Dyson Technology Limited

Trademark Trial and Appeal Board

May 8, 2018

No. 79188560 (T.T.A.B. May. 8, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 8, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Dyson Technology Limited
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Serial No. 79188560
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Jennifer Lee Taylor of Morrison & Foerster LLP for Dyson Technology Limited.

Justin Berlin, Trademark Examining Attorney,1 Law Office 125 (Mark Pilaro,
Managing Attorney).
_____

Before Zervas, Kuczma, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Dyson Technology Limited (“Applicant”) filed an application2 for extension of
protection to the United States of its International Registration of the standard
character mark CU-BEAM for the following goods:
Suspended lights in the nature of LED lighting fixtures
designed to be suspended from a ceiling with uplighters
and/or downlighters, the aforesaid optimized to reduce eye

1 The application was reassigned to Examining Attorney Berlin for briefing.
2 Application Serial No. 79188560 was filed on April 13, 2016 under Trademark Act
Section 66(a), 15 U.S.C. § 1141f(a), based on International Registration No. 1301595 dated
April 13, 2016, with a priority filing date of October 13, 2015.
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strain and increase comfort and productivity; parts and
fittings for the aforesaid goods, in International Class 11.
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 in
connection with Applicant’s goods, so resembles the mark Q-BEAM SPOT/FLOOD as
to be likely to cause confusion, or to cause mistake, or to deceive. The cited mark is
registered on the Principal Register in typed form for:
Lighting apparatus and instruments – namely, a hand-
held combination spotlight and floodlight, in International
Class 11.3
When the refusal was made final, Applicant appealed to this Board and requested
reconsideration. The Examining Attorney denied the request for reconsideration and
this appeal proceeded. Applicant and the Examining Attorney have filed briefs.
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 and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

3 Reg. No. 2600421 issued on July 30, 2002. Section 8 affidavit accepted; Section 15 affidavit
acknowledged; renewed. Registrant disclaimed the exclusive right to use SPOT/FLOOD
apart from the mark as shown. Registered as a typed mark which is the equivalent of a
standard character mark. See TRADEMARK MANUAL OF EXAMINING PROCEDURE § 807.03(i)
(Oct. 2017).
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A. The goods; trade channels; customers.
We first consider the similarity or dissimilarity of the goods as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom Sys. Inc.
v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
All of the goods are lighting apparatus; however, Registrant’s goods are limited to
hand-held devices that combine the function of a spotlight and a floodlight, while
Applicant’s goods are suspended ceiling fixtures with features called “uplighters” and
“downlighters” that are “optimized to reduce eye strain and increase comfort.”
In order to demonstrate that the goods of Applicant and Registrant are related,
the Examining Attorney has submitted evidence from the internet indicating that
portable lighting devices are offered under the same marks as lighting fixtures for
ceilings. Little of the evidence actually deals with hand-held spotlights or hand-held
floodlights. The evidence shows that Larson Electronics offers a handheld spotlight
that is “ideal for hunting, camping, marine and boating use as well as for first
responders and emergency services,”4 as well as an “Explosion Proof LED Paint Spray
Booth Light.” Although this product is a ceiling fixture, it is designed “for areas where
flammable chemical/petrochemical vapors exist . . . making it ideal for applications
such as paint booths, oil rigs, offshore applications, petrochemical, manufacturing,
chemical storage, water treatment centers, and food processing plants.”5 It is quite

4 Office Action of September 21, 2017 at 20.
5 Id. at 27.
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different in nature from Applicant’s comfort-optimizing lighting fixture. West Marine
offers a handheld spotlight that is listed under the categories of “Marine Electrical”
and “Exterior Lighting,”6 and also offers “interior” lighting fixtures. However, these
latter fixtures appear to be dome lights for installation on boats.7
The evidence showing that Honeywell and Eaton sell both flood lights and ceiling
fixtures is not entirely on-point. The floodlights, although portable, are not hand-held
devices, but “work lights” on steel stands.8 They are quite different from Registrant’s
goods in their nature, their purpose, and their likely purchasers.
The evidence shows that Phoenix offers LED ceiling fixtures as well as a “Portable
Explosion-proof LED Floodlight,” which is described as “rated for hazardous and wet
locations [f]or use in chemical plants, drilling rigs, refineries and other hazardous
locations.”9 This latter item, while portable, is intended to be mounted. It is therefore
somewhat different in nature from Registrant’s goods. The Examining Attorney has
also shown that Philips offers flashlights as well as ceiling fixtures.10 The flashlights,
while hand-held, are not spotlights or floodlights and are not identified as such.
Finally, the evidence shows the mark LUMAPRO applied both to a decorative ceiling
fixture and “Temporary Job Site Lights, Clamp Base Style.”11 Again, this latter item

