Sunbelt Lighting, LLC

Trademark Trial and Appeal BoardJun 19, 2019

87489008 (T.T.A.B. Jun. 19, 2019)

This Opinion Is Not a Precedent of the TTAB Mailed: June 19, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Sunbelt Lighting, LLC _____ Serial Nos. 87489008 and 87489014 (consolidated) _____ W. Whitaker Rayner of Jones Walker LLP, for Sunbelt Lighting, LLC. Carolyn Wlodarczyk, Trademark Examining Attorney, Law Office 109, Michael Kazazian, Managing Attorney. _____ Before Bergsman, Greenbaum, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant Sunbelt Lighting, LLC seeks registration on the Principal Register of the marks SUNBELT LIGHTING in standard characters and , both with “lighting” disclaimed, for (as amended) “retail store services featuring residential electric lighting fixtures, residential ceiling fans and light bulbs therefore [sic],” in International Class 35.1 1 Application Serial Nos. 87489014 and 87489008, respectively, both filed June 14, 2017, based on Applicant’s allegation of first use anywhere and first use in commerce as of December 31, 2004, pursuant to Trademark Act Section 1(a), 15 U.S.C. § 1051(a). The Serial Nos. 87489008 and 87489014 (consolidated) - 2 - The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due to a likelihood of confusion with the marks SUNBELT RENTALS in standard characters and , both with “rentals” disclaimed, previously registered on the Principal Register to the same owner for goods and services in several classes, including, among others: • “Retail store services featuring construction and industrial equipment, machines, tools, and apparatus, lawn, landscape, and tree equipment, pumps and power generators . . . dehumidifiers, electric fans . . . portable space heaters, heaters for commercial, residential, and industrial use, light towers and portable lighting equipment, electric carts and all-terrain vehicles, equipment trailers,” in International Class 35 (emphasis added); and • Goods in International Class 11, including: o “Electric fans,” in both registrations; o “Portable light stands,” in Registration No. 5195834; and o “Mobile light towers,” in Registration No. 5200128.2 After the Trademark Examining Attorney made the refusals final, Applicant requested reconsideration as to each application, which was denied. Applicant appealed the refusal of both applications to this Board. description of the composite mark in Application Serial No. 87489008 states: “The mark consists of the words ‘SUNBELT LIGHTING’ with the letters ‘LT’ in SUNBELT superimposed over the design of a sun, with the remainder of the sun design appearing between the words ‘SUNBELT’ and ‘LIGHTING’, with the entire mark appearing in orange. The color white represents background, outlining, shading and/or transparent areas and is not part of the mark.” The color orange is claimed as a feature of the mark. 2 Registration Nos. 5195834, issued May 2, 2017, and 5200128, issued May 9, 2017, respectively. The description of the composite mark in Registration No. 5200128 states: “The mark consists of the stylized word ‘SUNBELT’ centered above the stylized word ‘RENTALS’ in a smaller typeface, all set to the right of a gear design.” Color is not claimed as a feature of the mark. Serial Nos. 87489008 and 87489014 (consolidated) - 3 - I. Consolidation These appeals present common questions of law and fact and records that are identical, or nearly so. Therefore, in the interest of judicial economy, we consolidate them and decide them in this single opinion. In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012). We have considered all arguments and evidence filed in each appeal and taken into account relevant factual differences between them.3 We affirm the refusal to register as to each application. II. Evidentiary Objection The Examining Attorney objects to a quotation in Applicant’s appeal brief from MCCARTHY ON TRADEMARKS on the ground that it is newly submitted, and therefore improper, evidence. 6 TTABVUE 3-4. This citation is not to evidence, but to MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION by J. Thomas McCarthy, a leading trademark treatise that has been cited repeatedly in decisions by this Board, the Court of Appeals for the Federal Circuit, and even the U.S. Supreme Court for more than four decades. E.g., Mission Prods. Holdings, Inc. v. Tempnology, LLC, 139 S. Ct. 1652, 2019 USPQ2d 378338, *10 (2019); Inwood Labs., Inc. v. Ives Labs., Inc., 456 US 844, 214 USPQ 1, 9 (1982); In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, *15 n.38 (TTAB 2019); In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 244 (TTAB 1975). We overrule the objection. 3 Citations are to TTABVUE and the Trademark Status and Document Retrieval (TSDR) record downloaded in .pdf format for application Serial No. 87489014. Serial Nos. 87489008 and 87489014 (consolidated) - 4 - III. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. 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, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. Similarity of the Goods and Services, Channels of Trade, and Classes of Customers We first consider the second and third du Pont factors, assessing the similarity or dissimilarity of the goods and services, customers, and trade channels. The test is not whether consumers would be likely to confuse the goods and services, but rather whether they would be likely to be confused as to their source. Anderson, 101 USPQ2d at 1919. Therefore, to support a finding of likelihood of confusion, it is not necessary that the goods and services be identical or even competitive. It is sufficient that the goods and services are related in some manner, or that the circumstances surrounding their marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief Serial Nos. 87489008 and 87489014 (consolidated) - 5 - that they originate from the same source or that there is an association or connection between the sources. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). A likelihood of confusion must be found as to the entire class if confusion is likely for any item within the identification for that class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015). Also, we must look to the goods and services as identified in the involved applications and cited registrations, not to any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). For this reason, evidence and arguments pertaining to Applicant’s and Registrant’s actual uses of their marks are inapposite. E.g., In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). As stated above, Applicant’s recited services are “retail store services featuring residential electric lighting fixtures, residential ceiling fans and light bulbs therefore.” Registrant’s identified goods include “electric fans,” and its recited services comprise “retail store services featuring . . . electric fans.” We take judicial notice that at least some ceiling fans are electric fans. The New World Encyclopedia entry on “ceiling fans” lists “an electric motor” as one of the “key components of a ceiling fan,” and notes that “[m]ost ceiling fans have an electrical switch that allows one to reverse the direction of rotation of the blades.”4 Applicant’s 4 From https://www.newworldencyclopedia.org/entry/Ceiling_fan, accessed June 13, 2019. The Board may take judicial notice of encyclopedias and other standard reference works. E.g., In re Weiss Watch Co., 123 USPQ2d 1200, 1205 n.12 (TTAB 2017). Serial Nos. 87489008 and 87489014 (consolidated) - 6 - retail store services featuring residential ceiling fans therefore overlap with, and are legally identical to, Registrant’s retail store services featuring electric fans. Because the services are legally identical in part, we must presume that the channels of trade and classes of purchasers for these services also are the same. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption). The cited registrations, moreover, identify “electric fans” among Registrant’s goods. It is well-recognized that use of the same or similar marks for goods and for services involving those goods, including retail sales, may be likely to cause confusion. E.g., Detroit Athletic, 128 USPQ2d at 1051 (stating that “we have held that confusion is likely where one party engages in retail services that sell goods of the type produced by the other party”). The second and third du Pont factors strongly support a finding that confusion is likely.5 B. Strength of the Cited Marks Applicant submitted evidence relevant to the strength of the cited marks, which bears on the scope of protection to which they are entitled. In determining a mark’s strength, we consider both inherent strength, based on the nature of the mark itself, and commercial strength or recognition. Couch/Braunsdorf Affinity, Inc. v. 12 5 Although the Examining Attorney focused on the goods and services related to lighting rather than on fans, “the Board reviews an Examining Attorney’s decision on appeal to determine if the refusal to register was correctly made. In doing so, the Board need not adopt the rationale of the Examining Attorney.” In re AFG Indus. Inc., 17 USPQ2d 1162, 1163 (TTAB 1990); see also Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1217 (2018). Serial Nos. 87489008 and 87489014 (consolidated) - 7 - Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”) As discussed further infra, each of the subject and cited marks contains just one distinctive word: SUNBELT. Applicant argues that SUNBELT “is a weak term, namely, a geographical indicator.” Appeal Brief, 4 TTABVUE 2. In support, Applicant submitted a definition of “the Sunbelt” meaning “the southern and southwestern states of the U.S.”6 The shortcoming in Applicant’s argument is that the strength of the mark is determined in relation to the identified goods or services. See, e.g., Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990). While the record shows that SUNBELT has geographic significance, no descriptive meaning is established in association with Registrant’s goods and services. With its request for reconsideration, Applicant also submitted printouts from the USPTO Trademark Electronic Search System (TESS) database of more than 50 registrations consisting of or comprising the term SUNBELT.7 None of those registrations is on the Supplemental Register; only one (for travel agency services) has a disclaimer of SUNBELT or a claim of acquired distinctiveness as to that term. 6 March 9, 2018 Response to Office Action at Exhibit A (from merriam-webster.com). 7 We exclude from this tally copies of Applicant’s own subject applications and the two cited registrations, as well as five third-party applications, which are evidence only that they were filed on a certain date. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Serial Nos. 87489008 and 87489014 (consolidated) - 8 - We may use third-party registrations like a dictionary. See Institut National des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (stating that third-party registrations show the sense in which a word is used in ordinary parlance and that a particular term has descriptive significance as applied to certain goods or services); Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA 1978) (“we find no error in the citation of nine third-party registrations ‘primarily to show the meaning of * * * [‘zing’] in the same way that dictionaries are used’”); Gen. Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1972) (“Although the registrations are not evidence of use, the registrations show the sense in which the term [ ] is employed in the marketplace, similar to a dictionary definition.”). The Court of Appeals for the Federal Circuit has instructed that evidence of extensive use and registration of a term as a mark by others can be “‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). Here, however, the third-party registrations of SUNBELT are for goods and services unrelated to those identified in the subject applications and cited registrations, including retail services but for goods other than fans. Applicant’s characterization of the relevant goods and services as “related to construction,” Appeal Brief, 4 TTABVUE 3, is both overbroad and inaccurate as to its and Serial Nos. 87489008 and 87489014 (consolidated) - 9 - Registrant’s pertinent identified services (i.e., electric fans and retail store services featuring residential ceiling fans on the one hand and electric fans on the other).8 Despite the fact that the third-party registrations are for unrelated goods and services, however, they corroborate the dictionary definition and show that SUNBELT has geographic significance for a variety of goods and services. Since the cited marks are registered on the Principal Register, they are entitled to the presumptions accorded a registration pursuant to Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b) (“A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate.”). Thus, the cited marks can be considered no worse than suggestive marks and as such would fall on the weaker side of the “spectrum from very strong to very weak” because the term “Sunbelt” suggests products and services located in the Southwest. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). 8 Nor are we persuaded by the three Board cases on which Applicant relies, two of which involved not just geographically descriptive but also weak laudatory marks (i.e., TEXAS PRIDE vs. TEXAS BEST and RICHMOND PREFERRED vs. RICHMOND BEST). In re Phillip Morris Inc., 179 USPQ 60 (TTAB 1973); In re Tex. Trading & Milling Corp., 178 USPQ 319 (1973); Ariola-Eurodisc Gesellschaft mit beschrankter Haftung v. Eurotone Int’l Ltd., 175 USPQ 250 (TTAB 1972). Appeal Brief, 4 TTABVUE 4-6; Reply Brief, 7 TTABVUE 3-4. In any event, we must decide each case on its own merits and we are not bound by the allowance of prior registrations. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Serial Nos. 87489008 and 87489014 (consolidated) - 10 - C. Similarity of the Marks We turn now to the similarity of the marks. In a likelihood of confusion analysis, we compare the marks in their entireties for similarities and dissimilarities in appearance, sound, connotation and overall commercial impression. Detroit Athletic, 128 USPQ2d at 1048. “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1550 (April 15, 2019) (quotation omitted). Because similarity is determined based on the marks in their entireties, our analysis is not predicated on dissecting the marks into their various components. C.H. Hanson, 116 USPQ2d at 1353. On the other hand, “there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We focus on the recollection of the average consumer – here, an ordinary fan shopper – who retains a general rather than a specific impression of trademarks. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). And we bear in mind that where, as here, goods or services are legally identical in part, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Coach Servs., Inc. v. Serial Nos. 87489008 and 87489014 (consolidated) - 11 - Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quotation omitted). 1. The Standard Character Marks We first consider Applicant’s standard character mark SUNBELT LIGHTING, with “lighting” disclaimed, and the cited mark SUNBELT RENTALS, with “rentals” disclaimed. As noted above, the first term in each mark, SUNBELT, is the identical, dominant, and only distinctive portion of each mark. As we have often said, the lead element in a mark has a position of prominence; it is likely to be noticed and remembered by consumers and so to play a dominant role in the mark. See, e.g., Detroit Athletic, 128 USPQ2d at 1049 (“The identity of the marks’ initial two words is particularly significant because consumers typically notice those words first.”); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (stating that VEUVE is a prominent feature of the mark VEUVE CLICQUOT because it is the first word in the mark); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (stating that the dominance of BARR in BARR GROUP is reinforced by its location as the first word in the mark). The marks are distinguished somewhat in appearance, sound, and meaning by the trailing words LIGHTING and RENTALS, respectively. Because they are generic, however, customers are unlikely to rely on these terms to identify the source of the goods and services; thus, we do not ignore these words but we do accord them relatively less weight. Given the dominant initial shared term SUNBELT, we find the marks considered in their entireties sufficiently similar in appearance, sound, Serial Nos. 87489008 and 87489014 (consolidated) - 12 - meaning, and overall commercial impression that persons who encounter them would be likely to assume a connection between Applicant and Registrant. The first du Pont factor therefore weighs in favor of a finding that confusion is likely between Applicant’s mark SUNBELT LIGHTING and the cited mark SUNBELT RENTALS. 2. The Composite Marks Finally, we assess the similarity or dissimilarity of the composite marks and . The analysis of the literal portions of the marks is the same as in the immediately preceding subsection, except that RENTALS is in relatively small type in the cited composite mark, further diminishing its significance. In addition, each mark contains a serrated circular design that could be seen as either a stylized sun (as described in Applicant’s mark) or a gear (as described in Registrant’s mark), heightening the similarity between the overall commercial impressions. Nor is the orange color of Applicant’s mark a meaningful distinction. Because color is not claimed as a feature of the cited mark, Registrant may display it in any color, including an orange shade identical to Applicant’s. See In re Data Packaging Corp., 453 F.2d 1300, 172 USPQ 396, 397 (CCPA 1972). We find Applicant’s composite mark to be sufficiently similar to the cited composite mark, considered in their entireties, that the first du Pont factor weighs in favor of a likelihood of confusion. Serial Nos. 87489008 and 87489014 (consolidated) - 13 - IV. Conclusion We have found the cited marks to be relatively weak but that the first, second, and third du Pont factors all favor a likelihood of confusion. Applicant and the Examining Attorney have not presented evidence regarding other du Pont factors. To the extent that such du Pont factors may nonetheless be applicable, we treat them as neutral. For all the reasons detailed above, we find that Applicant’s marks are likely to cause confusion with the marks in cited Registration Nos. 5195834 and 5200128 when used in association with the services identified in the subject applications. Decision: The refusal to register Applicant’s marks under Section 2(d) of the Trademark Act is affirmed as to both applications.