Lakshmi International (California corporation)

Trademark Trial and Appeal Board

Jul 5, 2005

No. 76493360 (T.T.A.B. Jul. 5, 2005)

Mailed: July 5, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lakshmi International
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Serial No. 76493360
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Jill M. Pietrini of Manatt, Phelps & Phillips, LLP for
Lakshmi International.

Hannah Fisher, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Chapman and Kuhlke, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Lakshmi International (a California corporation) filed
an application on February 27, 2003, to register on the
Principal Register the mark LAX-MAX for goods ultimately
amended to read: “stereophonic headphones, universal
remote controls for television recording units and stereos,
electrical adapters, audio cassette conversion apparatus,
television sets, car stereos, audio speakers, radios,
telephones, audio cassette recorders, CD players,
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76493360
2
electrical power extension cords, automatic electrical
distribution apparatus, calculators, head cleaning tapes
and discs for VCRs, CD players and audio equipment,
antennas, microphones, walkie-talkies, batteries, CD
holders, videocassette rewinders, portable stereo units,
cellular telephones, personal stereos, mobile telephones,
video cassette recorders, DVD and CDR recorders, video
cameras, camera cases, camera flashes, and camera tripods”
in International Class 9.1 The application is based on
applicant’s assertion of a bona fide intention to use the

1 The Examining Attorney had made final some requirements
regarding applicant’s identification of goods. In the November
9, 2004 Office action denying applicant’s request for
reconsideration, the Examining Attorney stated the following:
“Applicant has amended a number of items in the description of
goods. However, the final requirement is continued as to
electrical adapters. Upon further consideration, inquiry is made
whether this equipment is electrical converters which appear in
the Office’s on-line classification manual.” Later in the same
Office action she stated: “Because applicant has not filed an
appeal with the Trademark Trial and Appeal Board, and there is no
time remaining in the response period, the application will be
deemed abandoned in due course….” The “six-month response”
clause was deleted from this Office action.
It is clear from the additional statements that the Examining
Attorney did not raise a new inquiry in her denial of the request
for reconsideration. Thus, we will not remand the application to
the Examining Attorney regarding the identification of goods. In
fact, both applicant and the Examining Attorney refer to the
issue in this appeal only as the refusal under Section 2(d), and
the Examining Attorney includes the item “electrical adaptors” in
her restatement of applicant’s identified goods in her brief on
appeal. The Board considers the requirement regarding the
identification of goods to have been withdrawn by the Examining
Attorney.
Ser. No. 76493360
3
mark in commerce pursuant to Section 1(b) of the Trademark
Act, 15 U.S.C. §1051(b).
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified goods, so
resembles the registered mark LAX for “watches” in
International Class 14,2 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.3
Briefs have been filed, but applicant did not request an
oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie

2 Registration No. 2613563, issued August 27, 2002.
3 Although, as noted in footnote 1, the Examining Attorney
believed that the application was abandoned for failure to file
an appeal, in fact applicant did file a timely notice of appeal.
Ser. No. 76493360
4
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Examining Attorney contends that the marks are
similar as applicant’s mark merely adds a laudatory, common
term “max” -- meaning “maximum” as argued by applicant;
that applicant’s arguments that consumers could perceive
“lax” as signifying applicant’s business name “Lakshmi” or
the code for the Los Angeles airport (LAX) are unsupported
by evidence thereof; that the registrant’s and applicant’s
respective goods are related products; that applicant’s
deletion of the item “radios including clocks” from its
identified goods does not obviate the likelihood of
confusion; that neither registrant’s nor applicant’s
identification of goods is restricted as to trade channels
or purchasers; and that doubt must be resolved in the
registrant’s favor.
The Examining Attorney submitted printouts of numerous
third-party registrations to show that “a single source is
likely to sell both watches and a variety of consumer
electronic products such as headphones, antennas, cameras,
batteries, remote controllers, televisions, stereos, audio
speakers, radios, telephones, and calculators.” (Final
Office action, p. 2.)
Ser. No. 76493360
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Applicant argues that the marks are “distinct in
appearance, sound, and meaning” (brief, p. 2); that the
term LAX is commonly used for consumer products and is weak
and entitled to limited protection; that the respective
goods are not related, with registrant selling watches and
applicant selling “consumer electronics used in the home,
office or car for audio, video and cellular needs” (brief,
p. 6); that under an evaluation of the question of
likelihood of confusion, the Examining Attorney has not
shown that the same entities regularly offer watches as
well as various audio and video equipment under the same
mark; that the respective goods are sold through different
channels of trade to different purchasers, with registrant
selling its licensed watches (with well known trademarks
thereon) to wholesalers and applicant selling its goods
through its retail showroom and store in Los Angeles,
California and through other retail stores; and that the
purchasers of registrant’s and applicant’s different goods
are not likely to believe the source of one is the source
of the other.
Turning first to a consideration of the marks, we view
them in terms of their sound, appearance, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Ser. No. 76493360
6
Cir. 2005). In this case, registrant’s mark consists of
the letters LAX and applicant’s mark LAX-MAX begins with
the letters LAX in applicant’s two-syllable mark. The
first part of a mark is often the part impressed upon the
mind of the purchaser, and the most likely to be
remembered. See Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895 (TTAB 1981). The addition of
a word to a registered mark does not generally avoid
confusion. See Menendez v. Holt, 128 U.S. 514 (1888);
Coca-Cola Bottling Co. V. Joseph E. Seagram & Sons, Inc.,
526 F.2d 556, 188 USPQ 105 (CCPA 1975); and In re El Torito
Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988).
There is no evidence of record as to customer
perception of the connotation of either “LAX” or “MAX.”
However, we take judicial notice of The American Heritage
Dictionary (Fourth Edition 2000) definition: “max. abbr.
maximum.” We find applicant’s argument that consumers will
think of “MAX” as referring to “maximum” to be quite
reasonable. However, applicant’s arguments that consumers
will perceive “LAX” as the Los Angeles airport code or the
business name of applicant are unsupported and
unpersuasive, particularly in the context of applicant’s
goods. In any event, whatever the connotation of “LAX” may
Ser. No. 76493360
7
be, it will presumably be the same for both applicant and
registrant.
Importantly, under actual market conditions, consumers
generally do not have the luxury of making side-by-side
comparisons. The proper test in determining likelihood of
confusion is not a side-by-side comparison of the marks,
but rather must be based on the similarity of the
commercial impressions engendered by the involved marks.
See Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255
(TTAB 1980). The differences in the marks (applicant’s
addition of a hyphen and the syllable “MAX”) do not serve
to distinguish the marks here in issue. That is,
purchasers are unlikely to remember the specific
differences between the marks due to the recollection of
the average purchaser, who normally retains a general,
rather than a specific, impression of the many trademarks
encountered. Purchasers who do note the additional element
MAX in applicant’s mark are likely, because of the
laudatory significance of MAX, to view LAX-MAX as a
variation of registrant’s mark LAX, and to assume both
marks indicate goods emanating from a single source.
We find that the marks are similar in sound,
appearance, connotation and commercial impression. See In
Ser. No. 76493360
8
re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
Applicant’s argument that “LAX” is a weak mark is
presented for the first time in its brief on appeal (pp. 8-
9) and includes a typed listing of third-party applications
and registrations of “LAX formative marks in Class 9”
(brief, p. 8), indicating only the marks and the
registration/application numbers. The Examining Attorney
properly noted that this evidence is inadmissible as
applicant did not timely submit evidence of third-party
registrations in a proper format.
Even if the listing had been made of record, it has
little probative value. Applications are evidence only
that the applications were filed on a particular date.
Third-party registrations are not evidence of use in the
marketplace or public familiarity with the third-party
marks. See AMF Incorporated v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); and In
re Phillips-Van Heusen Corporation, 228 USPQ 949, footnote
5 (TTAB 1986). Further, because the list shows only the
marks and not the goods or services, it does not establish
that LAX has a suggestive significance for the goods shown
in the cited registration or applicant’s application.
Ser. No. 76493360
9
Turning to the relatedness of the goods, the question
of likelihood of confusion must be determined based on an
analysis of the goods or services identified in applicant’s
application vis-a-vis the goods or services identified in
the registration.4 See Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990); and Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
As explained previously, in support of the refusal to
register, and particularly the relatedness of the
respective goods, the Examining Attorney has submitted
copies of several third-party registrations, all based on
use in commerce, indicating the same entities offer both
watches and various electronic consumer items under the
same mark. See, for example, the following:
Registration No. 2814973, with goods in
International Classes 9 and 14, for,
inter alia, “television sets; radios;
video cassette recorders; video
cameras; … headphones; … earphones;
microphones; … calculators; …
batteries; …” and “watches, clocks and
jewelry”;

Registration No. 2728063, with goods in
International Classes 9 and 14, for,
inter alia, “consumer audio and video

4 The Examining Attorney argues applicant’s website indicates
that applicant sells “alarm clocks.” This is irrelevant as
“alarm clocks” are not included in applicant’s identification of
goods.

