Sustainable Manufacturing Innovation Alliance Corp

Trademark Trial and Appeal Board

Mar 27, 2020

87803888 (T.T.A.B. Mar. 27, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sustainable Manufacturing Innovation Alliance Corp.
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Serial No. 87803888

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Duane C. Basch of Basch & Nickerson LLP,
for Sustainable Manufacturing Innovation Alliance Corp.

Grace Duffin, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.1
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Before Zervas, Goodman and Lynch,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Sustainable Manufacturing Innovation Alliance Corp. (“Applicant”) seeks
registration on the Principal Register of the mark

1 A different Examining Attorney handled the prosecution of the involved application prior
to briefing.
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for the following International Class 42 services:
Scientific research and development, unrelated to
renewable energy, carried out by and for member
organizations comprising U.S. industry, academic and
national laboratories, namely, design for re-x (reuse,
recycling, recovery, remanufacturing) in closed-loop supply
chains, systems analysis, remanufacturing, recycling, and
materials optimization, for reducing embodied-energy and
decreasing carbon emissions in U.S. materials
manufacturing, namely, early stage research and
development carried out by member organizations to
reduce the energy consumed during a product’s life cycle,
including energy consumed while in use and in the disposal
or remanufacture of the product, and carbon emissions
associated with industrial-scale materials production and
processing.”2
The mark is described in the application as
consist[ing] of overlapping round corner triangular shapes,
with one triangular shape in green, and the other in light
blue, with an orange oval shaped swish outline; the letters
“RE” in “REMADE” appear in white on top of the light blue
triangular shape, with the letters “MADE” in “REMADE”
appearing in dark blue to the right of the letters “RE”,
where the letters “RE” are smaller in size that the letters
“MADE”. The wording “INSTITUTE” appears in green
beneath the letters “MADE” and to the lower-right of the
overlapping round corner triangular shapes. The mark
appears on a white background, which is not claimed as a
feature of the mark apart from as previously noted.

2 Application Serial No. 87803888, filed on February 20, 2018, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting first use and first use in commerce on
January 4, 2017.
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The colors “green, light blue, orange, white, dark blue is/are claimed as a feature
of the mark.”
The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to
cause confusion with the standard character mark REMADE registered on the
Principal Register for, inter alia, the following International Class 42 services:
Scientific and technological services and research and
design relating thereto, namely, research and development
of tools aiming to provide to the public credible and
transparent data about corporate renewable energy
investments and consumption patterns; quality control for
others in order to issue quality marks, guarantee marks,
trust marks, certificates and value guarantees for use by
third parties in connection with the marketing and sale of
goods or services which comply with the criteria stipulated
for the issuance and use of a quality mark, guarantee
mark, trust mark and/or certificate; quality control for
others, namely, process guidance regarding the issuance
and use of quality marks, guarantee marks, trust marks,
certificates and value guarantees and in this regard
awarding quality marks and trust marks, namely, labeling
to be used on goods and services, including events, and
which make it possible for companies and other legal
entities to show their commitment to renewable energy;
testing, analysis and evaluation of the goods and services
of others to determine conformity with certification
standards; determination of certification criteria and
quality assessment guidelines and drafting expert reports;
quality maintenance and control by awarding quality
marks, guarantee marks, trust marks and certificates used
with goods and services which comply with the stipulated
criteria; advisory, consultancy and information services
regarding renewable energy and regarding improving
renewable energy access, including in developing
countries; quality assurance, namely, validation of
companies and other legal entities that comply with the
criteria that have been established for allowing use of a
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quality mark, guarantee mark, trust mark, certificate
and/or value guarantee used on goods or services.3
After the Examining Attorney issued a Final Office Action, Applicant appealed
and filed a request for reconsideration. The Examining Attorney denied the request
for reconsideration, the appeal was resumed and Applicant and the Examining
Attorney filed briefs. We reverse the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., 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
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [and services] and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976). “[W]e need to consider only the factors that are relevant and of
record.” M2 Software Inc. v. M2 Commc’ns Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006).

