File No. 737,474
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Applicant
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`Serial No.
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`Filed
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`Trademark
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`Class No.
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`Office
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`Total Energy Corp.
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`-
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`-4
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`__ -_ __, __ __ _
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`B
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`75/352,845
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`September 8, 1997
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`TOTAL ENERGY
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`39
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`101
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`Examining Attorney :
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`Angela Micheli ‘
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`Commissioner of Trademarks
`P.O. Box 1451
`Alexandra, VA 22313-1451
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`04-27-2007
`U3 W“ “'V‘°*°”M ”"“' “°°‘°‘ #34
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`April 24, 2007
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`Dear Sir:
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`REQUEST TO ACCEPT LATE-FILED REPLY BRIEF
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`On March 28, 2007, the Examining Attorney issued her Appeal Brief in the subject matter.
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`Applicant’s Reply Brief was due on April 17, 2007. The undersigned did not received the Examiner’s
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`Appeal Brief until April 24, 2007 which was after Applicant’s reply brief was due.
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`Applicant hereby submits its reply brief and request that the TTAB accept the brief inasmuch
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`the delay has been minimal and there has been no prejudice.
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` lySubmitted,
`aw éjmllm
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`Ned W. Branthover, Esq.
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
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`New York, New York 10017
`Tel: 212-949-9022
`Fax: 212 949-9190
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`Email: nwbranthoVer@lawabel.com
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that this 24th day of April, 2007, correspondence is being deposited with the
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`United States Postal Service as First Class Mail in an envelope addressed to the Commissioner for
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`Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451.
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`Ned W. Branthover
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`
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`IN THE UNITED STATES PATENT AND TRADENLARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`File No. 737,474
`
`Applicant
`
`Serial No.
`
`Filed
`
`Trademark
`
`Class No.
`
`Office
`
`:
`
`2
`
`:
`
`:
`
`:
`
`:
`
`Total Energy Corp.
`
`75/352,845
`
`September 8, 1997
`
`TOTAL ENERGY
`
`39
`
`101
`
`Examining Attorney :
`
`Angela Micheli
`
`Commissioner of Trademarks
`
`P.O. Box 1451
`
`Alexandra, VA 22313-1451
`
`April 24, 2007
`
`APPLICANT’S REPLY BRIEF IN SUPPORT OF REGISTRATION
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`Applicant submits this reply brief in support of its appeal to overcome the Examining
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`Attomey’s final refusal 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 commercial,
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`residential and governmental end-users and distributors to end-users; brokerage of energy and
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`distribution of natural gas liquids and natural gas, heating oils, coal, propane and electricity to
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`commercial, residential and governmental end-users and distributors to end-users.
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`Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d) based
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`on the Examining Attomey’s belief that Applicant’s mark is confusingly similar and would create a
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`likelihood of confusion with the trademark TOTAL, Registration No. 2,131,701 for oil and gas well
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`drilling; transportation of petroleum and petroleum-derived products through pipelines; oil and gas
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`production; oil and gas exploration, retail store services in the field of petroleum, petroleum-derived
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`products and related merchandise. The Examining Attomey’s brief totally ignores the fact that
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`TOTAL withdrew its opposition to Applicant’s mark TOTAL ENERGY and Design for international
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`class 36 for services in the energy field including the brokerage of energy TOTAL ENERGY,
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`Application Serial No. 75/185,049, which has now been issued Registration No. 3,211,980. It is
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`appropriate for the Board to consider this registration and the strength of the mark TOTAL by
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`evaluating whether the Applicant’s mark will create a likelihood of confusion with the registered
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`mark TOTAL.
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`In addition, the Examining Attorney claims that the Applicant did not submit any evidence
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`that Registrant’s mark TOTAL was weak even though Applicant submitted evidence of existing
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`composite trademarks that include the word ‘TOTAL’ in the energy field. In particular, the mark
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`TOTAL FLUID MANAGEMENT, Registration No. 1,908,713, owned by Halliburton Energy
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`Services, Inc. for managing for others, drilling, completion and well development projects in the oil,
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`gas and geo thermal industries. In addition, the trademark registration for TOTAL SYSTEMS
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`APPROACH, Registration No. 1,346,794, owned by Baker Hughes, Inc. for chemical treatment
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`services for the oil and gas industry. Therefore, when combined with the recent registrations owned
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`by Applicant for TOTAL ENERGY for which the Registrant withdrew its opposition, there are
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`numerous uses of TOTAL in composite marks that are used in the energy field. The Examining
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`Attorney failed to address these third party uses.
