From: Micheli, Angela
`
`Sent: 3/27/2007 2:51:24 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: TRADEMARK APPLICATION NO. 75352844 - TOTAL ENERGY - 737475
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`
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`*************************************************
`Attachment Information:
`Count: 1
`Files: 75352844.doc
`
`
`
`Sent: 3/27/2007 2:51:24 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: TRADEMARK APPLICATION NO. 75352844 - TOTAL ENERGY - 737475
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 75352844.doc
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
` SERIAL NO:
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`75/352844
`
`
`
`
`
`
`
`
`
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`*75352844*
`BEFORE THE
`TRADEMARK TRIAL
`AND APPEAL BOARD
`ON APPEAL
`
`
`
`Please provide in all correspondence:
`
`1. Filing date, serial number, mark and
` Applicant’s name.
`2. Date of this Office Action.
`3. Examining Attorney's name and
` Law Office number.
`4. Your telephone number and e-mail
`address.
`
`
`
`
` APPLICANT:
`
`TOTAL ENERGY CORP.
`
`
` CORRESPONDENT ADDRESS:
` Ned W. Branthover
` ABELMAN FRAYNE & SCHWAB
` 666 3RD AVE
` NEW YORK, NY 10017-5621
`
`
`TOTAL ENERGY
`
` MARK:
`
` CORRESPONDENT’S REFERENCE/DOCKET NO: 737475
`
` CORRESPONDENT EMAIL ADDRESS:
` nwbranthover@lawabel.com
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
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`
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`
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`Applicant has appealed the examining attorney's refusal to register the mark TOTAL
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`ENERGY and design for distributorships featuring natural gas liquids and natural gas,
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`heating oil, coal, propane and electricity to commercial, residential and governmental
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`end-users and distributors to end-users; brokerage of energy and distribution of natural
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`gas liquids and natural gas, heating oils, coal, propane and electricity to commercial,
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`residential and governmental end-users and distributors to end-users. Registration was
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`refused under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d) based on the
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`similarity of applicant's mark to the mark, TOTAL, in Registration No. 2131701 for oil
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`and gas well drilling; transportation of petroleum and petroleum-derived products
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`
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`through pipelines; oil and gas production; oil and gas exploration, retail store services in
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`the field of petroleum, petroleum-derived products, and related merchandise.
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`
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`FACTS
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`Applicant sought to register the mark TOTAL ENERGY and design for distributorships
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`featuring natural gas liquids and natural gas, heating oil, coal, propane and electricity to
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`commercial, residential and governmental end-users and distributors to end-users;
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`brokerage of energy and distribution of natural gas liquids and natural gas, heating oils,
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`coal, propane and electricity to commercial, residential and governmental end-users and
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`distributors to end-users. The examining attorney refused registration under Section 2(d)
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`because the mark was confusingly similar to the mark, TOTAL, in Registration No.
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`2131701 for oil and gas well drilling; transportation of petroleum and petroleum-derived
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`products through pipelines; oil and gas production; oil and gas exploration and retail store
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`services in the field of petroleum, petroleum-derived products, and related merchandise.
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`The case was suspended for five years as the applicant entered into negotiations with the
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`registrant to obtain a consent agreement. No consent agreement was ever submitted, so
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`the examining attorney issued a final refusal under Section 2(d) and made the
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`requirement for an acceptable drawing and an acceptable recitation of services final.
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`Applicant then filed an appeal from the final refusal to register its mark. The substitute
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`drawing and the amendment to the recitation of services were acceptable. The issue on
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`appeal are whether there is a likelihood of confusion between applicant's mark, TOTAL
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`ENERGY and design, and the mark, TOTAL, in Registration No. 2131701.
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`
`
`
`
`ARGUMENT
`
`THERE EXISTS A LIKELIHOOD OF CONFUSION BETWEEN APPLICANT'S
`MARK AND THE MARK IN REGISTRATION NO. 2131701.
`
`
`Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d) prevents registration of a
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`mark that so resembles a mark registered in the Patent and Trademark Office, or a mark
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`or trade name previously used in the United States by another and not abandoned, as to
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`be likely, when applied to the goods of the applicant, to cause confusion.
`
`
`
`The principal factors to determine whether a likelihood of confusion exists were set forth
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`by the Court in In re E.I. duPont de Nemours & Co., 177 USPQ 563 (CCPA). The three
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`factors for a likelihood of confusion analysis that are relevant in this case are: a
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`comparison of the marks, a comparison of the services and the channels of trade. A
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`discussion of each follows.
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` comparison of the marks requires an analysis of the similarities in appearance, sound,
`
` A
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`connotation and commercial impression. The literal portions of the two marks are similar
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`in appearance, sound and meaning as both marks contain the same literal element
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`TOTAL. The TOTAL element is the dominant and only feature of the registrant’s mark.
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`The TOTAL portion is the dominant element of the applicant’s mark since the ENERGY
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`portion describes the applicant’s field and the products that the applicant sells. Also, the
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`ENERGY portion has been disclaimed in applicant’s mark. While the examining attorney
`
`cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one
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`feature of a mark may be more significant in creating a commercial impression.
`
`
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`Disclaimed matter is typically less significant or less dominant. Tektronix, Inc. v.
