Monday, December 16, 2013

TTAB Affirms 2(d) Refusal of ZERO EMISSIONS in View of Supplemental Registration

In a non-epic clash of two weak marks, the Board affirmed a Section 2(d) refusal to register the mark ZERO EMISSIONS & Design [shown below, top] for financing services, some related to energy projects [ZERO EMISSIONS disclaimed]. Examining Attorney Jason F. Turner deemed the mark likely to cause confusion with the mark ZEROEMISSIONS (Stylized, in orange) [shown below, bottom], registered on the Supplemental Register, for various business management and office function services, some relating to the environment and control of gas emissions. In re Zero Emissions Leasing LLC dba Zero Emissions, Serial No. 77427844 (November 29, 2013) [not precedential].

The marks: The Board perceptively observed that the wording in the marks is identical in sound and meaning: services relating to non-polluting energy sources. There is "nothing particularly novel" about the registered mark that would cause a consumer to perceive it as anything other than "zero emissions."

Applicant's disclaimer of the wording in its mark cannot avoid likelihood of confusion, since a disclaimer does not remove the matter from the mark. Consumers viewing the mark would have no clue that the wording had been disclaimed in a federal registration.

Similarly, consumers would not be aware that the cited mark is registered on the Supplemental Register. Thus, even marks registered on the Supplemental Register are entitled to protection under Section 2(d).

Applicant's inclusion of the design of a hydrogen atom in its mark is of little importance because consumers will perceive the wording in the mark as the dominant portion and the main factor in the mark's commercial impression.

In sum, the marks are "far more similar than they are different and, overall, convey highly similar commercial impressions. That is to say, the marks appear to be variations of each other that nonetheless point to a common source."

The services: While many of the services identified in the opposed application are unrestricted as to field, some relate to energy projects. Similarly, some of the services in the registration relate to carbon dioxide and greenhouse gas emissions. Thus these particular services in the energy field are at least "tangentially related," since they concern aspects of energy production on the one hand, and the resulting pollution and climate change, on the other hand.

Furthermore, considering the application and cited registration more broadly, third-party registrations show that various entities have adopted a single mark for business management/consulting services and for financing services.

As to the sophistication of customers, the Board noted that even small businesses seek business management and financing services. Those consumers of modest means may exercise no more than an ordinary degree of care. And in any event, even sophisticated purchasers are likely to be confused when confronted with highly similar marks used in connection with related services.

Resolving any doubt in favor of the prior registrant, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note: Applicant appeared pro se. Should we put this in the "WYHA?" category? Or should pro se applicants get a pass? Maybe we need a new category: Would An Attorney Have Appealed? = WAAHA?

Text Copyright John L. Welch 2013.


At 9:57 AM, Anonymous Anonymous said...

WYHA's are WYHA's regardless of whether they're pro se or not.

At 5:16 PM, Anonymous Anonymous said...

At least the pro se applicant did not include a cartoon of emissions making rude gestures.


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