Essilor Int’l.v.Axel Sattler

Trademark Trial and Appeal Board

Jan 26, 1999

No. 91101198 (T.T.A.B. Jan. 26, 1999)

Paper No. 17
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Essilor International
v.
Axel Sattler
_____
Opposition No. 101,198
to application Serial No. 74/617,029
filed on Dec. 30, 1994
_____
Marilyn Neiman and Peter Berger of Levisohn, Lerner, Berger
& Langsam for Essilor International.
Donald L. Dennison of Dennison, Meserole, Pollack & Scheiner
for Axel Sattler.
______
Before Sams, Cissel and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Axel Sattler filed an application to register the mark
VARILUX for electric and electronic apparatus and devices,
namely, electric lighting circuits and fluorescent lamp
Opposition No. 101,198
2
ballasts, especially for energy saving lamps in Class 9 and
electric lamps and energy saving lamps in Class 11.1
Essilor International filed an opposition to
registration of the mark on the ground of likelihood of
confusion, under Section 2(d) of the Trademark Act. Opposer
alleges use of the mark VARILUX on ophthalmic lenses and
other vision related apparatus since at least as early as
January 1960; ownership of registrations for the mark
VARILUX and related marks for these goods;2 and the
likelihood that the public will believe that applicant’s
goods emanate from or are otherwise sponsored or endorsed by
opposer, if applicant uses the identical mark VARILUX on
electric and electronic apparatus.

1 S.N. 74/617,029, filed December 30, 1994 under Section 44(d),
claiming the benefit of a German application filed June 30,
1994. A certified copy of German Reg. No. 2,901,810 which
issued from the application was later submitted.
2 The pleaded registrations are:
Reg. No. 697,797 for the mark VARILUX for optical glasses,
and particularly spectacle lenses, issued May 15, 1960,
first renewal;
Reg. No. 1,120,420 for the mark VARILUX 2 THE
PROFESSIONAL’S CHOICE and design for optical lenses,
issued June 19, 1979, Section 8 & 15;
Reg. No. 1,504,739 for the mark VARILUX INFINITY for
optical lenses, issued Sept. 20, 1988, Section 8 & 15;
Reg. No. 1,541,358 for the mark VARILUX PLUS for
ophthalmic lenses, issued May 30, 1989, Section 8 & 15;
Reg. No. 1,656,630 for the mark VARILUX SELECT for
ophthalmic lenses for eyeglasses, issued Sept. 10, 1991,
Section 8 & 15;
and Reg. No. 1,913,038 for the mark VARILUX COMFORT for
ophthalmologic apparatus and instruments, namely
ophthalmologic glasses, lenses, frames, and cases for all
the aforesaid goods, issued Aug. 22, 1995.
Opposition No. 101,198
3
Applicant, in its answer, denied the salient
allegations of the notice of opposition3 and sets forth as a
defense to the claim of likelihood of confusion that “[t]he
respective goods of the parties are unrelated and travel in
entirely different channels of trade... .”
The record consists of the file of the involved
application; the testimony depositions taken by opposer of
Michael Ness and Robert Colucci, officers of Essilor of
America, a wholly-owned subsidiary of opposer; the exhibits
accompanying the depositions; and opposer’s notice of
reliance introducing status and title copies of its six
pleaded registrations. Applicant took no testimony and made
no evidence of record. Only opposer filed a brief and no
oral hearing was requested.
Michael Ness, in his testimony for opposer, described
VARILUX lenses as those used to treat the eye condition
called presbyopia, a part of the natural aging process of
the eye whereby it becomes harder to see at close and in-
between distances. VARILUX lenses differ from ordinary
bifocals with two visible focal lenses in that they provide
a progressive change in focal length with no visible lines.
Thus, they are known in the optical field as progressive

