, petitioner essentially
asserts that respondent failed to timely respond to the requests
for admission and that, therefore, the requests stand admitted.
In the other notice of reliance, petitioner alternatively relies
upon the requests expressly admitted by respondent, namely, nos.
8, 11, 13, 19 and 20.
The Board, in an order issued June 4, 2001, granted
respondent’s motion to extend its time to respond to discovery
and ruled that “the discovery responses which have since been
served upon petitioner are hereby deemed timely.” In view
thereof, we do not view the requests for admissions as deemed to
be admitted, and we have given no consideration to the notice of
reliance relying on each and every one of the requests for
admissions. Rather, in reaching our decision, we have
considered only the ones specifically relied upon by petitioner
where respondent filed express admissions.
4 Petitioner further filed a notice of reliance on the
declaration of Chuck Whitaker, an officer of a third party in
the industry. Respondent objected to the improper submission in
its brief. Trademark Rule 2.123(b) provides that testimony in
the form of an affidavit or declaration may be submitted, but
only pursuant to a written agreement of the parties. There is
no written agreement here, and Mr. Whitaker’s declaration does
not form part of the evidentiary record. Accordingly, this
evidence has not been considered.
5 Petitioner, in its reply brief, objects to certain portions of
respondent’s brief, contending that these portions are not
supported by any evidence of record. The Board generally will
not strike a portion of a brief upon motion by an adverse party
which simply objects to the contents thereof. Rather, any
objections which an adverse party may have to the contents of
such a brief will be considered by the Board in its
determination of the case, and any portions of the brief which
Cancellation No. 30,378
4
Before turning to the substantive issues of priority
and likelihood of confusion, we will consider the
evidentiary objections made in respondent’s brief on the
case. In its brief on the case, respondent expended a
great deal of effort (nine pages) in making objections to
petitioner’s evidence. As we pointed out earlier, we
have not considered the Whitaker declaration or any of
the requests for admission not expressly admitted.
Respondent also objects to all of the exhibits introduced
during the deposition of Marianne Walpert, petitioner’s
founder and co-owner, and to the one exhibit introduced
during the testimony of Maurice Miller, petitioner’s co-
owner, vice president and treasurer. These
hypertechnical objections are overruled essentially for
the reasons set out in petitioner’s brief. Simply put,
we see no deviation by petitioner relative to Trademark
Rule 2.123(f)(2).
Respondent makes a myriad of other objections to
various testimony and exhibits. The objections relate to
relevancy, proper foundation, hearsay, and the like.
Although petitioner, in its reply brief, specifically

are found by the Board to be improper will be disregarded. TBMP
§ 540. Suffice it to say that to the extent respondent’s brief
contains factual statements which are not supported by properly
submitted evidence, the statements have not been considered. BL
Cancellation No. 30,378
5
responded to each of the objections, we see no reason to
do the same, essentially for the reason that we generally
agree with petitioner’s arguments made in response.
Accordingly, we have considered all of petitioner’s
testimony and evidence (except to the extent indicated
earlier), and have accorded it whatever probative weight
it merits.
STANDING
The first issue we need to address is petitioner’s
standing. Respondent raised lack of standing as a
defense in its answer, and respondent reiterates the
point in its brief. The essence of this defense is that
“petitioner does not have standing because petitioner
cannot prove that Marianne Walpert assigned her rights in
the ‘PACIFIC SOLAR’ name to petitioner prior to the
filing of the petition to cancel.” (brief, p. 28).
According to the testimony of Ms. Walpert, she began
business activities under the mark PACIFIC SOLAR as a
sole proprietorship in California in 1991. In October
1991, her business under the mark was certified as a New
York State Woman-Owned Business Enterprise. Pacific
Solar, in April 1994, was certified by the state of
California as a “Disadvantaged Business Enterprise and

Cars Limited v. Puma Industria de Veiculos S/A, 221 USPQ 1018,
Cancellation No. 30,378
6
Women Business Enterprise.” In November 1997,
petitioner, Pacific Solar Company, Inc., was incorporated
under the name PACIFIC SOLAR in the state of California.
We find that the record establishes that the petitioner
corporation owned the mark, by virtue of a transference
of title, prior to the filing of the petition for
cancellation, and that the petitioner corporation owns
the applications that have been rejected under Section
2(d) on the basis of respondent’s registration.
Ms. Walpert testified that it was her intention,
when she incorporated Pacific Solar Company, Inc. in
1997, to transfer all of the assets of the sole
proprietorship to the corporation and that, to the best
of her knowledge, that was what happened. (dep., p.
141). Mr. Miller testified that “it was a material part
of the bargain that Pacific Solar Company[’s] trademark
and trade name be transferred to the new company.”
(dep., p. 15)
The corroborating document evidencing the transfer
(Miller dep., ex. 1) has spawned a dispute between the
parties. Respondent contends that the document is
“suspicious” and, at one point in its brief,
characterizes the document as “fraudulently generated.”

