IN RE MOVEON.ORG POLITICAL ACTION, 77699273 (TTAB 9-30-2011)
Serial No. 77699273United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: September 30, 2011Page 1
Tsan Abrahamson, Sophie Cohen and Lezlie Huston of Cobalt LLP for MoveOn.org Political Action.
Michelle E. Dubois, Trademark Examining Attorney, Law Office 108 (J. Leslie Bishop, Acting Managing Attorney).
Before Taylor, Wellington and Shaw, Administrative Trademark Judges
Opinion by Taylor, Administrative Trademark Judge:
MoveOn.org Political Action (“applicant”) has filed an application to register on the Principal Register the mark POWER UP AMERICA (in standard character format) for services ultimately identified as “Promoting public awareness of issues involving energy management, reducing waste, reuse and recycling; providing information, advisory and consultancy services related to energy use management” in International Class 35.[fn1] At the request of the examiningPage 2
attorney, the exclusive right to use the word AMERICA was disclaimed because it was considered to be geographically descriptive.
The examining attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that applicant’s mark, when used in connection with the identified services, so resembles the three registered marks owned by two different entities set forth below as to be likely to cause confusion, to cause mistake, or to deceive.
A. Linn County Rural Electric CooperativeAssociation’s Registration:
Registration No. 2939423 for the mark POWER UP! (POWER disclaimed) in standard character form, for “Public utility services, namely, transmission of electricity, and electricity distribution; and providing online information regarding residential and farm use of electricity” in International Class 39.[fn2]
B. Second License Application Corporation’sRegistrations:
Registration No. 3346846 for the mark POWER UP in standard character form, for “Advertising and promotion services, namely, promoting the goods and services of others via the preparation and placement of advertising and business listingsPage 3
in print publications, in directories and on the internet” in International Class 35;[fn3] and
Registration No. 3358478 for the mark
for “Advertising and promotion services, namely, promoting the goods and services of others via the preparation and placement of advertising and business listings in print publications, in directories and on the internet” in International Class 35.[fn4]
After the refusal was made final, applicant appealed and requested reconsideration of the refusal. The request for reconsideration was denied on August 26, 2010 and this appeal was resumed on September 10, 2010. Both applicant and the examining attorney filed briefs. We affirm the refusal to register.
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 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis,Page 4
two key 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 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Marks
We first consider the marks. In determining the similarity or dissimilarity of the marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general, rather than a specific impression of trademarks.See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Although we must compare the marks in their entireties, one feature of a mark may be more significantPage 5
than another and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp.,753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“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 consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). For instance, as our principle reviewing court has observed, “[t]hat a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of the mark.” See In re National Data Corp., 224 USPQ at 751.
Here, we compare applicant’s mark POWER UP AMERICA (standard characters) with the registrants’ respective marks POWER UP! (standard characters), POWER UP (standard characters), and POWER UP and design. The marks are very similar because they all contain the same words POWER UP. As regards the POWER UP! mark, the exclamation point is not source-identifying and thus the words POWER UP dominate the mark. See In re Burlington Industries, Inc., 196 USPQ 718, 719 (TTAB 1977) (“an exclamation point does not serve to identify the source of the goods”). We acknowledge thatPage 6
the registration includes a disclaimer of the word POWER, but that does not remove the word from the mark.
As regards the POWER UP and design mark, it is the words POWER UP which dominate the mark because it is the words that will be used by purchasers to call for the services identified by the mark. With a composite mark comprising a design and words, it is the wording that would make a greater impression on the purchasers and is the portion that is more likely to be remembered as the source-signifying portion of the applicant’s mark. It is the words, as opposed to the designs, that will be used by purchasers to call for the goods and services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are normally accorded greater weight because they would be used by purchasers to request the goods”).
This brings us to Applicant’s mark POWER UP AMERICA, which contains the only additional differing element, the word AMERICA. However, and contrary to applicant’s contention, this highly geographical term would not significantly distinguish the marks. As such, the wording POWER UP is the dominant and source-identifying element in applicant’s mark. The significance of the phrase “POWER UP” as the dominant element of applicant’s mark is further reinforced by its location as the first part of the wordPage 7
portion. See Presto Products Inc. v. Nice-Pak Products,Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); seealso Palm Bay Imports Inc. 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label);Century 21 Real Estate Corp. v. Century Life ofAmerica, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word).