3 Applicant also noted that opposer had incorrectly referred in
the notice of opposition to applicant’s application as an
intent-to-use application. The statement in the application
that applicant has a bona fide intention to use the mark in
commerce is required for an application filed under Section
44(d). See Section 44(d)(2) of the Trademark Act.
Opposition No. 101,198
4
lenses. The majority of people wearing these lenses are
over forty years of age. Mr. Ness described the three
levels of distribution of the lenses in the United States,
which consist of the optical wholesale laboratories to whom
opposer sells the goods and who then fabricate the lenses to
the prescription of the practitioner, the practitioner who
represents the retail level of dispensing, and the customer
who purchases the lenses from the practitioner.
Mr. Ness further testified as to the extensive
promotion and advertising by opposer of its VARILUX
products, including both direct consumer campaigns such as
advertising in magazines, endorsement by Paul Harvey on his
radio program, and provision of a web site and indirect
campaigns such as co-op advertising with practitioners,
point-of-sale literature for practitioners to provide to
customers, and promotional material providing practitioners
with technical information about the lenses. Mr. Ness
introduced a wide array of materials demonstrating the scope
of this promotional activity. He also introduced an article
from the March 15, 1995 issue of the trade publication 20/20
naming VARILUX products as the number one selling
progressive lenses in most sections of the country. Mr.
Ness described the promotion of VARILUX products by
sponsorship of Senior PGA tour events and by distribution of
Opposition No. 101,198
5
items such as eyeglass screw drivers, pens, mugs, note pads,
baseball caps, shirts and the like.
Robert Colucci testified as to sales and advertising
figures, setting sales figures for 1996 at approximately 140
million dollars, with approximately 170-180 million dollars
expected in 1997, and advertising and promotion figures at
approximately 10.5 million dollars for 1997. He estimated
the number of consumers wearing VARILUX products in 1997 to
be over 10 million. Mr. Colucci also described the use of
the mark in connection with promotional items, but made it
clear that no products other than lenses were sold bearing
the mark VARILUX.
Priority is not an issue here in view of opposer’s
submission of status and title copies of its pleaded
registrations proving ownership of valid and subsisting
registrations for the marks VARILUX, VARILUX 2 THE
PROFESSIONAL’S CHOICE, VARILUX INFINITY, VARILUX PLUS,
VARILUX SELECT4 and VARILUX COMFORT. King Candy Co., Inc.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).

4 Mr. Ness did state during his deposition that the mark VARILUX
SELECT was not in use at that time.
Opposition No. 101,198
6
Thus, we turn to the issue of likelihood of confusion
and those of the du Pont factors5 which we find relevant to
our determination here.
In the first place, there is no question but that the
marks are identical. Moreover, it is well established that
the greater the degree of similarity of the marks, the
lesser the degree of similarity of the goods required to
support a holding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 355 (TTAB
1983). The goods need not be identical or even competitive.
It is only necessary that there be a viable relationship
between the goods, such that persons encountering the goods
of the respective parties under the identical mark would be
likely to assume that there is some association or
affiliation between the sources thereof. See McDonald’s
Corp. v. McKinley, 13 USPQ2d 1895 (TTAB 1989) and the cases
cited therein.
Opposer contends that there is such a relationship
between the goods of the parties here. Opposer argues that
it is those persons who have difficulty in seeing and
accordingly wear eyeglasses such as opposer’s VARILUX lenses
who also use lamps such as applicant’s to enable them to see
while reading. Opposer points to certain of its
advertising materials which feature pictures of a person