Ser. No. 76493360
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electronic products, namely, … compact
disc players, … walkie-talkies, audio
speakers, headphones, microphones,
…radios, radio antennas, televisions,
telephones, …” and “watches, alarm
clocks, and clocks incorporating
radios … ”;

Registration No. 2237855, with goods in
International Classes 9 and 14, for,
inter alia, “audio cassette recorders,
radios, … compact disk players,
headphones, calculators, … telephones,
…” and “clocks, watches”;

Registration No. 2119472, with goods in
International Classes 9 and 14 (Class
11 goods cancelled), for, inter alia,
“calculators, audio cassette players,
radios, stereo headphones,
telephones,…” and “clocks and watches”;

Registration No. 1632969, with goods in
International Classes 9 and 14, for,
inter alia, “radios and calculators”
and “clocks,… watches”;

Registration No. 2352467, with goods in
International Classes 9 and 14, for
“calculators and parts therefor” and
“watches and clocks and parts
therefor”; and

Registration No. 1659538, with goods in
International Classes 9 and 14, for,
“calculators” and “watches.”

When considering the third-party registrations
submitted by the Examining Attorney, we remain mindful that
such registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them. Such third-party registrations nevertheless have
Ser. No. 76493360
11
some probative value to the extent they may serve to
suggest that such goods are of a type which emanate from
the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988). Thus,
the third-party registrations submitted by the Examining
Attorney are evidence of the relatedness of the respective
goods in that they show applicant’s identified goods and
the goods listed in the cited registration may emanate from
a single source and be sold under a single mark.5 See
Hewlett-Packard Company v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)(“even if the
goods and services in question are not identical, the
consuming public may perceive them as related enough to
cause confusion about the source or origin of the goods and
services”); and Recot Inc. v. M.C. Becton, 214 F.3d 1332,
54 USPQ2d 1894, 1898 (Fed. Cir. 2000)(“even if the goods in
question are different from, and thus not related to, one
another in kind, the same goods can be related in the mind
of the consuming public as to the origin of the goods. It

5 We note that many of the approximately 80 third-party
registrations submitted by the Examining Attorney are for house
marks or merchandising marks. Because of the variety of goods
with which such marks are used, we have not given them weight in
our consideration of the relatedness of the goods.
Ser. No. 76493360
12
is this sense of relatedness that matters in the likelihood
of confusion analysis.”).
We find that the respective goods are related.6
Applicant argues that the goods are “directed to
completely different markets and different customers”
(brief, p. 8.) in that, for example, applicant sells
retail, while applicant contends that registrant sells its
goods to retailers. There are no limitations in either
applicant’s or registrant’s identifications of goods as to
trade channels and purchasers. Thus, we must presume that
the goods travel in all their normal channels of trade and
that they are purchased by the same classes of purchasers,
which in this case is the public at large. See Canadian
Imperial Bank v. Wells Fargo Bank, supra. Moreover, even
if registrant sold its goods through wholesale trade
channels, the goods could in turn be sold by those
retailers to the general public.
We find that the respective goods, as identified,
could be offered through the same or at least overlapping
channels of trade to the same consumers.

6 Applicant’s arguments to the contrary are not supported by any
evidence. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010
(Fed. Cir.) (The issue in the case was mere descriptiveness, but
the Court discussed an applicant’s burden of coming forward with
evidence in support of its arguments.)
Ser. No. 76493360
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In view of the similar marks, the relatedness of the
goods, and the same or overlapping channels of trade and
purchasers, we find that applicant’s mark LAX-MAX, when
used by applicant for its identified goods, is likely to
cause confusion with the registered mark LAX for watches.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.