Pulaski Electric System

Trademark Trial and Appeal Board

Jun 9, 2009

No. 77208873 (T.T.A.B. Jun. 9, 2009)

Mailed:
June 9, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pulaski Electric System
________

Serial No. 77208873
_______

Brendan Babcock of Babcock Legal Services, PLLC for Pulaski
Electric System.

Benji Paradewelai, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Pulaski Electric System (applicant) seeks registration
on the Principal Register of the mark depicted below for
“public utility services in the nature of electricity
distribution.”1

1 Serial No. 77208873, filed on June 18, 2007. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). February 27, 2007 is alleged in the application
to be the date of first use of the mark anywhere and the date of
first use of the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77208873
2

The application includes the following “description of
mark” statement: “The mark consists of a gold swoosh to the
left of blue PES lettering.” The application also states
that the colors blue and gold are claimed as features of
the mark.
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the services recited in the
application, so resembles the mark depicted below,
previously registered on the Principal Register for
services recited in the registration as “auditing,
analysis, and monitoring of energy consumption,”2 as to be
likely to cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).

2 Registration No. 2618296, issued on September 10, 2002.
Section 8 affidavit accepted; Section 15 affidavit acknowledged.
Ser. No. 77208873
3

The cited registration includes the following
“description of mark” statement: “The mark consists of
three elliptical rings filed with the color desert blue and
three small circles are superimposed over the elliptical
rings filled with the color deep yellow. ‘PES’ is filled
with the color black and ‘INC.’ in the color white is
located in the ‘S’ of ‘PES.’” The cited registration also
includes a disclaimer of INC. apart from the mark as shown.
Applicant has appealed the final refusal. The appeal
is fully briefed. After careful consideration of the
evidence of record and the arguments of counsel, we affirm
the refusal to register.
Initially, we sustain the Trademark Examining
Attorney’s objection to the evidence submitted for the
first time with applicant’s brief. This evidence is
untimely and will be given no consideration. See Trademark
Rule 2.142(d); 37 C.F.R. §2.142(d).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
Ser. No. 77208873
4
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin our likelihood of confusion analysis with the
second du Pont factor, which requires us to determine the
similarity or dissimilarity of the services, as identified
in the application and in the cited registration,
respectively. It is settled that it is not necessary that
these respective services be identical or even competitive
in order to find that the they are related for purposes of
our likelihood of confusion analysis. That is, the issue
is not whether consumers would confuse the services
themselves, but rather whether they would be confused as to
the source of the services. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). It is sufficient that the services be
related in some manner, or that the circumstances
surrounding their use be such, that they would be likely to
be encountered by the same persons in situations that would
Ser. No. 77208873
5
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective services. 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);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978). For purposes of this proceeding
involving the registrability of applicant’s mark, our
comparison of the services must be based solely on the
services as they are recited in the application and the
cited registration, respectively, not on what any extrinsic
evidence might show about the specific nature of the
services. In re Shell Oil Co., 9902 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993); In re La Peregrina Ltd., 86 USPQ2d
1645 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370
(TTAB 2006).
Applicant’s services are recited in the application as
“public utility services in the nature of electricity
distribution.” The services recited in the cited
registration are “auditing, analysis, and monitoring of
energy consumption.”
Ser. No. 77208873
6
The Trademark Examining Attorney has made of record
printouts of the websites of over one dozen electric
utility companies throughout the United States, which show
that such companies offer both electricity distribution
services and energy consumption monitoring and auditing
services to their residential and business customers.
These include Dominion Virginia Power, Pacific Gas and
Electric Company, MidAmerican Energy, TXU Energy, Madison
Gas and Electric Co., Baltimore Gas and Electric,
Louisville Gas & Electric Company, Tampa Electric, Jackson
Electric Membership Corporation, San Diego Gas & Electric,
Westfield Gas & Electric, Holyoke Gas & Electric,
Unitil/Fitchburg Gas and Electric Light Company, and Duke
Energy.
Based on this evidence, we find that applicant’s
services, as recited in the application, are sufficiently
related to the services recited in the cited registration
that likelihood of confusion is likely to result if the
services were to be marketed under similar marks. The
second du Pont factor weighs in favor of a finding of
likelihood of confusion.
Under the third du Pont factor, we consider evidence
pertaining to the trade channels in which and the classes
of purchasers to whom the respective services, as
Ser. No. 77208873
7
identified in the application and in the cited
registration, are rendered. Initially, we reject
applicant’s argument that confusion is unlikely because
applicant and registrant offer their respective services in
different geographic areas of the country. Applicant seeks
to register its mark without geographical restrictions, and
the cited registered mark is registered without
geographical restrictions. Geographical restrictions to
applications and registrations will be considered only in
the context of a concurrent use proceeding. See Trademark
Rule 2.133(c), 37 C.F.R. §2.133(c).
Because neither applicant’s identification of services
nor the identification of services in the cited
registration includes any trade channel or purchaser
restrictions, we presume that the 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 Elbaum, 211 USPQ 639 (TTAB 1981). In re
Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994). The evidence
submitted by the Trademark Examining Attorney, outlined
above, establishes that applicant’s services as recited in
