Novelty Lights, Inc.

Trademark Trial and Appeal Board

Sep 8, 2016

No. 86207702 (T.T.A.B. Sep. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Novelty Lights, Inc.
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Serial No. 86207702
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Peter C. Lemire of Leyendecker & Lemire LLC,
for Novelty Lights, Inc.
Jeffrey S. DeFord, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Taylor, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Novelty Lights, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark for:
Accent lights for indoor use; Electric holiday lights; Electric
light bulbs; Electric lights for Christmas trees; LED (light
emitting diodes) lighting fixtures for use in display,
commercial, industrial, residential, and architectural
Serial No. 86207702
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accent lighting applications; Light bulbs in International
Class 11.1
The Trademark Examining Attorney refused registration of Applicant’s mark for:
(1) failure to comply with a disclaimer requirement under Sections 2(e)(1) and 6(a) of
the Trademark Act, 15 U.S.C. §§ 1052(e)(1) and 1056(a), for the wording
“NoveltyLights.com” contained in the mark because it merely describes a feature,
purpose and/or characteristic of Applicant’s goods, and (2) failure to provide sufficient
evidence to support a claim of acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f).
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the request for
reconsideration, the appeal was resumed. Applicant and the Trademark Examining
Attorney have briefed their positions.2 We affirm the refusal to register.

1 Application Serial No. 86207702 was filed on February 28, 2014, based upon Applicant’s
claim of first use anywhere and first use in commerce since at least as early as September 3,
2004. The mark consists of the literal element “NoveltyLights.com” circumscribed by a
shaded oval with a plurality of diamond shaped lightly shaded elements arranged in a
sunburst pattern emanating from the center of the oval.

2 The Rules require submissions by parties to be double-spaced. Trademark Rule 2.126(b); 37
C.F.R. § 2.126(b), TBMP § 1203.01 (June 2016). Although Applicant’s Main Brief was filed in
single-space format, its Reply Brief was filed in the correct double-spaced format. Despite
this lapse, and in view of the lack of an objection from the Trademark Examining Attorney
and Applicant’s apparent compliance with page limitation requirements, Applicant’s Main
Brief is accepted as filed.
Serial No. 86207702
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I. Whether NoveltyLights.com is Merely Descriptive and Should Be
Disclaimed?
Applicant challenges the Trademark Examining Attorney’s requirement that it
must disclaim “NoveltyLights.com” as a condition for registering the mark
.
Determining the descriptiveness of a mark under § 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), is done in relation to an applicant’s goods and/or services, the
context in which the mark is being used, and the possible significance the mark would
have to the average purchaser because of the manner of its use or intended use. See
In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007)). An applicant may not claim exclusive rights to terms that others
may need to use to describe their goods and/or services in the marketplace. See Dena
Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991);
In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).
Accordingly, wording in a mark must be disclaimed pursuant to § 6 of the
Trademark Act, 15 U.S.C. § 1056, if it is merely descriptive of an ingredient, quality,
characteristic, function, feature, purpose, or use of an applicant’s goods and/or
services and thus is an unregistrable component of the mark. Failure to comply with
a requirement for a disclaimer is a basis on which to refuse registration. See In re La.
Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015); In re
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Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); In re Stereotaxis
Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
Looking first to the meaning of Applicant’s mark , the Examining
Attorney provided definitions of “novelty” as “the quality of being new and fresh and
interesting and/or a small usually cheap new toy, ornament, or trinket,” and “lights”
as “anything that illuminates, such as a lamp or candle,”3 contending that the
combined terms merely describe a feature or characteristic of the goods that are lights
featuring new, fresh and interesting shapes, styles, ornaments, forms and colors.4
Although Applicant notes that the terms “NoveltyLights” and “Novelty Lights” do not
appear in any dictionary,5 a term does not have to appear in a dictionary (or other
publication) in order for it to be found merely descriptive. In re Thomas Collators,
Inc., 158 USPQ 297, 298 (TTAB 1968). The fact that the literal portion of Applicant’s
mark is presented as one term NovletyLights.com, is inconsequential. See Minnesota
Mining & Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB
1967) (“It is almost too well established to cite cases for the proposition that an
otherwise merely descriptive term is not made any less so by merely omitting spaces
between the words….”).

