Group Dekko, Inc.Download PDFTrademark Trial and Appeal BoardSep 10, 201987725953 (T.T.A.B. Sep. 10, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: September 10, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Group Dekko, Inc. _____ Serial No. 87725953 _____ Todd T. Taylor of Taylor IP, P.C. for Group Dekko, Inc. John S. Yard, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Bergsman, Lykos and English, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Group Dekko, Inc. (“Applicant”) seeks to register on the Principal Register the mark LUX-ILLUMINAIRE in standard characters for goods ultimately identified as “electrical lighting fixtures and electrical lighting assemblies for commercial and office applications consisting primarily of lighting housings, lenses, and electrical connectors, sold as a unit” in International Class 11.1 1 Application Serial No. 87725953, filed December 19, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce. Serial No. 87725953 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it so resembles the registered mark ILLUMINAIRE in typed format2 on the Principal Register for “[e]lectric lighting fixtures” in International Class 11,3 that, when used on or in connection with Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. The Trademark Examining Attorney maintained the refusal to register and denied the request for reconsideration. The appeal is fully briefed For the reasons set forth below, we affirm the Section 2(d) refusal. I. Evidentiary Issue Before addressing the substance of this appeal, we consider the Examining Attorney’s objection to Applicant’s submission of website excerpts and Google search results (Exhibits A-E) and search results from the Trademark Electronic Search System (“TESS”) (Exhibit F) with its main brief as untimely. In response, Applicant admits that Exhibit F constitutes new evidence and withdraws the TESS search results. Applicant justifies the late submission of Exhibits A-E, however, on the grounds that “[t]he attached exhibits may not be the exact web pages that were previously present [sic] during prosecution, as web pages are a dynamic thing and 2 A typed mark is the legal equivalent of a standard character mark. TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018). 3 Registration No. 2770175, issued on September 3, 2003; renewed. Serial No. 87725953 - 3 - change over time, but they are close and from the very same web sites.” Reply Brief, p. 2; 10 TTABVUE 3. Applicant’s position represents a misunderstanding of Board rules and procedure regarding the submission of Internet evidence. Making specific pages from a particular website properly of record during prosecution does not mean that any updated or additional pages from that website are automatically of record, or can be made of record on appeal. It is only those pages that were retrieved on a particular date, properly identified, and timely submitted that are of record. To make Internet material properly of record, the offering party must provide the full address (URL) for the web page, and the date it was accessed or printed, either by the information displayed on the web page itself, or by providing this information in an Office action or an applicant’s response. See In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018); In re Canine Caviar Pet Foods, Inc., 126 USPQ2d1590, 1593 (TTAB 2018). If Applicant wished to submit updated pages from either its own or Registrant’s website or any other Internet materials, it should have filed with the Board a separately captioned request for remand for the purpose of submitting additional evidence to rebut the likelihood of confusion refusal. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“If the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination.”). See, e.g., In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1696 (TTAB 1992). Such a request for remand would also have to include a Serial No. 87725953 - 4 - showing of “good cause” (i.e., a satisfactory explanation as to why the evidence was not made of record prior to appeal), along with the additional evidence sought to be introduced. See TBMP §§ 1207.01, 1207.02 and 1209.04. In view thereof, the Examining Attorney’s objection is sustained and the objected- to evidence submitted concurrently with Applicant’s appeal brief has been given no consideration.4 See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“[t]he record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed.”). See e.g., In re Fiat Grp. Mktg. & Corp. Commc’n S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014). II. Likelihood of Confusion - Applicable Law We turn now to the substantive refusal before us. Our determination under Section 2(d) is based on 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) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 4 We have not considered Applicant’s argument based on the stricken evidence that Registrant’s mark is no longer used in commerce. Even if we had, Applicant’s assertion constitutes an improper collateral attack on the cited registration and is irrelevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). A trademark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods. See 15 U.S.C. § 1057(b). Serial No. 87725953 - 5 - F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). When analyzing these factors, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but also to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”). These factors, and the