6 Id. at 10.
7 Id. at 9.
8 Id. at 6-8, 11-15.
9 Office Action of March 1, 2017 at 13-14.
10 Id. at 15-17.
11 Id. at 10-11.
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is not a hand-held device. Overall, the Examining Attorney’s evidence does not
persuade us that goods of the specific types identified in the application and the cited
registration are commercially related.
With respect to trade channels, Applicant argues that it offers its goods to the
trade and not to the general public, and points out that its website has no “point of
sale option.”12 As the Examining Attorney points out, this argument is unavailing
because Applicant’s identification of goods lacks any limitation as to trade channels.
We assume that Applicant’s goods will be offered through all normal trade channels
for such goods. Octocom, 16 USPQ2d at 1787. The Examining Attorney has, in fact,
shown that Applicant’s goods are offered by two online retailers, at
and 13 and, therefore, might be purchased by the general public. This
does not mean, however, that the goods of Applicant and Registrant travel through
the same trade channels. There is no evidence indicating that YLighting and
Lightology offer hand-held spotlights and floodlights.14 Considering that hand-held
spotlight/floodlight combinations and suspended lighting fixtures designed for
comfort have very different purposes, there is no reason to assume that they would

12 Applicant’s brief at 6, 9 TTABVUE 11.
13 Office Action of March 1, 2017 at 18-20.
14 The Examining Attorney is in error when he argues that “[a]bsent restrictions in an
application and/or registration, the identified goods are ‘presumed to travel in the same
channels of trade to the same class of purchasers.’” Examining Attorney’s brief, 11 TTABVUE
10, quoting In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). The
logic of this presumption holds only in cases where the goods at issue are identical. In the
case before us, the identified goods differ on their face; and even if they were commercially
related goods, there would be no logical basis for making the presumption asserted by the
Examining Attorney.
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travel through the same trade channels or be purchased by the same customers in
environments where they would consider the source of the goods as the same.
The evidence does not persuade us that the goods of Applicant and Registrant are
related in such a way or are marketed under such circumstances 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).
We find that the du Pont factors relating to the similarity or dissimilarity of the goods,
the likely trade channels, and the classes of customers to whom the goods are offered
do not support a finding of likelihood of confusion.
B. The marks.
We next 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). “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.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1721) (internal quotation marks omitted).
In appearance, the two marks are similar to the extent that they share the
hyphenated term -BEAM. Otherwise, they are different in appearance.
With respect to sound, the Examining Attorney argues that CU-BEAM and Q-
BEAM are phonetic equivalents. Although we note that in pronouncing Applicant’s
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mark one might separately pronounce the names of the letters C and U (to sound like
“see you beam”), Applicant does not argue that this is the pronunciation of its mark.
Rather, Applicant argues that “Cu” is the symbol for the element copper and that, in
the context of Applicant’s goods (which happen to include copper tubing, although
this feature is not listed in the identification of goods), the mark could be pronounced
“copper beam.”15 On this record, it appears unlikely that customers would pronounce
Applicant’s mark as “copper beam.” The more likely pronunciation, as the Examining
Attorney suggests, would be as the phonetic equivalent of Q-BEAM. Cf. In re Viterra
Inc., 101 USPQ2d at 1912 (“[T]here is no correct pronunciation of a trademark, and
consumers may pronounce a mark differently than intended by the brand owner.”).
In terms of meaning or connotation, both marks contain the suggestion of light
that is inherent in the word “beam.” However, there is no evidence to indicate what
meaning Q-BEAM may have, and it is not clear whether customers would derive the
meaning of “copper beam” from Applicant’s mark. Customers certainly could perceive
Q- and CU- to have or suggest different meanings. We also note that the words
SPOT/FLOOD in Registrant’s mark have a meaning that is not present in Applicant’s
mark and, in the context of Applicant’s goods, would seem incongruous, since
Applicant’s goods, as identified, are clearly not spotlights or flood lights.
In overall commercial impression, we find the marks to be similar only in part.
The phonetic similarity of the marks and the visual similarity with respect to the
component -BEAM are striking, but there are also notable differences in appearance