1019 (TTAB 1983).
Cancellation No. 30,378
7
The document is captioned “Assignment and Assumption
Agreement” between the assignor Pacific Solar Company, a
sole proprietorship, and the assignee, Pacific Solar
Company, Inc., a California corporation. The agreement
is signed by Ms. Walpert and indicates that it is “made
and entered into as of the 1st day of January 1998.” The
transferred assets specifically include the PACIFIC SOLAR
trademark.
Although Ms. Walpert’s recollection of her signing
of the agreement is imperfect, it clearly was her
intention to transfer rights in the mark to the
petitioner corporation. Even absent the written
agreement, the uncontroverted testimony evidences the
transfer. The document, regardless of the date of
execution, merely confirms the transfer. See: Huang v.
Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 7 USPQ2d 1335,
1336 (Fed. Cir. 1988), citing American Manufacturing Co.
v. Phase Industries, Inc., 192 USPQ 498, 500 (TTAB 1976)
[“[n]either a formal assignment nor recordation of an
assignment in the Patent and Trademark Office is
necessary to pass title or ownership to common law or
statutory trademark rights”].
The evidence also establishes that petitioner is the
actual owner of the two applications made of record and
Cancellation No. 30,378
8
that petitioner’s pending applications have been refused
registration under Section 2(d) on the basis of
respondent’s registration. Such facts prove petitioner’s
standing. See: Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Apart from the above, petitioner’s commercial
interest in the use of the identical mark is sufficient
to confer standing. Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999).
PRIORITY
We next address the issue of priority of use. The
parties agree that the earliest date upon which
respondent may rely in this case is April 6, 1995 (i.e.,
the Section 44(d) priority filing date). Respondent has
admitted that it has made no actual use in commerce to
date.
Ms. Walpert began business under the name PACIFIC
SOLAR as a sole proprietorship in California in 1991.
According to Ms. Walpert, her business was responsible
for the design, assembly and installation of one of the
first two grid-connected solar electric systems in
California in 1993. Components of the completed system
bore the PACIFIC SOLAR mark. In the years to follow, Ms.
Walpert continued to design, assemble and install solar
Cancellation No. 30,378
9
electric systems under the mark PACIFIC SOLAR. Ms.
Walpert estimated her proprietorship’s gross income in
1993 as $100,000, and in 1994 in the range of $20,000-
$50,000. Ms. Walpert testified about a “number of
proposals that went out in ’92, ’94 time period, a couple
to the Sacramento Municipal Utilities, one to PG & E, one
to the south coast air quality management board in
southern California, and I don’t remember if they were
exactly in 1993, but that that was the time range they
were going out, as well as smaller residential proposals
during that time frame.” (dep., pp. 59-60) The
business, according to Ms. Walpert, also was selling
parts under the PACIFIC SOLAR mark.
Also of record is testimony and related exhibits
pertaining to Ms. Walpert’s involvement with the
development of a solar roof rack for motor vehicles in
1991-1992. One such electric car was equipped with a
PACIFIC SOLAR solar roof rack.
The record further includes examples of use in
promotion of the mark in connection with Ms. Walpert’s
services. Ms. Walpert has distributed business cards
(ex. No. 36) throughout the years at industry conferences
and meetings, and the cards were included in
correspondence and sales efforts. Each business card
Cancellation No. 30,378
10
prominently displayed the PACIFIC SOLAR mark and the term
“photovoltaic systems.” Beginning in 1992, Ms. Walpert
distributed brochures to potential customers, as well as
to the general public at solar home tours and alternative
energy fairs.
Ms. Walpert has placed advertisements bearing the
PACIFIC SOLAR mark in trade publications. The record
includes specific advertisements placed in Northern
California Sun (a publication of The Northern California
Solar Energy Association) in the years 1993-1996.
We find petitioner’s testimony to be sufficiently
probative and satisfactory to establish its priority of
use of PACIFIC SOLAR as a trademark and as a trade name.
Further, the record includes corroborative exhibits.
See: Powermatics, Inc. v. Globe Roofing Products Co.,
Inc., 341 F.2d 127, 144 USPQ 430 (CCPA 1965). Given
respondent’s inaction at trial, petitioner’s record
stands unrebutted. Although respondent, in its brief,
has gone to great lengths to critique much of the
evidence of record, whether a particular piece of
evidence by itself establishes prior use is not
necessarily dispositive as to whether petitioner has
established prior use by a preponderance of the evidence.
In the words of our primary reviewing court, we “should
Cancellation No. 30,378
11
look at the evidence as a whole, as if each piece of
evidence were part of a puzzle which, when fitted
together, establishes prior use.” As instructed by the
court, we must recognize the clear interrelationship
existing between the several pieces of evidence and
consider each piece of evidence in light of the rest of
the evidence, rather than individually. West Florida
Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1663 (Fed. Cir. 1994).
When the record is examined in such a manner, it is
clear that the testimony and evidence as a whole
demonstrate that petitioner has priority of use of
PACIFIC SOLAR in connection with solar energy goods and
services.
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarities or dissimilarities between the marks
and the similarities or dissimilarities between the
Cancellation No. 30,378
12
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Insofar as the marks are concerned, respondent has
admitted that its mark is “extremely similar in sight,
sound and meaning to petitioner’s marks and petitioner’s
trade name.” (Request for Admission No. 13) Petitioner
has established prior use of the marks PACIFIC SOLAR per
se and PACIFIC SOLAR with an ocean wave design. Each of
these marks is substantially similar to respondent’s
mark. In terms of sound, the literal portions of the
parties’ marks are identical. Further, as to
connotation, the marks convey substantially similar, if
not identical, meanings, namely, that the goods and/or
services involve solar energy along the Pacific Ocean
coast. Finally, with respect to appearance, the literal
portion of respondent’s mark is identical to the entirety
of petitioner’s PACIFIC SOLAR mark, and is identical to
the literal portion of petitioner’s logo mark. Although
respondent’s mark includes a design feature, respondent’s
mark, as well as petitioner’s logo mark, clearly is
dominated by the literal portion PACIFIC SOLAR. Although
we must compare marks in their entireties, “there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular
Cancellation No. 30,378
13
feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). Because the literal
portion of a mark is used to call for the goods and/or
services, it is likely to dominate over any design
portion of the mark. Ceccato v. Manifattura Lane Gaetano
Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1197 (TTAB
1994).
Turning next to the goods and/or services,
petitioner has established prior use of its marks in
connection with design, consultation and installation
services involving solar electric systems, and with solar
electric systems, including components such as solar
panels. The involved registration lists respondent’s
goods as “solar cell panels used for converting sunlight
into electricity.” In correspondence between Ms. Walpert
and Dr. Paul Basore, deputy research director,
manufacturing, for respondent, Dr. Basore indicated that
the parties “share similar visions regarding the
proliferation of roof-mounted grid-interactive PV
[photovoltaics] systems.” (Walpert dep., ex. no. 48)6

