IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`TTAB
`
`Applicant
`
`Serial No.
`
`Filed
`
`Trademark
`
`Class No.
`
`Office
`
`Total Energy Corp.
`
`75/352,844
`
`September 8, 1997
`
`TOTAL ENERGY and Design
`
`39
`
`108
`
`Examining Attorney
`
`Angela Micheli
`
`Commissioner of Trademarks
`
`P.O. Box 1451
`
`Alexandra, VA 22313-1451
`
`January 19, 2007
`
`APPLICANT’S APPEAL BRIEF
`
`Ned W. Branthover, Esq.
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`
`New York, New York 10017
`Tel: 212-949-9022
`Fax: 212 949-9190
`
`Email: nwbranth0ver@lawabel.com
`/___ A
`
`01 -23-2007
`U .3. Patent &TMOfcITM Mail Rcpt DY. #84
`
`

`
`I.
`
`INTRODUCTION
`
`The Examining Attorney has issued a FINAL refusal to register Applicant’s mark TOTAL
`
`ENERGY and Design for purchase, sale and distribution of energy, namely, natural gas liquids,
`
`natural gas, heating oil, coal, propane and electricity to commercial, residential and governmental
`
`end-users and distributors to end-user for International Class 39(“Applicant’s Mark”) in view of the
`
`prior registrations for the trademark TOTAL owned by Total SA listed as follows and hereinafter
`
`referred to as the “TOTAL Registrations”:
`
`Mark
`
`Reg. No.
`
`Reg. Date
`
`Goods and Services
`
`TOTAL
`
`0,954,788
`
`March 13, 1973
`
`Anti-rust agents, lighter fluid,
`and anti-freeze.
`
`TOTAL and Design
`
`0,960,247
`
`June 5, 1973
`
`Fuels and lubricants, mainly
`Derived from petroleum-namely,
`gasoline, diesel fuel, home
`
`oil, kerosene, motor oil,
`
`oil, and greases.
`
`heating
`
`lubricating
`
`TOTAL
`services
`
`1,932,403
`
`November 7, 1995
`
`Convenience grocery store
`
`TOTAL
`
`0,952,416
`
`January 30, 1973
`
`and vending machine services.
`
`Automobile service station
`services.
`
`TOTAL
`
`0,643,482
`
`April 2, 1957
`
`[Liquefied petroleum gases]
`Solvents of the petroleum
`distillate
`
`types, gasoline, jet fuel of the
`petroleum distillate type,
`kerosene
`
`and illuminating oils, diesel oils,
`lubricating oils, lubricating
`greases, [mineral waxes,] and
`
`fuel
`
`oils, road oils.
`
`TOTAL
`
`2,131,701
`
`January 27, 1998
`
`Oil and gas well drilling; land
`
`2
`
`

`
`Vehicle service station services;
`and car washing; transportation of
`petroleum and petroleum-derived
`products through pipelines; oil
`and gas production; oil and gas
`exploration; retail motor fuel
`supply services; restaurant,
`cafeteria, and fast food restaurant
`services; retail store services in
`the field of petroleum, petroleum-
`derived products, and related
`merchandise.
`
`It is the Examining Attorney’s position that Applicant’s Mark is substantially similar to the
`
`Total Registrations in light of the similarity of the marks and the relatedness of the respective
`
`services, so registration of Applicant’s Mark will result in purchaser confusion in contravention of
`
`Section 2(d) of the Trademark Act.
`
`Applicant respectfully disagrees because Applicant’s Mark TOTAL ENERGY is different
`
`visually, phonetically and connotatively than TOTAL and creates a different commercial impression
`
`particularly in view of the fact that Total SA withdrew its opposition to Applicant’s co-pending
`
`trademark Application Serial No. 75/185049 for the same mark TOTAL ENERGY for services in the
`
`energy field including the brokerage of energy in International Class 36.
`
`An analysis of these factors, support registration of Applicant’s Mark. It is respectfully
`
`requested that the Trademark Trial and Appeal Board reverse the FINAL refusal and allow
`
`Applicant’s Mark for publication.
`
`The Examining Attorney also issued final refusals for the Applicant’s mark based on the
`
`descriptions of the services as well as the drawing. Applicant hereby agrees to the description of
`
`services proposed by the Examiner and authorizes the Trademark Office to bill the Deposit Account
`
`No. 010035 for the additional classes and hereby submits with this brief a revised drawing that
`
`complies with the Examining Attomey’s request. The new drawing page is attached hereto as Exhibit
`
`A.
`
`

