H & H Industries, Inc. Interlectric Corporation and Osram Sylvania Inc.v.LTG, Ltd.

Trademark Trial and Appeal Board

Jan 11, 2008

No. 92042496 (T.T.A.B. Jan. 11, 2008)

Mailed: January 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

H & H Industries, Inc.;
Interlectric Corporation; and
Osram Sylvania Inc.

v.

LTG, Ltd.
_____

Consolidated Cancellation Nos. 92042050;
92042382; and 92042496
_____

Geoffrey M. McNutt of McNutt Law and B. Brett Heavner of
Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. for
H & H Industries, Inc.;

Wayne L. Lovercheck of Quinn, Buseck, Leemhuis, Toohey &
Kroto, Inc. for Interlectric Corp.; and

Lawrence E. Abelman of Abelman, Frayne & Schwab for Osram
Sylvania, Inc.

Craig A. Peterson of Craig A. Peterson, Ltd. and Jeffrey D.
Shewchuk of Shewchuk IP Services, LLC for LTG, Ltd.
_____

Before Walters, Walsh and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

H & H Industries, Inc., Interlectric Corporation, and
Osram Sylvania, Inc. (“petitioners”) have petitioned to
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation Nos. 92042050; 92042382; and 92042496
2
cancel Registration No. 2638129, owned by LTG, Ltd.
(“respondent”) for the mark described as follows:
The mark consists of the single color gold as
applied to the end caps of the goods. The dotted
outline of the goods is intended to show the
position of the mark and is not a part of the
mark. The drawing is lined for the color gold,
which is claimed as the mark.

The registration issued on October 22, 2002 with a claim of
acquired distinctiveness under Section 2(f) of the Trademark
Act. The goods are identified therein as “fluorescent
lamps” in International Class 11.
As grounds for cancellation, petitioners allege that
respondent’s asserted mark has not acquired distinctiveness
under Section 2(f) of the Trademark Act, and that the
asserted mark is functional and therefore incapable of
registration under Section 2(e)(5) of the Trademark Act.
Respondent, in its answer, denied the salient allegations of
the petition for cancellation. In addition, respondent
asserted certain “affirmative defenses” that are more in the
nature of amplifications of its denials.
Relevant Procedural History
On December 24, 2003, petitioner H & H Industries, Inc.
(“H & H”) filed a motion for summary judgment in
Cancellation No. 92042050 on the above noted grounds. As
part of its response in opposition thereto, respondent
asserted that it provides its goods “to the service lighting
market, which refers to lighting for commercial, industrial,
Cancellation Nos. 92042050; 92042382; and 92042496
3
and business operations” (response to summary judgment
motion, p. 2). Respondent further asserted that it
learned that gold-colored end caps are
sometimes found on tanning lamps and
movie/film lighting products. With this
Reply, Respondent filed a motion to amend
its registration to clarify the appropriate
channels of trade for its fluorescent
lights by excluding the markets for the
tanning and movie lighting industries.

(Id. at 1-2). To that end, respondent filed an unconsented
motion to amend the identification of goods in its subject
registration to “fluorescent lamps for use other than in
connection with the tanning and movie lighting industries.”
Petitioner H & H filed a response in opposition to
respondent’s motion to amend.
In an order issued on August 26, 2004, the Board found
that
in view of respondent’s acknowledgement that
others use gold end caps for lamps or lighting
products in the movie and tanning industries,
there is no genuine issue of material fact that
respondent’s mark has not acquired distinctiveness
for the color gold for end caps for sun tanning
lamps and for high intensity lamps used in the
motion picture industry. Accordingly, petitioner
is entitled to summary judgment on this basis.

(August 26, 2004 order, p. 4). However, in that same order
the Board deferred until trial determination of respondent’s
motion to amend its identification of goods. As a result,
the Board denied petitioner H & H’s motion for summary
judgment, noting nonetheless that
if after trial we determine that the proposed
amendment to respondent’s identification
Cancellation Nos. 92042050; 92042382; and 92042496
4
is unacceptable, the registration will be
cancelled on the basis that there is no genuine
issue that, for at least some of the goods in the
registration, the mark has not acquired
distinctiveness, and does not identify the source
of sun tanning lamps and high-intensity lighting
products used in the motion picture industry.

