Elation Lighting, Inc.

Trademark Trial and Appeal Board

Sep 7, 2018

No. 87193622 (T.T.A.B. Sep. 7, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 7, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Elation Lighting, Inc.
_____
Serial No. 87193622
_____
Joshua A. Schaul of Sherman IP LLP
for Elation Lighting, Inc.

Annie M. Noble, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____
Before Wellington, Gorowitz, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Elation Lighting, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark ARTISTE in standard characters for “Lighting apparatus, namely, electric
lighting fixtures capable of projecting patterns, dimensions and colors” in
Serial No. 87193622
- 2 -
International Class 11.1 The Examining Attorney refused registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion
with the registered mark ARTIST SERIES in standard characters for “solid state
lighting systems consisting of light emitting diodes,2 polychlorinated biphenyls,
interconnects, heat sinks and optical cavities” in International Class 9.3 After the
Examining Attorney made the refusal final, Applicant filed a request for
reconsideration and appealed. The Examining Attorney denied reconsideration, and
the appeal proceeded. For the reasons set forth below, we affirm the refusal to
register.
II. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); 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 relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry

1 Application Serial No. 87193622 was filed October 5, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an alleged intent to use the mark in commerce.
2 “Light emitting diodes” often are referred to as “LEDs.”
3 Registration No. 4378535 issued August 6, 2013.
Serial No. 87193622
- 3 -
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. Similarity of the Marks
We compare the marks ARTISTE and ARTIST SERIES “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay, 73 USPQ2d
at 1691 (quoting du Pont, 177 USPQ at 567). The test assesses not whether the marks
can be distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
and services offered under the respective marks is likely to result. Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012);
see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
The dominant word ARTIST from the cited ARTIST SERIES mark is nearly
identical to Applicant’s mark, ARTISTE. ARTIST and ARTISTE differ merely by one
letter, an “e” at the end of ARTISTE. As the first word in the cited mark, we find that
ARTIST “is most likely to be impressed upon the mind of a purchaser and
remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988). SERIES, the second word in the cited mark, is disclaimed as
descriptive, as consumers would view SERIES merely as a reference to the line of
lighting products. While Applicant argues that the “technicality” of a disclaimer
should be deemed irrelevant in the analysis, “[w]ithout question, the descriptive or
generic character of an expression” in a mark “is pertinent to the issue of likelihood
of confusion.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
Serial No. 87193622
- 4 -
1985). Applicant offers no reason why SERIES should not be considered at least
descriptive in the registered mark. This diminishes the significance of SERIES in the
comparison of marks because consumers would be unlikely to focus on the descriptive
term to distinguish source. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 224 USPQ at 752.
The shared wording ARTIST/ARTISTE creates a significant visual resemblance
between the two marks and renders the marks phonetically similar, an important
consideration in the analysis, because consumers would use this nearly identical word
in “calling for” the goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1911 (Fed. Cir. 2012). While the additional word in the registered mark presents some
difference in appearance and sound, overall, these marks look and sound very similar.
Applicant argues the anti-dissection rule in the comparison, but “in articulating
reasons for reaching a conclusion on the issue of confusion, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on consideration of the
marks in their entireties.” See In re Nat’l Data Corp., 224 USPQ at 751; see also Stone
Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014).
We further find the connotation and commercial impression of both marks to be
very close. The record includes dictionary entries for both “artist” and “artiste,”
Serial No. 87193622
- 5 -
making clear that the words can be interchangeable.4 Applicant contends that
“artiste” carries a nuance of the performing arts in particular – rather than the arts
in general, and thus creates a different impression in its mark.5 While some meanings
of the respective words “artist” and “artiste” may reflect a difference in nuance, some
meanings clearly overlap, and as noted above, the words are sometimes
interchangeable.6 In the context of both marks for use on overlapping goods, we find
the connotations and commercial impressions of this wording in Applicant’s and
Registrant’s marks to be essentially the same. Although Registrant’s mark includes
the word SERIES, it does nothing to influence the relevant meaning of ARTIST. As
noted above, because it merely refers to the line of products, its contribution to the
overall commercial impression of the mark is minimal. Overall, the connotations and
commercial impressions of the marks are very similar.
This du Pont factor weighs in favor of likely confusion.
B. The Goods
Applicant’s and Registrant’s goods need not be “competitive or intrinsically
related” to find a likelihood of confusion. Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1737 (Fed. Cir. 2017). “Instead,