6 In the same email dated December 22, 1997, Dr. Basore wrote:
“You’ve come to my attention again, this time because it seems
that the company I now work for in Australia chose essentially
Cancellation No. 30,378
14
In comparing petitioner’s goods and services with
respondent’s goods, we start with the premise that they
need not be identical or even competitive to support a
holding of likelihood of confusion. It is sufficient
that the goods and services be related or that conditions
surrounding their marketing are such that they are
encountered by the same persons who, because of the
relatedness of the goods and services and the
similarities between the marks, would believe mistakenly
that the goods and services originate from or are in some
way associated with the same producer. Hercules Inc. v.
National Starch and Chemical Corp., 223 USPQ 1244, 1247
(TTAB 1984).
It is clear that the parties’ goods overlap and that
petitioner’s services in the solar energy field are
closely related to respondent’s solar energy goods.
Further, it would appear that the parties’ goods and
services are intended for the same classes of purchasers,
namely environmentally concerned individuals and
companies. While some of these purchasers are likely to

the same company name as you are currently using. They did this
before I joined the company, and were not aware of the existence
of your company at the time. The issue has come to the
forefront now because we tried to register the name PacificSolar
as an internet domain address and discovered that you already
have it.” The communication then broached the subject of
possible resolutions to the conflict.
Cancellation No. 30,378
15
be sophisticated when it comes to buying a solar energy
product, it is apparent that not all of the goods are
expensive, and that they would also be purchased by
ordinary individuals for use in their homes. In any
event, given the virtual identity between the marks and
the goods and services, even sophisticated purchasers
likely would be confused.
Another du Pont factor in this case is actual
confusion. Mr. Miller testified that actual confusion
between the parties’ marks “has occurred on many
occasions,” and then went on to cite three examples. One
instance involved misdirected mail, and the other two
involved mistaken identity (i.e., individuals thought
that petitioner was, in fact, respondent). Ms. Walpert
testified generally that, at conferences, attendees have
confused the two companies. Ms. Walpert went on to
detail one example of misdirected mail. Although the
record does not include the testimony of those confused,
it is clear that the instances of confusion are a direct
result of the parties’ use of the identical mark PACIFIC
SOLAR in connection with solar energy goods and services.
This factor weighs in favor of petitioner.
Petitioner asserts that its mark is strong and well
known in the industry. Although we find petitioner’s
Cancellation No. 30,378
16
mark to be inherently distinctive (albeit suggestive),
suffice it to say that the record falls short of proving
that the mark is well known. Thus, we have not treated
the factor of fame as favoring petitioner.
We conclude that purchasers familiar with
petitioner’s solar energy goods and services sold under
petitioner’s previously used PACIFIC SOLAR marks would be
likely to believe, upon encountering respondent’s mark
PACIFIC SOLAR and design for solar cell panels, that the
goods and services originate with or are somehow
associated with or sponsored by the same entity.
Decision: The petition for cancellation is granted.
Registration No. 2,258,341 will be canceled in due
course.