3 Office Action of 6/10/2014 pp. 4-6; Collins Dictionaries http://www.collinsdictionary
.com/english/novelty 06/10/2014. While both the Office Action and Applicant’s Response to
Office Action of 4/29/15, p. 9, acknowledge that a definition of “lights” was provided by the
Examining Attorney, a copy of the definition is not in the USPTO’s file. However, Applicant
admitted the descriptiveness of “lights” in its Brief at p. 3 (12 TTABVUE 4).
4 Examining Attorney’s Appeal Brief, 14 TTABVUE 6.
5 Applicant’s Reply Brief p. 2 (15 TTABVUE 3).
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The Examining Attorney presented screen shots from over fifteen retail websites
and online stores showing use of terms such as “novelty lights,” “novelty home
lighting,” “novelty or party lights,” “novelty Christmas lights,” “novelty string lights,”
“outdoor novelty lights,” “novelty & specialty light strings,” and “novelty lighting” as
a specific category, subcategory or department of goods featuring identical or similar
lighting products to Applicant’s goods.6 This evidence shows that the terms “novelty
light(s)” and “novelty lighting,” and combinations thereof, are being used by multiple
third-parties to descriptively refer to the actual lighting products themselves.
For example, pages 34 and 35 of the above-identified evidence consist of two pages
of search results from a search on the Google search engine for “novelty lights.”7 To
show the highly descriptive use of the term identified in the Google search results,
the Examining Attorney submitted copies of screen shots from several of the websites
identified in the search results. Those websites confirm the merely descriptive use of
the term “novelty lights” as a product category and product name for goods identical
or very similar to those identified by Applicant.8

6 See attachments to Final Office Action of 5/26/2015 at pp. 8 and 12; 14 and 18; 19; 26; 27;
29; 31; 34-35; 36; 43 and 45.
7 See footnote 7.
8 See for example, exhibits from Final Office Action 5/26/2015, namely websites for “Flashing
Blinky Lights” p. 36, “ChristmasPlace” p. 43 and “The Holiday Light Store” p. 45. Applicant
mistakenly argues that the Flashing Blinky Lights’ website “doesn’t utilize the term
NOVELTYLIGHTS, but also does not feature any products in common with Applicant,” citing
to “pages 32-38 of the Final Office Action.” Applicant’s Reply Brief p. 3 (15 TTABVUE 4).
However, Flashing Blinky Lights uses “Novelty Lights” in text on the Cool Light Up Novelties
page of the website (see p. 36 of the Final Office Action), and also offers a Soft Glow Orb Light
similar to Applicant’s LED Battery Operated Starlight Spheres (see p. 41 Final Office Action
of 5/26/2015 and p. 130 Request for Reconsideration After Final Action).
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Additionally, Applicant’s website and product catalogs advertise various types of
lighting products, including “novelty lights.” As displayed on Applicant’s website and
in its paper catalogs for 2011/2012 and 2014/2015, Applicant uses the term “novelty
lights” descriptively in connection with its lighting products:
“The company was established in 1999 as a direct importer
of Rope Light, Holiday Lights, and a variety of popular
novelty lights. Our lighting lines have grown
significantly since then; however, we pride ourselves on
knowing our customers and their needs and most
importantly providing excellent service.”9 (emphasis
added).
Applicant’s own use of the individual words in a descriptive manner is strong
evidence that the combined term is descriptive. See, e.g., In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (“[applicant’s] own submissions
provided the most damaging evidence that [the word SCREENWIPE is generic]….”);
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)
(“Evidence of the context in which a mark is used ... in advertising material ... is
probative of the reaction of prospective purchasers to the mark.”); In re Educational
Communications, Inc., 231 USPQ 787, 790 (TTAB 1986) (“[A]pplicant’s own highly
descriptive usages of the components of its asserted mark ... is strong evidence of its
generic nature….”).