3 Registration No. 5197737, registered on May 9, 2015.
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a. The Marks
We compare Applicant’s mark and Registrant’s
REMADE mark “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont, 177
USPQ at 567). When comparing marks, the test is not whether the marks can be
distinguished in 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 services offered under the respective marks is likely to result.
Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103
USPQ2d 1435, 1440 (Fed. Cir. 2012). Further, marks “‘must be considered ... in light
of the fallibility of memory ....’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d
1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs.
Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on
the recollection of the average customer, who retains a general rather than specific
impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ
335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Where both words/letters and a design comprise the mark (as in Applicant’s
mark), then the words/letters are normally accorded greater weight because the
words/letters are likely to make an impression upon purchasers, would be
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remembered by them, and would be used by them to request the services. CBS, Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark
comprising a design and words, the verbal portion of the mark is the one most likely
to indicate the origin of the goods to which it is affixed”); In re Appetito Provisions
Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Kabushiki Kaisha Hattori Tokeiten v.
Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also Giant Food, Inc. v. Nation’s Food
Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). In Applicant’s mark, the
literal portion of the mark is the dominant portion, and is accorded greater weight
over the background design when comparing this mark to Registrant’s mark.
Turning to the wording, Applicant identified the initial wording as REMADE in
its mark, and we find the term to be the single term REMADE, despite the difference
in coloring and lettering style between RE and MADE. This term is the same as the
entirety of Registrant’s mark. Applicant’s mark also contains the term INSTITUTE
underneath the term REMADE and in smaller, lighter lettering than MADE in
REMADE. Applicant has disclaimed the term INSTITUTE pursuant to a
requirement by the Examining Attorney; its disclaimer is effectively a concession that
at least this term is merely descriptive. Alcatraz Media Inc. v. Chesapeake Marine
Tours Inc., 107 USPQ2d 1750, 1762 (TTAB 2013), aff’d 565 F. App’x. 900 (Fed. Cir.
2014); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc. 89 USPQ2d 1844,
1851 (TTAB 2008). Of course, the term identifies the nature of Applicant as an
organization and has limited function as a source indicator.
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In appearance, Registrant’s mark is a standard character mark and hence can be
presented in any font style or size, including in the same lettering and colors used in
Applicant’s mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed.
Cir. 2012), 1909; see also 37 C.F.R. § 2.52(a). The design component, described by
Applicant as “triangular shapes” with “an orange oval shaped swish outline,” does
not distinguish the marks. The designs are not so unusual that consumers will find
them particularly striking. Purchasers would perceive these elements as background
shapes and would not articulate them; they contribute minimally to the commercial
impression of the mark. Although no per se rule on this point exists, see In re
Electrolyte Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990), in most
cases, the words in a mark dominate over designs because they are the portion of the
mark that will be used to call for the goods. See CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 200 (Fed. Cir. 1983) (“[I]n a composite mark comprising a design and
words, the verbal portion of the mark is the one most likely to indicate the origin of
the goods to which it is affixed.”).
Overall, we find that Applicant’s mark and the cited mark look and sound very
similar. See Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(“[I]n articulating reasons for reaching a conclusion on the issue of confusion, there
is nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties”); see also Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014).
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The meanings and commercial impressions of the marks also are fundamentally
similar. The dominant element of Applicant’s mark is the same word that forms the
entirety of Registrant’s mark. “Remade” appears in both marks, and has the same
meaning in the context of Applicant’s and Registrant’s services. This common element
creates the same impression, and the additional term INSTITUTE contributes only
minimally to the meaning or commercial impression by describing the nature of
Applicant. Also, as noted above, the design elements in Applicant’s mark add little
to, and do not change, the overall commercial impressions.
Given their resemblance in sound, appearance, connotation and commercial
impression, we find that Applicant’s mark and the cited mark considered as a whole
are similar.
b. The Services
We next consider the DuPont factor concerning the relatedness of Applicant’s and
Registrant’s respective services. DuPont, 177 USPQ 567. Likelihood of confusion can
be found “if the respective products [or services] are 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 Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). The
Examining Attorney need not prove, and we need not find, similarity as to each and
every service listed in Applicant’s recitation of services.
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The Examining Attorney states that the following evidence establishes that the
services identified in Applicant’s and Registrant’s identifications of services are of the
kind that emanate from a single source:
- IRENA (Office action dated 1/2/2019 pg. 10)
• Website showing the same entity provides papers
and provides information and advice regarding
renewable energy use an[d] access, including in
manufacturing, identifying areas in which
governments can support the deployment of
renewables such as biomass, especially with energy-
intensive industries, performs research in ways to
perform “energy transition”, with the goal to reduce
emissions across various sectors of industry, and
provides data and reports regarding corporate use of
renewable energy and market trends, as well as
tools related to renewable power.
- Rocky Mountain Institute, MIT Energy Initiative, Oak
Ridge National Laboratory, NREL, GHG Management
Institute, ICCT, EIA, and Climate & Air Coalition (Office
action dated 1/2/2019 pg. 10)
• Websites showing the same entity providing
research and development on renewable energy and
reduction in carbon emissions via net-zero emissions
in the field of renewable energy, manufacturing, and
production and/or processing and research and
development in the area of consumption and
investing into sustainable and/or renewable energy.
Additionally, the websites show that the same entity
provides advisory consultancy and information
services regarding renewable energy and regarding
improving renewable energy access. Such evidence
also shows that a number of research organizations
produce reports, provide information, offer
consulting and advisory services, databases, and
other searchable tools regarding renewable energy
broadly and renewable energy investment.
- International Living Fund (Office action dated 1/2/2019
pg. 10)
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• Website showing the same entity performs
scientific research in the fields of renewable energy
and reducing emissions, [and] provides certifications
and verification to businesses with respect to green
practices and zero carbon use. Additionally the
website shows that the same entity provides quality
control, verification and validation, certifications,
and resources related to manufacturing, energy, and
the reduction of emissions with respect to
manufacturing.
- MIT, Stanford, C2ES, Drawdown, and Meca (Denial of
Reconsideration Letter dated 7/23/2019 pg. 5)
• Website showing that organizations provide
research, information, and/or technology related to
both renewable energy and carbon capture
technology and that the organizations … work
together with a wide variety of others to foster
increased research and development.4
The Examining Attorney has not identified particular statements — or even the
specific webpage within each multi-page website — on which she relies for support
for her argument. She has left it to us to review each of the almost 500 pages of
evidence to find support for her arguments. After having done so, we are unsure why
certain webpages were entered into the record inasmuch as they bear no relevance to
the issues before us. For example, a GHG Management Institute webpage states,
“[t]he Institute offers onsite carbon management training for individuals and
organizations looking for a more interactive and customized educational experience.
Workshop attendees also experience greater information sharing and professional
networking opportunities.”5

