RNG Group Inc.

Trademark Trial and Appeal Board

Nov 27, 2017

No. 87023604 (T.T.A.B. Nov. 27, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: November 27, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re RNG Group Inc.
_____

Serial No. 87023604
_____

Charles C. H. Wu of Charles C. H. Wu & Associates APC,
for RNG Group Inc.
Heather A. Sales, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____

Before Zervas, Bergsman and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
RNG Group Inc. (“Applicant”) seeks registration on the Principal Register of the
mark THE ELEMENT SERIES (in standard characters, SERIES disclaimed) for
“Solar-powered generators for residential use, commercial use, and recreational use,”
in International Class 7.1

1 Application Serial No. 87023604 was filed on May 3, 2016, based upon Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
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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), on the ground that
Applicant’s mark so resembles the previously registered mark,

for “Electrical contractor services; Electrical repairs, maintenance, and installation
of electrical wiring, outlets, light fixtures, and electrical panels; Installation,
maintenance and repair of electrical systems and solar power units,” in International
Class 37 as to be likely to cause confusion, mistake, or deception.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
The Examining Attorney has objected to Exhibits A and B attached to Applicant’s
brief (consisting of web pages of Registrant’s website and as rebuttal, additional web
pages from the website evidence provided by the Examining Attorney), and to

2 Registration No. 3820825, issued July 20, 2010; Section 8 accepted. “ELECTRIC INC” has
been disclaimed. The description of the mark states: “The mark consists of a stylized
rectangle with rounded edges, and the text ‘Element Electric Inc’ written in it.” The stippling
is for shading purposes only and color is not claimed as a feature of the mark.

Serial No. 87023604
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Applicant’s references in its brief to two third-party registrations not made of record.3
Applicant argues that the Examining Attorney discussed the evidence in her brief
and that the evidence should be considered. However, the second reference in the
Examining Attorney’s brief to the evidence was coupled with the repeated objection
that the evidence was untimely and pointed out that Exhibit A was an attempt to
impermissibly limit the scope of the Registrant’s registration.
The record in the application should be complete prior to the filing of an appeal.
Trademark Rule 2.142(d), 37 CFR § 2.142(d). The brief reference by the Examining
Attorney to the Applicant’s argument does not warrant consideration of the evidence,
and therefore, we sustain the Examining Attorney’s objection. The exhibits attached
to the brief that were not made of record during examination are untimely and will
not be considered. See e.g., In re MC MC S.r.l., 88 USPQ2d 1378, 1379 n.3 (TTAB
2008) (previously unsubmitted materials attached to applicant’s brief not considered).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d

3 When Applicant filed the appeal it also identified on the ESTTA coversheet a request for
reconsideration. The Board remanded the application to allow Applicant time to file the
request, but when nothing was filed, the appeal resumed. Applicant would have had the
opportunity to rebut the Examining Attorney’s evidence during reconsideration. In re
Companiade Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012) (exhibits
attached to applicant’s supplemental brief not considered; Board noted that evidence could
have been submitted during the period of further examination after remand).
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1201, 1203 (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 services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont
factors now before us, are discussed below.
A. The number and nature of similar marks in use on similar goods and
services.
This du Pont factor requires us to consider evidence pertaining to the number and
nature of similar marks registered and in use on similar goods or services. “The
purpose of … introducing third-party uses is to show that customers have become so
conditioned by a plethora of such similar marks that customers ‘have been educated
to distinguish between different such marks on the bases of minute distinctions.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
Applicant contends that the scope of protection of the term ELEMENT in
Registrant’s mark should be narrow.4 Applicant provided a number of different

