AFX, Inc.

Trademark Trial and Appeal Board

Mar 9, 2018

No. 87155011 (T.T.A.B. Mar. 9, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re AFX, Inc.
_____

Serial No. 87155011
_____

Michele S. Katz, Esq. of Advitam IP LLC for
AFX, Inc.

Teague Avent, Trademark Examining Attorney,1
Law Office 125 (Mark Pilaro, Managing Attorney).
_____

Before Taylor, Wellington, and Greenbaum, Administrative Trademark Judges.
Opinion by Wellington, Administrative Trademark Judge:
AFX, Inc. (“Applicant”) filed an application for registration on the Principal
Register of the mark STONEGATE in standard characters for “electric lighting
fixtures,” in International Class 11.2

1 The application was re-assigned to the Examining Attorney after the appeal was instituted.
2 Application Serial No. 87155011 was filed on August 30, 2016 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s asserted bona fide intent to use
the mark in commerce.
Serial No. 87155011

2

The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
on the identified goods, so resembles the registered mark STONEGATE as to be likely
to cause confusion, or to cause mistake, or to deceive. The cited mark is the subject of
the following two Principal Register registrations, owned by the same entity:
Reg. No. 4307927 for: electric heaters, namely, space heaters, radiant heaters,
portable heaters, patio heaters and fireplaces in International Class 11;3 and

Reg. No. 4983615 for: barbecues, cooking grills, namely, outdoor wood and
charcoal burning fire pits for barbecuing; Household and kitchen appliances in
the nature of outdoor stoves, namely, portable wood and charcoal burning
fireplaces; fireplaces in International Class 11.4

When the refusal was made final, Applicant appealed to this Board and
concurrently filed a request for reconsideration which prompted remand of the
application file to the Examining Attorney. The Examining Attorney denied the
reconsideration request and maintained the final refusal of registration under
Section 2(d). The appeal was resumed and has been fully briefed. For the following
reasons, we affirm the refusal.
A. Evidentiary matter.
Applicant attached, as an exhibit to its brief, copies of seventeen (17) registrations
for marks containing the term STONEGATE and owned by either third-parties or the
owner of the two cited registrations.5 Applicant also lists these registrations in its

3 Issued on March 26, 2013 to Consumer Sales Network, Inc.
4 Issued on June 21, 2016 to Consumer Sales Network, Inc.
5 7 TTABVUE 19-45. The exhibit includes copies of the two cited registrations as well as four
others owned by the same registrant, Consumer Sales Network, Inc. It was unnecessary, of
Serial No. 87155011

3

brief, identifying the marks, registration numbers, goods/services, and owner’s
name.6 The Examining Attorney objects to the submission of the attached evidence
on the ground that it was not previously submitted and thus is untimely.7 The
objection is well taken with respect to the copies of registrations. “Evidence should
not be filed with the Board after the filing of a notice of appeal. If the appellant or the
examining attorney desires to introduce additional evidence after an appeal is filed,
the appellant or the examining attorney should submit a request to the Board to
suspend the appeal and to remand the application for further examination.”
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); see also Trademark Trial and Appeal
Board Manual of Procedure (TBMP) § 1207.01 (June 2017). Accordingly, we give no
further consideration to the evidence attached to Applicant’s brief.8

course, for Applicant to submit copies of the two cited registrations given that the Examining
Attorney previously submitted copies thereof with the initial Office Action (issued on
December 12, 2016).
6 Id. at 14-16.
7 Examining Attorney’s brief, 9 TTABVUE 4-5.
8 As to Applicant’s list of these registrations, contained in its brief, we note that Applicant
had attached, before appeal, a printout from the USPTO TESS database listing its
application and the same nineteen registrations. See Applicant’s response dated February
22, 2017. However, the printout attached to Applicant’s response only identified the
registration numbers and the marks – the TESS printout did not identify the involved goods/
services or owners’ names. In the subsequent Office Action, making the refusal “final,” the
Examining Attorney informed Applicant that the printout does not identify the covered goods
or services and that the mere submission of the list does not make the registrations of record
and has little probative value; the Examining Attorney also advised Applicant of the proper
procedure for making the registrations of record. Office Action dated March 19, 2017.
Because the list in the body of Applicant’s brief contains information that was not previously
disclosed before the appeal, it cannot now be considered. Trademark Rule 2.142(d); see also
TBMP § 1208.02. With respect to the TESS printout that was previously submitted, as the
Examining Attorney previously informed Applicant, such lists of registered marks and their
registration numbers convey little relevant information and have little probative value. We
hasten to add that even if the missing information had been submitted previously and
Serial No. 87155011