Thus, the dominant and distinguishing portion of applicant’s mark, POWER UP, is identical to the dominant portion of two of the cited marks, i.e., POWER UP! and POWER UP and design, and the entirety of the other mark, i.e., POWER UP. We accordingly find applicant’s mark similar to each of the marks in the cited registrations in appearance, sound, connotation and commercial impression.
Applicant has asserted that the commercial impression of each mark is different because of its distinct connotation when used in connection with the associated identified services. Particularly, applicant asserts that its mark, POWER UP AMERICA, used in connection with the identified services of promoting public awareness of, interPage 8alia, issues involving energy management, suggests socio-political empowerment; that POWER UP!, as used in connection with electricity transmission and distribution services as identified in the ‘423 registration, “clearly conveys the idea of bringing electrical power to a community”; and that the companion POWER UP and POWER UP and design marks, as used in connection with the advertising and promotion services as identified in the ‘846 and ‘478 registrations, suggests “revving up a company’s business.” There is nothing in the record that confirms the asserted connotations and, even if so perceived, as the examining attorney points out, it is also possible that the marks at issue could have similar connotations. As she aptly asserts, “[T]he word “POWER” has a suggestive reference in conjunction with the listed services in each of the cited registrations.” Ex. Atty. br. unnumbered p. 6. For, example, the services in the ‘423 registration for POWER UP! list, “public utility services, namely, transmission of electricity; and electricity distribution; and providing online information regarding residential and farm use of electricity.” When viewed in connection with those services, the mark POWER UP! could be perceived as generating a type of power, in this case, electricity. Because applicant’s servicesPage 9
involve the services of promoting public awareness of,inter alia, issues involving energy management, the phrase POWER UP in applicant’s mark could also be perceived as suggesting of the manner in which Americans use and manage energy, a form of power, as opposed to empowerment. Similarly, with regard to the marks POWER UP and POWER UP and design in the ‘846 and ‘478 registrations, because the recited advertising and promotion services are not limited to any field, they could involve promotion of energy related goods and services for others and, thus, also impart a similar meaning. Because the term POWER UP in each of the marks at issue could have multiple suggestive meanings, the record does not support applicant’s assertion that each of the marks at issue has a discrete commercial impression that would serve to distinguish it from applicant’s mark.
Quite simply, while we have not overlooked the stylization and the design elements in the POWER UP and design mark, or applicant’s disclaimer of AMERICA because it is a geographically descriptive term, we nonetheless conclude that applicant’s mark and the cited marks, when considered in their entireties, are substantially similar in appearance, sound, connotation and commercial impression due to the shared term POWER UP.Page 10
Thus, the factor of the similarity of the marks favors a finding of likelihood of confusion.
We next consider the services. It is well settled that the question of likelihood of confusion must be determined based on an analysis of the services recited in applicant’s application vis-?-vis the services identified in the cited registration. In re Shell Oil Co.,992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Further, it is a general rule that services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that the services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which would give rise, because of the marks used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases cited therein.
Where the services in the cited registration are broadly identified as to their nature and type, it isPage 11
presumed that the identification of services encompasses all the services of the nature and type described therein, and that the identified services are offered in all channels of trade which would be usual therefor, and that they would be offered to and purchased by all potential buyers thereof.In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Registration No. 2939423
We first compare applicant’s “promoting public awareness of issues involving energy management, reducing waste, reuse and recycling; providing information, advisory and consultancy services related to energy use management” with the ‘423 registrant’s “public utility services, namely, transmission of electricity, and electricity distribution; and providing online information regarding residential and farm use of electricity.” Applicant argues that its mark and the cited mark cover completely different services and that “[t]here is no evidence to support that these different areas of business overlap.” Br. p 5.
The examining attorney, on the other hand, maintains that although applicant is not a public utility, applicant’s services, as identified are related to those of registrant. According to the examining attorney, the services are related because many public utility companiesPage 12
also provide information and consulting services in the area of energy use management. In support of her assertion, she has submitted numerous web pages from public utility companies that provide information and consulting regarding energy use management. Excerpts from a sampling of the web pages follow:
? Orcas Power Light Cooperative: “we will conduct an on-site audit and recommend specific weatherization measures, efficiency practices and/or products to increase your home’s energy efficiency.” (www.opalco.com/energy-efficiency/energy-audit/)
? Midwest Electric, Inc. A Touchstone Cooperative: “. . . our customer service representatives or energy advisors can analyze your energy use and help you determine where your energy dollars are going ? and how you can save.” Also: “These are simple things you can do to start saving energy and money today! Just click here for the list of 101 Low Cost Energy-Saving Tips.” (www.midwestrec.com/energyaudit.aspx)
? Minnesota Power: “A representative of Minnesota Power will visit your home and analyze how you use electricity, determine your electric energy use per appliance and recommend efficiency improvements. You’ll learn how to optimize your electric usage by changing the way you use your appliances.” (www.mnpower.com/powerofone/one_home/ Energy. . .)
