Kaufel Group Ltd.

Trademark Trial and Appeal Board

Aug 26, 1999

No. 75205114 (T.T.A.B. Aug. 26, 1999)

Hearing: Paper No. 13
Dec. 16, 1998 RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Kaufel Group Limited
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Serial No. 75/205,114
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Peter L. Costas of Pepe & Hazard for Kaufel Group Ltd.
Elizabeth Wood-King, Trademark Examining Attorney, Law Office
102(Thomas Shaw, Managing Attorney).
_______
Before Cissel, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 27, 1996, applicant applied to register the
mark "POWERLITE" on the Principal Register for "electrical
equipment, namely, street, outdoor and indoor high intensity
discharge lighting fixtures sold individually and in
installations including metal poles and brackets for such
fixtures, outdoor lighting control relays, switch gear for
voltages 600 volts or less and power cable accessories sold as a
unit," in Class 9. The application was based on a claim of
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first use of the mark in interstate commerce on December 1,
1993.
The Examining Attorney refused registration under Section
2(d) of the Act on the ground that applicant’s mark, as used in
connection with the goods set forth in the application, so
resembles the mark "POWER-LITE," which is registered1 for
"electric lamps," in Class 11, that confusion is likely. She
also noted that the proper class for applicant’s goods is Class
11.
Applicant responded by amending the application to the
proper class, and also presented arguments on the issue of
likelihood of confusion. Applicant contended that the term
"electric lamps" in the cited registration refers to "the bulbs
to which power is supplied to produce illumination," rather than
to the fixtures which are specified in the application, and that
in view of these differences in the goods, confusion is not
likely.
Attached to the response were copies of printed advertising
applicant uses to promote its lighting fixtures. Applicant also
submitted a catalog from the registrant listing the products
registrant sells under the cited registered mark. Applicant