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`In addition, the Examining Attorney failed to address Applicant’s argument that the word
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`‘TOTAL’ in the Applicant’s mark is an adjective which describes “energy”, meaning all energy;
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`whereas, Registrant’s mark ‘TOTAL’ just means the total sum. Therefore, these marks have different
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`connotations and are visually and phonetically different sufficiently to obviate any likelihood of
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`confusion.
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`While the Examining Attorney cited numerous cases based on the argument that the ‘mere
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`addition’ of a term to a registered mark does not obviate the similarity between the marks nor does it
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`overcome the likelihood of confusion under Section 2(d). This argument is not persuasive because it
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`has long been held that each case must rest on the totality of its own facts as to the likelihood of
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`confusion. See McKesson & Robbins, Inc. v. American Foundation for Dental Science, 150 F.2d 420,
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`66 U.S.P.Q. 252 (CCPA 1945). Moreover, the Court of Customs and Patent Appeals has held that
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`the determination of the likelihood of confusion is ‘subjective of evaluation in which prior decisions
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`are of little value and provide meager assistance.” See Star Watch Case Co. v. Junghans, AG. 267
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`F.2nd 950, 122 U.S.P.Q. 370 (CCPA 1959); Colgate-Palmolive Co. v. Carter- Wallace, Inc., 432
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`F.2nd 1400, 167 U.S.P.Q. 529 (CCPA 1970).
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`Examples of marks that have n_ot been held confusingly similar are as follows:
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`- CRISTAL for champagne and CRYSTAL CREEK for wine - Champagne Louis Roeder
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`S.A. v. Deliacato Vineyards, 148 F.3d 1373, 4714, U.S.P.Q. 2d 59 (Fed. Cir. 1998).
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`- DUTCH MASTERS for cigars and DUTCH APPLE for tobacco — Consolidated Cigar
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`Corp. v. R.J. Reynolds Tobacco Co., 491 F.2d 1265, 181 U.S.P.Q. 44 (CCPA 1974).
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`- HARD ROCK CAFE for restaurant services and COUNTRY ROCK CAFE for restaurant
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`services — Hard Rock Café Licensing Corp. v. Elsea, 48 U.S.P.Q.2d 1400 (TTAB 1998).
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`- HEALTHY CHOICE for food products and HEALTH SELECTIONS for food products —
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`ConAgra, Inc. v. George A. Hormel & C0., 990 F.2d 368, 26 U.S.P.Q.2d 1316 (8th Cir. 1993).
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`- PEAK for dentifrice and PEAK PERIOD for deodorant — Colgate-Palmolive Co. v. Carter-
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`Wallace, Inc. 432 F.2d 1400, 167 U.S.P.Q. 529 (CCPA 1970).
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`- PATIO for Mexican style food and TAPATIO for hot sauce — ConAgra, Inc. v. Saavedra, 4
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`U.S.P.Q.2d 1245 (TTAB 1987).
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`Certainly, Applicant’s mark TOTAI: ENERY is as dissimilar to the mark TOTAL as the
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`above marks in the above cited cases were to the opposing mark.
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`CONCLUSION
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`Based on the foresaid, Applicant believes that the appeal should be granted because the
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`Applicant’s mark TOTAL ENERGY has already been allowed for registration in the energy field,
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`and hence, the mark ‘TOTAL’ when appearing in a composite mark is weak in the energy field as
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`shown by the third party registrations. Finally, in view of the differences between TOTAL ENERGY
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`and TOTAL, Applicant believes that the marks are phonetically connotatively and visually different
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`so there is no likelihood of confusion.
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`Accordingly, Applicant respectfully requests that the refiisal to registration be reversed and
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`that the mark be approved for publication.
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`11 Sub iW<9/UR/l&.M
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`Ned W. Branthover, Esq.
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
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`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 24th day of April, 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. Branthover