other relevant DuPont factors, are discussed below. A. The Goods and Established, Likely-to-Continue Channels of Trade First we compare the goods. As noted above, Registrant’s goods “[e]lectric lighting fixtures” are identical to the first item listed in Applicant’s electrical lighting products sold as a unit.5 Applicant, however, attempts to distinguish the goods by noting that its products are used only in the office furniture and commercial sectors whereas 5 Under this DuPont factor, the Examining Attorney need not prove, and we need not find, similarity as to each activity listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.”). Serial No. 87725953 - 6 - Registrant’s lighting products are for other uses such as residential and outdoor. Applicant’s argument necessarily fails because the respective goods must be compared as they are identified in the application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The fact that Applicant limited its identification of goods to a particular field of use does not distinguish the goods since Registrant’s electric lighting fixtures are unrestricted and therefore could also be used in the office and commercial fields. 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.’”). Thus, on their face, Applicant’s and Registrant’s goods are in-part identical. Because the goods are in part identical in part and unrestricted as to trade channels, we must also presume that these particular goods travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Serial No. 87725953 - 7 - Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly, these DuPont factors weigh in favor of finding a likelihood of confusion. B. The Marks Next, we consider “the similarity or dissimilarity of 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 (Fed. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “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)). Our analysis cannot be predicated on dissection of the involved marks. Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). Nonetheless, Serial No. 87725953 - 8 - 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 a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at 1161. Finally, it is well-settled that where, as here, the goods are identical in part, less similarity between the marks is needed for us to find a likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”). Applicant argues that because consumers are more likely to focus on the term LUX, the first portion of Applicant’s mark, the marks are distinct in appearance and sound. We disagree. With the exception of the addition of the term LUX, Applicant’s mark LUX-ILLUMINAIRE is identical to the cited mark ILLUMINAIRE. Adding a term to a registered mark generally does not obviate the similarity between the compared marks. See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (CCPA 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar). This is especially true here given that the additional term LUX as applied to the involved goods is highly suggestive. See The Latin Dictionary “lux” translated to “light” and third-party registered marks for Serial No. 87725953 - 9 - lighting products incorporating LUX6 submitted with Office Action dated August 28, 2018. Under these circumstances, consumers may perceive Applicant’s products identified as LUX-ILLUMINAIRE to be a new line of ILLUMINAIRE products. Overall, Applicant’s applied-for mark is similar in appearance, sound, connotation and commercial impression to the registered mark. In other words, when considered in their entireties, the marks are more similar than dissimilar. This DuPont factor also weighs in favor of finding a likelihood of confusion. C. Conditions of Sale Lastly, we consider the conditions under which the goods are likely to be purchased, e.g., whether on impulse or after careful consideration, as well as the degree, if any, of sophistication of the consumers. Purchaser sophistication or degree of care may tend to minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at 1695. Applicant argues that the lighting fixtures for the office and commercial sectors are expensive, and therefore are not impulse purchases. As Applicant contends, such consumers will devote a great deal of time researching various products to find ones that meet all of the consumers’ needs. Applicant further asserts that because its and Registrant’s goods are sold through distributors, the distributors will be able to distinguish the differences between the brands. 6 The registered marks include LUX PRO, URBAN LUX, LUX BY MIGHTY BRIGHT, LUX- RAY, LUXBETTER, LUX LIGHTING SOLUTIONS & DESIGN, iLUX, LUX COMMANDER, LUX LINEARIS, LUX EX MACHINA, LUXGUILD, LUXFIT, LUX-PANEL, and LUX. Serial No. 87725953 - 10 - We agree that the relevant consumers are likely to exercise a certain degree of care due to the intrinsic nature of the involved goods. This DuPont factor therefore weighs somewhat against a finding of likelihood of confusion. III. Conclusion – Balancing the DuPont Factors Although we find that the relevant consumers are likely to exercise some degree of care, this is outweighed by the strong similarity of the marks, the in-part identical nature of the goods and overlapping established, likely-to-continue channels of trade. Balancing the DuPont factors, we find that confusion is likely between Applicant’s applied-for mark and the mark in the cited registration. Decision: The Section 2(d) refusal is affirmed. Copy with citationCopy as parenthetical citation