Sonsub Inc.

Trademark Trial and Appeal Board

Jul 19, 2006

No. 76048147 (T.T.A.B. Jul. 19, 2006)

Mailed:
July 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sonsub Inc.
________

Serial No.76048147
_______

Jeffrey J. Phillips of Howrey LLP for Sonsub Inc.

Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Hohein and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sonsub Inc. has appealed from the final refusal of
the Trademark Examining Attorney to register INNOVATOR as a
mark for the following services:
Underwater construction services
including pipelines, umbilicals,
cables, structures and mooring using
remotely operated vehicles; underwater
support services for drilling vessels
and production platforms using remotely
operated vehicles, namely repair and
maintenance services (Class 37);

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76048147
2
Underwater search and salvage services
using remotely operated subsea vehicles
(Class 39); and

Subsea remotely operated vehicle
services, namely, underwater oil and
gas exploration services using remotely
operated vehicles; underwater
bathymetric, environmental, structural,
and inspection survey services using
remotely operated vehicles; and
engineering services associated with
underwater services using remotely
operated vehicles (Class 42).1

Registration has been refused pursuant to 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 INNOVATORS OF UNDERGROUND TECHNOLOGY for
“care, maintenance and repair of gas pipeline”2 that, if
used in connection with applicant’s services, it is likely
to cause confusion or mistake or to deceive. The refusal
of registration pertains to all three classes of the
application.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set

1 Application Serial No. 76048147, filed May 12, 2000, based on
Section 1(b) of the Trademark Act (intent-to-use).

2 Registration No. 2775944, issued October 21, 2003.
Ser No. 76048147
3
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,
however, 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).
Turning first to the factor of the similarity of the
services, the Examining Attorney has put in evidence
consisting of website pages which show that companies offer
such services as pipeline maintenance and repair, salvage
of vessels and equipment, underwater survey, and use of
remote operated vehicles (Blackwater Marine); diving
services to perform pipeline maintenance and repair,
pipeline inspection and pipeline salvage (CDI); and
pipeline construction and repair, and inspection (Triton
Diving Services, Inc.). The web pages indicate that
services such as those identified in applicant’s
application and the cited registration can emanate from a
single source, and be advertised together.
Ser No. 76048147
4
The Examining Attorney has also made of record several
use-based third-party registrations which show that
entities have registered a single mark for, inter alia,
construction, maintenance and repair of pipelines; and for
pipeline repair, maintenance and inspection services.
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant has attempted to differentiate its services
from those of the registrant by asserting, because of the
words UNDERGROUND TECHNOLOGY in the registrant’s mark, that
the registrant’s services are limited to pipelines which
are in (i.e., under) the ground, while applicant’s services
involve pipelines that are underwater. However, as the
Examining Attorney points out, the identification in the
registration is not restricted, and therefore we must deem
the registrant’s services to include “care, maintenance and
repair of gas pipelines” wherever they might be located,
even underwater.
Accordingly, we find that the du Pont factor of the
similarity of the services favors a finding of likelihood
of confusion.
Ser No. 76048147
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Despite this, however, we find that confusion is not
likely to occur because of the differences in the marks,
and the sophistication and care of the purchasers. The
only common element in the marks is a form of the word
"innovator." Applicant’s entire mark is INNOVATOR, while
the cited mark contains the word INNOVATORS as part of the
phrase INNOVATORS OF UNDERGROUND TECHNOLOGY. As the
dictionary definitions of “innovate” and the various forms
of this word which are of record show,3 “innovator” is a
highly suggestive term as used in connection with services
such as the registrant’s and the applicant’s. In fact, the
example of “innovation,” which is defined as “(the use of)
a new idea or method,” is “the latest innovations in
computer technology.” Given the highly suggestive nature
of this word, the use of it in applicant’s mark does not
necessarily result in a likelihood of confusion with
INNOVATORS OF UNDERGROUND TECHNOLOGY. That is, consumers
for the relevant services will not necessarily assume that
the services emanate from the same source simply because of
the presence of this word (or more accurately, variations
of this word) in both marks. Marks must, of course, be
compared in their entireties, and doing so we find that

3 Cambridge Advanced Learner’s Dictionary,© 2004,
http://dictionary.cambridge.org.
Ser No. 76048147
6
applicant’s mark and the registered mark convey different
connotations and commercial impressions. The cited mark
appears to be a slogan, and the use of the plural form
INNOVATORS results in the mark suggesting something about
the people or company providing the services, that they are
the innovators. Applicant’s mark, INNOVATOR, on the other
hand, used in connection with the identified services,
suggests that the services themselves are innovative, not
that the source of the services is an innovator.
While this may be a somewhat subtle distinction, it is
a distinction that the relevant consumers of the services
will recognize. Both applicant and the registrant offer
very specialized, highly technical services involving
pipelines. The purchasers of these services are
sophisticated and knowledgeable. Further, in view of the
nature of the services, they will be purchased with great
care and deliberation. The consumers of these services,
therefore, will not ascribe a common source to the services
merely because both marks contain forms of the word
INNOVATOR.
Accordingly, the du Pont factors of the
similarity/dissimilarity of the marks, and the conditions
under which and the buyers to whom sales are made, favor a
finding that confusion is not likely. In this case, we
Ser No. 76048147
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find that these factors outweigh the factor of the
similarity of the services. See Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991).
Decision: The refusal of registration is reversed.