Intralux Australia Pty. Ltd.

Trademark Trial and Appeal Board

Jul 1, 1999

No. 75117414 (T.T.A.B. Jul. 1, 1999)

Hearing: Paper No. 14
October 27, 1998 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB July 1, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Intralux Australia Pty. Limited
________
Serial No. 75/117,414
_______
Cynthia Clarke Weber of Sughrue, Mion, Zinn, MacPeak & Seas
for Intralux Australia Pty. Limited
John S. Yard, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney)
_______
Before Seeherman, Hanak and Wendel, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Intralux Australia Pty. Limited has appealed from the
refusal of the Trademark Examining Attorney to register
INTRALUX as a trademark for the following goods:
Electric lighting fixtures, variable
position, cable-mounted electric light
fixtures; electric lighting systems
composed of fluorescent lamps, compact
discharge lamps, xenon and halogen
incandescent lamps, electronic control
gear, optical reflectors, lampholders,
Ser. No. 75/117,414
2
aluminum extrusions or plastic
injection molded components, sold as a
unit and parts thereof.1
Registration has been refused by the Examining Attorney
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark, if used on
its identified goods, so resembles the mark ENTRALUX,
previously registered by another for "wall mounted
electrical lighting fixtures,"2 as to be likely to cause
confusion or mistake or to deceive.
The case has been fully briefed, and an oral hearing
was held before the Board.
We affirm the refusal of registration.
In determining whether there is likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Two of the
most important of these factors are the similarity of the
marks, and the similarity of the goods.
Turning first to the goods, the cited registration is
for wall mounted electric lighting fixtures while
applicant’s identification includes, inter alia, electric

1 Application Serial NO. 75/117,414, filed June 11, 1996, based
on a foreign registration (Section 44(e) of the Trademark Act).
2 Registration No. 1,419,918, issued December 9, 1986; Section 8
affidavit accepted; Section 15 affidavit received.
Ser. No. 75/117,414
3
lighting fixtures. Applicant’s identification, thus,
encompasses the identification of the cited registration.
Moreover, the goods must be deemed to be sold in the same
channels of trade and to the same classes of purchasers.
Applicant does not dispute the closely related, if not
identical nature, of its and the registrant’s goods.
Applicant did not even discuss the goods in its brief or
reply brief, and at the oral hearing acknowledged that the
goods are at least closely related.
The thrust of applicant’s argument relates to the
marks themselves. Therefore, we turn to a consideration of
the marks, noting that "when marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). See also, In re Lamson Oil Co., 6 USPQ2d
1041, 1042 (TTAB 1987), quoting ECI Division of E-Systems
v. Environmental Communications, 207, USPQ 443, 449 (TTAB
1980), "where as here, the goods of the parties are similar
in kind and/or closely related ... the degree of similarity
of the marks under which these products are sold need not
be as great as in the case of diverse or different goods."

Ser. No. 75/117,414
4
Applicant’s mark is INTRALUX and the cited mark is
ENTRALUX. It is obvious that the marks differ by only the
first letter; the following seven letters are identical.
As a result, we find these marks to be very similar in
appearance, while phonetically they are virtually
identical. Applicant, of course, argues that the differing
initial letter distinguishes the marks, but we do not find
these arguments persuasive. The short "e" and short "i"
sounds with which each mark can be pronounced are so
similar that many people would not notice a difference,
especially if the marks were not carefully enunciated.
Further, a lighting fixture brand may be the subject of an
oral recommendation, where the mark is not seen until the
time of purchase. For example, one might see a lighting
fixture in the home of a friend, inquire as to the brand,
and be told, orally, that the mark is ENTRALUX. If the
potential purchaser then sees an INTRALUX fixture in a
store, he is likely to assume that this is the brand which
was recommended.
Moreover, although, as we have indicated, there is a
slight difference in the appearances of the marks, the
similarities in appearance between ENTRALUX and INTRALUX
far outweigh the difference in just the initial letters.
When the marks are compared in their entireties, they are
Ser. No. 75/117,414
5
strikingly similar. Thus, we find that the difference in
the first letter is not sufficient to distinguish the marks
visually. Under actual marketing conditions consumers
often do not have the luxury to make side-by-side
comparisons between marks, and instead must rely on hazy
past recollections. Dassler KG v. Roller Derby Skate
Corp., 206 USPQ 255 (TTAB 1980). Thus, a consumer who has
previously purchased ENTRALUX lighting fixtures might well,
upon encountering INTRALUX lighting fixtures, misremember,
and believe that it was the same mark.
Applicant has also argued that the marks are different
in connotation. It has made of record a dictionary
definition showing that "intra" is a prefix meaning
"within--esp. in adjectives formed from adjectives." From
this applicant contends that its mark suggests "light
within"; as for the cited mark, although "entra" has no
meaning, applicant suggests that, because "entrance" also
begins with these letters, ENTRALUX suggests "entrance
light" or "entrancing light."
Again, we are not persuaded by this argument. Aside
from the fact that the prefix "intra" has other
definitions--during, between layers of, underneath and
intro--INTRALUX is not a recognized word, and does not have
a clear meaning. Further, it is unlikely that consumers
Ser. No. 75/117,414
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will engage in the sort of mental gymnastics posited by
applicant, and thereby retain a particular image of
ENTRALUX which is different from INTRALUX, and vice versa.
This case is very different from On-Cor Frozen Foods,
Inc. v. Ralston Purina Co., 220 YSPQ 567 (TTAB 1983), on
which applicant relies. The marks in that case, ON-COR and
ENCORE, while phonetically the same, were very different in
appearance, and the word ENCORE had a meaning that would be
recognized by consumers. In addition, the goods were food
for people and food for animals--although somewhat related,
those goods were not nearly as similar as the lighting
fixtures at issue here.
Applicant also points out that the element "LUX" which
is common to both marks is a highly suggestive term for
lighting fixtures. In support of this position, applicant
made of record a dictionary definition for "lux",3 and
listed in its response to the first Office action several
third-party registrations for LUX marks.4 We agree with
applicant that "lux" is at the very least highly suggestive

3 "Lux" is defined as "a unit of illumination equal to the
direct illumination on a surface that is everywhere one meter
from a uniform point source of one candle: a unit of illumination
that is equal to one lumen per square meter."
4 Although a mere listing of third-party registrations is not
sufficient to make them of record, see In re Duofold Inc., 184
USPQ 638 (TTAB 1974), in this case the Examining Attorney has
treated the registrations of record, and we have therefore
considered them.
Ser. No. 75/117,414
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for lighting fixtures. However, the similarity between
applicant’s mark and the cited mark is not just in the
element "lux"; it is in the overall appearance and
pronunciation and commercial impressions of the marks.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
E. W. Hanak
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board