EAGLE MOUNTAIN HOMES INC. v. HEAT CONTROLLER, 92051548 (TTAB 2-17-2011)
Cancellation No. 92051548United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: February 17, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Before Seeherman, Ritchie and Wolfson, AdministrativeTrademark Judges.
By the Board:
This case now comes up for consideration of petitioner?s motion for summary judgment on its claim of priority and likelihood of confusion, filed August 11, 2010. The motion is fully briefed.
Background
Respondent owns a registration for the mark GEOMAX2, in standard characters, for ?Two-stage, geothermal heat pumps used in heating and cooling dwellings? (the ?Registration?).[fn1] Petitioner seeks to cancel the Registration, alleging prior use of GEOMAX ?in connection with the sale and service of [its] geothermal HVAC systems, ?Page 2
ownership of an application to register the GEOMAX mark for geothermal equipment[fn2] which has been refused under Section 2(d) based on respondent?s Registration, and that use of respondent?s mark is likely to cause confusion with petitioner?s mark. In its answer, respondent denies the salient allegations in the petition for cancellation.
The Parties? Contentionsx
Petitioner seeks summary judgment on its only pleaded ground of priority and likelihood of confusion, relying primarily on the Declaration of Douglas Mossbrook (?Mossbrook Dec.?), its Chief Executive Officer, and the transcript of Mr. Mossbrook?s discovery deposition (?Mossbrook Tr.?). Mr. Mossbrook testified during his discovery deposition that petitioner has sold ?control panels? for ?geothermic use? under the GEOMAX mark beginning in 2005. Mossbrook Tr. pp. 33-39. Petitioner also relies on photographic evidence showing use of its mark on an installed control panel in 2005. Petitioner?s Motion Ex. 8; Affidavit of Mark Tolbert, petitioner?s former Director of Business Development ?? 3-4; Mossbrook Tr. pp. 72-73. According to Mr. Mossbrook, petitioner?s
control panelsPage 3
include ?pumps, controls, valves for distribution of fluid in a geothermal system.? Mossbrook Tr. pp. 16. Mr. Mossbrook testified that petitioner has advertised and promoted geothermal products under the GEOMAX mark since before the filing date of the application which matured into respondent?s Registration. Mossbrook Dec. ? 4; Mossbrook Tr. pp. 74-102. Petitioner argues that confusion is likely because the parties? marks and goods are ?nearly identical.?
In response, respondent claims that petitioner?s evidence of prior use of GEOMAX on products is ?at best confined to what are essentially custom-built, stand-alone control panels for geothermal systems.?[fn3]
Furthermore, respondent claims that petitioner?s evidence of its advertising and promotional activities prior to respondent?s filing date ?prove[s] no trademark recognition in the GEOMAX name that could extend beyond control panels.? Respondent argues that there is no evidence that petitioner?s control panels are related to respondent?s goods, and LeeAnne Perkins, respondent?s National Sales Manager, testified in a declaration (?Perkins Dec.?) that respondent ?has never sold stand-alone control panels for geothermal heating/cooling systems,? and ?on information and belief, that none of [respondent?s] principal competitors in the market forPage 4
geothermal heating/cooling systems? has done so. Perkins Dec. ? 3. Ms. Perkins further testified that respondent?s geothermal heat pumps ?cost anywhere from $4,119 to $6,477.? Id. ? 4. Finally, respondent claims that there has been no actual confusion ?despite the years of overlapping commercial activity.?
In reply, petitioner primarily restates its original arguments. It also asserts that respondent
asks the Board to adopt a new rule of law which would require a party asserting priority of use of a mark in connection with a product to demonstrate that each and every component of that product features the mark ?. Taken to its logical conclusion, any product which is assembled from component parts, like an appliance, motor vehicle or complex machine, would require the mark to be affixed to every part
before priority could be claimed for the entire product.
Petitioner argues that the parties? goods are at least ?complementary.?