4 While Applicant does not specifically argue that the cited mark is entitled to a narrower
scope of protection because it is conceptually weak, the third-party registrations upon which
Applicant relies may indicate that ELEMENT is a suggestive term in the energy industry.
See e.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016)
(“third-party registrations are relevant evidence of the inherent or conceptual strength of a
mark … and may show that a particular term has descriptive [or suggestive] significance as
applied to certain goods or services.”). Nevertheless, “[i]t has often been emphasized that even
weak marks are entitled to protection against confusion.” Hunt Control Systems Inc. v.
Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1567-68 (TTAB 2011) (quoting King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)).
Serial No. 87023604
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TESS5 search results for the term ELEMENT listing both active and
cancelled/abandoned registrations and applications to support its assertion that
ELEMENT is commercially weak, i.e, in widespread use in the energy and electric-
related services industries and that “the average purchaser is exposed to the term
‘ELEMENT’ on a regular basis in connection with goods and services relating to the
energy industry,” and able to distinguish marks which include this term, (7
TTABVUE 10).6 The TESS search results include Class 7 and Class 37 applications
and registrations.7
However, TESS search results are of little probative value because we cannot
determine from listings like this the nature of the goods or services for which these
marks or purported marks have been applied-for or registered. In addition, many of
the marks contain additional distinguishing matter. Also of little probative value are
a list from the California Secretary of State of both active and suspended business
entities that contain ELEMENT as part of the business name, a few printouts of
contractor licensees from the California State Licensing Board database that show
ELEMENT as part of a business name, and third-party registrations or third-party
applied-for marks, which do not contain the term ELEMENT, but show the owner as
an entity with ELEMENT in its business name.8 We do not know the nature of the

5 A trademark electronic database of the USPTO.
6 References to the briefs refer to the Board’s TTABVUE docket system.
7 October 21, 2016 Resp. to Office Action pp. 140-151.
8 Id. at pp. 96-140. Most of these registrations have been abandoned or cancelled. In the
December 3, 2016 Office Action, the Examining Attorney stated that she reviewed the
registrations and “determined only 12 live registrations in class 007 and 27 live registrations
Serial No. 87023604
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services these entities provide, but in any event, these listings do not constitute
technical service mark use. Applicant also provided third-party registrations, some
cancelled, or abandoned third-party applied-for marks which contain the term
ELEMENT.9 Many are for goods and services unlike the application and registration
at issue in this case, or are for marks containing the term ELEMENT with
distinguishing matter such as additional wording or a design, or both. While there
are some active third-party registrations which are for solar power goods or services,
or those that could be broadly construed to include solar power goods or services, e.g.,
renewable energy, most are not for the same services as Registrant but are for project
management or consultation, which may include installation or construction in
connection with renewable energy.10 Given the smaller number of active use-based
registrations and the lesser degree of relevancy to the marks and services at issue,
we find the evidence not particularly probative to show that there are a number of
similar marks in use on similar goods and services, and therefore we find this du Pont
factor neutral.

in class 037 all of which deal with goods and services not related to solar generators/units.”
p.1.
9 Id. at pp. 97, 101, 107-109, 111, 118, 122-124, 129, 137, 138, 152-215.
10 Id. at pp. 111, 118, 138, 154-156, 174, 188, 215. Applicant has provided registrations that
show five entities own multiple ELEMENT marks (either the same or related marks) in
different classes.
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B. The similarities or dissimilarities between the marks in their entireties,
in terms of appearance, sound, connotation, and commercial impression.
We analyze “the marks in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imports, 73 USPQ2d at 1691 (quoting du
Pont, 177 USPQ at 567). 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 likelihood of confusion.”). “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.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The
focus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Johann Maria Farina Gegenuber
Dem Julichs-Platz v. Chesebrough-Pond, Inc., 470 F.2d 1385, 176 USPQ 199, 200
(CCPA 1972); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB
2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Given
the nature of the goods and services, which would not be purchased on impulse, we
assume that the average purchaser of Applicant’s goods and Registrant’s services
would be an ordinary consumer, but one who would exercise an enhanced degree of
care in purchasing solar power generators and selecting an installation, repair or
Serial No. 87023604
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maintenance service.11 However, even careful purchasers can be confused as to source
when similar marks are used in connection with closely related 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.”)).
In comparing the marks, we consider them in their entireties, including any
disclaimed matter and designs. It is nevertheless appropriate, for rational reasons,
to regard certain features of the marks as being more dominant or otherwise
significant, and therefore to give those features greater weight. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In
the case of marks which consist of words and a design, the words are normally
accorded greater weight because they would be used by purchasers to request the
goods. See In re Viterra Inc., 671 F3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(“In the case of a composite mark containing both words and a design, ‘the verbal
portion of the mark is the one most likely to indicate the origin of the goods to which
it is affixed.’”) (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 2001)
(“words are normally accorded greater weight because they would be used by