`
`II.
`
`PROCEDURAL HISTORY
`
`Applicant is seeking to register TOTAL ENERGY and Design for purchase, sale and
`
`distribution of energy, namely, natural gas liquids, natural gas, heating oil, coal, propane and
`
`electricity to commercial, residential and governmental end-users and distributors to end-user for
`
`international class 39.
`
`In the first official letter, issued on June 12, 1998, the Examining Attorney refused the mark
`
`under Section 2(d). The Examining Attorney based the refusal on some of the prior TOTAL
`
`Registrations.
`
`In Applicant’s response filed December 11, 1998, Applicant argued against the Examining
`
`Attorney’s refusal to register focusing on the differences in the marks. The Examiner was not
`
`persuaded, and on September 19, 1999 the Examiner issued a FINAL refusal. However, in doing so,
`
`the Examiner conveniently ignored two equally well—settled exceptions to the rule. The first
`
`exception occurs when the marks in their entireties convey substantially different commercial
`
`impressions. In such case the inclusion of the additional matter will be considered significant and
`
`distinguishing.
`
`The second exception occurs when the only common element of the respective marks is
`
`descriptive and/or highly suggestive and/or diluted. This is because such a word standing alone is not
`
`likely to be perceived by purchasers as distinguishing source.
`
`On December 10, 2002 the application was suspended pending negotiations with the owner of
`
`the TOTAL Registrations for a letter of consent.
`
`On July 19, 2004 the Examiner withdrew the suspension and continued her final refusal
`
`pursuant to Section 2(d) and cited Registration Number 2131701 for the mark TOTAL as an
`
`additional basis under Section 2(d). The Examiner also refused registration based on the description
`
`of services and the drawing submitted with the mark.
`
`

`
`On January 26, 2005 Applicant filed this ex parte appeal and requested that this appeal be
`
`suspended since the Applicant was a party to an opposition proceeding, Opposition No. 91114033
`
`(“Total Energy Opposition”) in which Total S.A. opposed the mark TOTAL ENERGY and Design
`
`based on the same TOTAL Registrations on which the Examining Attorney refuses registration of
`
`this same mark. On February 9, 2005 the TTAB granted Applicant’s request and suspended the ex
`
`parte appeal. On April 24, 2006, Total withdrew its opposition with prejudice to the TOTAL
`
`ENERGY mark which was the subject of the opposition; and on April 28, 2006 the TTAB dismissed
`
`the opposition with prejudice. Accordingly, on November 20, 2006 the TTAB withdrew the
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`suspension concerning this ex parte appeal and resumed the proceedings as to Applicant’s mark.
`
`III.
`
`STATEMENT OF THE CASE
`
`Section 2(d) of the Trademark Act states that:
`
`No trademark by which the goods of the applicant may be distinguished from
`the goods of others shall be refused
`unless it-[c]onsists of or comprises a mark
`which so resembles a mark registered in the Patent and Trademark Office ... as to be
`likely, when use on or in connection with the goods of the applicant, to cause
`confusion, or to cause mistake, or to deceive.
`
`It is Applicant’s position that registration of the mark TOTAL ENERGY and Design will not
`
`cause confusion with the TOTAL Registrations cited by the Examining Attorney because:
`
`a)
`
`The sole “common” element between the marks consists of the word “TOTAL”,
`
`which is highly suggestive.
`
`b)
`
`Applicant’s mark, when compared in its entirety, evokes a substantially different
`
`commercial impression from the cited mark, particularly in view of Total SA’s withdrawal of its
`
`opposition to the mark TOTAL ENERGY, Application Serial No. 75/185,049 which was the subject
`
`of Opposition No. 91114033.
`
`