9 See Final Office Action of 5/26/2015 at p. 6 (from Product Catalog 2011-2012 http:// www.
noveltylights.com/About.html); see also Applicant’s Response dated 4/29/2015 at p. 21 (from
Product Catalog 2014-2015) and Request for Reconsideration of 11/25/2015 at pp. 13, 53,
(from Product Catalog 2011-2012) and p. 93 (from Product Catalog 2014-2015, which each
include the statement: “Novelty Lights, Inc., established in 1999 by brothers Tres and K.C.
Coors, operates as a direct importer of rope light, a variety of holiday lights, and, as our name
states, an assortment of popular novelty lights.”).
Serial No. 86207702
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In further support of the merely descriptive nature of the term, the Examining
Attorney provided copies of twelve third-party websites showing the descriptive use
of “novelty lights” to describe or identify both the category and identical or very
similar goods.10 Examples from those twelve websites show the highly descriptive use
of the wording:
Lights & Décor website www.lightsforallocccasions.com states:
“Novelty String lights are perfect for holidays, parties
and home decor. Give as a gift or use them to match a party
theme or bedroom decor. Novelty lights are a fun way to
bring a warm glow to any room or event.”
The electronic commerce section is titled “Novelty String
Lights”
“ Green Tractor String Lights, Include Hanging strings,
Novelty Lights”
“…This site features exciting decorative and novelty
lighting that is a safe alternative to burning candles,
torches and hot incandescent bulbs.”
The Christmas Central website at www.christmascentral.com states:
“Novelty Christmas Lights are an imaginative way to
put your personality on display during the holiday season.
… “At Christmas Central we have all of the Novelty
Christmas Lights and themes you could ever need to
proudly display who you are with an exciting electric glow.”
… “Star Wars, Betty Boop, Peanuts, Irish Shamrocks,
Santa Claus, Rudolph, Bud Light, Coca-Cola, Horses, and
Edison Style Retro Lights are just a handful of some of the
unbelievable Novelty Themed Lights we have available.
The spectrum of colors, styles, and themes of Christmas
Lights we carry are practically limitless. Show off your
personality this Christmas season with the best Novelty
Christmas Lights at Christmas Central.”

10 See exhibits to the Denial of Request for Reconsideration of 2/19/2016.
Serial No. 86207702
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And, the Amazon.com website states:
“Brighten up your home or celebration with novelty
lighting.”11
(emphasis added).
Additionally, the websites also show the following descriptive uses of “novelty
lights:”
“Novelty Party Lights If you’re looking for Novelty
Party Lights, you’ve come to the right place….;”
“Novelty Lights…Using fun novelty lights to edge your
party space or create decorative swags adds a festive glow
to your event. Choose novelty lights such as lamps, tiki
torches, or fun shaped twinkle lights…Novelty lights add
both fun accents and mood lighting to your event….;”
“Novelty Lights … Unique and unusual personal and
household adornment….;”
“Novelty Lights … All types of Novelty Lights for every
celebration occasion.”;
“Novelty Party Lights … Fun Novelty Lights …
Novelty Party String Lights are a great way to decorate
for holidays, parties and home décor….Find horses, pigs or
another animal in the Animal Novelty Lights… If you’re
in need of battery operated novelty lights because of a lack
of electricity, we have those for you too. You might even
find Brand Name or Movie Novelty String Lights that
meet your fancy…. Food & Drink Novelty Lights … We
have something for the restaurant owners and food
connoisseurs too. Visit the Food & Drink Novelty String
Lights section to find delicious party string lights!”;

11 See exhibits from the Denial of Request for Reconsideration of 2/19/2016, namely websites
for “Lights & Décor” http://www.lightsforalloccasions.com pp. 8, 28 and http:// www .lights
foralloccasions.com/t-about.aspx p. 43; “Christmas Central” http://www.christmas central
.com/c-765-novelty-lights.aspx pp. 44-47 and “Amazon” http://www.amazon.com/novelty-
lights/b?ie=UTF8&node=3736531 pp. 48, 52;
Serial No. 86207702
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“indoor outdoor novelty lights.”12
(emphasis added).
Moreover, several websites list Novelty Lights as a product category:
Novelty String Lights;
Novelty Lights;
Christmas LED NOVELTY LIGHTS;
Novelty Party Lights;
Novelty String Lights-Choose Category;
Now In: LIGHTS → Novelty Lights.13
Thus, the term “novelty lights” is a term used by sellers of lighting devices to
describe lighting products. While “novelty lights” does not identify one particular type
of lighting device, the evidence shows that it is a term commonly used by businesses
selling lighting devices to identify or describe smaller ornamental decorative or
interesting lights. Applicant is using the term “novelty lights” to describe its similar
lighting products.