? Black Hills Energy: “Invite one of our professional energy advisors to your home and we’ll provide you with information specific to your residence on how to reduce energy and save money.” (www.blackhillsenergy.com/services/ programs/homes. . .)Page 13
? Madison Gas and Electric: “Energy-Saving Tips for Homeowners.” “Energy Audits ? to identify more specific ways to control your energy use” Purchase a[n] . . . evaluation from a professional Home Performance Contractor.” “Ways to reduce heating cost.” [further information is listed on the website] (www.mge.com/home/saving/homeowners/index.htm)
? Lakeland Electric: “. . . trained energy analyst will visit your home and check your heating and air conditioning systems and explain energy saving tips so you can monitor your energy usage.” (www.lakelandelectric.com. . .)
? Hawkeye REC: “Energy Efficient Tips ? Simple Tip for Home Energy Savings.” (www.hawkeyerec.com)
As further evidence of the relatedness of the services, the examining attorney also has made of record copies of several use-based, third-party registrations showing that a single entity has registered the same mark for services of the type identified in both applicant’s application and the cited registration. Third-party registrations that individually cover different items and that are based on use in commerce serve to suggest that the listed goods and services are of a type that may emanate from a single source. See Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988) (Although third-party registrations are “not evidence that the marks shown therein are in use on a commercial scale or that the publicPage 14
is familiar with them, [they] may nonetheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source”). See also In re Albert Trostel Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
These registrations include, by way of example:
Registration No. 3674493 for, inter alia, “Public utility services in the nature of natural gas, and electrical power distribution to residential, wholesale, industrial and commercial customers” and “conducting energy audits and providing information and advice regarding the efficient use of energy; business consulting services in the field of efficient energy use, energy management and conservation on behalf of residential, wholesale, industrial and commercial customers; promoting the interests of energy conservation and energy management via the provision of information and economic incentives to electricity users; business consulting services in the field of energy conservation; business consultation services in the field of energy use, conservation and management; business consultation services, namely, assessment of existing energy systems”;
Registration No. 2791130 for, inter alia, providing “. . . utility services, namely, the transmission of electricity” and “consulting services with respect to energy use and management”;
Registration No. 3723416 for, inter alia, “public utility services in the nature of electricity distribution” and “information in the field of energy efficiency”; and
Registration No. 3502605 for, inter alia, “. . . public utility services in the nature of production, distribution, transmission . . . ofPage 15
electricity” and “consulting services in the field of energy usage management and efficiency.”
Based on the nature of the services, as identified, and the evidence of record, we are fully convinced that applicant’s services of providing information, advisory and consultancy services related to energy use management are closely related to registrant’s services of public utility services, namely, transmission of electricity, and electricity distribution; and providing online information regarding residential and farm use of electricity and that the respective services are commonly offered under the same mark by a single entity.
Furthermore we find, in the absence of any limitations in the identification of the application or cited registration, we must presume that the services will be offered to and accepted or purchased by the usual classes of purchasers for those services, including registrant’s public utility services purchasers seeking information and advice related to energy use management. Thus, at a minimum, the classes of purchasers overlap. In re Elbaum, supra.
Applicant appears to argue that confusion is not likely because registrant’s services are targeted towards a “niche market of residential and farm electrical utilityPage 16
customers in portions of six counties in eastern Iowa.” This argument is unpersuasive because applicant seeks a geographically unrestricted registration, and the cited registration enjoys a presumption of registrant’s exclusive right to nationwide use of the registered mark under Section 7(b) of the Trademark Act regardless of its actual extent of use. See e.g., Giant Foods, Inc. v. Nations’ Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed. Cir. 1983). Therefore, the geographical extent of applicant’s and registrant’s activities is not relevant to our likelihood of confusion determination.
Accordingly the du Pont factors of relatedness of the services and classes of purchasers favor a finding of likelihood of confusion.