`
`c)
`
`To the extent that the Court of Appeals in In re E.I. du Pont de Nemours & Co., 177
`
`USPQ 563 (CCPA, 1973) stated that there is no litmus test for assessing confusion, it is respectfully
`
`requested that the Trademark Trial and Appeal Board reverse the Section 2(d) refusal.
`
`IV.
`
`LIKELIHOOD OF CONFUSION
`
`In ex parte examinations, a likelihood of confusion under §2(d) will be found if customers are
`
`likely to mistakenly assume that Applicant’s goods are in some way associated or connected with the
`
`owner of the cited registration. In re Phillips- Van Heusen Corp, 228 USPQ 949 (TTAB 1986).
`
`Likelihood of confusion has been said to be synonymous with “probable” confusion — it is not
`
`sufficient if confusion is merely “possible”. Rodeo Collection Ltd. V. West Seventh, 812 F.2d 1215,
`
`2USPQ2d 1205, 1206 (9”‘ Cir. 1987). When considering likelihood of confusion, it is not a subjective
`
`judgment as to whether the judge, jury or Examiner would be personally confused, but rather,
`
`whether the ordinary, reasonably prudent purchaser in the marketplace would likely be confused.
`
`Courts do not sit to decide trademark disputes in order to tell customers how they ought to or should
`
`perceive marks. A Court must try to detennine, not dictate, the customers’ state of mind. In weighing
`
`the evidence of likelihood of confusion, the Court must strive to place itself in the shoes of a
`
`prospective purchaser. E.I. Du Pont de Nemours & Co. v. Yoshida International, Inc., 393 F.Supp.
`
`502, 185 USPQ 597 (E.D.N.Y. 1975).
`
`V.
`
`REGISTRANT’S MARK “TOTAL” IS HIGHLY SUGGESTIVE AND SHOULD BE
`
`ACCORDED A NARROW SCOPE OF PROTECTION
`
`The Applicant made of record the existence of the marks in the energy field that included the
`
`word “TOTAL” which are as follows:
`
`Mark
`
`Reg. No.
`
`Owner
`
`Goods and Services
`
`TOTAL FLUIDS
`MANAGEMENT
`
`1,908,713
`
`Halliburton Energy Managing for others drilling,
`Services, Inc.
`completion and well development
`projects in the oil, gas and geo-
`thermal industries
`
`

`
`TOTAL SYSTEMS
`APPROACH
`
`1,346,794
`
`Baker Hughes Inc.
`
`Chemical treatment services for
`
`the oil and gas industry
`
`In the registration for the mark TOTAL FLUIDS MANAGEMENT, the words “FLUIDS
`
`MANAGEMENT” are disclaimed. Moreover, in the registration for the mark TOTAL SYSTEMS
`
`APPROACH, the word “SYSTEMS” is disclaimed. The TOTAL FLUIDS MANAGEMENT
`
`registration issued on August 1, 1995 which was prior to one of the TOTAL Registrations. In
`
`addition, Applicant is the owner of the mark TOTAL ENERGY, Serial No. 75/185,049 for a wide
`
`variety of services including brokerage of energy in international class 36 and for dealership services
`
`featuring LPG, LNG and industrial gas storage tanks, used in reconditioned LPG, LNG and industrial
`
`gas storage tanks in international class 35. This opposition was voluntarily withdrawn by Total SA on
`
`April 28, 2006 after the opposition was instituted on June 15, 1999. The fact that Total SA withdrew
`
`its opposition to the same mark involving the “brokerage of energy” where the services associated
`
`with the mark which is the subject of this ex parte appeal are for the same brokerage services
`
`demonstrates that Total S.A. does not believe confusion is likely.
`
`It is also apparent based on these third party uses of “TOTAL” that the public, when seeing
`
`the word “TOTAL” in combination with other words, is not confused and does not associate these
`
`goods and services as coming from one source. Moreover, Registrant is a French company that
`
`pronounces the mark as TO-TAL with a long “O” and long “A” with the emphasis on the second
`
`syllable “TAL”. Whereas Applicant pronounces “TOTAL” as TOT-BL in which the emphasis is on
`
`the first syllable and the letter “A” is a short vowel sound. Therefore, these marks are visually and
`
`phonetically distinctive.
`
`In addition, the marks have a different meaning since Registrant’s mark, the word “TOTAL”,
`
`is a noun which means the “sum” or “the entire quantity”. (See Webster’s New Collegiate
`
`Dictionary) On the other hand, in App1icant’s composite mark “TOTAL ENERGY and Design”, the
`
`word “TOTAL” is an adjective which modifies the noun “ENERGY” and means “the entire,
`
`7
`
`