(Id. at 5).
Subsequently, the Board granted the parties’ stipulated
motion to consolidate the above cancellation proceedings in
an order issued on March 3, 2005.
The Record
The record consists of the pleadings and the file of
the involved registration. In addition, during their
assigned testimony period, petitioners took the depositions,
with accompanying exhibits, of the following individuals:
Alan Howerton, the Chief Executive Officer of petitioner H &
H;
Frederick Howerton, an employee of petitioner H & H;
Warren Gertsch, Executive Vice President of petitioner
Interlectric Corp. (“Interlectric”);
Richard Neubert, an employee of petitioner H & H and former
employee of Dura-Test;
Jack Jiang, owner of Paclantic and former employee of Dura-
Test;
David Krailo, an employee of petitioner Osram Sylvania, Inc.
(“OSI”);
Cancellation Nos. 92042050; 92042382; and 92042496
5
Thomas Dugan, Product Marketing Manager of petitioner OSI;
and
Gerald Hagerman, Senior Sales Operations Manager of
petitioner OSI.
In addition, petitioners filed the stipulated
declaration testimony, with accompanying exhibits, of the
following individuals: Glen Boss; Elizabeth Webster;
Michael Napoli; and Joseph Laudano; as well as stipulated
evidence consisting of a printed catalog.1 Petitioners also
filed notices of reliance upon the following: printed
advertisements and publications available to the general
public; portions of articles from printed publications
available to the general public obtained from a computer
database; respondent’s replies to petitioners’ first set of
requests for admissions and copies of documents submitted by
respondent in response to petitioners’ requests for
production; portions of the discovery deposition of William
Rastedt; and the prosecution history of a trademark
registration owned by a third party.
Respondent, during its assigned testimony period, took
the depositions, with accompanying exhibits, of the
following individuals:

