Visionaire Lighting, LLC

Trademark Trial and Appeal BoardSep 29, 2014

No. 85690146 (T.T.A.B. Sep. 29, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: September 29, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Visionaire Lighting, LLC _____ Serial No. 85690146 _____ Michael J. Moffatt of Fulwider Patton LLP for Visonaire Lighting, LLC. Barbara Brown, Trademark Examining Attorney, Law Office 116, Michael W. Baird, Managing Attorney. _____ Before Zervas, Wellington, and Hightower, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Visionaire Lighting, LLC (“Applicant”) seeks registration on the Principal Register of the mark PREMIER (in standard characters) for “LED, IND, eHID, HID, CF lighting fixtures for use in commercial, industrial, residential, and architectural accent lighting applications; lighting fixtures for outdoor lighting applications; lighting fixtures for use in parking decks, parking lots, walkways, street lights and garages” in International Class 11.1 1 Application Serial No. 85690146 was filed on July 30, 2012, based upon Applicant’s allegation of first use anywhere and in commerce on January 31, 2004, under Section 1(a) of the Trademark Act. Serial No. 85690146 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark based on a likelihood of confusion, under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of the registered mark: for “lights and lighting equipment and installations, namely, lighting lamps, glass lamp shades, round lamp shades, electric lights for Christmas trees, light bulbs for door plates, light bulbs for street lighting, and lights for ponds and aquariums” in International Class 11.2 Registration was also refused on the basis that Applicant has not submitted an acceptable specimen showing use in commerce of the applied-for mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a). Specifically, the Examining Attorney found Applicant’s proposed specimen to be merely “advertising material” for the identified goods. Applicant has appealed and filed an appeal brief. The Examining Attorney, in turn, filed her appeal brief. We affirm the likelihood of confusion refusal as well as the requirement for an acceptable specimen of use. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See 2 Registration No. 4137355 issued May 8, 2012. Serial No. 85690146 - 3 - also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Similarity of the Marks In comparing the marks, we must consider them in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Here, the marks are identical in sound, appearance, meaning, and overall commercial impression. The minimal or slight stylization of the letters in the registered mark is irrelevant for purposes of distinguishing the two marks because Applicant seeks registration of its mark in standard characters and we must assume the applied-for mark may be appear in the same stylization. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). The identity of the marks is a du Pont factor that weighs heavily in favor of a finding of likelihood of confusion. Serial No. 85690146 - 4 - Applicant’s Evidence of Third-Party Applications/ Registrations Applicant submitted, as an exhibit to a response to an Office Action, a printout of a list of applications and registrations for marks containing the term PREMIER.3 In its Reply Brief, it argues that “there is [sic] over thirteen hundred active trademarks that include the term ‘PREMIER.’” With regard to Applicant’s evidence, we note that third-party applications have no probative value other than as evidence that the applications were filed. See TBMP Section 1208.02 and authorities cited therein. Moreover, a mere listing of registrations, without copies thereof, is not sufficient to make the registrations of record and there are limited circumstances in which the Board will consider such listings. Id. In particular, if an applicant includes a listing of registrations in a response to an Office action, and the examining attorney does not advise the applicant that the listing is insufficient to make the registrations of record at a point when the applicant can correct the error, the examining attorney will be deemed to have waived any objection to consideration of the list itself, for whatever probative value it may have. Id. That is the case here as the Examining Attorney did not advise Applicant regarding the insufficiency. However, the Board will not consider more than the information provided and applicant provided only a list of registration numbers and marks, without any indication of goods or services. Id. In view thereof, while we can appreciate the laudatory meaning of the term PREMIER and that it thus may have some inherent weakness, it has not been 3 Response to Office Action filed July 5, 2013 (“Exhibit A”). Serial No. 85690146 - 5 - shown that this term is diluted or even used in the field of electrical lighting. We thus find that the sixth du Pont factor, the number and nature of similar marks in use on similar goods, is neutral. Similarity of the Goods Described in the Application and Registration We turn now to the du Pont factor involving the relatedness of the goods. It is settled that in making our determination, we must look to the goods as identified in the application vis-à-vis those recited in the cited registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). In considering this du Pont factor, we also note that where identical marks are involved, as is the case here, the degree of similarity between the goods