`
`complete or all” energy. The connotation of Applicant’s mark meaning all types of energy is
`
`completely different than Registrant’s Marks.
`
`The Examining Attorney takes the position that the word “TOTAL” is the dominant portion
`
`of the Applicant’s mark since the word “ENERGY” has been disclaimed. The Examiner states that
`
`disclaimed matter is typically less significant or less dominant. In support the Examiner cited In re El
`
`Torrito Restaurants, Inc. 9 USPQ 2d 2002 (TTAB 1988) in which the TTAB held that MACHO
`
`COMBOS for restaurant services is confusingly similar to MACHO for a specially prepared
`
`sandwich as a part of restaurant services. However, this case can be distinguished because the TTAB
`
`held that the addition of the descriptive word “COMBO” does not alter the meaning of “MACHO”,
`
`nor does it change the connotation of the mark from that of MACHO standing alone.
`
`In contrast, as explained above, the word “ENERGY” does alter the meaning of “TOTAL”
`
`since in Applicant’s mark “TOTAL” becomes an adjective describing the noun “ENERGY”.
`
`Therefore, the Examiner committed a reversible error by putting more significance on the word
`
`“TOTAL” in the Applicant’s mark, and not looking at the mark in their entirety. Therefore,
`
`Applicant’s mark is visually distinctive in View of the addition of the word “ENERGY” combined
`
`with the design elements which is the globe and the orbiting “TOTAL ENERGY” around the globe.
`
`All of these factors viewed in their entirety creates a mark that is visually, phonetically, and
`
`connotatively different than Registrant’s mark “TOTAL”.
`
`This third party evidence is relevant because it demonstrates that a word such as “TOTAL” is
`
`entitled to a narrow scope of protection. As the Trademark Trial and Appeal Board stated in Loctite
`
`Corporation v. Tubbs Cordage Co., 175 USPQ 663, 665 (TTAB, 1972):
`
`The suggestiveness of the term manifestly is the reason why Opposer,
`applicant and others in the hardware field as well as in other fields of endeavor have
`adopted and used and/or registered this term or a variant thereof as a trademark for
`their goods. While the third party evidence adduced by applicant cannot, per se, justify
`the registration sought by applicant (citations omitted), it is admissible and competent
`
`

`
`when considered along with the nature of the term to delineate opposer’s rights therein
`and thereby narrow the scope of protection to be afforded such a mark.
`
`Similarly, in Bost Bakery, Incorporated v. Roland Industries, Inc. 216 USPQ 799, 801
`
`(TTAB, 1982), Opposer, owner of the mark OLD HEARTH for bread opposed registration of the
`
`mark HERITAGE HEARTH for the identical goods. Opposer argued that the word “HEARTH” was
`
`the dominant element of the mark and therefore confusion would result if Applicant’s mark was
`
`granted registration. The Board disagreed holding that confusion was unlikely:
`
`It is clear to the Board that the term “HEARTH” has a highly suggestive
`significance as applied to bread and products closely related. The record shows that
`opposer, applicant and others in the field have adopted trademarks containing the
`term “HEARTH” to convey this suggestion and that the Patent and Trademark Office
`has recognized the suggestive significance of this term by issuing registrations of
`marks containing the term to different persons for bread and closely allied products so
`long as the marks in their entireties were otherwise distinguishable. In short, the record
`suggests that the inclusion of the common term “HEARTH” in each of the two marks
`may be an insufficient basis, in and of itself, upon which to predicate a holding of
`confusion. See Plus Products v. Redken Laboratories, Inc., 199 USPQ 111 (TTAB,
`1978); American Hospital Supply Corporation v. Air Products and Chemicals, Inc.,
`194 USPQ 340 (TTAB, 1977); Cutter Laboratories, Inc. v. Air Products and
`Chemicals, Inc., 189 USPQ 108 (TTAB, 1975).
`
`The Board concluded:
`
`In this case then, we find [Registrant’s] mark sufficiently suggestive as not to
`preclude subsequent registration of the similarly suggestive, but nevertheless
`distinguishable, HERITAGE HEARTH mark. We believe the differences between the
`two marks at issue, viewed in their entireties, outweigh the similarities which may
`exist between them because of the inclusion in each of the suggestive term HEARTH.
`
`Certainly, a similar result should obtain herein. The record reflects that the word “TOTAL” is
`
`the subject of several third party registrations for closely allied services and should therefore be
`
`viewed as a suggestive mark. As a result thereof, the registration of the Applicant’s mark is not likely
`
`to result in purchaser confusion.
`
`Thus, the mere fact that marks share a common element is not sufficient to support a finding
`
`of confusion if the overall commercial differences serve to distinguish the marks. It is well-settled
`
`that certain terms, because of their connotation and/or frequent registration as a component of marks
`
`9
`
`

