Zero Emissions Leasing LLC dba Zero Emissions

Trademark Trial and Appeal Board

Nov 29, 2013

No. 77427844 (T.T.A.B. Nov. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: November 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zero Emissions Leasing LLC dba Zero Emissions
________

Serial No. 77427844
_______

Zero Emissions Leasing LLC dba Zero Emissions, pro se.

Jason F. Turner, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Grendel, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Zero Emissions Leasing LLC dba Zero
Emissions, filed an application, as amended, to register on
the Principal Register the mark displayed below for
“consultancy concerning financing of energy projects;
equipment financing services; facilitating and arranging
for the financing of energy-related projects; financing
services; project financing” in International Class 36.1

1 Application Serial No. 77427844 was filed on March 20, 2008,
seeking registration on the Principal Register under Section 1(a)
of the Trademark Act, asserting June 19, 2007 as a date of first
Ex Parte Appeal No. 77427844

2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark shown below,

previously registered on the Supplemental Register for
business administration and business management;
office functions; assistance with business
management and office functions of an industrial
company dedicated to everything relating to the
environment, the control of CO2 emissions and the
reduction of greenhouse gas emissions;
computerized file management; compilation of data
in a central computer; marketing studies;
marketing reports and studies; public opinion
polling; business management assistance and
marketing of goods in the context of a
franchising contract; franchising services,
namely, providing technical and business
management assistance in implementing and
developing a consultancy in the field of climate
change; business management, business appraisal,
monitoring insurance compliance and business
planning in the field of reduction of C02 and
greenhouse gases, as stipulated in international
agreements on climate change

use of the mark anywhere and in commerce. No claim is made to
the exclusive right to use “ZERO EMISSIONS” apart from the mark
as shown. Color is not claimed as a feature of the mark. The
mark consists of the words "Zero Emissions" and depiction of [a]
hydrogen atom.

Ex Parte Appeal No. 77427844

3
in International Class 35,2 as to be likely to cause
confusion, mistake or deception. When the refusal was made
final, applicant appealed.
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
forth in 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
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
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, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
We first turn our attention to a comparison of the
marks. In determining the similarity or dissimilarity of
the marks, we must compare the marks in their entireties as

2 Registration No. 3895726 issued on the Supplemental Register on
September 10, 2010, and recites additional goods in International
Class 42. The color(s) orange is/are claimed as a feature of the
mark. The mark consists of the letters "ZEROEMISSIONS" in orange
text.
Ex Parte Appeal No. 77427844

4
to appearance, sound, connotation and commercial
impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). In comparing the marks, we
recognize that “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 Services Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012), quoting Leading
Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901,
1905 (TTAB 2007).
Because the similarity or dissimilarity of the marks
is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981). On
the other hand, different features may be analyzed to
determine whether the marks are similar. Price Candy
Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105
Ex Parte Appeal No. 77427844

5
USPQ 266, 268 (CCPA 1955). In fact, 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 a
consideration of the marks in their entireties. In re
National Data Corp., 224 USPQ at 751.
In this case, applicant’s mark

is similar to the registered mark

in that the wording in applicant’s mark is identical in
sound and meaning to the wording that comprises the mark in
the cited registration. The examining attorney has made of
record the following entry from a user-content-generated
internet encyclopedia for the term “zero emissions:” – “an
engine, motor, or other energy source, that emits no waste
products that pollutes [sic] the environment or disrupts
[sic] the climate.”3 Thus, the wording as it appears in

3 Wikepedia.org/wiki/Zero_emissions. We accept this evidence
because applicant has had an opportunity to rebut it by
submitting other evidence that may have called into question the
accuracy of this particular information. See In re IP Carrier
Consulting Grp., 84 USPQ2d 1028, 1032-33 (TTAB 2007); and TBMP §
710.01(b) and authorities cited therein.
Ex Parte Appeal No. 77427844