the application and the services as recited in the cited
registration are marketed to the same classes of
purchasers, including businesses and homeowners. The
Ser. No. 77208873
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evidence also establishes that the respective services are
marketed in the same trade channels, and often together and
in conjunction with each other. For these reasons, we find
that the third du Pont factor weighs in favor of a finding
of likelihood of confusion.
Under the fourth du Pont factor (conditions of
purchase), we find that the purchasers of the respective
services would include ordinary utility customers such as
homeowners and businesses. These purchasers would exercise
only a normal degree of care in purchasing the services.
The fourth du Pont factor weighs in favor of a finding of
likelihood of confusion, or is neutral at best.
The seventh and eighth du Pont factors pertain to the
issue of actual confusion. Applicant asserts that it is
not aware of any instances of actual confusion despite two
years of contemporaneous use by applicant and the
registrant. However, it is settled that actual confusion
need not be established in order to find that a likelihood
of confusion exists. Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990). Moreover, the absence of evidence of actual
confusion is entitled to little weight in the likelihood of
confusion analysis in an ex parte proceeding. In re
Majestic Distilling Co., Inc., supra, 65 USPQ2d at 1205; In
Ser. No. 77208873
9
re 1st USA Realty Professionals Inc., 84 USPQ2d 1581 (TTAB
2007). Moreover, nothing in the record suggests that there
has been any significant opportunity for actual confusion
to have occurred, such that the asserted absence of actual
confusion would be factually surprising or legally
significant. We find that the du Pont actual confusion
factors are neutral in this case.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first
du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. 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). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
Ser. No. 77208873
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it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
as follows.
First, we find that the dominant feature in the
commercial impressions of both applicant’s mark and the
cited registered mark is the designation PES. These
letters are large and prominently displayed in both marks.
It is the letters PES that would be used by consumers in
referring to and recalling the marks. The generic entity
designation INC. in the cited registered mark contributes
little or nothing to the source-indicating significance of
the mark. We do not disregard the design elements in each
of the marks, but we find that they contribute relatively
less to the source-indicating commercial impressions of the
respective marks. We find that PES dominates each of the
marks, and we therefore accord more weight to this dominant
feature of the marks in our comparison of the marks under
the first du Pont factor.
Comparing the marks in terms of appearance, we find
that they are identical as to the letters PES. Indeed, the
Ser. No. 77208873
11
block italic style in which the letters are displayed in
both marks is highly similar. The design features of the
respective marks look different overall in that the design
element in the cited registered mark could be viewed as a
depiction of an atom. However, the design elements look
similar to the extent that the cited registered mark
depicts elliptical circles and applicant’s mark depicts an
elliptical arc or portion of an elliptical circle. The
marks look different to the extent that the cited
registered mark includes the generic entity designation
INC., but that designation appears in such small and
obscure lettering that it does not significantly affect the
overall appearance of the cited registered mark. On
balance, we find that the points of dissimilarity between
the marks in terms of appearance are greatly outweighed by
the similarity in appearance arising from the large letters
PES, depicted in highly similar fonts, which dominate the
marks.
In terms of sound, we find that the marks are
identical but for the presence of the generic entity
designation INC. in the cited registered mark. The marks
could be pronounced the same way, whether as a single
syllable “PES,” or as a three-syllable acronym “P-E-S”. On
Ser. No. 77208873
12
balance, we find that the marks in their entireties sound
highly similar.
In terms of connotation, we find that the letters PES,
on their face, have no particular meaning. There is no
additional wording in either mark that would inform the
consumer what the letters PES stand for in either mark. To
the extent that the letters themselves would have any
meaning, that meaning is the same in both marks. We
further find that the presence of the generic entity
designation INC. in the cited registered mark does not
suffice to distinguish the marks in terms of connotation.
On balance, we find that the marks are similar in terms of
connotation.
In terms of commercial impression, we find again that
the marks are similar to the extent that they both are
dominated by the letters PES, which creates the same
commercial impression in both marks, on their faces. The
generic entity designation INC. contributes little or
nothing to the commercial impression of the mark, and it
certainly does not suffice to distinguish the marks in
terms of commercial impression. The atom design in the
cited registered mark is somewhat suggestive as applied to
registrant’s energy auditing services, adding an element
which is not present in applicant’s mark, but we find that
Ser. No. 77208873
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point of dissimilarity is slight. On balance, we find that
the marks are similar in terms of commercial impression.
Indeed, applicant’s mark might readily be perceived and
understood by purchasers to be merely an updated version of
the registrant’s mark.
Comparing the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
we find that they are similar. The first du Pont factor
weighs in favor of a finding of likelihood of confusion.
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that a
likelihood of confusion exists. We have considered all of
applicant’s arguments to the contrary (including any
arguments not specifically discussed in this opinion), but
we are not persuaded. To the extent that any doubts might
exist as to the correctness of our conclusion that
confusion is likely, we resolve such doubts against
applicant. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin’s Famous Pastry Shoppe, Inc. supra.

Decision: The refusal to register is affirmed.