4 August 1, 2017 Office Action at 24-25 (Oxford English Dictionary entry for “artist” lists
“artiste” as a form of the word and the entry for “artiste” cross references “artist”).
5 7 TTABVUE 10-11 (Applicant’s Brief).
6 See also entry for “artist” in merriam-webster.com, in relevant part, “a skilled performer;
especially: artiste” and entry for “artiste” in merriam-webster.com, “1: a skilled adept public
performer; specifically: a musical or theatrical entertainer; 2: an artistic or creative person.”
The Board may take judicial notice of definitions from dictionaries, including online
dictionaries that exist in printed format or have regular fixed editions. E.g., In re C.H.
Hanson Co., 116 USPQ2d 1351, 1355 n.10 (TTAB 2015).
Serial No. 87193622
- 6 -
likelihood 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., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the second du
Pont factor, we look to the identifications in the application and cited registration.
See Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
We must presume that Applicant’s identification of electric lighting fixtures
capable of projecting patterns, dimensions and colors encompasses all types of electric
lighting fixtures with this capability. See, e.g., In re Hughes Furniture Indus., Inc.,
114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992)
(“Registrant’s goods are broadly identified as computer programs recorded on
magnetic disks, without any limitation as to the kind of programs or the field of use.
Therefore, we must assume that registrant’s goods encompass all such computer
programs including those which are for data integration and transfer.”). The cited
registration covers “solid state lighting systems consisting of light emitting diodes,
polychlorinated biphenyls, interconnects, heat sinks and optical cavities.” Solid-state
lighting is a type of electric lighting that, relative to other types, uses less energy and
Serial No. 87193622
- 7 -
generates less heat.7 Thus, Applicant’s broadly identified electric lighting fixtures
include solid state lighting fixtures that are capable of projecting patterns,
dimensions and colors. In accordance with the same principles set forth above,
because the solid state lighting systems identified in the cited registration are not
restricted as to capability, they are presumed to cover those that project patterns,
dimensions and colors. The more specific function of Applicant’s electric lighting
fixtures cannot distinguish them from Registrant’s goods. Accordingly, we find that
the goods in the subject application and the cited registration overlap.
In addition, the Examining Attorney submitted persuasive evidence that
consumers are accustomed to encountering a variety of lighting goods such as
Applicant’s and Registrant’s under the same marks. For example, Registrant’s
website refers to its LED lighting goods as able “to render color beautifully” and
“maintain color quality for life,” and discusses its ARTIST SERIES goods on a
webpage entitled “Color – Bringing color to life.”8 Third-party website evidence also
shows the relevant goods featured under the same marks. For example, the Bridgelux
website promotes its lighting goods that “[c]ontrol the color points of lighting” as well
as its “Solid-state lighting.”9 The Cireon website touts its LED products referred to
as “solid state lighting” and notes that they “illuminate environments” with “colors
that ‘pop.’”10 The Columbia Lighting website promotes its “solid-state lighting

7 August 1, 2017 Office Action at 26 (Wikipedia.com).
8 August 1, 2017 Office Action at 29-30 (xicato.com).
9 5 TTABVUE 8-11, February 20, 2018 Denial of Reconsideration (bridgelux.com).
10 Id. at 12 (cireon.com).
Serial No. 87193622
- 8 -
technology,” including “Four LED color choices.”11 The record includes other
examples.12 Also, Applicant’s website and third-party websites reflect that those in
the industry feature a variety of lighting products under the same marks.13 The
record includes seven use-based third-party registrations that include the relative
types of goods under the same marks. Third-party registrations based on use in
commerce that cover the same sorts of goods suggest that the listed goods may
emanate from the same source. In re Aquamar, Inc., 115 USPQ26 1122, 1126 n.5
(TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The
foregoing evidence demonstrates the relatedness of the goods at issue.
Applicant argues that the goods are distinct based on particular marketplace
evidence about the goods offered by Applicant and Registrant. However, “[t]he
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 sales of the
goods are directed.” Octocom Syst., 16 USPQ2d at 1787.
The legal identity of Applicant’s and Registrant’s goods and their relatedness not
only weighs heavily in favor of finding a likelihood of confusion, but also reduces the

11 Id. at 16-17 (Hubbell.com).
12 Id. at 18-30.
13 Id. at 33-36.
Serial No. 87193622
- 9 -
degree of similarity between the marks necessary to find a likelihood of confusion.
Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB
2010).
C. Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, because Applicant’s and
Registrant’s recitations of goods overlap in part, we presume that the goods also move
in overlapping channels of trade and are available to overlapping classes of potential
consumers. See Inter IKEA Sys. B.V. v. Akea, 110 USPQ2d 1734, 1743 (TTAB 2014);
L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the
goods of both parties are at least overlapping, we must presume that the purchasers
and channels of trade would at least overlap.”); see also Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding
that where an identification is unrestricted, “we must deem the goods to travel in all
appropriate trade channels to all potential purchasers of such goods”). In addition,
the relatedness evidence discussed above demonstrates that goods such as those
identified in the subject application and cited registration are featured together on
the same websites, and would be encountered by the same consumers. As noted
above, the identifications control, and we therefore cannot accept Applicant’s
contentions about actual distinct trade channels, as such limitations are not reflected
in the identifications of goods.
Serial No. 87193622
- 10 -
D. Sophisticated Purchasing
In its Brief, Applicant points to evidence that its goods are expensive14 to assert
that purchasers are sophisticated purchasers, so as to negate a likelihood of
confusion. We note that Applicant’s identification of goods in this intent-to-use
application is not restricted to high-end or expensive lighting and we cannot find that
“electric lighting fixtures capable of projecting patterns, dimensions and colors”
inherently must be expensive. We consider this factor neutral, but even were we to
find that it weighed against likely confusion, it would not tip the balance in the overall
analysis, given the overlap in goods and the strong similarity of the marks. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“That the
relevant class of buyers may exercise care does not necessarily impose on that class
the responsibility of distinguishing between similar trademarks for similar goods.”).
III. Conclusion
The overall similarity of these marks for in-part identical goods and related that
move in the same channels of trade to the same classes of customers renders
confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed.

14 July 10, 2017 Response to Office Action at 22 (screenshot of webpage showing lighting
product called “Elation Artiste DaVinci”).