Ronaldv.York

Trademark Trial and Appeal Board

Jun 6, 2007

No. 76600401 (T.T.A.B. Jun. 6, 2007)

Mailed:
June 6, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ronald V. York
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Serial No. 76600401
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Michael I. Kroll for Ronald V. York.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Thomas V. Shaw, Managing Attorney).
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Before Quinn, Rogers and Drost,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Ronald V. York (applicant) has applied for
registration on the Principal Register of the term
VENTALIGHT, in standard character form, as a mark for
"metal skylights equipped with a solar fan," in Class 6 and
for "non-metal skylights equipped with a solar fan," in
Class 19. The examining attorney has refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), in view of the prior registration of VENT-A-LITE
This Opinion is Not a
Precedent of the TTAB
Ser No. 76600401
2
in typed form for "electric light and fan units," in Class
11.1
When the examining attorney made the refusal of
registration final, applicant appealed. Applicant and the
examining attorney have filed briefs addressing the refusal
of registration, which is the only issue on appeal.
We analyze the issue of likelihood of confusion using
the factors that were articulated by the Court of Customs
and Patent Appeals, a predecessor of our primary reviewing
court, in the case of In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In
re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1205 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)("The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks").

1 Registration No. 671478 issued December 23, 1958 and twice has
been renewed. The designations "typed form" and "standard
character form" are equivalent and indicate marks not restricted
to a particular font or form of display.
Ser No. 76600401
3
In this case, we compare applicant's VENTALIGHT mark
and the VENT-A-LITE mark in the cited registration by
considering similarities, or differences, in the
appearance, sound, connotations and overall commercial
impressions of the marks. In re Coors Brewing Co., 343
F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003) and Giant
Food, Inc. v. Nation’s Foodservice, Inc., 218 USPQ 390, 395
(Fed. Cir. 1983).
Both marks are structured the same, beginning with the
identical word, VENT, and ending with a phonetically
equivalent word, LIGHT or LITE. Further, in both marks,
the first and last words are connected by the letter A.
Phonetically, the composite marks are identical.
Visually, the only differences between the marks are that
the registered mark utilizes a phonetic equivalent of
"light," rather than the correct spelling of that word, and
uses hyphens to connect the elements of the mark, rather
than running them together, as applicant has. When the
same or similar words are used in marks, the presence or
absence of hyphens or other punctuation marks generally
will be of little significance. See In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988) (in case involving marks
SHAKE SCATTER & GROW and SHAKE-N-GROW, Board found "fact
that the registrant's mark contains the letter 'N'
Ser No. 76600401
4
surrounded by hyphens and applicant's mark contains an
ampersand constitutes but a very minor difference").
Likewise, the visual difference between the words LIGHT and
LITE in the involved marks is equally minor.
The connotation of the marks is essentially the same,
in that each conveys the notion of a product that involves
both venting and lighting. In addition, each mark may be
viewed by some consumers as a play on the word "ventilate,"
which will reinforce the connotation of venting. The fact
that the lighting obtained through use of the respective
products is obtained by different means, e.g., through the
natural light accessed by applicant's skylights compared to
the electric light provided by registrant's product, will
not have a significant effect on the connotations of the
marks. Accordingly, the differences between the marks are
inconsequential, and we find them to present the same
overall commercial impression. See In re Total Quality
Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (STRATEGYN and
STRATEGEN "marks engender virtually identical commercial
impressions, both suggesting the idea of a strategy").
Turning to the goods, the examining attorney has
introduced evidence showing that ceiling fans and skylights
can emanate from the same source and serve complementary
functions. See the evidence attached to the August 30,
Ser No. 76600401
5
2005 final refusal of registration, specifically, the
website www.degeorgeceilings.com, and the three excerpts of
stories from the Nexis articles database that refer to
rooms utilizing both ceiling or paddle fans and skylights.
Applicant has not countered this evidence and only argues
that the goods are different because of the obvious
differences between skylights and electric lights and
conventional fans versus solar-powered fans.
We acknowledge that the goods have differences, but
that is not sufficient reason to consider them unrelated.
In assessing likelihood of confusion, the question is not
whether purchasers can differentiate the goods themselves
but rather whether purchasers are likely to confuse the
source of the goods. See Helene Curtis Industries Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989). That
is, likelihood of confusion may exist even if the parties
are not direct competitors, and the rights of the owner of
a mark extend to any goods and services that potential
purchasers might think are related. In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984) ("In the case at bar there is an extensive
pattern of complementary interests: the channels of trade,
the types of stores, the commonality of purchasers, and the
conjoint use."); In re Opus One Inc., 60 USPQ2d 1812, 1815-
Ser No. 76600401
6
16 (TTAB 2001) (likelihood of confusion when identical mark
used for restaurant services and wine, because goods and
services complementary, applicant's wine actually served in
registrant's restaurant, and practice of some restaurants
to serve private label wine). As the examining attorney
has shown, the involved goods can emanate from the same
source and can be used together for complementary purposes.
Accordingly, we find the goods related for likelihood of
confusion purposes.
Apart from arguing that the goods have certain
differences, applicant has also argued that the involved
marks are suggestive and entitled to only a narrow scope of
protection. In fact, applicant argues that the respective
marks are so weak that neither should be protected except
from use of the identical mark for the identical goods.
Brief, p. 6. We cannot agree. Applicant has provided no
evidence whatsoever to support his position. As far as the
record reveals, the two involved marks are the only two
that combine the VENT and LIGHT/LITE elements for any goods
or services. Even if we were to accept as proven that the
involved marks are weak, a suggestive or weak registered
mark is entitled to protection against subsequent
registration of a mark that would be likely to cause
confusion. See In re The Clorox Co., 578 F.2d 305, 198
Ser No. 76600401
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USPQ 337, 341 (CCPA 1978) (ERASE for a laundry soil and
stain remover held confusingly similar to STAIN ERASER,
registered on the Supplemental Register, for a stain
remover). See also The Barbers, Hairstyling for Men &
Women, Inc. v. The Barber Pole, Inc., 204 USPQ 403, 408-09
(TTAB 1979) ("rights in such registered marks can in no way
be restricted so as to limit … protection merely to the
subsequent registration of the same mark for the identical
goods or services"). Finally, we do not find persuasive
the prior decisions on which applicant bases his limited
scope of protection argument. Each of the cited cases is
factually distinguishable and the instant appeal must be
decided on its own facts. See Polaroid Corp. v. Richard
Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421 (CCPA 1965)
(“[P]rior decisions in trademark cases, where the issue is
a likelihood of confusion, furnish meager assistance in the
resolution of that issue. Each case must be decided on the
basis of the factual situation thereby presented.”).
Decision: The refusal of registration under Section
2(d) of the Trademark Act is affirmed.