`
`Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torito Restaurants
`
`Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709
`
`(TTAB 1986).
`
`
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`The applicant has added a term, energy, to registrant’s mark. The mere addition of a term
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`to a registered mark does not obviate the similarity between the marks nor does it
`
`overcome a likelihood of confusion under Section 2(d). In re Chatam International Inc.,
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`380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (“GASPAR’S ALE and “JOSE
`
`GASPAR GOLD”); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d
`
`556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly
`
`Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE
`
`LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988)
`
`(“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707
`
`(TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning
`
`Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In
`
`re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S
`
`ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979)
`
`(“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii).
`
`
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`The design element is not the dominant feature of applicant’s mark. The addition of the
`
`design element to applicant’s mark does not obviate the similarities between the
`
`applicant’s mark and registrant’s mark because the examining attorney must give greater
`
`
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`weight to the literal portions of the marks. The literal portions are the dominant and most
`
`significant features of marks. The word portion is more likely to be impressed upon the
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`purchaser’s memory and to be used in calling for the goods or services in the
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`marketplace. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug
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`Research Reports, Inc., 200 USPQ 554 (TTAB 1978). The registrant uses the TOTAL
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`mark as a house mark. Enclosed with Office action No. 2 were several registrations for
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`the registrant's TOTAL marks for various goods and services. Persons who are familiar
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`with the registrant's TOTAL family of marks could believe the applicant's services
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`originate or are endorsed by the registrant.
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`
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`Applicant argues that the registrant’s mark is “weak” and entitled to a narrow scope of
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`protection. The applicant submitted no evidence of weakness just a statement that the
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`word ‘TOTAL’ is the subject of several third party registration for closely allied services.
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`Even assuming the term TOTAL in relation to energy related services was a weak mark;
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`suggestive marks are afforded protection against source confusion even suggestive marks
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`are afforded protection against source confusion. As the Court in Matsushita Electric
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`Industrial Co., Ltd. V. National Steel Construction Co., 442 F.2d 138, 170 USPQ 98
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`(Fed. Cir. 1971) stated, “Even though a mark may be weak in the sense of being a
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`common word in common use as a trademark it is entitled to be protected sufficiently to
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`prevent confusion as to source from arising.”
`
`
`
`
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`The second factor in likelihood of confusion analysis is a comparison of the services of
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`applicant with those of registrant's. Applicant’s services are distributorships featuring
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`natural gas liquids and natural gas, heating oil, coal, propane and electricity to
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`commercial, residential and governmental end-users and distributors to end-users;
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`brokerage of energy and distribution of natural gas liquids and natural gas, heating oils,
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`coal, propane and electricity to commercial, residential and governmental end-users and
`
`distributors to end-users. The registrant’s services include oil and gas well drilling;
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`transportation of petroleum and petroleum-derived products through pipelines; oil and
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`gas production; oil and gas exploration and retail store services in the field of petroleum,
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`petroleum-derived products, and related merchandise. The services are related in that
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`they both involve the energy field. Likelihood of confusion is determined on the basis of
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`the goods or services as they are identified in the application and the registration.
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`Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
`
`2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J
`
`& J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed.
`
`Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
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`USPQ2d 1783 (Fed. Cir. 1990). Since the identification of the registrant’s services is
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`very broad, it is presumed that the registration encompasses all of the type described,
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`including those in the applicant’s more specific identification, that they move in all
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`normal channels of trade and that they are available to all potential customers. In re
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`Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775
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`(TTAB 1977); TMEP §1207.01(a)(iii).
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`
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`
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`The registrant is involved in all aspects of the energy field from exploration of energy
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`sources to providing energy to customers. The applicant is involved in the later aspects of
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`the energy field in that they buy, sell and distribute the final product. Attached with
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`Office Action No. 2 were registrations that show the same party offers services similar to
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`those of applicant and registrant under the same mark. These printouts have probative
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`value to the extent that they serve to suggest that the goods listed therein are of a kind
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`that may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d
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`1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
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`1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at
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`n.6 (TTAB 1988).
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`
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`The last factor in the likelihood of confusion analysis is the examination of the channels
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`of trade for the applicant's services and registrant's services. The services of the applicant
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`and the registrant
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`flow in the same channels of trade. Applicant’s services and registrant’s services would
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`be advertised and be available to potential purchasers of energy products and services.
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`The third-party registrations showing the same mark for both types of services would
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`indicate that in the marketplace consumers are use to seeing the services provided by one
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`entity.
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`In summary, based on the totality of the facts and the evidence of record, the similarities
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`in appearance of the marks, the relatedness of services and the overlapping trade
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`
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`channels, a likelihood of confusion must be found to exist and the refusal under Section
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`2(d) should be affirmed.
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`CONCLUSION
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`For the above reasons, the refusal under Section 2(d) to register the applicant's mark on
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`the ground
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`there exists a likelihood of confusion with Registration No. 2131701 should be affirmed.
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` Respectfully submitted,
`
`
`/Angela Micheli/
`Trademark Examining Attorney, Law Office
`101
`(571) 272-9196
`(571) 273-9196 (fax)
`angela.micheli@uspto.gov
`
`
`
`Ronald R. Sussman
`Managing Attorney
`Law Office 101
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