12 See exhibits from the Denial of Request for Reconsideration of 2/19/2016, namely websites:
http://www.partylights.com/Novelty p. 54; http://www.shindigz.com /party-supplies/party
-decorations/party-lights/novelty-lights/59572?page=1%7C0%7C500. p. 56-57; http://www
.lasersandlights.com/novelty.html p. 58; https://www.theholidaylight store.com/Novelty-
Lights/ p. 70; http://www.oogalights.com/Novelty-String-Lights.aspx p. 77; http://www.
target.com/indoor+outdoor+novelty+lights p. 78.
13 See Denial of Request for Reconsideration of 2/19/2016: http:// www. lights forall occasions
.com/c-494-novelty-string-lights.aspx p. 8; http://www. lasersandlights.com /novelty.html p.
58; http://www.kurtadler.com/department/1537 p. 66; https://www.the holidaylightstore
.com/Novelty-Lights/ p. 70; http://www.santasquarters. com/christmas-lights/led-novelty-
lights/ p. 72; http://www.oogalights.com/Novelty-String-Lights .aspx p. 75, 77; http: // gis2
.calvin-giordano.com/c-95-novelty-lights.aspx p. 83-84.
Serial No. 86207702
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The fact that Applicant’s application also includes goods that are not “novelty
lights” does not matter. A descriptiveness refusal is proper with respect to all of the
identified goods in an International Class if the mark is descriptive of any of the goods
or services in that Class. In re Chamber of Commerce, 102 USPQ2d at 1219; In re
Stereotaxis Inc., 77 USPQ2d at 1089.
Lastly, the Examining Attorney argues that the latter part of Applicant’s mark
consists of the non-source identifying generic top-level (gTLD) domain “.com,” which
merely indicates an Internet address for use by commercial, for-profit organizations.
See, e.g., In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed.
Cir. 2009). A gTLD, such as “.com” generally serves no source-indicating function
because it will usually be perceived only as part of an Internet address; thus, adding
it to an otherwise unregistrable mark, such as “novelty lights,” typically does not
render the mark registrable. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1374 (Fed. Cir. 2004); In re Microsoft Corp., 68 USPQ2d 1195, 1202-
03 (TTAB 2003); see also In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420,
1422 (Fed. Cir. 2005) (“Only in rare instances will the addition of a [g]TLD indicator
to a descriptive term operate to create a distinctive mark.”).
In view of the foregoing, the evidence submitted by the Examining Attorney amply
supports the descriptiveness of “novelty lights.” Not only are the components of the
applied-for mark descriptive, they retain their descriptive meanings in relation to
Applicant’s goods, resulting in a composite mark that is itself descriptive and not
registrable. See, e.g., In re Oppedahl & Larson, 71 USPQ2d at 1374 (PATENTS.COM
Serial No. 86207702
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merely descriptive of computer software for managing a database of records that
could include patents and for tracking the status of the records by means of the
Internet); In re Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (“…
because the combination of the terms does not result in a composite that alters the
meaning of either of the elements, refusal on the ground of descriptiveness is
appropriate.”); In re Mine Safety Appliances Co., 66 USPQ2d 1694, 1697 (TTAB 2002)
(WORKMASK found descriptive despite absence of any evidence composite appeared
in dictionaries).
Upon reviewing the evidence submitted by Applicant, we find it is insufficient to
overcome the evidence that the terms “novelty lights” and “noveltylights.com” are
merely descriptive and characteristic of the lighting goods offered for sale by
Applicant.
II. Acquired Distinctiveness
In an attempt to obviate the disclaimer requirement, Applicant amended its
application to assert a claim of acquired distinctiveness under § 2(f) of the Trademark
Act based on its use in commerce and the evidence offered into the record.
While § 2(e)(1) of the Lanham Act precludes registration of a merely descriptive
mark, descriptive marks that acquire distinctiveness may be registrable on that basis
under § 2(f), 15 U.S.C. § 1052(f), but a generic mark, being the “ultimate in
descriptiveness,” cannot acquire distinctiveness. In re La. Fish Fry, 116 USPQ2d at
Serial No. 86207702
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1266; H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986).14
Unlike descriptiveness, where the burden of proof lies with the Examining
Attorney, the burden of proving that the mark has acquired distinctiveness under
§ 2(f) is on Applicant. In re La. Fish Fry, 116 USPQ2d at 1264; In re
Steelbuilding.com, 75 USPQ at 1422; In re Hollywood Brands, Inc., 214 F.2d 139, 102
USPQ 294, 295 (CCPA 1954) (“There is no doubt that Congress intended that the
burden of proof [under Section 2(f)] should rest upon the applicant….”).
The amount and character of evidence required to establish acquired
distinctiveness depends on the facts of the case and particularly on the nature of the
mark sought to be registered. Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823,
166 USPQ 34, 39 (CCPA 1970); In re White Jasmine LLC, 106 USPQ2d 1385, 1395
(TTAB 2013). The more descriptive a term is, the greater an applicant’s evidentiary
burden to establish acquired distinctiveness. See, e.g., In re Bongrain Int’l (Am.)
Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (quoting Yamaha
Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir.
1988)). Highly descriptive terms are less likely to be perceived as trademarks and
more likely to be useful to competing sellers than are less descriptive terms, so more
substantial evidence of acquired distinctiveness will ordinarily be required to

