Thursday, September 14, 2006

Customer Sophistication Leads to TTAB Reversal of 2(d) "NEXGEN" Refusal

The sophistication of the customers for Applicant's services -- namely, the purchasing, train transportation and delivery, storage, and processing of coal -- was the decisive factor in the Board's reversal of a Section 2(d) refusal of the mark NEXGEN in block-letter and design form. The Board found the mark not likely to cause confusion with the registered marks NEXGEN for the generation and transmission of electricity, and NEXGEN FUELING for gas and liquefied gas services ["FUELING" disclaimed]. In re NexGen Resources Corp., Serial Nos. 76334331 and 76334334 (August 10, 2006) [not citable].

Applicant NexGen Resources got off to a wobbly start when it argued that there could be no likelihood of confusion because it already owns a "family" of NEXGEN registered marks for assorted mining services and equipment. However, it failed to show any promotion of the marks in such a way as to create a family of marks, and in any case, even if it did establish such a family, that would not "aid or otherwise entitle applicant to the registrations which it seeks." The Board must consider the likelihood of confusion between the applied-for marks and the cited marks, regardless of what other registrations Applicant owns.

Applicant got back on track, however, with three detailed declarations that convinced the Board that "the respective services typically will not be encountered by the same classes of purchasers under circumstances conducive to a likelihood of confusion." The services at issue "are specifically different and are often purchased exclusively by sophisticated and highly discriminating consumers."

Moreover, there was nothing in the record showing that "particular individuals who would be responsible for purchasing applicant's coal procurement services for power plants and other large, specialized industrial entities would also be the same group of buyers who would select and purchase services involving the generation, transmission, distribution and supply of electricity for those firms."

Consequently, the Board reversed the refusals to register.

Text Copyright John L. Welch 2006.


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