that is required to support a finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993) (“even when the goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source”); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). It is only necessary that there be a “viable relationship between the goods” to support a finding of likelihood of confusion. In re Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). As identified, the respective goods are on their face closely related and complementary. Specifically, Registrant’s “light bulbs for door plates [and] light bulbs for street lighting” may be used in conjunction with Applicant’s “lighting Serial No. 85690146 - 6 - fixtures for use in … street lights” or Applicant’s “lighting fixtures for outdoor lighting applications.” In more general terms, the respective goods are clearly related inasmuch as Applicant’s lighting fixtures are for use in many applications, including residential and architectural accent lighting, and Registrant’s lights also have a residential or domestic applications, e.g., “for Christmas trees … door plates…and lights for ponds and aquariums.” In sum, we find the respective goods are complementary, in part, and otherwise closely related. Trade Channels and Sophistication of Purchasers for the Goods Applicant argues that its offers its goods to “a different class of consumers” and asserts that the “disparate channels of goods suggest sophisticated purchasers who would be much less likely to be confused merely because of the laudatory term ‘PREMIER’.” Brief at 2. However, we note that the goods, as they are identified in the application and registration, include lighting products for residential use and street light applications. Thus, we must assume that, at least with respect to the parties’ residential lighting and street light products, they will move in the same trade channels and be offered to the same class of consumers, namely, those interested in purchasing such products. Accordingly, these factors also weigh in favor of finding of a likelihood of confusion. Collateral Attacks on the Cited Registration In its brief, Applicant has made several improper attacks on the cited Serial No. 85690146 - 7 - registration, including that registrant no longer uses the mark or has abandoned the mark. An ex parte proceeding, such as this appeal, is not the proper forum for such a challenge. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970) (“it is not open to an applicant to prove abandonment of [a] registered mark” in an ex parte proceeding; thus, the “appellant’s argument … that [a registrant] no longer uses the registered mark … must be disregarded.”). Cf. In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) (applicant’s argument that its use antedated a registered mark was effectively an improper collateral attack on the validity of the registration, which should have been made in a cancellation proceeding). According to the record before us, the registration is valid and we must give effect to it and its description of goods. Cosmetically Yours, Inc. v. Clairol Inc., 165 USPQ at 517 (“As long as the registration relied upon … remains uncanceled, it is treated as valid and entitled to the statutory presumptions.”). Conclusion In sum, the marks are legally identical, the goods are related inasmuch as they comprise complementary lighting products, and, with respect to certain goods, there is an overlap in classes of purchasers and trade channels. For these reasons, we find that Applicant’s mark PREMIER, if used in association with the goods identified in the application, is likely to cause confusion with the registered mark, PREMIER (stylized). Serial No. 85690146 - 8 - Specimen of Use We now address the Examining Attorney’s refusal of registration on the ground that Applicant’s specimen of use does not show use of the applied-for mark on the identified goods pursuant to Trademark Act Sections 1(a)(1) and 45 and Trademark Rules 2.34(a)(1)(iv) and 2.56(a). Applicant did not address this refusal in its appeal brief. Section 45 of the Trademark Act states in part that: For purposes of this chapter, a mark shall be deemed to be in use in commerce— (1) on goods when-- (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale . . . . Trademark Rule 2.56 provides in part: (a) An application under section 1(a) of the Act . . . must [ ] include one specimen per class showing the mark as used on or in connection with the goods or services. . . . (b)(1) A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods. Based on our review of the specimen (described in the application as a “product brochure”), we agree with the Examining Attorney’s assessment that the brochure fails to satisfy a necessary element to be considered an acceptable display associated with the goods, namely, that it does not include any ordering information. See In re Sones, 590 F.3rd 1282, 1286-89, 93 USPQ2d 1118, 1122-24 Serial No. 85690146 - 9 - (Fed. Cir. 2009); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); In re Dell Inc., 71 USPQ2d 1725, 1727-29 (TTAB 2004). Accordingly, we find that Applicant’s specimen is unacceptable as a display associated with any of the identified goods and there is no evidence to suggest it may be considered a point-of-sale presentation. Decision: The likelihood of confusion refusal to register Applicant’s mark is affirmed. The refusal to register Applicant’s mark for failure to submit a specimen showing use of the mark in commerce on the identified goods is affirmed.