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B. Likelihood of Confusion Refusal
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
1. The Marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005).
In this case, the applied-for mark, STONEGATE in standard characters, is
identical to the registered mark. Applicant acknowledges that “the marks are the
same words.”9 Without any evidence or persuasive argument to the contrary, the
marks are indistinguishable in appearance, sound, meaning, and commercial

properly made of record (or even if we considered all of the third-party registrations as being
of record), it would have had little to no impact on our decision. In particular, we note that
the goods and services purportedly covered by the third-party registrations, e.g., pretzels,
religious workshops, construction concrete blocks, trade show services, real estate services,
wine, mortgage banking services, etc., are totally unrelated to the goods involved in this
appeal. Thus, to the extent the registrations were intended to support a sixth du Pont factor
argument, namely that the cited mark is weak due to the number and nature of similar marks
in use on the same or similar goods, they fail to do so.
9 7 TTABVUE 9.
Serial No. 87155011

5

impression. Accordingly, the first du Pont factor weighs strongly in favor of finding a
likelihood of confusion. See, e.g., In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411
(TTAB 2015). See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984) (when word marks are identical but neither
suggestive nor descriptive of the goods, the first du Pont factor weighs heavily against
the applicant).
2. The Goods and Trade Channels
We now consider the second du Pont factor, that is, “whether the consuming public
may perceive [the respective goods or services of the parties] as related enough to
cause confusion about the source or origin of the goods and services.” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v.
Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (The products
need not be identical or even competitive to find a likelihood of confusion).
“[L]ikelihood of confusion can be found ‘if the respective products are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012) (quoting 7-Eleven, 83 USPQ2d at 1724). The issue is whether there is a
likelihood of confusion as to the source of the goods, not whether purchasers would
confuse the goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Serial No. 87155011

6

We also keep in mind that when the involved marks are identical, as they are
here, a “lesser the degree of similarity between the applicant's goods or services and
the registrant's goods or services [ ] is required to support a finding of likelihood of
confusion.” In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Here, Applicant’s goods are identified as “electric lighting fixtures,” and
registrant’s goods are identified as “electric heaters, namely, space heaters, radiant
heaters, portable heaters, patio heaters and fireplaces” (Registration No. 4307927)
and “barbecues, cooking grills, namely, outdoor wood and charcoal burning fire pits
for barbecuing; household and kitchen appliances in the nature of outdoor stoves,
namely, portable wood and charcoal burning fireplaces; fireplaces” (Registration No.
4983615).
To show that the involved goods are related, the Examining Attorney relies on the
evidence consisting of ten (10) third-party, use-based registrations from the USPTO’s
electronic database which cover electric lighting fixtures and goods like those listed
in the cited registration, as well as screenshots from the websites of third-parties
advertising the same goods on the same website.10 As to the third-party registrations,
these include:
Mark Reg.
No.
Relevant Goods in
Registrations
REVOACE
(stylized with design)
4726979 “Electric lighting fixtures …
barbeques and grills … portable
electric heaters … gas lamps”

10 Attached to Office Action dated December 12, 2016, at TSDR pp. 18-48.
Serial No. 87155011

7

Mark Reg.
No.
Relevant Goods in
Registrations
KÖNIG
(standard characters)
4894373 “Lighting fixtures … electric space
heaters … fireplace hearths”
SAICOO
(stylized)
4804058 “LED (light emitting diode) lighting
fixtures … barbeques”
BREKO
(stylized with design)
49444829 “LED (light emitting diode) lighting
fixtures … electric radiators … grills
… fireplace hearths”
A + R
(standard characters)
5051463 “Electric lighting fixtures … electric
fireplaces … outdoor fireplaces …
woodburning pits for containing fire”

The third-party registrations have some probative value because they serve to
suggest that Applicant’s goods, i.e., electric lighting fixtures, and some of the listed
goods in the cited registrations, e.g., heaters, barbeques, grills and fireplaces, are of
a type which may emanate from the same source. In re Aquamar, Inc., 115 USPQ2d
1122, 1126 n.5 (TTAB 2015); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988). See also In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012);
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
As to the screenshots from third-party websites, they include “The Outdoor
GreatRoom Company” site, which advertises lighting fixtures like “solar lights” on its
website:11

11 Id. at pp. 6-17.
Serial No. 87155011

8

as well as a variety of fireplaces and “fire pits,” such as:
.