Registration Nos. 3346846 and 3358478
We now compare applicant’s “promoting the public awareness of issues involving energy management, reducing waste, reuse and recycling; providing information, advisory and consultancy services related to energy use management” with the services recited in both the ‘846 and ‘478 registrations, namely, “advertising and promotion services, namely, promoting the goods and services of others via the preparation and placement of advertising and business listings in print publications, in directories and on thePage 17
internet.” Applicant once again maintains that the services differ and that there is no evidence that these services areas overlap.
Conversely, the examining attorney maintains that the services are related in that both are providing promotional services. She explains:
The fact that applicant is providing promotional services regarding an idea or an issue, as opposed to goods and services does not obviate the likelihood of confusion. Many advertising agencies provide both types of promotional campaigns as well as promotional services in the form of preparation and placement of advertising for goods and services.
Ex. Atty. br. unnumbered p. 13. In support of the relatedness of the services, the examining attorney made of record web pages from the website of Russell Herder (www.russellherder.com/RH_About.aspx) showing the provision of both public awareness promotional services and the services of the promotion and advertising of the goods and services of others. For example, the web page indicates that Russell Herder provides “creative development” in the form of content creation for print, broadcast, and street media for a variety of different industries as well as “public awareness and education programs to issue-related advertising.”Page 18
The examining attorney additionally has submitted copies of several use-based, third-party registrations showing that many entities use the same mark for public awareness campaigns and for promoting similar goods and services of others. These registrations include, for example:
Registration No. 3458593 for “advertising and promoting the goods and services of vending and food service companies” and “promoting public awareness of healthy foods and beverages and promoting the consumption of healthier beverage, snack and food products of others”;
Registration No. 3616762 for inter alia
“public advocacy to promote the awareness by young Americans of economic and health issues” and “advertising and promotional services in the nature of promoting financial and insurance services on behalf of third parties”;
Registration No. 2841619 for, inter alia, “promoting public awareness of the need for zoos and wildlife conservation . . .” and “advertising agency services, namely, creative development . . . of promotional campaigns on behalf of zoos and wildlife conservation organizations”;
Registration No. 3023007 for, inter alia, for “promoting public awareness of the need for the consumption of grain-based foods” and “advertising services, namely, promoting the goods of others through all communications means.”
Registration No. 3653743 for, inter alia, “promoting public awareness of the high quality and nutritional value of potatoes grown in Idaho” and “advertising services, namely, promoting the goods of others through all communication means.”Page 19
Contrary to applicant’s assertion, we find that the website showing the use of the same mark in connection with,inter alia, both promoting public awareness and the same subject matter promotional services of the goods and services of others, together with the five third-party registrations is sufficient evidence to conclude that the services are sufficiently related that, if identified by similar marks, confusion as to source is likely. In making this finding we note that registrant’s broadly worded advertising and promotional services are not limited to a particular field and could include advertising and promotional services in the fields of energy management, reducing waste, reuse and recycling.
The du Pont factor of the relatedness of the services thus favor a finding of likelihood of confusion.
Applicant’s arguments regarding the actual trade channels and classes of purchasers of the respective services are unavailing, inasmuch as applicant may not restrict the scope of the services by argument or extrinsic evidence. In re Bercut-Vandervoort Co., 229 USPQ 763, 764 (TTAB 1986).
When we consider the record and the relevant likelihood of confusion factors, and all of applicant’s arguments relating thereto, including those arguments notPage 20
specifically addressed herein, we conclude that in view of the substantial similarity in the commercial impressions of applicant’s mark, POWER UP AMERICA, and registrants’ marks POWER UP!, POWER UP, and POWER UP and design, respectively, their contemporaneous use on the involved closely related services is likely to cause confusion as to the source or sponsorship of such services. Moreover, to the extent that we have any doubts as to the correctness of this conclusion, we resolve such doubts against applicant and in favor of registrant. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); and Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006).
Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.
[fn1] Application Serial No. 77699273 filed March 25, 2009 and asserting a bona fide intention to use the mark in commerce.The identification also included services ultimately identified as “Providing information, advisory and consultancy services in the field of recycling and reducing waste through reuse and recycling” in International Class 40. These services were not subject to the Section 2(d) final refusal and were divided from the application at the request of applicant.
[fn2] Issued April 12, 2005, Section 8 Affidavit accepted, Section 15 Affidavit acknowledged. [fn3] Issued December 4, 2007. [fn4] Issued December 25, 2007.