11 Neither Applicant, nor the Examining Attorney submitted any evidence regarding the
degree of consumer care.
Serial No. 87023604
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purchasers to request the goods”)). Also, disclaimed or otherwise descriptive matter
is generally viewed as a less dominant or significant feature of a mark. See In re Nat’l
Data Corp., 224 USPQ at 751-52.
Applicant argues that the sound and appearance of the marks differ, and the
Examining Attorney improperly dissected the mark in her analysis by placing
unnecessary weight on the term ELEMENT. Applicant also argues that the addition
of the design in Registrant’s mark acts as an “identifying source,” noting particularly
that Registrant’s specimen uses the colors red and orange.12 Applicant submits that
as a result, Registrant’s mark has a different commercial impression than Applicant’s
mark.
We acknowledge that there are differences in sound and appearance between the
marks due to the additional terms THE and SERIES in Applicant’s mark and
ELECTRIC INC in Registrant’s mark as well as the additional design element in
Registrant’s mark. While Applicant argues that the design in Registrant’s mark is
significant, we find the design portion of Registrant’s mark is subordinate to the
literal portion of Registrant’s mark. The stippling in the design is to show shading,
and there is no color claim in the drawing of the mark, allowing for use of the mark
in any color. The rectangle with rounded corners in Registrant’s mark that forms the
design appears visually as little more than a border wrapping the literal portion. The
design does not significantly add to the overall commercial impression of Registrant’s
mark. See In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998). (“In

12 Applicant recognizes that Registrant has made no claim to color in the mark.
Serial No. 87023604
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particular, common geometric shapes such as circles, squares, rectangles, triangles
and ovals, when used as backgrounds for the display of word marks, are not regarded
as trademarks for the goods to which they are applied absent evidence of
distinctiveness of the background design alone.”).
As to the literal portions of each mark, in Applicant’s standard character mark,
THE ELEMENT SERIES, the word ELEMENT is dominant because the non-
distinctive terms, the definite article THE, and the disclaimed term SERIES, which
is at a minimum, descriptive, add no source-indicating significance to the mark as a
whole. See, e.g., In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-
34 (Fed. Cir. 1997) (affirming Board’s finding that “DELTA,” not the disclaimed
generic term “CAFÉ,” is the dominant portion of the mark THE DELTA CAFÉ); In re
Nat’l Data Corp., 224 USPQ at 752; In re Thor Tech, Inc., 90 USPQ2d 1634, 1635
(TTAB 2009) (“the” has no source-identifying significance). In Registrant’s mark
the word ELEMENT is dominant. The wording ELECTRIC INC is in a
smaller and different font, with ELECTRIC being descriptive or generic for
Registrant’s services, while INC is an entity designation. Both terms have little to no
role in the source-identifying function of Registrant’s mark. Further, purchasers in
general are inclined to focus on the first word or portion in a trademark, especially
where the first word is followed by non-source-indicating wording (as is the case with
ELECTRIC INC). See Palm Bay Imports, 73 USPQ2d at 1692 (“To be sure,
CLICQUOT is an important term in the mark, but VEUVE nevertheless remains a
‘prominent feature’ as the first word in the mark and the first word to appear on the
Serial No. 87023604
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label”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“the first part of a mark … is most likely to be impressed upon the mind of a
purchaser and remembered”).
We believe that prospective consumers encountering the marks will focus
primarily on the dominant and identical word ELEMENT in each mark, which gives
the marks a similar appearance and sound. The marks are also similar in
connotation. The Examining Attorney and Applicant attribute similar meanings to
the term ELEMENT. The Examining Attorney provided the dictionary definition of
ELEMENT as “a part or aspect of something abstract, especially one that is essential
or characteristic”13 while Applicant has provided the definition as “a fundamental,
essential, or irreducible constituent of a composite entity.”14
Applicant argues that the term SERIES, even though disclaimed, is not
descriptive of its product and must be considered in determining the commercial
impression created by its mark. The record shows that SERIES is defined as “a
number of things ... of a similar kind or related nature coming one after another,”15

