Thursday, September 05, 2013

WYHA? TTAB Affirms Section 2(d) Refusal of BLUE STAR POWER SYSTEMS Over BLUE STAR for Generators

In a seven-page opinion, the Board affirmed a refusal to register the mark BLUE STAR POWER SYSTEMS for emergency automatic standby electric generator sets of at least 20 kWe sold through distributors for standby power in industrial and commercial buildings." finding it likely to cause confusion with the registered mark BLUE STAR for "electric generators for welding or power." The marks are certainly similar and the goods overlap. Would you have appealed? In re Blue Star Power Systems, Inc., Serial No. 85459999 (August 23, 2013) [not precedential].

As to the marks, the applied-for mark incorporates the registered mark in its entirety, adding only the merely descriptive, if not generic, term POWER SYSTEMS. While the two marks differ somewhat in sound, the term BLUE STAR dominates, and so, not surprisingly, the Board found the similarities in the mark to outweigh the differences.

Applicant argued that BLUE STAR is weak in view of 65 third-party registrations for marks consisting of or containing BLUE STAR. But there were two major problems with this evidence: there was no proof that the marks are in actual use and, in any case, the registrations are for unrelated goods and services.

The goods in the cited registration are described broadly and encompass those of the subject application. Consequently, the involved goods are considered legally identical, and the Board presumes that they travel through the same channels of trade to the same classes of consumers.

Applicant urged that the purchasers of its generators are sophisticated and the overlap in channels of trade would be limited to its commercial goods. The Board agreed that purchases of electrical generators for industrial and commercial buildings are unlikely to be on impulse, and the purchasers may be sophisticated. But even sophisticated purchasers may be confused when similar marks are use for the same goods.

Finally, applicant claimed that there has been no actual confusion, but the Board once again pointed out that, in the ex parte context, such assertions have little weight because the other trademark owner has no opportunity to present its views. Moreover, there was insufficient evidence regarding the opportunities for confusion to occur in the marketplace.

Balancing the relevant duPont, and giving the benefit of any doubt to the prior registrant, the Board found confusion likely and it therefore affirmed the refusal.

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Text Copyright John L. Welch 2013.


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