Elation Lighting, Inc.

Trademark Trial and Appeal Board

Oct 25, 2018

No. 87236388 (T.T.A.B. Oct. 25, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 25, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Elation Lighting, Inc.
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Serial No. 87236388
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Joshua A. Schaul of Sherman IP LLP,
for Elation Lighting, Inc.
Annie M. Noble, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Taylor, Goodman and Coggins,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Elation Lighting, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark PALADIN (in standard characters) for “Lighting apparatus, namely,
electric lighting fixtures capable of projecting patterns, dimensions and colors” in
International Class 11.1

1 Application Serial No. 87236388 was filed on November 14, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

Serial No. 87236388
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark PALADIN (in standard
characters) for “Generators of electricity, gas-operated power generators” in
International Class 7; “Battery packs” in International Class 9; and “LED luminaires;
LED lighting systems comprised of work lights and case lights, each sold together
with lighting accessories” in International Class 11 as to be likely to cause confusion,
mistake or deceive.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion
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 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, 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 (CCPA

Page references to the application record are to the online (non-downloaded) version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
on appeal are to the Board’s TTABVUE docket system.
2 Registration No. 5019369 issued August 9, 2016.
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1976). These factors, and the other relevant du Pont factors now before us, are
discussed below. To the extent that any other du Pont factors for which no argument
or evidence was presented may nonetheless be applicable, we treat them as neutral.
A. The similarity or dissimilarity of the marks

We analyze “the marks in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. 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 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.” Coach Servs. Inc. v. Triumph Learning,
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading
Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)).
In this case the marks are identical in sound, appearance, meaning, and
commercial impression. This factor thus strongly favors a finding of likelihood of
confusion.
B. Similarity or dissimilarity of the goods and channels of trade and classes of
purchasers
We turn next to the du Pont factors regarding the similarity or dissimilarity of the
respective goods, channels of trade and classes of purchasers. The issue of likelihood
of confusion must be determined on the basis of the goods as set forth in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys.
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Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990)). In comparing the goods, it is not necessary that they be identical or even
competitive in nature in order to support a finding of likelihood of confusion. The
goods need only be “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., 101 USPQ2d at 1722 (quoting 7-Eleven
Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Where, as here, the involved marks are identical, the degree of similarity between
the goods that is required to support a finding that confusion is likely declines. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner
Entm’t Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). It is necessary only that
there be a viable relationship between the two to support a finding of likelihood of
confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia
Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
We focus our discussion on the registered Class 11 goods as they are the ones
discussed by the Applicant and the Examining Attorney, and are the goods that are
closest to those for which Applicant seeks registration; therefore, we compare
Applicant’s “lighting apparatus, namely, electric lighting fixtures capable of
projecting patterns, dimensions and colors” to Registrant’s “LED luminaires; LED
lighting systems comprised of work lights and case lights, each sold together with
lighting accessories.”
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We begin our comparison of the goods by noting that in both the evidence it
submitted and in its appellate arguments, Applicant argues that the goods are
unrelated because their purposes are different and their end users are different. In
particular, Applicant argues that as demonstrated by the respective website evidence,
Registrant’s goods are “portable LED remote area light[ing]” designed “[f]or
emergencies, fires, or outdoor evening events … marketed and advertised for use by
police officers, construction workers and firefighters[,]” while its goods are “strobe
wash blinder luminaire … [f]eaturing … 64 color presets and 15 unique color macros”
with the ultimate end user “owners/operators of theme parks, cruise ships, casinos,
corporate/special events, nightclubs and lounges, concerts and live stage events,
exhibitions, television and theater as well as houses of worship.” 7 TTABVUE 8-9.
We cannot, however, resort to Applicant’s extrinsic evidence to impermissibly
restrict either Applicant’s goods or Registrant’s goods. See, e.g., In re La Peregrina
Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) (applicant cannot rely on registrant’s
website to restrict the scope of registrant’s goods); In re Bercut-Vandervoort & Co.,
229 USPQ 763, 764 (TTAB 1986) (extrinsic evidence that relevant goods are
expensive wines sold to discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or registration). We must make
our determination regarding the similarities between the goods, channels of trade,
and classes of purchasers based on the goods as they are identified in the involved
application and cited registration, respectively, not on any extrinsic evidence of actual
use. Stone Lion Capital Partners, 110 USPQ2d at 1162; In re Dixie Rests., Inc., 105
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F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom Sys., 16 USPQ2d at 1787
(“The authority is legion that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.”). Here, neither Applicant’s nor Registrant’s goods as recited
are restricted by channels of trade or classes of purchasers.
In determining whether Applicant’s electric lighting fixtures and Registrant’s
LED luminaires and LED lighting systems are related, we first define the goods
identified in the cited registration. As requested by the Examining Attorney, we take
judicial notice of the definition of “luminaire,” which means “a complete lighting
unit.”3 LED lighting, also known as “solid state lighting,” is a type of light that uses
“semiconductor light-emitting diodes (LEDs) … as sources of illumination rather than
electrical filaments, plasma (used in arc lamps such as fluorescent lamps) or gas.”
August 2, 2017 Office Action at 27, (Wikipedia.com). Solid-state lamps (LEDs) are
available for use in lighting fixtures and are used “frequently in modern vehicle
lights, street and parking lot lights, train marker lights, building exteriors, remote
controls etc.” Id. at 28.