Decision
Summary judgment is appropriate where there are no genuine disputes as to any material fact, thus allowing the case to be resolved as a matter of law. Fed.R.Civ.P. 56(a). Petitioner, as the movant seeking summary judgment, bears the initial burden of demonstrating the absence of any genuine issue of material fact. See, Celotex Corp. v.Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions,Inc. v.Page 5Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter in favor of the non-moving party.See, Opryland USA Inc. v. Great American MusicShow Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy?s, Inc.,961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
The evidence on summary judgment must be viewed in a light most favorable to the non-movant, in this case respondent, and all justifiable inferences are to be drawn in respondent?s favor. Lloyd?s Food Products, Inc. v. Eli?s,Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993);Opryland USA, supra. The Board may not resolve issues of material fact; it may only ascertain whether issues of material fact exist. See, Lloyd?s FoodProducts, 987 F.2d at 766, 25 USPQ2d at 2029; OldeTyme Foods, 961 F.2d at 200, 22 USPQ2d at 1542.
Standing
Petitioner must demonstrate ?that it has a reasonable belief that it would be damaged? by the continued registration of respondent?s mark. Syngenta CropProtection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1118
(TTAB 2009). In this case, there is no genuine issue of material fact regarding petitioner?s standing. Indeed,Page 6
petitioner has established its standing by submitting evidence of use of GEOMAX for control panels and alleging likelihood of confusion, and by establishing that its application to register GEOMAX has been refused based on respondent?s Registration. Mossbrook Tr. pp. 33-39, 72-73; McGuire Dec. ? 7 and Petitioner?s Motion Exs. 3, 8. Syngenta, 90 USPQ2d at 1118; Tri-StarMarketing, LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007)(?petitioner has standing to bring the petition for cancellation based on the fact that its application to register [its mark] was refused registration by the office under Section 2(d) based on a likelihood of confusion with respondent?s previously registered mark?). Respondent does not specifically contend otherwise, much less introduce contradictory evidence.
Priority
As to priority, the earliest date on which respondent may rely is the filing date of its application which matured into the Registration, i.e. June 26, 2007.[fn4] Petitioner, however, has introduced uncontradicted evidence of prior use of GEOMAX as a trademark, at least for control panels, and advertising and promotion of geothermal products, since 2005. Mossbrook Tr. pp. 33-39, 72-102; Petitioner?s Motion Ex. 8; Mossbrook Dec. ? 4. In fact, respondent does notPage 7
specifically dispute that petitioner has made prior use of GEOMAX on ?custom-built, stand-alone control panels for geothermal systems.? Accordingly, there is no genuine issue of material fact that petitioner has priority of use for at least control panels.
Likelihood of Confusion
?We determine likelihood of confusion by focusing on ? whether the purchasing public would mistakenly assume that the [respondent?s goods] originate from the same source as, or are associated with,? petitioner?s goods. In re Majestic Distilling Co., Inc.,315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In considering the question on a motion for summary judgment, we analyze all probative facts in evidence which are relevant to the 13 likelihood of confusion factors set forth in In re E.I. duPont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), as well as whether there are genuine disputes as to any of these factors which would be material to a decision on the merits. In this case, the parties have introduced evidence concerning, and we therefore address herein, the similarity between the parties? goods and marks, the degree of care consumers are likely to exercise in purchasing the parties? products and the lack of evidence of actual confusion.
Turning first to the similarity of the parties? marks, there is no genuine issue of material fact. The parties?Page 8
marks are virtually identical, with the only difference being that respondent?s mark includes the number ?2? after the standard character mark GEOMAX. The number ?2? does not differentiate respondent?s mark from petitioner?s, and in fact respondent?s use of the number may cause consumers to perceive that respondent?s products are another version or model of petitioner?s geothermal products.See American Optical Corp. v.Siemens, 213 USPQ 510 (TTAB 1982) (AO and AOT found confusingly similar); The Clorox Co. v. The State ChemicalManufacturing Co., 197 USPQ 840, 844 (TTAB 1977) (?We believe that the marks ?FORMULA 409? and ?FORMULA 999?, when considered in their entireties, are substantially similar in sound, appearance, significance, and overall commercial impression.?); NabiscoBrands, Inc. v. Kaye, 760 F. Supp. 25, 19 USPQ2d 1465, (D. Conn. 1991) (A.1 and A.2 found confusingly similar). This factor therefore weighs heavily in favor of a finding of likelihood of confusion. Kohler Co. v. Baldwin HardwareCorp., 82 USPQ2d 1100, 1109 (2007).