13 , August 25, 2016 Office Action pp. 1, 6; December 3, 2016 Office Action pp. 1-2. Oxford
Dictionaries, www.oxforddictionaries.com. Page references to the application record refer to
the PDF version of the Trademark Status and Document Retrieval System (TSDR).
14 October 21, 2016 Resp. to Office Action p. 1. American Heritage Dictionary of the English
Language (5th ed. 2016), ahdictionary.com. Applicant also provided the definition of “element”
in connection with electricity, as “the resistance wire in an electrical appliance such as a
heater or oven.” Id. Applicant further stated that the term “element” is “synonymous with
the term ‘unit’ used to refer to a part of something, and more specifically used as a reference
to the resistance wire in an electrical appliance. … It is also defined as a constituent of a
device.” Id. at 219.

15 December 3, 2016 Office Action p. 10. Oxford Dictionaries, www.oxforddictionaries.com.

Serial No. 87023604
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and that Applicant’s website describes the goods for THE ELEMENT SERIES as “a
line of solar generators”:16
We find that in the context of these goods, purchasers would look to the term
ELEMENT as the indication of source and would view SERIES simply as descriptive
of the line of solar powered generators. Applicant argues similarly that purchasers
would look to the terms ELEMENT ELECTRIC in Registrant’s mark as a source
indicator rather than the term ELEMENT. However, ELECTRIC is descriptive or
generic of electrical contracting, installation, maintenance and repair services. We
find that purchasers would view ELECTRIC as a descriptor of Registrant’s services.
Although we recognize that the marks do have different additional wording, the
words THE and SERIES in Applicant’s mark, and the words ELECTRIC INC in
Registrant’s mark, as well as the design in the registered mark, the identical nature
of the dominant term ELEMENT in both marks is likely to result in the marks being
more similar than they are different in meaning and commercial impression. As
explained above, the non-distinctive elements in each of the marks are of lesser
significance in distinguishing the two marks. Rather, consumers familiar with either