6
both marks connotes services that promote non-polluting
energy sources.
Applicant argues (brief, p. 3) that inasmuch as the
registered mark is presented all in capital letters with no
spacing, it “does not invite any emphasis of the literal
elements that are similar in both marks, and does not
invite any pronunciation at all.” However, we are not
convinced by applicant’s mere assertion that because
registrant’s mark appears in capital letters without a
space between its component terms, consumers encountering
such mark will not immediately recognize it as “zero
emissions.” There is nothing particularly novel about the
presentation of the mark such that its component terms
would not be immediately evident to consumers. Indeed we
find no likely meaning or pronunciation of registrant’s
mark other than “zero emissions.” Furthermore, the
presence or absence of a space between virtually the same
words is not a significant difference. Stockpot, Inc. v.
Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983),
aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There
is no question that the marks of the parties [STOCKPOT and
STOCK POT] are confusingly similar. The word marks are
phonetically identical and visually almost identical”); and
In re Best Western Family Steak House, Inc., 222 USPQ 827,
Ex Parte Appeal No. 77427844

7
827 (TTAB 1984) (“There can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical”).
As a result, we find the wording in both applicant’s and
registrant’s mark to be nearly identical in appearance.
We observe that applicant has disclaimed the wording
“zero emissions,” and that the cited mark is registered on
the Supplemental Register. However, applicant’s disclaimer
of the wording in its mark does not serve to avoid
confusion. See Cancer Care, Inc. v. American Family Life
Assurance Company of Columbus, 211 USPQ 1005 (TTAB 1981).
As the wording of the disclaimer indicates (i.e., “no claim
is made to the exclusive use of … apart from the mark as
shown” – emphasis added), the disclaimed matter is accorded
significance as an integral part of the composite mark.
See American Dietaids Company, Inc. et. al. v. Plus
Products, 191 USPQ 146 (DCNY 1976). The disclaimer of
matter in a mark does not have the effect of removing the
matter from the mark. Bordon, Inc. v. W.R. Grace & Co.,
180 USPQ 157 (TTAB 1973). It is well established that a
disclaimer is of no legal significance in determining
likelihood of confusion, rather, the disclaimed matter must
be considered. See Kellogg Co. v. Pack “Em Enterprises
Inc., 14 USPQ 2d 1545 (TTAB 1990); and Glamorene Products
Corporation v. Boyle-Midway, Inc., et. al., 188 USPQ 145
Ex Parte Appeal No. 77427844

8
(DCSDNY 1975). Moreover, the public viewing the mark is
unaware of what, if any, portions of a mark may be
disclaimed in a federal registration. See In re National
Data Corp., supra. Similarly, the public is not aware of
which marks are registered on the Principal or Supplemental
Registers. Furthermore, it is settled that even marks
registered on the Supplemental Register are entitled to
protection under Section 2(d) of the Trademark Act. See In
re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49
(Fed. Cir. 1986); and In re Clorox Co., 578 F.2d 305, 198
USPQ 337 (CCPA 1978).
With regard to the design of a hydrogen atom in
applicant’s mark, we find that regardless of whether
consumers viewing the mark will perceive the meaning of the
design, the wording in applicant’s mark is more prominent
from a visual standpoint and contributes more to the mark’s
overall commercial impression. In the case of marks
consisting of words and a design, the words are normally
given greater weight because they would be used by
consumers to request the products [and/or services]. In re
Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999);
In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB
1987). See also Sweats Fashions Inc. v. Pannill Knitting
Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987);
Ex Parte Appeal No. 77427844

9
Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983).
For these reasons, we find that, when viewed in their
entireties, the marks

and

are far more similar than they are different and, overall,
convey highly similar commercial impressions. That is to
say, the marks appear to be variations of each other that
nonetheless point to a common source. As such, this du
Pont factor favors a finding of likelihood of confusion.
The Services
We turn now to our consideration of the identified
services, noting that it is not necessary that the services
at issue be similar or competitive, or even that they move
in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective services are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the services are such that they would or could be
encountered by the same persons under circumstances that
Ex Parte Appeal No. 77427844