5 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 101,198
7
both wearing opposer’s lenses and using a lamp to read.
Opposer also notes the testimony of Mr. Ness as to the
correlation of light and lamps with opposer’s goods, namely,
that it is often dim lighting situations which make a person
aware of the onset of presbyopia and the need for opposer’s
lenses.
Opposer cites Philip Morris v. K2 Corp., 555 F.2d 815,
194 USPQ 81 (CCPA 1977) as a situation in which the goods
(cigarettes and skis) were not competitive or intrinsically
related, yet there was sufficient association between the
two, as a result of promotions and advertising, to result in
the likelihood of confusion with the use of the identical
mark “K2” thereon. Opposer maintains that in the present
case an association has similarly been developed in the
public’s mind between VARILUX lenses and VARILUX lamps (or
lighting), such that use of the same mark in connection with
the lamps would lead consumers to assume a common source
therefor. Opposer also argues that its use of the VARILUX
mark with a variety of promotional products is another basis
on which consumers might be led to believe that applicant’s
lamps originate from opposer.
We find that opposer has failed to establish any viable
relationship between the goods of the parties. The mere
depiction in promotional material of a person wearing
VARILUX lenses for reading while seated at a desk near a
Opposition No. 101,198
8
lamp is clearly insufficient to create an association
between the two products. Although the lack of light may
lead a person to realize a need for eyeglasses, as well as
perhaps for a lamp, there is no inherent reason to associate
the source of corrective lenses with the source for a means
of lighting. Opposer has introduced no evidence to
demonstrate any such reason for persons to assume that these
products might originate from a single source, i.e., that
lamps or other lighting might originate from, or be
sponsored or affiliated with the same source as lenses to
correct eyesight deficiencies.
In the K2 Corp. case cited by opposer, the
circumstances were entirely different. Evidence had been
made of record that the applicant Philip Morris Inc. had
been a promoter of ski races for years and had advertised
its cigarettes under other marks in connection with these
events. As a result, there was a basis for consumers to
assume an association or affiliation between the source of
“K2” skis and “K2” cigarettes, despite the disparity in the
goods themselves. (See the description of the record in the
Board’s decision, K2Corp. v. Philip Morris Inc., 192 USPQ
174 (TTAB 1976)). By contrast, opposer has introduced no
evidence which might lead consumers to make such an
association here. There is no evidence that opposer, or any
other source of optical lenses, sponsors or has any other
Opposition No. 101,198
9
affiliation with the manufacturers of lamps or similar
lighting devices. Furthermore, although opposer may
distribute various promotional items bearing its VARILUX
marks, opposer has failed to introduce any evidence to show
that lamps are typical promotional items.
Looking to the channels of trade for the respective
goods, opposer takes the position that since the class of
customers is likely to be similar, there is overlap in the
channels of trade. We do not agree. Although it is true
that the same consumers may go to eye care professionals for
opposer’s VARILUX lenses and to the appropriate retail
outlets for applicant’s VARILUX lamps, this does not
indicate that the goods themselves travel in the same
channels of trade. Instead, Mr. Ness clearly outlined the
specific levels of distribution of VARILUX lenses, from
opposer to wholesale laboratory to practitioner to customer.
The ultimate consumer only encounters the lenses through
this particular chain of travel for the eye care products.
While these consumers, as well as the practitioners serving
them, may also purchase lamps, they would do so at retail
outlets for such goods, not at professional eye care
locations.
Opposer also strongly argues that the fame of its mark
is a factor to be weighed in its favor. Opposer relies not
only upon its sales and advertising figures, but also its
Opposition No. 101,198
10
evidence of the popularity and wide-spread use of VARILUX
lenses.
We acknowledge that opposer has demonstrated that its
VARILUX lenses are well known in the optical field,
especially in the area of progressive lenses. We cannot
agree, however, with any contentions that opposer’s mark is
famous. Opposer has introduced no evidence by which we may
compare its sales and advertising figures with those of
others or determine the percentage of VARILUX lenses wearers
with eyeglass wearers in general. We have only the
statement made by Mr. Ness that the mark is a “strong
trademark in this category”, i.e., the progressive lenses
category (Deposition p. 24). Accordingly, while opposer’s
VARILUX mark may be a strong, well-known mark in the field
of optical lenses, we cannot extend this renown, and the
scope of protection afforded thereto, to totally unrelated
goods, in the absence of a reasonable basis for the public
to believe that these goods might originate from, or are in
some way associated with the source of VARILUX lenses. See
Anheuser-Busch, Inc. v. Major Mud & Chemical Co., Inc., 221
USPQ 1191 (TTAB 1984). Cf. McDonald’s Corp. v. McClain, 37
USPQ2d 1274 (TTAB 1995)[In view of opposer’s famous family
of marks and its use and licensing of its mark for goods and
services, some of which are unrelated to food products or
services, consumers likely to believe opposer is connected
Opposition No. 101,198
11
in some manner with applicant’s legal services being offered
under the mark MC CLAIM].
Thus, in view of the great disparity between the goods
upon which the marks are used, and since we find no other
duPont factor which might be weighed in opposer’s favor, we
find that there is no likelihood of confusion with the
contemporaneous use of the mark VARILUX on opposer’s optical
lenses and applicant’s lamps and other lighting goods.
Decision: The opposition is dismissed.
J. D. Sams
R. F. Cissel
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
Opposition No. 101,198
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