16 Id. at 1, 9.
Serial No. 87023604
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mark are likely to retain the term ELEMENT in their minds and, upon encountering
the other mark with the same dominant term, will be influenced by this similarity.
When we consider the marks as a whole, they are highly similar in overall commercial
impression since the dominant literal and source-identifying portion of each mark is
the term ELEMENT. Accordingly, this du Pont factor weighs in favor of finding a
likelihood of confusion.
C. Relatedness of the Goods and Services and Channels of Trade
We next turn to the du Pont factors regarding the similarity or dissimilarity of the
respective goods and services and channels of trade. The issue of likelihood of
confusion must be determined on the basis of the goods and services as set forth in
the application and the cited registration. Octocom Sys. Inc. v. Houston Comp. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In comparing the goods
and services, it is not necessary that they be identical or even competitive in nature
in order to support a finding of likelihood of confusion. The goods need only be “related
in some manner and/or if the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source.” Coach Services, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)).
Applicant argues that Registrant is an electrical contractor that does not
manufacture any equipment, solar-related or otherwise, while Applicant is strictly a
manufacturer of solar generators that does not provide installation, maintenance or
repair services, and that consumers are familiar with the differences between
Serial No. 87023604
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manufacturers (product providers) and electrical contractors (service providers). 7
TTABVUE 12, 10 TTABVUE 9. Applicant submits that Applicant’s goods and
Registrant’s services are classified under different International Classes and further,
that Registrant’s services relate to installation, maintenance and repair of solar
photovoltaic paneling systems, not solar generators. 7 TTABVUE 12.
“[I]t is well established that a “relatedness” which speaks to a likelihood of
confusion may occur not only where goods are involved but can exist between products
on one hand and services dealing with or related to those products on the other hand.”
MSI Data Corp. v. Microprocessor Systems, Inc., 220 USPQ 655, 658 (TTAB 1983)
(citations omitted). See e.g., Teledyne Technologies Inc. v. Western Skyways Inc., 78
USPQ2d 1203, 1209 (TTAB 2006) (“[I]t is clear that ‘aircraft log books’ and ‘repair
and maintenance services, namely, aircraft engine overhaul and reconditioning
services’ covered by respondent’s prior registrations are related.”); In re Solar Energy
Corporation, 217 USPQ 743, 745 (TTAB 1983) (solar energy system consulting and
engineering services for designing solar energy hot water systems related to manuals
and questionnaires for designing solar energy hot water systems); International
Harvester Co. v. BP Corp., 181 USPQ 595, 597 (TTAB 1974) (gasoline, diesel fuel and
automotive service stations are closely related to construction vehicles, trucks and
parts therefor). The mere fact that Applicant’s goods are classified in one class while
Registrant’s services are in a different class does not mean that confusion is not likely
to result. See National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212,
1216 n. 5 (TTAB 1990) (the classification system is for the convenience of the USPTO,
Serial No. 87023604
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and does not serve as evidence for or against the relatedness of goods or services).
Applicant’s attempt to limit the scope of Registrant’s services in connection with solar
units is of no avail. An applicant may not restrict the scope of services in an otherwise
unrestricted registration by argument or extrinsic evidence. See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). Rather, as indicated earlier, we
determine likelihood of confusion based on the goods and services as identified in the
involved application and registration.
Applicant’s goods are “solar generators for residential use, commercial use, and
recreational use.” The Examining Attorney has focused on Registrant’s services for
“installation, maintenance and repair of electrical systems and solar power units” as
the services likely to cause confusion. We must construe Registrant’s services as
including any and all services which could reasonably be encompassed by the services
recited. The Examining Attorney has provided a definition of “unit” which is defined
in relevant part as “a device that has a specified function, especially one forming part
of a complex mechanism” and asserts that a solar power unit can be utilized
synonymously with solar generators such as Applicant’s.17 We note that when
considering the definition of unit in connection with “solar units,” the wording is
broad enough to encompass a solar generator, which is a device with a specified
function of generating power.
As evidence of relatedness, the Examining Attorney has provided third-party
registrations that show the offering of solar generators and installation, or

17 Id. at p. 6, www.oxforddictionaries.com.
Serial No. 87023604
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maintenance or repair services for generators (or renewable energy generation
equipment) emanating under the same mark, six of which we find relevant:18

Reg. No. 4341358 for, in relevant part, “solar-powered
generators” (Class 7) and “repair and maintenance of power generators”
(Class 37).19

SITE BASED ENERGY and SBE SITE BASED ENERGY Reg. Nos.
3956234 and 3996800, respectively, for, in relevant part, “solar powered
generators” (Class 7) and “installation, maintenance and repair of
renewable energy generation equipment” (Class 37).20

DEWEY and Reg. Nos. 5067292 and 5067293, respectively,
for, in relevant part, solar powered power electricity generators (Class
7) and repair services for electrical power generators (Class 37).

Reg. No. 4114096 for solar-powered
electricity generators (Class 7) and, in relevant part, “installation of
alternative energy products” (Class 37).21

This evidence shows that the relevant goods and services are of a kind that may
emanate from a single source under a single mark. In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-1786 (TTAB 1993).

