Engineering Services and Products Company

Trademark Trial and Appeal Board

Sep 13, 2019

87641154 (T.T.A.B. Sep. 13, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: September 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Engineering Services and Products Co.
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Serial No. 87641154
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John C. Linderman of McCormick, Paulding & Huber, LLP
for Engineering Services and Products Co.
Robert N. Guliano, Trademark Examining Attorney, Law Office 105,
Jennifer Williston, Managing Attorney.
_____

Before Zervas, Wolfson, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Engineering Services and Products Company (“Applicant”) seeks registration on
the Principal Register of the mark PARLUCENT (in standard characters) for “lights
for use in growing plants” in International Class 11.1

1 Application Serial No. 87641154 was filed on Oct. 11, 2017, based on Applicant’s claim of
first use anywhere and use in commerce since at least as early as Aug. 1, 2017 under Section
1(a) of the Trademark Act. 15 U.S.C. § 1051(a).

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
Serial No. 87641154
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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 of
likelihood of confusion with the registered mark PARALUCENT for “computer
hardware and software systems for remotely controlling lighting devices within a
building; lighting controls (including chips and control modules); lamps; film
cameras” in International Class 9.2
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
We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor that is relevant, and have treated any
other factors as neutral. See Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are relevant
to every case, and only factors of significance to the particular mark need be

2 Registration No.4947393, issued on the Principal Register on April 26, 2016.
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considered.”)); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). Varying weights may be
assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the
various evidentiary factors may play more or less weighty roles in any particular
determination”). Two key considerations are the similarities between the marks and
the similarities between the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) (“The likelihood of confusion
analysis considers all DuPont factors for which there is record evidence but ‘may focus
… on dispositive factors, such as similarity of the marks and relatedness of the
goods.’”)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976) (the “fundamental inquiry 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

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
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USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
PARLUCENT and PARALUCENT are identical but for the cited mark’s
additional ‘A’ between PAR and LUCENT. While it is true, as Applicant notes, that
the additional letter may also add a syllable, the other three syllables are identical,
in the same sequence, with the same prefix and suffix. A minor difference of this sort
does not distinguish the marks visually or phonetically. See, e.g., Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987) (affirming Board’s holding that source confusion is likely where
COMMCASH and COMMUNICASH are used in connection with identical banking
services); In re BASF AG, 189 USPQ 424 (TTAB 1975) (finding difference between
marks LUTEX and LUTEXAL insufficient to avoid source confusion); In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS
(stylized) to be highly similar in appearance).
Given the variance of only one letter between the marks, consumers would little
note nor long remember their slight dissimilarity. Under actual marketing
conditions, consumers do not necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their imperfect recollections.
Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980); In re
FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018) (proper focus is on the
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recollection of the average consumer, who retains a general rather than specific
impression of the marks). Therefore, “[t]he marks ‘must be considered … in light of
the fallibility of memory’ and ‘not on the basis of side-by-side comparison.’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1,
3 (CCPA 1977)). Moreover, consumers may not pronounce the marks precisely when
calling for the goods. As the Federal Circuit has stated, “there is no correct
pronunciation of a trademark, and consumers may pronounce a mark differently than
intended by the brand owner. … Given that, we think … any minor differences in the
sound of these marks may go undetected by consumers and, therefore, would not be
sufficient to distinguish the marks.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1912 (Fed. Cir. 2012).
For these reasons, we find the slight variation of one letter insufficient to overcome
the marks’ overall similarity in sight, sound, connotation and commercial impression.
The first DuPont factor weighs heavily in favor of finding a likelihood of confusion.
B. Comparison of the Goods, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration…,” and the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital, 110
USPQ2d at 1161. A proper comparison of the goods “considers whether ‘the
consuming public may perceive [the respective goods or services of the parties] as
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related enough to cause confusion about the source or origin of the goods and
services.’” In re St. Helena Hosp., 113 USPQ2d at 1086 (quoting Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)) quoted
in In re FabFitFun, Inc., 127 USPQ2d at 1672. “[T]he greater the degree of similarity
between the applicant’s mark and the cited registered mark, the lesser the degree of
similarity between the applicant’s goods or services and the registrant’s goods or
services that is required to support a finding of likelihood of confusion.” Time Warner
Entm’t Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002).
Although Applicant purports to limit its arguments to a comparison of the goods,
its contentions also extend to the channels of trade and classes of customers to whom
the respective goods would be offered. Applicant argues that it markets its goods,
identified as “lights for use in growing plants,” to the agricultural/horticultural field
for greenhouse and hydroponic lighting applications in Class 11, while Registrant
markets its goods, “computer hardware and software systems for remotely controlling
lighting devices within a building; lighting controls (including chips and control
modules); lamps; film cameras,” to the industrial field and power industries for
computer controlled lighting services in Class 9.3 “As the evidence [from Applicant’s
and Registrant’s websites] submitted by Applicant shows, Applicant and Registrant
serve completely different industries and provide products and services that are in
no way related or competitive to one another,” Applicant concludes.4