3 Merriam-webster.com. 9 TTABVUE 7, 15. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format or have regular fixed
editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); Threshold.TV
Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

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The Examining Attorney submitted Internet evidence showing third parties offer
LED lighting systems with different color choices or that can change color. Internet
excerpts include:
Colorkinetics.com offers intelligent color-changing LED
lighting systems. … Color wall washing luminaires help to
make a room appear brighter, cheerier and more relaxing.
… Our color cove lighting is ideal for accent and aesthetic
effect lighting that adds drama and interest in brightly lit
environments. ... The innovative compact form factor of our
high-performance linear luminaires makes them a perfect
fit for alcoves, accent spaces and other interior settings.
February 20, 2018 Request for Reconsideration Denied at
12-14.
Columbia Lightening (hubbel.com) offers solid state
lighting technology with four color choices. Id. at 10.
Philips Color Kinetics (colorkinetics.com) delivers high-
performance professional LED lighting systems in a wide
range of types, form factors and output levels …. Our color-
changing, tunable white, solid white, and solid color LED
luminaires provide high quality, digitally controllable light
[for] all major interior and exterior architectural and
entertainment applications. Id. at 17.
The Examining Attorney also submitted into the record copies of use-based, third-
party registrations identifying goods listed in both the application and the cited
registration. The third-party registrations include, among others, Registration Nos.
4875942 (“electric lighting fixtures” and “LED Luminaires”) and 5065855 (“electrical
lighting, namely, LED electrical lighting fixtures and LED luminaires”). August 2,
2017 Office Action at 8-10, 14-17, 21-23. Copies of use-based, third-party registrations
may serve to suggest that the goods are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
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We find that the Examining Attorney’s evidence, when considered together,
suffices to establish that the goods are related. Both Applicant and Registrant are
offering types of lighting units. The third-party registrations, although few in
number, list both Applicant’s and Registrant’s goods, and serve to suggest that these
goods are of a type which may emanate from a single source under the same mark.
The website excerpts show that LED luminaires and LED lighting systems are
capable of providing or changing color. Registrant’s LED luminaires are a type of
electric lighting fixture, are not limited as to type in function or purpose, and could
be of a type that projects patterns, dimensions and colors. See e.g. third-party Reg.
No. 4920520 which lists “LED lighting apparatus for discotheques and nightclubs,
namely, LED lighting fixtures that project various patterns, dimensions, and colors.”
August 2, 2017 Office Action at 11-13. Therefore, we find Applicant’s and Registrant’s
goods are related, and that this du Pont factor favors a finding of likelihood of
confusion.
As to channels of trade and classes of purchasers, Applicant argues that the goods
“travel in different markets” and are marketed to different customers. Applicant
submits that its customers are not the general public but “highly specialized” dealers
and distributors who are involved in the “entertainment lighting and special effects
industry.” 7 TTABVUE 8-10.
However, as we again note, neither the cited registration nor Applicant’s
application reflects any such restrictions or limitations as to trade channels or classes
of customer. In the absence of such language, we must presume that the cited
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registration and the application encompass all of the goods of the type described in
the application and registration, that the goods so identified move in all channels of
trade normal for those goods, such as dealers and distributors, (see February 20, 2018
Request for Reconsideration Denied at 6 and 24 for LED lighting fixtures; 7
TTABVUE 8-10), and that the goods are available to all potential purchasers of such
goods, including ordinary consumers seeking lighting fixtures. In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
In the absence of limitations to trade channels and classes of purchasers in the
identifications of goods of the application and cited registration, we find the trade
channels and classes of purchasers to be related. We resolve the du Pont factor
regarding trade channels and classes of purchasers against Applicant.
C. The conditions under which and buyers to whom sales are made, i.e.
“impulse” vs. careful, sophisticated purchasing
As to conditions under which and buyers to whom sales are made, Applicant
contends that both its goods and Registrant’s goods are expensive and that “[g]iven
the price of App[lica]nt’s high-end lighting products and Registrant’s outdoor
emergency lighting products, confusion is not only unlikely, it is virtually impossible.”
7 TTABVUE 11. We acknowledge that on the record before us the goods in Applicant’s
and Registrant’s identifications do not appear to be impulse items but would be
purchased with care, but because of the identical marks and the related goods, even
careful purchasers are likely to believe that Applicant’s and Registrant’s respective
marks identify goods emanating from the same source. See HRL Assocs., Inc. v. Weiss
Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840
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(Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers,
careful purchasing decision, and expensive goods). We find this du Pont factor
neutral.
II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. When we balance
the du Pont factors, we conclude that because the marks are identical, the goods are
related, and the trade channels and purchasers are overlapping, confusion is likely
to occur between Applicant’s mark and Registrant’s mark.
Decision: The refusal to register Applicant’s mark PALADIN is affirmed.