`
`for the same or similar goods, are considered to fall within the category of “wea ” marks. The scope
`
`of protection afforded these marks has been limited to the substantially identical designation and/or to
`
`the subsequent use thereof on substantially similar services. Thus, unlike in the case of an arbitrary or
`
`unique designation, the addition of other matter to a highly suggestive or laudatory tenn, whether
`
`such matter be equally suggestive or even descriptive may be sufficient to distinguish between them
`
`and to avoid confusion in the trade. Plus Products v. Redken Laboratories, Inc., 199 USPQ 111
`
`(TTAB, 1978)].
`
`VI.
`
`CONCLUSION
`
`For the foregoing reasons, Applicant respectfully requests that the refusal to register be
`
`reversed and that Applicant’s mark be allowed for publication. Applicant notes that it has attached
`
`Exhibit A to amend the description of services and the drawing for this application which the
`
`Applicant intends to amend further if necessary to comply with any fonnal requirements in the event
`
`the TTAB overrules the Section 2(d) final refusal.
`
`Respectfully Sub itted,
`
` é) /‘ea/x
`
`.Branthover, Esq.
`ed
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`
`New York, New York 10017
`Tel: 212-949-9022
`
`Fax: 212 949-9190
`
`Email: nwbranthover@lawabel.com
`
`10
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that this 19th day of January, 2007, correspondence is being deposited with
`
`the United States Postal Service as First Class Mail in an envelope addressed to the Commissioner for
`
`Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451.
`
` Ned W. Brant over
`
`11
`
`

`
`RECYCLED E ‘
`
`ExhibitA
`
`\
`
`
`

`
`Applicant:
`
`Total Energy Corp.
`2 Hardscrabble Road
`
`Croton Falls, NY 10519
`USA
`
`Date of First Use Anywhere:
`
`Intent-To—Use (Section 1(b))
`
`Date of first Use in Commerce: Intent-To-Use (Section 1(b))
`
`Goods and Services: Distributorships featuring natural gas liquids and natural gas, heating oil,
`coal, propane and electricity to commercial, residential and governmental end-users and distributors
`to end-users in International Class 35; brokerage of energy in International Class 36; and
`distribution of natural gas liquids and natural gas, heating oil, coal, propane and electricity to
`commercial, residential and governmental end-users and distributors to end-users in International
`Class 39.
`
`Mark:
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant
`
`Serial No.
`
`Filed
`
`Trademark
`
`Class No.
`
`Office
`
`:
`
`:
`
`:
`
`2
`
`2
`
`:
`
`Total Energy Corp.
`
`75/352,844
`
`September 8, 1997
`
`TOTAL ENERGY and Design
`
`39
`
`108
`
`Examining Attorney '
`
`Angela Micheli
`
`Commissioner of Trademarks
`P.O. Box 145 1
`
`Alexandra, VA 22313-1451
`
`January 19, 2007
`
`S I R:
`
`NOTICE OF CHANGE OF CORRESPONDENT ATTORNEY
`
`Please take notice that the correspondent attorney for the subject matter has been changed
`
`from Stephen J. Quigley to Ned W. Branthover at Abelman Frayne & Schwab at 666 Third Avenue,
`
`New York, New York 10017.
`
`Res ectfully Submitted,
`
`564)@,m
`
`ed W. Branthover, Esq.
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`
`New York, New York 10017
`Tel: 212-949-9022
`
`Fax: 212 949-9190
`
`Email: nwbranthover@lawabel.com
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that this 19th day of January, 2007, correspondence is being deposited with
`
`the United States Postal Service as First Class Mail in an envelope addressed to the Commissioner
`
`for Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451.
`
`L9
`
`Ned W. Branthover