1 We note with approval petitioners’ utilization of stipulated
evidence in light of the savings in time and expense for the
parties as well as the judicial economy afforded the Board
thereby. See Target Brands, Inc. v. Shaun N.G. Hughes,
__USPQ2d__ (TTAB 2007).
Cancellation Nos. 92042050; 92042382; and 92042496
6
William Rastedt, Director of Distribution for respondent;
Donald Northrop, an employee of Dura-Test;
Gerald Schiazzano, an employee of Dura-Test;
William Belgard, Vice President and General Manager of
Radiant Lamp Co.;
Marvin Kanwischer, an employee of respondent; and
Clint Rossland, an employee of respondent. Respondent also
filed notices of reliance upon the following: various
trademark registrations owned by third parties; and portions
of printed publications.
Petitioners and respondent filed briefs, and
petitioners filed a reply brief.
The parties have designated portions of the record and
the briefs as “confidential.” Although the numbers play a
significant role in determining whether or not acquired
distinctiveness has been established, we are mindful that,
inter alia, the sales and advertising figures were
introduced under seal. Thus, while we are privy to the
specific figures, we will refer to them in only a very
general fashion. Such figures, had we disclosed them in
this opinion, would assist any reader beyond the parties to
better understand our reasoning in reaching our decision.
The figures, were we able to disclose them, would reveal the
compelling case in support of our decision that this opinion
might not otherwise convey.
Cancellation Nos. 92042050; 92042382; and 92042496
7
The Parties
Petitioner H & H is engaged in selling a wide range of
premium quality lamps in the United States to commercial,
industrial and institutional customers. H & H does not
manufacture such lamps; rather, it has purchased them from
various manufacturers throughout its history for resale.
Since 1997, H & H has used gold end caps on its fluorescent
lamps as a sign of premium quality. H & H does not use the
color gold as a trademark to indicate the source of its
fluorescent lamps. Between 1997 and September 2005, total
sales of H & H’s fluorescent lamps with gold end caps were
substantial. H & H has promoted its gold end cap
fluorescent lamps on its Internet website since 2000, and
annually distributes a substantial number of print
advertisements promoting such products to various
industries.
Petitioner Interlectric, and its predecessor company
NEFGLO, first produced gold end cap fluorescent lamps in
1965. Interlectric presently uses gold end caps to
designate high quality products for use in various
industries, and to conform to an established color-coding
system for lights used in the movie industry. Interlectric
does not use the color gold as a trademark to indicate the
source of its fluorescent lamps. Sales of Interlectric’s
Cancellation Nos. 92042050; 92042382; and 92042496
8
gold end cap fluorescent lamps for the years 2003 through
2005 likewise were substantial.
Petitioner OSI produced gold end cap fluorescent lamps
to differentiate its very high output (“VHO”) lamps for
commercial and industrial uses from high output (“HO”) lamps
from 1972 until the mid 1980s. OSI continues to use gold
end caps on fluorescent lamps used for sun tanning purposes.
OSI further sells gold end caps as separate components for
use on suntan lamps and VHO lamps sold by others. OSI does
not use the color gold as a trademark to indicate the source
of its fluorescent lamps or end caps therefor. OSI’s sales
of such end caps from 2001 through 2005 likewise were
substantial.
Respondent is engaged in selling long-life fluorescent
lamps. Since 1993, respondent has used the color gold on
the end caps of its fluorescent lamps “to distinguish its
linear fluorescent lamps from other suppliers” (brief, p.
10). Respondent’s sales of such fluorescent lamps from 1993
until the time of this proceeding were substantial.
Respondent’s expenditures on advertising and marketing such
fluorescent lamps throughout the same time period have been
moderate.
Petitioners’ Standing
Petitioners have introduced evidence of use, by
themselves and several third parties, of the color gold on