15 Applicant’s brief at 12-13, 9 TTABVUE 17-18.
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and potential meaning. Under the circumstances, the du Pont factor of the similarity
or dissimilarity of the marks has a mixed impact upon our analysis of likelihood of
confusion.
C. Strength of Registrant’s mark; similar marks in use.
The Examining Attorney argues, with reason, that the element Q-BEAM, in
Registrant’s mark, “is more significant in creating a commercial impression in the
mind of the consumer,”16 because the other wording of the mark is merely descriptive
of Registrant’s goods. Applicant responds that “a shared use of the term ‘BEAM’ for
light fixtures is of limited value in discussing a likelihood of confusion, because the
word ‘beam’ is commonly used in relation to lighting, as it refers to ‘a ray or shaft of
light.’”17 Applicant has submitted Internet evidence of the following third-party uses
of marks that include the term BEAM:18
Mark Product or Service
BEAM

Lighting design firm.
BEAM4LED Compact, linear lighting system.

MR BEAMS Bright wireless LED lights that install anywhere in
minutes.

BEAM-LED Suspended direct LED luminaire for interior spaces.

CASPER BEAM
LIGHTART COLLECTION

Solid state LED system.

16 Examining Attorney’s brief, 11 TTABVUE 7.
17 Applicant’s brief at 14, 9 TTABVUE 19, quoting the MERRIAM WEBSTER online dictionary,
Applicant’s response of February 7, 2017 at 35.
18 Applicant’s response of February 7, 2017 at 41-52.
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G-BEAM Suspended lighting fixtures.

AUXBEAM LED light bars for vehicles.

STARBEAM LIGHTING
SOLUTIONS
Lighting solutions, including energy audits and
design solutions.

BEAM 5450 Interior and exterior LED sconce.

SL BEAM 300fx High performance moving head luminaire.

Applicant has also made of record copies of registrations of the following marks in
the field of lighting:19
Reg. No. Mark Goods
4063194 X-BEAM Laser light projectors.
4220557 G-BEAM Lighting fixtures.
4997744

Bicycle lights, diving lights, electric lamps, flashlights,
headlights for vehicles.
4909270 TRUBEAM Motorcycle headlamps.
4421612 BIG BEAM Emergency warning lights, exit signs, electric lanterns.
2990898 I BEAM Flashlights.
3280339 I-BEAM Fluorescent high bay lighting fixtures for industrial,
warehouse, and large retail spaces.

1938339 PROBEAM Electric lighting fixtures for roadway tunnels.
1336510 V-BEAM Incandescent lamps.

19 Id. at 54-62. In our table we paraphrase or abbreviate the identifications of goods in the
registrations.
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Evidence of the registration and use of a term by others may indicate that the
term is weak as an indicator of source, either because it has a well-recognized
descriptive or suggestive meaning or because its commercial strength has been
diluted by third-party use. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir.
2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015). In this case, the dictionary evidence and the evidence of third-
party use clearly show that BEAM has a meaning in the lighting industry that is
invoked frequently in the marketplace. Moreover, the evidence shows quite a few
trademarks in the form of the word BEAM with a single-letter prefix (G-BEAM, X-
BEAM, I-BEAM, V-BEAM), suggesting that marks in this form are distinguishable
from one another. Overall, the evidence of the meaning of BEAM and of similar marks
in use on similar goods indicates that the scope of protection to be afforded
Registrant’s mark should be somewhat limited.
D. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Applicant’s mark
is similar to Registrant’s mark primarily because it is the phonetic equivalent of the
dominant portion of the cited mark. In appearance – and to some extent in sound –
the similarity of the marks depends on the term -BEAM, which has been shown to be
somewhat weak as a source indicator. Otherwise, there are noticeable differences in
the appearance, sound, and commercial impression of the marks. The evidence does
not persuade us that the goods of Applicant and Registrant are related or that they
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would likely be offered through related channels of trade. Under the circumstances,
we find that the marks are sufficiently different that confusion as to source is
unlikely.
Decision: The refusal under Section 2(d) is reversed.