4 Examining Attorney’s brief, 24 TTABVUE 9-11.
5 January 2, 2019 Office Action, TSDR 160.
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Other evidence fails to persuade us that the services are related. Although some
webpages may generally involve research and development in the energy sector, the
websites do not refer to the type of research and development services set forth in
Applicant’s or Registrant’s recitations of services. For example, the material from
Energystar identifies “a program to address industrial energy efficiency in 2000” and
references “a report that discusses the origin of the ENERGY STAR program, its
expansion into the industrial sector, the strategies used [to] promote industrial
efficiency and results.”6 A Manufacturers of Emission Controls Association (“MECA”)
webpage identifies MECA’s mission as “provid[ing] technical information on emission
control and efficiency technologies, thereby facilitating the establishment of a strong
and effective state, national, and international air quality policy that promotes public
health, environmental quality, and industrial progress” and “seek[ing] to evaluate
and respond to regulatory initiatives and otherwise promote an understanding of the
air quality benefits of its member companies’ technologies.”7 The International
Renewable Energy Agency (IRENA)8 and National Resources Defense Council
(NRDC)9 webpages make no mention of reuse, recycling, recovery and remanufacture
in closed-loop supply chains, systems analysis, remanufacturing, recycling, and
materials optimization. Other websites which identify papers or reprint articles do
not indicate whether the paper or article is a one-time study or part of a continuing