14 Because the refusal to register was based on mere descriptiveness under § 2(e)(1) of the
Trademark Act and failure to submit sufficient proof of acquired distinctiveness, we need not
address the issue of genericness raised for the first time by the Examining Attorney in the
Denial of Applicant’s Request for Reconsideration.
Serial No. 86207702
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establish that such terms truly function as source-indicators. In re Greenliant
Systems Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010).
Thus, it is Applicant’s burden to show that its proposed mark has acquired
distinctiveness. “Distinctiveness is acquired by ‘substantially exclusive and
continuous use’ of the mark in commerce.” In re Owens-Corning Fiberglas Corp., 774
F.2d 1116, 227 USPQ 417, 424 n. 11 (Fed. Cir. 1985) (citing Levi Strauss & Co. v.
Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed. Cir. 1984)). An applicant must
show that the primary significance of the mark in the minds of consumers is not the
product, but the source of that product in order to establish acquired distinctiveness.
See In re Steelbuilding.com, 75 USPQ2d at 1422; Nextel Communications Inc. v.
Motorola Inc. 91 USPQ2d 1393, 1401 (TTAB 2009); In re Crystal Geyser Water Co.,
85 USPQ2d 1374, 1376 (TTAB 2007).
The following factors are generally considered when determining whether a
proposed mark has acquired distinctiveness based on extrinsic evidence:
(1) length and exclusivity of use of the mark in the United
States by applicant;
(2) the type, expense, and amount of advertising of the
mark in the United States; and
(3) applicant’s efforts in the United States to associate the
mark with the source of the goods and/or services, such as
unsolicited media coverage and consumer studies.
See In re Steelbuilding.com, 75 USPQ2d at 1424; In re Brouwerij Bosteels, 96 USPQ2d
1414, 1424 (TTAB 2010). Acquired distinctiveness may be shown by direct and/or
circumstantial evidence. Direct evidence includes actual testimony, declarations or
surveys of consumers as to their state of mind. Circumstantial evidence is evidence
Serial No. 86207702
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from which consumer association might be inferred, such as years of use, extensive
amount of sales and advertising, and any similar evidence showing wide exposure of
the mark to consumers. A showing of acquired distinctiveness need not consider all
these factors, and no single factor is determinative. In re Steelbuilding.com, 75
USPQ2d at 1424.
In response to the initial Office Action requiring Applicant to disclaim the wording
“NOVELTYLIGHTS.COM,” Applicant submitted a declaration under § 2(f) claiming
acquired distinctiveness based upon five years of use of the mark .15
Section 2(f) of the Trademark Act and 37 C.F.R. § 2.41(a)(2) state that reliance on a
claim of five years’ use to establish acquired distinctiveness “may” be acceptable.
Whether a claim of five years’ use will be deemed sufficient to establish that the mark
has acquired distinctiveness depends largely on the nature of the mark in relation to
the specified goods. However, the USPTO may, at its option, require additional
evidence of distinctiveness. See In re La. Fish Fry, 116 USPQ2d at 1265 (noting that
the statute does not require the USPTO to accept five years’ use as prima facie
evidence of acquired distinctiveness); 37 C.F.R. § 2.41(a)(2). That is exactly what
happened in this case. The Examining Attorney issued a second Office Action noting
that Applicant’s § 2(f) affidavit of use was insufficient to show acquired
distinctiveness “because the applied-for mark is highly descriptive of applicant’s
goods;” the proposed mark being made up of the highly descriptive word element

15 See Response with Section 2(f) Claim of Acquired Distinctiveness filed with Petition to
Revive Abandoned Application on 1/13/2015.
Serial No. 86207702
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“novelty” combined with the generic term “lights” and a top level domain “.com.” To
support the claim of acquired distinctiveness, Applicant was allowed to respond by
submitting additional evidence.16
In further support of the distinctiveness of its mark, Applicant submitted the
Affidavit of its President, Henry Coors, attesting to the dates of use, sales figures
since 2004, advertising dollars spent, sales in the fifty States and internationally, and
website visits and page views since 2001.17 Specifically, Applicant’s President avers
that starting in March of 1999, Applicant has continuously and exclusively used its
“mark” NOVELTYLIGHTS to identify its products in commerce and in September of
2004, adopted the subject mark, and has continuously and exclusively used both
“marks” to identify Applicant’s products in commerce.18 Thus, Applicant argues that
it has submitted evidence supporting “12 years’ worth of use and promotion of the
Applied For Mark and over 17 years of use and promotion of the Literal Element
[NoveltyLights].”19 However, “the fact that an applicant has used its mark for a long
time does not necessarily establish that the mark has acquired distinctiveness.” In re
Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1158 (TTAB 2009); see Flowers Industries
Inc., v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987); In re The