3 Applicant’s brief, 7 TTABVUE 13.
4 Applicant’s brief, 7 TTABVUE 12, citing July 6, 2018 Response to Office Action exs. A and
B, at 11-17, and Nov. 30, 2018 Response to Office Action exs. A and B, at 12-15.
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However, “[w]hen analyzing the similarity of the goods, ‘it is not necessary that
the products of the parties be similar or even competitive to support a finding of
likelihood of confusion.’ 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007). Instead, 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.’ Id.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012).
Applicant’s and Registrant’s respective goods must be compared as they are
identified in the application and the cited registration. In re Detroit Athletic Co., 903
F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); Stone Lion Capital, 110 USPQ2d
at 1161. The comparison is not based on extrinsic evidence of the Applicant’s or
Registrant’s current marketing practices. Octocom Sys., Inc. v. Houston Computer
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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.”).
As the Examining Attorney correctly notes, “[A]pplicant portrays registrant’s
goods as ‘industrial’ in nature, yet no such restrictions are apparent in registrant’s
identification of goods. … For the purposes of this ex parte likelihood of confusion
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determination, applicant’s goods are ‘lights for use in growing plants’ with no
additional restrictions, and registrant’s goods are ‘lamps’ with no further
limitations.”5 The term “lamp” is defined as “any of various devices that produce
light.”6 This broad identification is deemed to include “all the goods of the nature and
type described therein . . . .” In re Solid State Design Inc., 125 USPQ2d 1409, 1413
(TTAB 2018) (quoting In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006)).
So it includes “lights for use in growing plants.” Indeed, Applicant refers to its lights
as “grow lamps.”7 For this reason, Registrant’s broadly worded, unrestricted “lamps”
necessarily encompasses Applicant’s more narrowly identified “lights for use in
growing plants.” 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.’”). As such, Applicant’s and Registrant’s goods are, in part, legally
identical. See also 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.”).
Applicant argues that Registrant’s “lamps” should be read in the context of the

5 Examining Attorney’s brief, 9 TTABVUE 8.
6 Merrriam-Webster.com 7/24/2018, July 24, 2018 Office Action at 6.
7 See, e.g., Applicant’s brief, 7 TTABVUE 13.
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registration’s other identified International Class 9 goods, as component parts of
Registrant’s computerized remote-controlled lighting systems.8 Therefore, Applicant
contends, Registrant’s identified goods do not include Applicant’s grow lights.9 There
are several problems with Applicant’s argument. First, the term “lamps” in the cited
registration is set off by semicolons, which are used to separate discrete categories of
identified goods or services. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d
1163, 1166 (TTAB 2013) (finding that “the semicolon separates the registrant’s
‘restaurant and bar services’ into a discrete category of services which is not
connected to nor dependent on” the services set out on the other side of the semicolon
as a basis for likelihood-of-confusion analysis); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 1402.01(a) (Oct. 2018). Second, even if Registrant’s identified
“lamps” were part and parcel of its computerized, remote-controlled lighting devices,
those devices could still be used to provide lights for growing plants. Third, the
International Classification is solely for the convenience of the PTO, and “is wholly
irrelevant to the issue of registrability under section 1052(d), which makes no
reference to classification.” In re Detroit Athletic, 128 USPQ2d at 1051 (quoting Jean
Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993) also
quoted in Ricardo Media Inc. v. Inventive Software, LLC, 219 USPQ2d 311355, *11
n. 16 (TTAB 2019). Applicant’s and Registrant’s identification of goods thus overlap,
and are legally identical in part.

8 Applicant’s brief, 7 TTABVUE 12-14; Applicant’s reply brief, 10 TTABVUE 6, 9.
9 Applicant’s reply brief, 10 TTABVUE 6.
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In support of finding that the respective identified goods are in-part legally
identical, the Examining Attorney introduced evidence from 19 third-party websites
showing that “lights used for growing plants” are commonly offered to consumers in
the form of “lamps.”10 For example:
11

10 July 24, 2018 Office Action at 7-27; Dec. 19, 2018 Office Action at 3-9.
11 CapCityHydro.com 7/24/2018, July 24, 2018 Office Action at 8.
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12
13

12 GoodHopeHydroponics.vendecommerce.com 7/24/2018, July 24, 2018 Office Action at 12.
13 Laotronics.com 7/24/2018, July 24, 2018 Office Action at 27.
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14
The Examining Attorney also submits third-party evidence showing “lights for use
in growing plants” offered by the same source, under the same mark, or in the same
trade channels, as other kinds of “lamps”:
15

