Delta Light N.V.

Trademark Trial and Appeal Board

Jun 24, 2013

No. 79100309 (T.T.A.B. Jun. 24, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Delta Light N.V.
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Serial No. 79100309
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Clifford D. Hyra for Delta Light N.V.

Marlene Bell, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell,
Managing Attorney).
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Before Bucher, Holtzman and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Delta Light N.V. filed, on May 27, 2011, an application to register on the
Principal Register the standard character mark LEDS GO… for goods ultimately
identified as:
Interior lighting, namely, ceiling pendant lights,
spotlights, wall mounted lamps and recessed floor, wall,
and ceiling lamps, floor stand alone lamps, bases for
lighting fixtures; lighting for illuminating objects, namely,
LED landscape lights; ambience lighting for providing
diffuse lighting, namely, light diffusers; positional
lighting, namely, mobile light towers; directional lighting
for illuminating a specified area, namely, light-mounting
tracks having modular or continuous lights; outdoor
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lighting, namely, recessed wall and floor lamps, surface
mounted and pendant lamps
in International Class 11.1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when applied to applicant’s
goods, so resembles the previously registered standard character mark GO-LED for
“LED night-lights” in International Class 11, as to be likely to cause confusion,
mistake or deception. The examining attorney also refused registration pursuant to
Section 6(a) of the Trademark Act, 15 U.S.C. § 6(a), based on applicant’s failure to
comply with the requirement to disclaim the word LEDS on the ground that it is
merely descriptive of applicant’s goods within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1051(e)(1).
When the refusals were made final, applicant appealed. We reverse both
refusals.
We begin with the disclaimer requirement. An examining attorney may
require an applicant to disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Merely descriptive terms are
unregistrable, under Trademark Act Section 2(e)(1) and, therefore, are subject to
disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer
requirement is grounds for refusal of registration. See In re Stereotaxis, Inc., 429
F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005); In re Richardson Ink Co., 511 F.2d
559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007);

1 Application Serial No. 79100309, filed May 27, 2011, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a), based on an International Registration.
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In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re
Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
There is no dispute that the term LEDS is at least descriptive of a type of
light. Indeed, the identifications of goods in the application and registration include
the term LED. However, applicant argues that no disclaimer is required because
LEDS as used in the mark LEDS GO… forms a unitary double entendre, playing on
the phrase “let’s go.” We agree.
A mark is unitary if it creates a single, distinct commercial impression. If the
matter that comprises the mark or relevant portion of the mark is unitary, no
disclaimer of an element, whether descriptive, generic, or otherwise, is required.
TMEP § 1213.05. See also Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21
USPQ2d 1047 (Fed. Cir. 1991). The commercial impression is determined by
various factors, including the meaning of the terms in the mark in relation to each
other. See Dena, 21 USPQ2d 1047.
Unlike the case in In re Taylor & Francis (Publishers), Inc., 55 USPQ2d 1213,
1216 (TTAB 2000), where the Board found that “the four words PSYCHOLOGY
PRESS ALERE FLAMMUM make no sense as a single or unitary phrase,” the
words LEDS GO do create a single unitary phrase; the word LEDS does not stand
alone, creating its own separate commercial impression. Rather, consumers would
perceive the phrase LEDS GO as a clever pun, playing on the expression “let’s go.”
See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968). The
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ellipsis reinforces this perception, asking consumers to “let’s go” somewhere, or do
something.
In view of the above, and considering that the registration of LEDS GO…
and the presumptions afforded registrations under Section 7(b) of the Trademark
Act, 15 U.S.C. § 1057(b), pertain to the mark as a whole rather than to its
components, per se, and that the registration thereof cannot serve to preclude
others from making fair use of the term LEDS in describing their lighting products,
the requirement for a disclaimer of LEDS is unnecessary. In re Hampshire-
Designers, 199 USPQ 383, 384 (TTAB 1978).
We turn then to the refusal under Section 2(d) based on the prior-registered
mark GO-LED for “LED night lights.” When the question is likelihood of confusion,
we analyze the facts as they relate to the relevant factors set out in In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also
In re Majestic Drilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, 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).
We begin with the du Pont factor of the relatedness of the goods. We base our
evaluation on the goods as they are identified in the registration and application.
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard
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Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is
not necessary that the respective goods be identical or even competitive in order to
find that they are related for purposes of our likelihood of confusion analysis. That
is, the issue is not whether consumers would confuse the goods themselves, but
rather whether they would be confused as to the source of the goods. See In re Rexel
Inc., 223 USPQ 830 (TTAB 1984). The goods need only be sufficiently related that
consumers would be likely to assume, upon encountering the goods under similar
marks, that the goods originate from, are sponsored or authorized by, or are
otherwise connected to the same source. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991).
Contrary to applicant’s assertions, the record supports a finding that the
parties’ goods are related and often emanate from the same source. The examining
attorney submitted copies of third-party registrations that include night lights and
various other indoor and outdoor lighting products, such as Registration Nos.
3739896, 3535595, 3956086 and 3621791. Third-party registrations which
individually cover a number of different goods/services that are based on use in
commerce may have some probative value to the extent that they serve to suggest
that the listed goods/service are of a type which may emanate from the same source.
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
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The examining attorney also submitted webpages from third-party websites
showing that the same companies sell night lights and various other lighting
products under the same mark. In particular, Pegasus Lighting offers ceiling lights
and LED night lights, with links to both on the kitchen lighting webpage
; FunkyLights.com sells various child-
themed lighting products, including a “Space Lamp With Night Light”, ceiling
lights, and pendant lights ; and
All Kids Lamps sells night lights, ceiling lights, wall lamps and floor lamps
.
This evidence also supports a finding that the goods are offered in the same
channels of trade to the same potential customers.
We now consider the similarities and dissimilarities between applicant’s
mark LEDS GO… and registrant’s mark GO-LED. In coming to our determination,
we must compare the marks in their entireties as to appearance, sound, connotation
and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
quoting du Pont, 177 USPQ at 567. The test, under this factor, is not whether the
marks can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods and/or services offered under
the respective marks is likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific
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impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
The marks LEDS GO… and GO-LED obviously share the word GO and the
word LED in its singular or plural form. However, the order in which those terms
appear, as well as applicant’s use of LEDS in its plural form followed by an ellipsis,
result in marks that differ in appearance and sound. Moreover, the marks convey
distinctly different meanings and commercial impressions. We found above that
consumers would view applicant’s mark as a play on the common expression “let’s
go.” Registrant’s mark creates an entirely different commercial impression –
directing a consumer to choose an LED light, rather than another type of light.
When we consider the marks in their entireties, the differences far outweigh the
points of similarity.
In view of the above, we find that even though the goods are closely related,
and the purchasers and channels of trade overlap, the differences in the
appearance, sound, meaning and commercial impression of the marks LEDS GO…
and GO-LED are sufficient to make confusion unlikely. See In re Best Products Co.,
Inc., 231 USPQ 988 (TTAB 1986); See also In re Akzona Inc., 219 USPQ 94 (TTAB
1983); In re Mavest, Inc., 130 USPQ 40 (TTAB 1961). Moreover, we find that the
dissimilarity of the marks is dispositive. See Kellogg Co. v. Pack'em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason
why, in a particular case, a single duPont factor may not be dispositive”).
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Decision: The refusal to register based on the requirement for a disclaimer
of LEDS is reversed. In addition, the refusal to register based on a likelihood of
confusion of registration under Section 2(d) of the Trademark Act is reversed.