16 See Office Action dated 2/6/2015.
17Affidavit of Henry Coors attached to Applicant’s Response to Office Action dated 4/29/2015,
pp. 14-77. Mr. Coors’s Affidavit mistakenly refers to use of NOVELTYLIGHT and
www.noveltylight.com, instead of NOVELTYLIGHTS and www.noveltylights.com, which is
what is shown on the Exhibits submitted with his Affidavit.
18 Affidavit of Henry Coors, ¶ 4, attached to Response to Office Action dated 4/29/2015, p. 14.
19 Applicant’s Brief p. 5 (12 TTABVUE 6).
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Interstate Folding Box Co., 167 USPQ 241, 244 (TTAB 1970) (although applicant may
be the only one in the trade to use the term for almost thirty years, a word or notation
conveying a readily understood meaning and significance is not elevated to the
stature of a registrable trademark as a result of possible origination and long use).
Applicant next argues that evidence that it is the leader in the field for the goods
sold under the mark is evidence of distinctiveness, citing Mr. Coors’ Affidavit that
Applicant has sold over $54 million worth of product bearing its mark; and spent over
$900,000 in advertising utilizing its mark from 2012-2014.20 Although Mr. Coors’
Affidavit states that such sales have occurred in all 50 States, Canada, every
European country and Australia, there is no breakdown of the amount of sales in the
United States. An expensive advertising campaign and resulting sales are not
necessarily enough to prove acquired distinctiveness. In re Boston Beer Co. L.P., 198
F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (claim based on annual sales under
the mark of approximately eighty-five million dollars, and annual advertising
expenditures in excess of ten million dollars, not sufficient to establish acquired
distinctiveness in view of highly descriptive nature of mark). Although the sales
figures might demonstrate that Applicant has been successful in marketing its
lighting devices, they do not demonstrate that customers view the wording in the
mark to have a non-descriptive meaning.

20 Brief for Applicant p. 6 (12 TTABVUE 7); Affidavit of Henry Coors ¶¶ 6-7, Response to
Office Action of 4/29/2015, p. 15. In its Brief, Applicant mischaracterizes the Affidavit arguing
that Applicant spent over $3 million in advertising utilizing the mark in the term period from
2012-2014. Paragraph 6 of Mr. Coors Affidavit states that “[o]ver the course of 15 years,”
Applicant “expended over $3 Million in advertising its products, including over $900,000.00
of advertising expenditures for the years 2012-2014….”
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Applicant also provided copies of printed catalogs bearing the applied-for mark
and a copy of a Google Analytics report for www.noveltylights.com.21 Applicant
maintains that the results and success of its advertising can also be seen in
Applicant’s website statistics, noting that from January 2011 to March 2015,
Applicant’s website received approximately 3.4 million visits from 2.5 million
consumers and had over 20.4 million pageviews.22 Additionally, Applicant submitted
evidence of consumer reviews of its products. While Applicant argues that the eBay
listing alone contains almost 8,000 reviews starting in 2012, only a small portion of
the reviews were submitted in evidence.23 Applicant’s website also received consumer
reviews and its products have received a 9.69 out of 10 rating, with approximately
700 ratings being 10 out of 10.24 Additionally, Applicant notes that examination of
the customer reviews yields significant usage of the term Novelty Lights as a source
identifier and the use of capitalization of the “N” and “L” indicate that consumers
view the literal element as a brand as opposed to a descriptive term.25 Applicant