10
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. See In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, applicant’s services are “consultancy
concerning financing of energy projects; equipment
financing services; facilitating and arranging for the
financing of energy-related projects; financing services;
project financing” and registrant’s services are various
business administration, management, marketing and advisory
services, including “the control of CO2 emissions and the
reduction of greenhouse gas emissions.” While some of
applicant’s services are unrestricted as to any particular
field, those that are restricted relate to energy projects.
Similarly, while many of the services identified in the
cited registration are unrestricted, some specifically
relate to carbon dioxide and greenhouse gas emissions.
These services appear to be related as identified to the
extent that carbon dioxide emissions and greenhouse gasses
are a byproduct of energy production and use. Thus, we
find that applicant’s services in the field of energy
projects are at least tangentially related to registrant’s
services in the field of CO2 and greenhouse gas emissions
inasmuch as both concern aspects of energy production on
Ex Parte Appeal No. 77427844

11
one hand, and pollution and climate change resulting
therefrom on the other.
Furthermore, in support of the refusal to register,
the examining attorney has made of record numerous use-
based third-party registrations, of which the following
show that various entities have adopted a single mark for
services identified in the involved application and cited
registration:
Registration No. 4054017 for, inter alia,
business administration and management; business
management consulting; financial services,
namely, financial consultation, financial
analysis, financial planning, financial
management;

Registration No. 3596457 for, inter alia,
business management and consultation; financing
services;

Registration No. 3708713 for, inter alia,
business management and consultation; financing
services;

Registration No. 4050081 for, inter alia,
business administration and management; financing
services; and

Registration No. 3407151 for, inter alia,
business management; financing 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, 1786 (TTAB
Ex Parte Appeal No. 77427844

12
1993). The evidence of record establishes that applicant’s
services are related to the services identified in the
cited registration, and further may be identified under the
same mark. As such, this du Pont factor favors a finding
of likelihood of confusion.
Channels of Trade
In making our determination regarding the relatedness
of the parties’ channels of trade, we look as we must to
the services as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
It is presumed that applicant’s various financial services
as well as registrant’s business consultation, management,
information and advisory services at issue move in all
channels of trade normal for such services, and that they
are purchased by all of the usual consumers for such
services. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958). Here, the examining attorney’s third-party
registration evidence clearly suggests that the services
are related. Furthermore, and as discussed above, many of
the services identified in the involved application and
Ex Parte Appeal No. 77427844

13
cited registration do not recite any restrictions as to the
channels of trade in which they may be encountered. As
such, this du Pont factor is, at worst, neutral or slightly
favors a finding of likelihood of confusion.
Sophistication of Purchasers
Neither the application nor the cited registration
includes any limitation on the customers to whom the
respective services are rendered so we must consider the
relevant purchasers to include all of the usual customers
for the recited services. See In re Elbaum, 211 USPQ at
640.
While both business management, information and
advisory services and financial services in general and
relating to CO2 and greenhouse gas emissions and energy
projects in particular, suggest that the relevant customers
for the services at issue include businesses exercising a
degree of care, we note that even small businesses
(including sole proprietorships) and entrepreneurships seek
business management and financing services. While some of
these customers are undoubtedly sophisticated in such
matters, the potential purchasers for these services also
include those of more modest means and no more than an
ordinary level of sophistication.
Ex Parte Appeal No. 77427844

14
Even if we accept, in considering the fourth du Pont
factor, applicant’s assertion that the involved services
may be the subject of sophisticated purchases, even careful
purchasers are likely to be confused by highly similar
marks used in connection with related services. As stated
by our primary reviewing court, “[t]hat the relevant class
of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between
similar trademarks for similar goods [or services]. ‘Human
memories even of discriminating purchasers ... are not
infallible.’” In re Research and Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986), quoting Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970).
Therefore, the fact that the purchasers may exercise
care before purchasing these services does not mean there
can be no likelihood of confusion. In the present case,
the high degree of similarity between the marks and the
similarity between the services as identified outweigh any
sophisticated purchasing decision. See HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of
goods and marks outweigh sophisticated purchasers, careful
Ex Parte Appeal No. 77427844

15
purchasing decision, and expensive goods). As such, this
du Pont factor is, at best, neutral or slightly favors a
finding of no likelihood of confusion.
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s services sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s services rendered under its mark,
that the services originate with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See 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., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal under Section 2(d) of the Act
is affirmed.