14 Amazon.com/Roleadro-Hydroponic-Greenhouse-Succulents 12/19/2018, Dec. 19, 2018
Office Action at 5.
15 LampsPlus.com 1/22/2018, Jan. 24, 2018 Office Action at 7-9.
Serial No. 87641154
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16

Applicant argues that this third-party evidence “fails to support a finding that

16 USA.Lighting.Philips.com 1/22/2018, Jan. 24, 2018 Office Action at 13-17.
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Applicant’s goods and Registrant’s goods are commonly sold with, at the same
location, and under the same mark,”17 and that it “in no way supports a conclusion
that Registrant’s goods are grow lamps with specifications for use in growing and,
given the clear implications to the contrary, this Internet evidence is seemingly
irrelevant.”18 This misses the point. Third-party evidence of this sort is probative of
the relatedness of the goods, and the similarity of the channels of trade and classes
of customers. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB
2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB
2009). This evidence confirms that “lights for use in growing plants” are considered a
kind of “lamp,” which confirms that the goods are legally identical in part. Because
these goods are legally identical in part, they must be presumed to travel in the same
channels of trade and be sold to the same classes of purchasers. In re FabFitFun, 127
USPQ2d at 1672-73 (quoting Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold to the same classes of
purchasers through the same channels of trade”)). Channels of trade include “the
same type of distribution channel” and are not limited to “identical stores or agents.”
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992).

17 Applicant’s brief, 7 TTABVUE 7.
18 Applicant’s brief, 7 TTABVUE 16.
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Hence, lights used for growing plants are lamps, and both would be marketed
through the same channels of trade to the same classes of purchasers. The second
and third DuPont factors thus weigh in favor of finding a likelihood of confusion.
C. Actual Confusion

Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion in light of the length of time and conditions under which there
has been contemporaneous use of Applicant’s and Registrant’s subject
marks. DuPont, 177 USPQ at 567. The seventh and eighth DuPont factors are
interrelated; the absence of evidence of actual confusion, under the
seventh DuPont factor, by itself is entitled to little weight in our likelihood of
confusion analysis unless there also is evidence, under the eighth factor, that there
has been a significant opportunity for actual confusion to have occurred. See In re
Continental Graphics Corp., 52 USPQ2d 1374 (TTAB 1999); Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). This is especially so in an ex parte case.
“A showing of actual confusion would of course be highly probative, if not conclusive,
of a high likelihood of confusion. The opposite is not true, however. The lack of
evidence of actual confusion carries little weight, especially in an ex parte context.” In
re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003)
(internal citation omitted).
Applicant contends that:
It is well established that likelihood of confusion, not actual confusion, is
the relevant test under Section 2(d) of the Trademark Act. Nevertheless,
the absence of actual confusion and the length and time during and
conditions under which there has been concurrent use without evidence of
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actual confusion is one factor to be considered. In the present case,
Applicant’s mark has coexisted with the ‘393 Registration without any
instances of consumer confusion for over a year and a half. As a result,
Applicant respectfully asserts that there is no risk of consumer confusion
if the pending mark is permitted to register.19

We acknowledge this assertion, but can accord it no probative weight, for several
reasons. First, as Applicant and the Examining Attorney agree, it is not necessary to
show actual confusion in order to establish likelihood of confusion. Herbko v. Kappa
Books, 64 USPQ2d at 1380. Second, Applicant’s counsel’s assertion of no actual
confusion is uncorroborated. See In re Majestic Distilling Co., 65 USDPQ2d at 1205
(“we agree with the Board that Majestic’s uncorroborated statements of no known
instances of actual confusion are of little evidentiary value.”) quoted in In re FCA US
LLC, 126 USPQ2d 1214, 1225 (TTAB 2018). Third, Applicant’s and Registrant’s
marks have been in use contemporaneously for only two years, so there has been little
opportunity for confusion to have occurred. See Regents v. Miners, 110 USPQ2d 1182,
1196 (TTAB 2014) (applicant had only begun to offer services two years before
discovery closed, so little opportunity for confusion). Contemporaneous use for longer
periods has been deemed insufficient under the eighth DuPont factor. See Primrose
Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039-40
(TTAB 2016) (three years). And fourth, there is nothing in the record regarding the
extent of use of Applicant’s mark, so we are unable to gauge whether there has been
any meaningful opportunity for confusion to occur in the marketplace. See Bond v.
Taylor, 119 USPQ2d 1049, 1056 (TTAB 2016).

19 Applicant’s brief, 7 TTABVUE 20-21.
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Hence, the seventh and eighth DuPont factors are neutral.
II. Conclusion
When we consider the record and the relevant likelihood of confusion factors, and
all of Applicant’s arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that consumers familiar with Registrant’s
goods offered under its mark would be likely to believe, upon encountering lights
for use in growing plants offered under Applicant’s mark, that the goods
originated with or are associated with or sponsored by the same entity.
Decision: The refusal to register Applicant’s mark PARLUCENT based on
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
is affirmed.