21 Response to Office Action of 4/29/2015, Exhibits A, D and E, pp. 16, 20-75, 76; Request for
Reconsideration of 11/25/2015, Exhibits A, B, and C, pp. 12-147.
22 Response to Office Action of 4/29/2015, Exhibit E, p. 76.
23 Request for Reconsideration of 11/25/2015, Exhibit D, p. 148-150.
24 Request for Reconsideration of 11/25/2015, Exhibit E, pp. 151-154. While Exhibit E shows
that Applicant received a review score of 9.69 based on 755 customer reviews on the undated
ResellerRatings listing, the date 11/03/2015 is shown in the text; a competitor,
PartyLights.com, advertised on its website that it received 3,003 customer reviews on
resellerratings.com on 1/4/2016 as indicated on its website, see Denial of Request for
Reconsideration of 2/19/2016 at p. 55.
25 Applicant’s Brief pp. 6-7 (12 TTABVUE 7-8). It is noted that the “customer comments” set
forth in footnote 1 of its Opening Brief were not presented in the evidence filed by Applicant.
Inasmuch as the Examining Attorney did not object, we have considered this evidence.
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concludes that given the substantial sales under the mark, the substantial
advertising efforts and resulting consumer traffic on its “e-commerce store,” such
factors weigh heavily in favor of a finding of acquired distinctiveness.26
While the Reseller Ratings, eBay®, and Google® Analytics materials show that
Applicant has website traffic and a good reputation as a seller, Applicant has provided
no evidence of any customer statements of recognition of the proposed mark as a
source indicator, or evidence that Applicant has attempted or succeeded in educating
the public to associate the claimed mark with a single source. That Applicant uses
the proposed mark on its packaging and advertising catalogs does not establish that
the proposed mark has acquired distinctiveness.
The foregoing evidence indicates that Applicant is not a small start-up business,
but it does not mandate a finding of acquired distinctiveness. While Mr. Coors states
that Applicant sells its products in the United States, Canada, Europe and Australia,
he did not specify how many of the visits to its website or how much of its sales
originated from its customers located in the United States. More importantly,
Applicant’s conclusion that consumers’ capitalization of the first letters in its name,
Novelty Lights, in their product reviews indicates that “the literal element is viewed
as a brand, as opposed to a descriptive term,” falls short.27 The letters are capitalized

26 Brief for Applicant p. 6 (12 TTABVUE 7).
27 Brief for Applicant pp. 6-7 (12 TTABVUE 7-8). Applicant cites to footnote 1 in its Brief
which contains a listing of customer reviews. No citation to the source of the customer reviews
is provided and they were not submitted as evidence. Inasmuch as the Examining Attorney
did not object to the customer reviews, and assuming that the reviews are from
ResellerRatings, we have considered them. They do not establish that customers recognize
Novelty Lights as a trademark as opposed to a descriptive term.
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due to Novelty Lights being Applicant’s corporate name. As shown by the evidence
introduced by the Examining Attorney, several other companies use the term “novelty
lights” descriptively for related goods. Thus, the fact that consumers use capital
letters in identifying Applicant’s company name does not determine whether its name
is distinctive; that is only the name, whether distinctive or descriptive, that
consumers can use to identify the company.
Likewise, the sales figure information provided and the number of page views and
website visits are not dispositive of whether NOVELTYLIGHTS.COM has acquired
distinctiveness. Such sales information may demonstrate the commercial success of
Applicant’s business and its underlying goods, but not that relevant consumers view
the matter as a mark for such goods. See In re Boston Beer Co., 53 USPQ2d at 1058;
In re Busch Entm’t Corp., 60 USPQ2d 1130, 1134 (TTAB 2000).
Mr. Coors further avers that Novelty Lights Inc. has been included in the “inc. 500
ranking” for the years 2007-2009, ranking 3,006, 3,067 and 2,446, respectively, and
featured in news articles. There is insufficient information regarding the meaning of
“inc. 500 ranking” or the significance of the ranking numbers for us to make any
finding or reach any conclusions. Lastly, the single newspaper article attached to his
Affidavit as Exhibit F is over a decade old and lacks an indication of where it was
published.28

28 See Affidavit of Henry Coors, ¶ 9 attached to Response to Office Action of 4/29/2015, pp. 16
and 77.
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While there is no dispute that Applicant has used its applied-for mark in excess
of 12 years and the “Literal Element” of the mark for over 17 years, and has
appreciable sales of its goods in packaging bearing the applied-for mark, that alone
is not enough to prove acquired distinctiveness. Applicant’s use must be substantially
exclusive in order to support its § 2(f) claim. Yet, the evidence discussed in section I.
above shows use of “novelty lights” by a number of third-parties, undermining
Applicant’s § 2(f) claim. Applicant argues that the Examining Attorney has not
provided evidence “that would indicate third-party usage that would not be qualified
as inconsequential.”29 To the contrary, there is significant evidence demonstrating
current use of “novelty lights” by multiple third parties in connection with their
similar lighting products and related goods.30 Even if such uses were infringing, they
are hardly inconsequential.
While absolute exclusivity is not required, see L.D. Kichler Co. v. Davoil, Inc., 192
F.3d 1349, 52 USPQ2d 1307, 1309 (Fed. Cir. 1999), the widespread use of “novelty
lights” by unaffiliated retailers and distributors of lighting devices is inconsistent
with Applicant’s claim of acquired distinctiveness of Novelty Lights and
NovletyLights.com. Indeed, the proliferation of uses of “novelty lights” clearly shows
that Applicant’s use is not “substantially exclusive.” See, e.g., Levi Strauss & Co. v.
Genesco, Inc., 222 USPQ at 940-41 (“When the record shows that purchasers are
confronted with more than one (let alone numerous) independent users of a term or