Another website, Marx Fireplaces Lighting, offers both “grills & fire pits,” such
as:12

12 Id. at pp. 49-58.
Serial No. 87155011

9

and electric lighting fixtures for interior and exterior use:
.
The aforementioned evidence shows a sufficient relationship between the goods
identified in the application and registration.
Serial No. 87155011

10

Applicant takes issue with the ability to find the involved goods in the same, larger
stores and argues:13
[i]n these times of internet-based mega stores such as Amazon and EBay
and brick and mortar stores such as Home Depot, Lowes, Menards, and
Best Buy (all of which also allow for online shopping as well), consumers
are able to purchase an enormous range of related and unrelated products.
Setting out that lighting fixtures are sold in the same environment as
fireplaces is no different than saying that groceries such as produce are
sold in the same environment as televisions, which is the case at places
such as Walmart and Costco. That does not mean that consumers are likely
to be confused as to the source of the products sold under the same mark
in any one of these stores.

However, we note that the evidence submitted by the Examining Attorney does
not appear to include “internet-based mega stores” or any of the large “brick and
mortar” stores like the ones named by Applicant. Indeed, the websites include a
company that sells “outdoor products” and lists subcategories of goods such as “fire
pits & fire places” as well as “lighting and heating.” The “Marx Fireplaces Lighting”
website, as its name suggests and as evidenced by the screenshots, is not an Internet-
based megastore but specializes in the goods identified in the involved application
and cited registrations. In sum, this marketplace evidence shows that the involved
goods are related, and that customers are accustomed to encountering both types of
goods together on the same website.
Applicant also argues that its particular “channels of trade and distribution” are
“so unique” and that “there is no actual market interface” between the involved

13 7 TTABVUE 11.
Serial No. 87155011

11

goods.14 Applicant further asserts that “hypothetical conjecture” should not be
employed in finding a likelihood of confusion.15 This line of argument is not
persuasive in light of the evidence and the goods as they are identified in the
application and registrations. That is, there is no limitation as to channels of trade
or classes of purchasers in Applicant’s description “electric lighting fixtures” and we
must presume that these goods will move in all channels of trade normal for such
goods and are available to all potential classes of ordinary consumers. See Citigroup
Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). As the evidence
shows, one such possible trade channel for both Applicant’s and registrant’s goods is
a website like The Outdoor GreatRoom Company that specializes in outdoor products,
or a website like Marx Fireplace Lighting that specializes in fireplaces and lighting.
Consumers may expect to encounter both types of goods on either website. Again,
these are not websites, like Amazon.com, that offer a large variety of goods, but are
limited to offering goods with respect to their field of use. Homeowners interested in
purchasing lighting and heating products or grills for their backyard patios would be
one class of consumers for these websites.

14 Id. at 12.
15 Id.
Serial No. 87155011

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Accordingly, we find the second and third du Pont factors that involve,
respectively, the similarity of the goods and the similarity of trade channels, also
favor a finding of a likelihood of confusion.16
3. Other du Pont Factors -- Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. As discussed above,
there is no probative evidence showing that the identical mark, STONEGATE,
possesses any weakness, either inherent or through dilution of use on similar goods.
As discussed, Applicant’s mark is identical in appearance, sound, meaning, and
commercial impression to the cited mark. The involved goods are sufficiently related
and may be marketed to the same customers through the same trade channels – that
is, the evidence shows that goods like electric lighting fixtures, including outdoor
lighting fixtures, and grills, electric heaters, and barbeques may emanate from a
common source and may be offered for sale or advertised on the same websites. We
reiterate that when identical marks are at issue, the degree of relationship between
the goods that is necessary to find a likelihood of confusion is lessened. Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992). Ultimately, we find Applicant’s and registrant’s use of the same mark,
STONEGATE, on their respective goods listed in the application and cited
registrations, is likely to cause confusion or to cause mistake or to deceive.
Decision: The refusal under Section 2(d) is affirmed.

16 See Note 8.