Wednesday, April 26, 2006

Citable No. 24: TTAB Dismisses 2(d) Cancellation Re "SUZLON & Design" for Wind Turbines

In its 24th citable decision of 2006, the TTAB denied a Petition for Cancellation of a registration for the mark SUZLON & Design (shown below, left) for wind turbines and their components. The Board ruled that Registrant Suzlon's mark was not confusingly similar to the logo of Petitioner NRECA (shown below, right), registered for lapel pins and for periodicals, educational workshops, and association services in the field of rural electrification. National Rural Electric Cooperative Assn. v. Suzlon Wind Energy Corp., 78 USPQ2d 1881 (TTAB 2006).

Considering the relevant duPont factors, the Board first found the similarity between the marks to be "not great." Although the marks are alike to the extent that they both contain dark, circular designs and "share several lines,' the inclusion of the word SUZLON in Registrant's design is an "important difference." "[T]his word is a prominent part of respondent's mark as it could be pronounced and it would be used to verbally describe the source of wind turbines and their components."

As to the goods and services, the Board found them "neither identical nor closely related." "Merely because parties operate in the same broad industry does not, by itself, establish that their goods and services are related." The Board did note, however, one example of potential overlap: "members or potential members of petitioner's association and suppliers of wind turbines." Petitioner produced an example: the Kotzebue Electric Association (KEA) of Kotzebue, Alaska, which is a member of NRECA, a user of NRECA's services, and a potential purchaser of respondent's wind turbines."

"As the provider of electric power to Kotzebue, KEA presumably purchases numerous goods and services. However, we simply do not have evidence to conclude that KEA and other cooperatives would assume that all goods and services are associated with petitioner simply because such goods and services are all involved with producing electricity."

The Board concluded that NRECA's association services and its workshop services in the field of rural electrification "are at best only tenuously related to wind turbines and component parts." As to lapel pins and publications, NRECA failed to establish "any relationship between these goods and wind turbines."

The purchase of wind turbines, the decision to join NRECA, and the decision to utilize NRECA's services "would involve sophisticated purchasers who are not making ordinary or impulse purchases. Indeed these purchases are likely to be made after careful consideration." This factor therefore favored Registrant.

Petitioner NRECA alleged actual confusion, pointing to an e-mail received from an attorney for one of its member Co-ops:

"I happened to notice an ad today for Suzlon Energy, a wind energy company, which has as its logo a green ball with three jagged lines running through it. At first, I thought it was an NRECA ad. I just wondered if anyone had looked into this for possible trademark infringement. You can see the logo by going to Suzlon's website at"

The Board, however, was "not persuaded that this single instance of alleged confusion is significant."

"Mr. Fuglesten's e-mail seems to indicate that he mistakenly believed that the mark was petitioner's without considering the goods and services. Indeed, when the ad was viewed in its entirety, Mr. Fuglesten arrived at the conclusion that the marks on the goods and services did originate from different sources. Therefore, we find this equivocal e-mail does not require us to conclude that there is a likelihood of confusion."

As to the strength of Petitioner's mark, NRECA provided some evidence of extensive use of the mark, leading the Board to find that the mark is "not famous," but "not weak."

Balancing all the relevant duPont factors, and noting that a registration is entitled to a presumption of validity, the Board ruled that NRECA had failed to meet its burden of proof regarding likelihood of confusion.

Copyright John L. Welch 2006.


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