Clearr Corp.

Trademark Trial and Appeal Board

Dec 28, 1999

No. 75010090 (T.T.A.B. Dec. 28, 1999)

Paper No. 17
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 28, 99

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Clearr Corporation
________

Serial No. 75/010,090
_______

Nickolas E. Westman of Westman, Champlin & Kelly for Clearr
Corporation.

Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______

Before Hanak, Hairston, and Holtzman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Clearr Corporation has applied to register the mark
LUMINAIRE ULTRA for an “electronically operated backlit
display transparency.”1 Registration was initially refused
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of the
identified goods. In addition, the Trademark Examining
Ser No. 75/010,090
2

1Application Serial No. 75/010,090, filed October 24, 1995,
alleging dates of first use of October 15, 1985.
Ser No. 75/010,090
3
Attorney required a disclaimer of the term LUMINAIRE.
Applicant subsequently amended the application to seek
registration under the provisions of Section 2(f) and
argued against the requirement for a disclaimer.
Registration has been finally refused by the Examining
Attorney under Section 2(e)(1) on the ground that the
evidence of distinctiveness submitted by applicant is
insufficient to establish that LUMINAIRE ULTRA has acquired
distinctiveness as a mark. Also, the Examining Attorney
made final the requirement for a disclaimer of the term
LUMINAIRE.
Applicant and the Examining Attorney have submitted
briefs, but no oral hearing was requested.
At the outset, we note that the issue of mere
descriptiveness of LUMINAIRE ULTRA is not before us in view
of applicant’s amendment of its application to seek
registration under the provisions of Section 2(f).
We turn first to the Examining Attorney’s requirement
for a disclaimer of the term LUMINAIRE on the ground that
it is generic for applicant’s goods. The Examining
Attorney maintains that LUMINIARE identifies a type of
backlit transparency illuminator in the sign industry. In
support of her position, she relies on the following
dictionary definitions of “luminaire”:
Ser No. 75/010,090
4
A complete lighting unit. Webster’s
Ninth New Collegiate Dictionary (1990);

A complete and self-contained lighting
system for television-studio use or
photographic use. The Illustrated
Dictionary of Electronics (5th ed.
1991); and

(1) A complete lighting unit consisting
of one or more lamps, together with
components which are designed to
distribute the light to position and
protect the lamps, and to connect the
lamps to the electric power supply;
also called a lighting fixture; (2) the
above lighting unit without lamps in
it. Dictionary of Architecture and
Construction (1993).

In addition, the Examining Attorney submitted a number
of excerpts from the NEXIS data base which contain
references to the term “luminaire”. The following are
representative samples of such excerpts:
Whatley makes five shaft styles, ranging
from smooth to fluted and octagonal, and
30 base designs. The light fixture, or
luminaire, can be as simple as a white
orb or as elaborate as the one resembling
a perfume bottle for the upscale.
(Denver Business Journal, July 12, 1996);

Prior to the retrofit the warehouse was
lit by 109 high bay luminaires, each with
a single 400-watt metal halide lamp.
(Energy User News, September 1996);

Ser No. 75/010,090
5
Low-wattage HPS luminaires lend themselves
especially well to applications in which it
is desired to increase light levels
significantly with a minimum increase
(or with an accompanying decrease) in
energy use.
(Plant Engineering, August 18, 1988); and

Where possible, emergency luminaires should
not be placed along lines of sight to exit
signs.
(Progressive Architecture, July 1993);

The IES handbook also recommends that signs
be lighted from luminaires positioned above
the sign, rather than below, to help reduce
this upward throw of light.
(Electrical Construction and Maintenance,
April 1996).

According to applicant, its goods consist of housing
which holds transparencies or graphic displays through
which light can be transmitted. An interior light provides
back lighting for the transparencies or graphic displays.
Applicant maintains that the term “luminaire” is not used
to refer these kinds of goods, but rather to an area light
or task light that will illuminate a particular room, area,
or region for carrying out a task(s). According to
applicant, a lighting luminaire generally includes a
housing and a light source that projects light out to
illuminate some external object or surface. Applicant
maintains that the Examining Attorney’s own NEXIS evidence
shows that luminaires are for lighting an object external
of the light source housing.
Ser No. 75/010,090
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A term is a generic name if it refers to the class or
category of goods on or in connection with which it is
used. Marvin Ginn Corp. v International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986). The test for determining whether a term is generic
is its primary significance to the relevant public. See
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551
(Fed. Cir. 1991). The Patent and Trademark Office has the
burden of establishing genericness. See In re Merrill
Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir 1987).
It appears from the dictionary and NEXIS evidence that
a luminaire is a type of lighting unit. Applicant’s goods,
however, are not lighting units, but rather electronically
operated backlit display transparencies which incorporate
lighting units. There is no evidence of record that such
goods are or would be referred to as luminaires. Thus, on
the record before us, we find that LUMINAIRE is not the
generic name for applicant’s goods.
We turn next to the issue of acquired distinctiveness.
Applicant, in support of its claim of acquired
distinctiveness, submitted the declaration of its
president, Andrew Steinfeldt. Mr. Steinfeldt stated that
applicant has used the mark LUMINAIRE ULTRA to identify its
Ser No. 75/010,090
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electronically operated backlit display transparencies
since 1985; that since 1985 applicant has mailed to
customers and distributed at trade shows over 180,000
product brochures; that since 1986 it has advertised its
goods two to three times a year in thirteen different
magazine and trade journals; that between 1985 and 1995 it
has spent over two million dollars advertising and
promoting its full line of products which includes
LUMINAIRE ULTRA backlit display transparencies; and that
during the same period applicant has displayed its goods at
over fifty trade shows. Accompanying Mr. Steinfeldt’s
declaration are copies of applicant’s product brochures and
advertising.
Also, applicant submitted the declaration of Jill
Brookman, owner and publisher of Exhibit Builder, a
magazine which is directed to the trade show and museum
exhibit design/building industry. The magazine has a
circulation of about 14,500. According to Ms. Brookman,
she has been aware of applicant’s use of LUMINAIRE ULTRA to
identify its goods since as early as 1985; that her
magazine is published bi-monthly and applicant has run
advertisements for its products in each issue of the
magazine since 1986; and that to the best of her belief
LUMINAIRE ULTRA identifies display transparency
Ser No. 75/010,090
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illuminators which originate with applicant. Accompanying
Ms. Brookman’s declaration are copies of advertisements for
applicant’s products which have appeared in Exhibit Builder
magazine.
Finally, applicant points out that it had previously
registered the marks LUMINAIRE and LUMINAIRE ULTRA on the
Principal Register for identical goods (Registration Nos.
1,396,554 and 1,403,872; both cancelled under Section 8).
In this case, we agree with applicant that its
evidence demonstrates, at least prima facie, that the term
LUMINAIRE ULTRA has become distinctive of applicant’s
electronically operated backlit display transparencies. In
reaching this decision, we have kept in mind that
applicant’s goods are targeted to a specialized audience,
namely, persons in the sign and exhibit industry. Not only
has applicant used the mark LUMINAIRE ULTRA for fourteen
years, but it has extensively promoted its goods at trade
shows and in trade magazines directed to this audience.

Ser No. 75/010,090
9
Decision: The requirement for a disclaimer of
LUMINAIRE is reversed; and the refusal to register
LUMINIAIRE ULTRA on the ground that applicant’s evidence of
acquired distinctiveness is insufficient is reversed.

E. W. Hanak

P. T. Hairston

T. E. Holtzman
Administrative Trademark Judges
Trademark Trial and Appeal Board