18 The Examining Attorney provided eight third-party registrations, but two of those are not
probative.
19 December 3, 2016 Office Action, pp. 44-45.
20 Id. at pp. 38, 53.
21 Id. at pp. 41-42.
Serial No. 87023604
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Applicant argues that “it is unlikely for a service mark owner who is strictly a
service-based electrical contractor who installs, among other things, solar equipment,
to expand its business to include manufacturing of such equipment” as that involves
“an entirely different company specialization and expertise, in addition to significant
amounts of additional capital, labor and resources.” 7 TTABVUE 15. Applicant also
points to the Examining Attorney’s Internet evidence as showing that only one of the
service providers is primarily an electrical contractor who only offers generators
manufactured by another company. 7 TTABVUE 14. Applicant submits that just
because Registrant installs solar equipment, it does not follow that the consuming
public will consider such products to be manufactured by Registrant. 7 TTABVUE
16.
However, “[t]here is no requirement for goods [or services] to be found related that
all or even a majority of the sources of one product [or service] must also be sources
of the other product [or service]. In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366,
1370 (TTAB 2009). Even if the goods and services are not related to each other in
kind, the same goods and services could still be related in the mind of the consuming
public as to origin. Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56
USPQ2d 1351, 1355 (Fed. Cir. 2000). “It is this sense of relatedness that matters in
the likelihood of confusion analysis.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894 (Fed. Cir. 2000).
In this case, residential and commercial customers interested in Applicant’s solar
generators will need installation, maintenance and repair services in connection with
Serial No. 87023604
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these systems.22 The Examining Attorney has submitted website evidence that
purveyors of solar generators or generators generally may also provide installation
or maintenance services.23
Alternative Energy Inc. (altern-energy.com) offers solar generators
and the webpage menu also shows “installation services.”24

Pure Energy Solar (pureenergysolar.com) offers “complete solar
power solutions … with battery or generator backup” and certified
installers.25

NRG (nrg.com) offers a variety of high quality home generators and
routine maintenance plans.26

Oak Electric (oakelectric.com) offers generator sales, installation,
service and maintenance contracts.27

Southern View Energy (southernviewenergy.com) provides solar
electric system design and installation, and the webpage shows a tab for
“backups and generators.”28

SolarCity (solarcity.com) is an “all-in-one” energy provider that
provides solar systems that it designs, installs and maintains.29

22 Although Applicant argues that “the average consumer/purchaser can purchase and setup
a solar powered generator,” 10 TTABVUE 4, it is not the case that all consumers would do
so.
23 The Examining Attorney states that the website evidence shows that companies that
provide installation of solar power units, including generators, include them in the purchase
price with installation. December 3, 2016 Office Action p. 1. We note that some of the website
evidence shows the offering of solar power equipment in general without specific reference to
solar generators.
24 December 3, 2016 Office Action, p. 21.
25 Id. at p. 26.
26 Id. at p. 19.
27 Id. at p. 30.
28 Id. at p. 28.
29 Id. at p. 17.
Serial No. 87023604
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Maine Generator & Solar Power Inc., (mainegenerator.com) offers,
among other things, solar products and solar systems sales and
service.30

Applicant argues that the Examining Attorney’s third-party registration evidence
and Internet evidence of relatedness and channels of trade is unpersuasive and
insufficient as there is only one example of an electrical contractor offering solar
equipment installation while the remaining websites show “energy or power
equipment companies, designers and manufacturers of solar powered goods … who
as an added benefit to their customers offer installation of their products.”
7 TTABVUE 14; 10 TTABVUE 9.
However, we find this evidence shows that consumers have been exposed to the
concept that a single entity can provide solar power equipment such as generators
and offer installation or maintenance services, also establishing that the relevant
goods and services are sold or provided through the same trade channels and sold to
the same classes of consumers. It is feasible that a homeowner or business may have
Registrant installing or maintaining Applicant’s goods.
In view of the foregoing, we find that the goods and services are related, and the
potential overlap in trade channels and purchasers are factors that weigh in favor of
finding a likelihood of confusion.
III. Conclusion
We have considered all of the arguments and evidence of record as they pertain to
the du Pont likelihood of confusion factors, even if not discussed herein. To the extent

30 Id. at p. 27.
Serial No. 87023604
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that any other du Pont factors for which no evidence was presented by Applicant or
the Examining Attorney may nonetheless be applicable, we treat them as neutral.
In light of the foregoing, we find that confusion is likely because the marks are
similar, the goods and services are related, the trade channels and purchasers
overlap, and Applicant has not established that there is widespread third-party uses
or registrations of marks similar to the cited mark.
Decision: The refusal to register Applicant’s mark THE ELEMENT SERIES is
affirmed.