Turning next to the parties? goods, petitioner has established prior use of its mark for at least control panels. There is no genuine issue of material fact that these goods are related to respondent?s geothermal heat pumps. Indeed, respondent does not dispute that petitioner?s control panels include ?pumps, controls, valvesPage 9
for distribution of fluid in a geothermal system,? and are used to heat and cool dwellings. Mossbrook Tr. pp. 6, 16. Even if we consider petitioner?s goods to be limited to the stand-alone control panels for which respondent has not disputed that petitioner has priority, these control panels are for use in geothermal systems, and respondent?s involved Registration is for geothermal heat pumps which are also used for heating and cooling dwellings. In short, petitioner?s control panels can be used in connection with, and perhaps even to ?control,? geothermal systems for heating and/or cooling, and thus are complementary to respondent?s goods.[fn5] For purposes of finding a likelihood of confusion
[i]t is sufficient that the respective goods of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source.
Kohler Co., 82 USPQ2d at 1109.
As for the degree of care consumers are likely to exercise, we recognize that the parties? goods arePage 10
relatively expensive. However, ?even sophisticated purchasers can be confused by very similar marks.?In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d at 1693; Weiss Associates, Inc. v. HRL Associates, Inc.,902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990). In this case, the sophistication and care of the consumers does not create a genuine issue of material fact. As discussed previously, the marks are virtually identical, such that, even if consumers note the presence or absence of the numeral ?2? in the marks, the consumers will view the marks as identifying a single source for the goods.
Finally, the absence of evidence of actual confusion does not raise a genuine issue of material fact. ?The test is likelihood of confusion not actual confusion ? It is unnecessary to show actual confusion in establishing likelihood of confusion.? Weiss Associates,902 F.2d 1546, 14 USPQ2d 1842-43. If lack of evidence of actual confusion were enough to generally raise a genuine issue, summary judgment could almost never be granted in favor of a plaintiff on a ground of likelihood of confusion, and that is not the case. See, Apple Computer v. TVNET.net,Inc., 90 USPQ2d 1393, 1397 (TTAB 2007) (?applicant?s arguments regarding the lack of actual confusion and its good faith adoption of its VTUNES.NET mark do not raise genuine issues of material fact that preclude entry of summary judgment?).Page 11
Respondent has not pointed to any circumstances, such as a long period of contemporaneous use in the same locale, which would suggest that confusion would have occurred if it were likely to occur. Therefore, the lack of actual confusion does not create a genuine issue of material fact.
Conclusion
Because we find, based on the record herein and the applicable law, that there is no genuine issue of material fact and that petitioner has established its priority and likelihood of confusion as a matter of law, petitioner?s motion for summary judgment is hereby GRANTED. Accordingly, judgment is hereby entered against respondent, the petition to cancel is granted, and Registration No. 3517504 will be cancelled in due course.
[fn1] Registration No. 3517504, issued October 14, 2008 from an application filed June 26, 2007, amended to allege first use dates of August 25, 2008. [fn2] Application Serial No. 77503222, filed June 19, 2008 based on a claimed date of first use of May 10, 2005 for ?geothermal heating, ventilating, and air conditioning equipment namely, geothermal heat pumps, air handlers, storage tanks, pump panels, pump packages, control panels, loop field fittings, loop field piping, loop field components, loop field pump carts.? [fn3] Respondent introduces no evidence in support of its claim that the control panels are ?stand-alone,? nor does it explain what is meant by the term. [fn4] Respondent did not submit evidence of earlier use. [fn5] We note also that respondent?s marketing materials reference ?electronic controls,? ?microprocessor controls? and an ?ECM controller.? See, Declaration of Katherine McGuire, petitioner?s attorney, Ex. 3-A (documents produced by respondent during discovery).