29 Applicant’s Brief p. 6 (12 TTABVUE 7).
30 See exhibits from Final Office Action of 5/26/2015
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device, an application for registration under Section 2(f) cannot be successful, for
distinctiveness on which purchasers may rely is lacking under such circumstances.”);
Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361,
363 (CCPA 1972) (evidence insufficient to establish distinctiveness due to significant
and continuous concurrent use of term by competitor such that applicant’s use was
not substantially exclusive); Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d
1392, 1404 (TTAB 2016) (while absolute exclusivity is not required, widespread use
of surname Ayoub by unaffiliated rug, carpet and flooring businesses is inconsistent
with Applicant’s claim of acquired distinctiveness of AYOUB); Miller v. Miller, 105
USPQ2d 1615, 1625 (TTAB 2013) (applicant’s use not substantially exclusive due to
opposer’s use, third-party use, applicant’s acknowledgement of third-party use and
applicant’s consent and agreement to third-party use); In re Franklin County
Historical Society, 104 USPQ2d 1085, 1093 (TTAB 2012) (term highly descriptive;
applicant’s use not substantially exclusive); Nextel Commc’ns, Inc. v. Motorola, Inc.,
91 USPQ2d at 1408 (finding opposer’s contemporaneous use of the mark in connection
with services closely related to applicant’s goods rose to the level necessary to rebut
applicant’s contention of substantially exclusive use); Target Brands, Inc. v. Hughes,
85 USPQ2d 1676, 1682-83 (TTAB 2007) (finding substantial use of mark by opposer’s
parent company and additional use of mark by numerous third parties “seriously
undercuts if not nullifies applicant’s claim of acquired distinctiveness”); Marshall
Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1357-58 (TTAB 1989) (“[T]he
existence of numerous third party users of a mark, even if junior, might well have a
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material impact on the Examiner’s decision to accept a party’s claim of
distinctiveness.”).
Applicant has not established the acquired distinctiveness of “Novelty Light” or
“novletylight.com.” Those terms are highly descriptive of the goods for which
Applicant seeks registration, and the record shows that Applicant’s use has not been
substantially exclusive. Given the evidence of record showing that consumers are
presented with numerous uses of “novelty lights,” Applicant’s application under § 2(f)
cannot be successful for distinctiveness on which customers may rely is lacking.
III. Conclusion
“Novelty lights” has a commonly known and descriptive meaning in relation to
Applicant’s goods: accent lights for indoor use; electric holiday lights; electric light
bulbs; electric lights for Christmas trees; LED (light emitting diodes) lighting fixtures
for use in display, commercial, industrial, residential, and architectural accent
lighting applications and light bulbs. Additionally, due to the common use of the
highly descriptive term “novelty lights” by third parties, Applicant has not
established that “Novelty Lights,” or “NoveltyLights.com” has acquired
distinctiveness under § 2(f) of the Trademark Act.
Decision: The requirement for a disclaimer of NOVELTYLIGHTS.COM under
§ 6(a) of the Trademark Act and the refusal of registration in the absence of a
disclaimer, is affirmed. NOVELTYLIGHTS.COM is merely descriptive and Applicant
has not established, under § 2(f) of the Trademark Act, that the mark has acquired
distinctiveness. However, if Applicant submits the required disclaimer of
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NOVELTYLIGHTS.COM to the Board within thirty (30) days31, this decision will be
set aside as to the affirmance of the disclaimer requirement, and the application shall
proceed to publication. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).

31 The standard printing format for the required disclaimer text is as follows: “No claim is
made to the exclusive right to use ‘NOVELTYLIGHTING.COM’ apart from the mark as
shown.” TMEP § 1213.08(a)(i) (April 2016).