1 Registration No. 1,198,604 issued on the Principal Register to Duro-
Test Corp. on June 22, 1982. A combined affidavit under Sections 8
and 15 of the Act was received and accepted.
Ser No. 75/205,114
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argued that these exhibits establish that the goods of applicant
differ substantially from the goods of the registrant, and that
they move through different channels of trade to sophisticated
purchasers. Lastly, applicant argued that it and its
predecessors had been using the mark in the name of its
companies here and in Canada since 1930, more than 26 years
before registrant’s claimed date of first use, and that this
fact should be considered by the Board in determining whether
confusion is likely.
The Examining Attorney accepted the amendment to the
classification of applicant’s goods, but made final the refusal
to register under Section 2(d) of the Act.
Applicant timely filed a Notice of Appeal. Applicant filed
an appeal brief and the Examining Attorney filed a brief in
response to it. The Examining Attorney’s brief objected to the
fact that applicant had made arguments based on two third-party
registrations and one prior registration owned by the same
entity that owns the registration cited against this
application, but applicant had not included copies of such
registrations. Applicant, responsive to the Examining
Attorney’s objection, submitted copies of these registrations.
At applicant’s request, an oral hearing on this matter was
conducted before the Board on December 16, 1998.
Ser No. 75/205,114
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Our determination of whether the refusal to register under
Section 2(d) of the Act is appropriate is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors the Court identified as bearing on the likelihood of
confusion issue in In re E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
In the case at hand, the marks are essentially the same.
The fact that the registered mark has a hyphen between the terms
"POWER" and "LITE" has almost no effect on the commercial
impression that the mark engenders, which is substantially the
same as that generated by the registered mark. It is well
settled that where the marks in question are identical or nearly
so, in order to support a refusal based on likelihood of
confusion, the goods identified by the marks do not need to be
as closely related as they would be if the marks were not the
same. It is only necessary that there be a viable relationship
between the parties’ goods. In re Concordia International
Forwarding Corp., 222 USPQ 355 (TTAB 1983).
In the instant case, other legal principles also come into
play. The most significant of these is that in determining
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whether confusion is likely, the Board must compare the goods as
they are identified in the application and the cited
registration, respectively, without limitations or restrictions
that are not reflected therein. Toys "R" Us, Inc., v. Lamps R
Us, 219 USPQ 340 (TTAB 1983). Further, any doubt as to whether
confusion is likely must be resolved in favor of the prior user
or registrant, and against an applicant, who has a duty to
choose a mark which is not similar to a mark already in use by a
competitor. Burroughs Wellcome Co. v. Warner-Lambert Co., 203
USPQ 191 (TTAB 1979).
In the case at hand, the goods specified in the application
are closely related to those set forth in the cited
registration. The application specifies "electrical equipment,
namely…lighting fixtures…," and the registration identifies the
goods as "electric lamps." Clearly, these goods are
complementary. As applicant correctly points out, lamps are not
the same thing as fixtures, but as applicant also notes, (at
page 6 of its brief), the advertising materials it submitted
show that the owner of the cited registration in fact sells both
lamps and lighting fixtures, although both products are
apparently not sold under the registered mark. Clearly,
purchasers of lamps and lighting fixtures have a reasonable
basis to assume that the use of similar trademarks on them
indicates that one entity is the source of both of these types
Ser No. 75/205,114
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of products, when they have been shown to be promoted together
in the same sales literature by the same producer for use
together.
Applicant argues strenuously that the products it sells
under the mark it seeks to register are different from the goods
sold under the registered mark. To this end, as noted above,
applicant made of record promotional material which describes in
detail specific products sold by the registrant under the
registered mark and specific goods applicant sells under its
mark. Applicant’s argument is, in essence, that the actual
products marketed under the cited registered mark and the mark
applicant seeks to register are quite different, that they move
in different channels of trade to different sophisticated
purchasers, and that they are used for different purposes.
The issue before the Board in this appeal is not whether
the goods on which the marks are presently being used are
different, however. The issue is whether the use of virtually
the same mark on both the goods identified in the application
and the goods identified in the registration is likely to give
purchasers the mistaken idea that they come from the same source
or are otherwise sponsored by or associated with the same
entity.
Applicant’s argument also runs afoul of the aforementioned
rule requiring the Board to consider the goods as they are
Ser No. 75/205,114
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identified in the respective application and registration,
without limitations or restrictions which are not reflected
therein. When we take this approach, we see what applicant
concedes anyway, i.e., that lamps and electric lighting fixtures
may emanate from a single entity, such as the owner of the cited
registration in the case at hand. These goods are
complementary, and although this record does not establish that
purchasers of these products possessed any particular degree of
sophistication, even if this were the case, the use of these
nearly identical trademarks on such closely related goods is
likely to cause confusion even among relatively sophisticated
purchasers.
Applicant’s argument that its prior use of its mark negates
the likelihood of confusion with registrant’s mark is not well
taken either. As the Examining Attorney points out, any claim
of priority would have to be made in the context of a petition
to cancel the cited registration. In the absence of such a
petition to cancel, applicant’s claim of priority constitutes an
impermissible attack on the validity of the cited registration.
Such claims have no place in this ex parte determination of
registrability of applicant’s mark. In re Pollio Dairy Products
Corp., 8 USPQ2d 2012 (TTAB 1988).
We note for the record that we have not considered the two
third-party registrations, or the copy of the additional prior
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registration, which applicant submitted after the Examining
Attorney had submitted her brief on appeal. The Examining
Attorney properly objected to these registrations, and did not
argue the merits of the case as if they were of record. Because
they were untimely submitted under Trademark Ruled 2.142(d), the
Board has not considered them. Moreover, even if they had been
properly made of record, third-party registrations have little
probative effect on the issue of likelihood of confusion. In re
Hub Distributing , Inc., 218 USPQ 284 (TTAB 1983).
In summary, we hold that in the case at hand confusion is
likely because these nearly identical trademarks are used with
products which, as identified without limitation or restriction
in the respective application and registration, must be
considered to be closely related, complementary goods.
Additionally, as noted above, even if we had any doubts, such
doubts would necessarily be resolved against applicant.
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Accordingly, the refusal to register applicant’s mark under
Section 2(d) of the Act is affirmed.
R. F. Cissel
H. R. Wendel
D. E. Bucher
Administrative Trademark Judges
Trademark Trial & Appeal Board
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