6 July 23, 2019 Denial of Req. for Recon, TSDR 142-43.
7 Id., TSDR 181.
8 January 2, 2019 Office Action, TSDR 2-19.
9 July 23, 2019 Denial of Req. for Recon., TSDR 49-79.
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program.10 The material from MIT’s website discuss carbon capture and
sequestration but not renewable energy.11
Other webpages mention environmental research and development only in the
most general terms, but are not sufficiently detailed to show that the specific services
are related. MIT’s website states, “[o]ur mission is to create low-and no-carbon
solutions that will efficiently meet global energy needs while minimizing
environmental impacts and mitigating climate change.”12 National Renewable
Energy Laboratory’s (“NREL”) website states, “[a]s the only federal laboratory
dedicated to clean energy research and development, NREL is uniquely positioned to
help manufacturers find the most energy-efficient and sustainable solutions for their
products and processes. Our scientific and engineering research in advanced
manufacturing is focused on the identification and development of advanced
materials and advanced processes that drive the impact of new energy technologies.”
Although we have located two websites which may suggest that the types of
services at issue may emanate from the same source under the same mark, see
webpages from Stanford University13 and Oak Ridge Laboratories,14 in the context of
the record as a whole, this minimal evidence does not suffice to establish the
necessary relationship between the services.

10 See, for example, MIT News article entitled “Study: Low-emissions vehicles are less
expensive overall,” January 2, 2019 Office Action, TSDR 55-59.
11 July 23, 2019 Denial of Req. for Recon., TSDR 80-85.
12 January 2, 2019 Office Action, TSDR 51.
13 July 23, 2019 Denial of Req. for Recon., TSDR 86-111.
14 January 2, 2019 Office Action, TSDR 74-117.
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The Examining Attorney also argues Applicant’s and Registrant’s services are in
the same fields of use, namely “renewable energy and emissions reducing research
and advocacy …, and [that] the services are similar or complementary in terms of
purpose or function in that all of the relevant research, development, advisory, and
consulting services seek the reduction and mitigation of climate changing
activities.”15 There are apparent differences between renewable energy resources and
re-x (reuse, recycling, recovery, remanufacturing) design in closed-loop supply chains,
systems analysis, remanufacturing, recycling, and materials optimization which
preclude finding a natural relationship between the specific scientific research and
development services. Merely because both result in lowering carbon emissions or
address climate change does not suffice to show that consumers expect the respective
services to emanate from the same source.
Based on the record evidence, we find that the Examining Attorney has not
established that Applicant’s and Registrant’s services are related.
c. Trade Channels
The Examining Attorney maintains that the trade channels and classes of
purchasers are related, relying on the same evidence used for demonstrating that
Applicant’s and Registrant’s services are related to another.16 Because of the
deficiencies noted above, we find too that the Examining Attorney has not established
that the trade channels and classes of purchasers are related.

15 Examining Attorney’s brief, 24 TTABVUE 11.
16 Id., 24 TTABVUE 12.
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d. Purchasing Conditions/Purchaser Sophistication
Applicant argues that in light of the limitation in its identification of services that
the services are “carried out by and for member organizations comprising U.S.
industry, academic and national laboratories,” the purchasers of its services are
sophisticated.17 The Examining Attorney argues, “that purchasers are sophisticated
or knowledgeable in a particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion,” and that “where the purchasers consist of both professionals and the
public, the standard of care for purchasing the goods is that of the least sophisticated
potential purchaser.”18 Based on the limitation in Applicant’s identification of
services and the nature of the services, we disagree with the Examining Attorney
that purchasers include “the public.” We can presume, however, some level of
sophistication and purchasing care on the part of consumers of the identified services.
e. Conclusion
We have carefully considered all of the evidence and arguments of the Examining
Attorney and Applicant. Because the Examining Attorney has not established that
Applicant’s and Registrant’s services are related, we conclude that the Examining
Attorney has not established that confusion is likely between Applicant’s mark for its
services and Registrant’s mark for its services.
Decision: The refusal to register under Section 2(d) is reversed.

17 Applicant’s brief at 21, 22 TTABVUE 24.
18 Examining Attorney’s brief, 24 TTABVUE 12-13.