Cancellation Nos. 92042050; 92042382; and 92042496
9
the end caps of a variety of fluorescent lamps. Petitioners
further have introduced testimony and evidence that such use
is not trademark use, but rather is ornamental use intended
to designate premium quality goods and also to conform to
color coding requirements of specialty fluorescent lamp
markets. Finally, petitioners have argued that they will be
placed at a competitive disadvantage, resulting in damage,
from respondent’s continued registration of its asserted
mark. Thus, petitioners have demonstrated that they are
competitors of respondent and are proper parties to
challenge respondent’s registration. Therefore, we find
that petitioners have standing to demonstrate that
registrant is not entitled to continued registration because
petitioners are entitled to ornamental and other, non-
trademark, use of the color gold on the end caps of
fluorescent lamps. See 15 U.S.C. §1064 and Federal Glass
Co. v. Corning Glass Works, 162 USPQ 279, 282-83 (TTAB
1969).
Acquired Distinctiveness
Petitioners contend that respondent has not enjoyed
substantially exclusive use of the color gold due both to
petitioners’ use of the identical designation on the end
caps of various types of fluorescent lamps as well as third-
party use of the identical or similar designations therefor.
Petitioners further contend that respondent has failed to
Cancellation Nos. 92042050; 92042382; and 92042496
10
demonstrate customer recognition of the color gold as a
source identifier for its fluorescent lamps, and that its
sales and efforts to promote the color gold as a source
identifier for its goods are insufficient to support a
finding of acquired distinctiveness. Thus, petitioners
argue, respondent has made an insufficient showing that the
color gold has acquired distinctiveness as a mark applied to
the end caps of fluorescent lamps. See Minnesota Mining &
Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470
(TTAB 1967).
In that regard, the Supreme Court has held that color
alone can function as a trademark. See Qualitex Co. v.
Jacobson Products Co., 514 U.S. 159, 39 USPQ2d 1161, 1162
(1995) (“We conclude that, sometimes, a color will meet
ordinary legal trademark requirements”). The Supreme Court
has also made it clear that “with respect to at least one
category of mark -- colors -- we have held that no mark can
ever be inherently distinctive.” Wal-Mart Stores Inc. v.
Samara Brothers Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068
(2000). In view thereof, respondent’s contentions regarding
the inherent distinctiveness of its asserted mark will be
given no consideration. In this case, respondent has
obtained registration of the color gold applied to end caps
for fluorescent lamps under the provision of Section 2(f) on
the ground that it has acquired distinctiveness. Therefore,
Cancellation Nos. 92042050; 92042382; and 92042496
11
respondent must submit sufficient evidence that the color
gold has acquired distinctiveness as a mark used on such
goods. “Distinctiveness is acquired by ‘substantially
exclusive and continuous use’ of the mark in commerce.” In
re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227
USPQ 417, 424 n.11 (Fed. Cir. 1985).
Inasmuch as the trial is complete and petitioners have
submitted evidence challenging respondent’s claim of
distinctiveness, the burden of establishing that the mark
has acquired distinctiveness rests with respondent.
Yamaha strenuously asserts in its brief on appeal
that the ultimate burden of persuasion under
Section 2(f) on the issue of acquired
distinctiveness is on Hoshino as applicant. We
completely agree. “The burden of proving secondary
meaning is on the party asserting it, whether he
is the plaintiff in an infringement action or the
applicant for federal trademark registration.” 1
Gilson, Trademark Protection and Practice § 2.09,
at 2-72 (1987).…As this court observed while
reviewing an opposition proceeding in Levi Strauss
& Co. v. Genesco, Inc., 742 F.2d 1401, 1405, 222
USPQ 939, 942 (Fed. Cir. 1984), the “one seeking
to register [the proposed trademark] bears the
burden of showing secondary meaning under Section
2(f).”

Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). See also
Saint-Gobain Corp. v. Minnesota Mining and Manufacturing
Co., 66 USPQ2d 1220, 1232-3, (TTAB 2003). Furthermore, as
our principal reviewing court has observed: “By their
nature color marks carry a difficult burden in demonstrating
Cancellation Nos. 92042050; 92042382; and 92042496
12
distinctiveness and trademark character.” Owens-Corning, 227
USPQ at 424.
Acquired distinctiveness is to be tested in a
cancellation proceeding as of the registration date of the
involved registration or the date the issue is under
consideration. Thus, evidence bearing on acquired
distinctiveness that is developed after the registration
date will be considered. See Kasco Corp. v. Southern Saw
Service Inc., 27 USPQ2d 1501, 1506 n.7, citing Neapco Inc.
v. Dana Corp., 12 USPQ2d 1746, 1747 (TTAB 1989).
We first consider petitioners’ claim that respondent’s
evidence is insufficient to establish acquired
distinctiveness. Respondent’s continuous use since 1993 is
a fairly lengthy period, but not necessarily conclusive or
persuasive on the Section 2(f) showing. In prior cases
involving usage of comparable or even longer duration, and
with some of these uses even being coupled with significant
sales and advertising expenditures (not to mention direct
evidence of customers’ perceptions), the Board or its
primary reviewing court has found a failure to demonstrate
acquired distinctiveness within the meaning of Section 2(f).
See In re Andes Candies, Inc., 478 F.2d 1264, 178 USPQ 156,
158 (CCPA 1973); and In re Packaging Specialists, Inc., 221
USPQ 917, 920 (TTAB 1984).
Cancellation Nos. 92042050; 92042382; and 92042496
13
Respondent’s sales since 1993 suggest that respondent
has enjoyed a substantial degree of success with its gold
end capped fluorescent lamps. It is difficult, however, to
accurately gauge the level of this success in the
fluorescent lamp industry in the absence of additional
information such as respondent’s market share or how its
gold end capped products rank in terms of sales in the
trade. The sales figures submitted for 9 years, standing
alone and without any context in the trade, are not so
impressive as to elevate respondent’s designation to the
status of a distinctive mark. In any event, the sales
figures show only the popularity of respondent’s product,
not that the relevant customers of such products have come
to view gold colored end caps on fluorescent lamps as
respondent’s source-identifying mark. See In re Candy
Bouquet International, Inc., 73 USPQ2d 1883, 1889 (TTAB
2004). Cf. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002).
Advertising expenditures over this same period are a
moderate sum. More importantly, it is noted that
respondent’s advertising and promotional materials mainly
consist of catalogs, newsletters and holiday cards sent to
its sales representatives and not to its customers.
Respondent acknowledges that it generally does not advertise
directly to its customers and, as such, does not distribute
Cancellation Nos. 92042050; 92042382; and 92042496
14
printed, radio or television advertisements thereto.
Further, while respondent’s catalogs display its gold end
capped fluorescent lamps, it is not clear therefrom that
such end caps are displayed as a trademark so much as a
feature of respondent’s fluorescent lamps. In addition,
many of the catalogs and newsletters distributed by
respondent to its sales representatives display numerous
products under a variety of marks. Thus, it is unclear how
much of the catalog and advertising expenses are allocated
to products sold with gold end caps. As a result, the
amounts spent by respondent on advertising only suggest the
efforts made to acquire distinctiveness, and do not
demonstrate that the efforts have borne fruit. See In re
Pingel Enterprises Inc., 46 USPQ2d 1811 (TTAB 1988); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). We
also note that even highly substantial advertising and
promotional expenditures often are not sufficient to support
a finding of acquired distinctiveness. See, for example,
Braun Inc. v. Dynamics Corp., 975 F.2d 815, 24 USPQ2d 1121,
1133 (Fed. Cir. 1992); and Brunswick Corp. v. British
Seagull Ltd., 28 UDPQ2d 1197, 1202-03 (TTAB 1993). Finally,
we are not persuaded by respondent’s suggestion that the
“sales pitches” made by its sales representatives to
customers and prospective customers of its products serve in
any way to increase customer recognition of gold colored end
Cancellation Nos. 92042050; 92042382; and 92042496
15
caps as a trademark. Simply put, there is no evidence of
record to support a finding that such “sales pitches”
include the promotion of the color gold as respondent’s
mark.
Respondent submits, as further evidence of acquired
distinctiveness, 28 form affidavits originally prepared by
respondent’s counsel during prosecution of the application
that matured into its involved registration. These include
16 affidavits from individual dealers of respondent’s
fluorescent lighting tubes and 12 customers thereof. A
sample affidavit from a customer of respondent is set out
below:
The undersigned being duly sworn states that:

I have ordered fluorescent lighting tubes from
LTG, Ltd. as a regular customer since ___.

I am familiar with the gold end caps on the
fluorescent lighting tubes sold by [respondent]
and recognize the gold end caps as a symbol of
quality unique to [respondent’s] fluorescent
lighting tubes.

When I see gold end caps on fluorescent lighting
tubes, I automatically assume they are
[respondent’s] tubes as opposed to some other
brand of fluorescent lighting tubes.

A sample affidavit from a dealer of respondent is set out
below:
The undersigned being duly sworn states that:

He/She has been a dealer of LTG, Ltd. fluorescent
lighting tubes for the area of ___ since ___.

Cancellation Nos. 92042050; 92042382; and 92042496
16
I am familiar with the gold end caps on
[respondent’s] fluorescent lighting tubes and
recognize it as unique to the fluorescent lighting
tubes sold by [respondent] as a symbol of quality
and I often refer to the gold end caps as our
symbol of quality and of [respondent’s] product
when dealing with customers.

Petitioners argue that the form affidavits fail to
indicate that the customers recognize gold end caps as a
trademark identifying the source of respondent’s goods, and
in addition, fail to indicate the basis for its customers’
assumption that fluorescent lamps with gold end caps emanate
from respondent. We agree that the form affidavits are
unpersuasive for a number of reasons. First, the statements
contained therein are entitled to little weight due to their
cursory nature and the lack of much basic information
regarding the customers or the bases upon which the
statements are made. See In re Pacer Technology, 338 F.3d
1348, 67 USPQ2d 1629, 1633 (Fed. Cir. 2003). Second,
because the affidavits were obtained by respondent from
individuals identifying themselves as regular customers for
varying lengths of time, the statements contained therein
are not necessarily persuasive of the manner in which the
average purchaser of fluorescent tubes will perceive the
color gold applied to the end caps thereof. See, for
example, In re The Paint Products Co., 8 USPQ2d 1863, 1866
(TTAB 1988). Third, we agree with petitioners that nowhere
do the affiants state that they recognize the color gold
Cancellation Nos. 92042050; 92042382; and 92042496
17
applied to the end caps of fluorescent lamps as respondent’s
trademark. Mere statements that the affiants view gold end
caps “as a symbol of quality unique to” respondent is not
the same as stating that they are recognized as a trademark
pointing to respondent as the source of its goods. See, for
example, In re Ferris Corp., 59 USPQ2d 1587-1592-92 (TTAB
2001). As such, we are not persuaded by this evidence that
the color gold is recognized by respondent’s customers as
having acquired distinctiveness as a mark for its
fluorescent lamps. Nor are we persuaded by the highly
similar statements of its dealers that respondent’s
customers have come to recognize gold end caps as a source
identifier for its goods.
Ultimately, this evidence falls short of demonstrating
that the color gold has achieved distinctiveness. Given the
heavy burden in demonstrating the distinctiveness of color
marks, more evidence than what respondent has submitted,
especially in the form of persuasive evidence from
customers, would be necessary to show that the designation
has become distinctive of respondent’s goods. To be clear,
the record contains insufficient direct evidence that
relevant consumers view the color gold on end caps as a
distinctive source indicator for applicant’s fluorescent
lighting products. In other words, the evidence of record
does not persuade us that the public associates the color
Cancellation Nos. 92042050; 92042382; and 92042496
18
gold with respondent, or recognizes the designation as a
mark identifying goods emanating from respondent.
We next turn to petitioners’ contention that
respondent’s use has not been substantially exclusive. In
this connection, we note that in its brief on the merits of
these consolidated cases, respondent acknowledges the
following uses of the color gold:
petitioner H & H’s use on fluorescent lights with gold
colored end caps since 1997;
petitioner Interlectric’s use on Kino-Flo movie lights
with gold colored end caps since 2003;
third-party Literonic’s use on fluorescent lamps with
gold colored end caps from 1997 to 2000 as a supplier to H &
H;
third-party Ushio’s use on fluorescent lamps with gold
colored end caps since 2001 as a supplier for H & H;
third-party Hitachi’s use on fluorescent lamps with
gold colored end caps since 2001 as the producer for Ushio;
third-party Voltarc’s use on gold colored end caps for
use with fluorescent lights since 1998 as a supplier to H &
H;
third-party Paclantic’s use on fluorescent lamps with
gold colored end caps since 2002 as a supplier to H & H;
Cancellation Nos. 92042050; 92042382; and 92042496
19
third-party MaxLite’s use on fluorescent lamps with
gold colored end caps in 2000, which use was abandoned after
respondent took action against it;
third-party Light-Source’s use on gold colored end caps
for use with fluorescent lights since 2001 as a supplier to
H & H;
third-party Neptun Light, Inc.’s use on gold colored
end caps for use with fluorescent lights in a 2006 catalog;
and
third-party Orion’s use on gold colored end caps for
fluorescent lights since 2005.
In addition to the above-acknowledged uses, petitioners
have introduced testimony regarding use by petitioner OSI of
gold end caps on VHO fluorescent lamps from 1972 until 1980
as well as its present use on gold end caps sold as separate
components of fluorescent lamps sold by others. As noted
above, petitioner H & H has provided confidential sales and
advertising figures from 1997 to September 2005 to support
its claim of substantial sales and advertising expenditures
in connection with gold end capped fluorescent lamps.
Petitioners also have identified uses of the color gold on
the end caps of various types of fluorescent lamps by
approximately 20 third parties, including those acknowledged
by respondent. While there is little evidence bearing on
the precise extent of such third-party use, it is clear
Cancellation Nos. 92042050; 92042382; and 92042496
20
nonetheless that there are at least several third parties in
addition to petitioners that use the color gold on the end
caps of fluorescent tubes.
Thus, we agree with petitioners’ assessment that the
cumulative effect of their use and the third-party uses of
the color gold applied to the end caps of fluorescent
lighting products is so extensive that respondent’s use
fails to qualify as “substantially exclusive” as required
under Section 2(f). “When the record shows that purchasers
are confronted with more than one (let alone numerous)
independent users of a term or device, an application for
registration under Section 2(f) cannot be successful, for
distinctiveness on which purchasers may rely is lacking
under such circumstances.” Levi Strauss & Co. v. Genesco,
Inc., supra.
With regard to the acknowledged uses of gold colored
end caps, respondent argues that such uses “are either of
inconsequential volume or are part of and/or following
Petitioner H & H’s infringing lead. Petitioners have
completely failed to adduce any evidence that any of the
[above] uses occurred prior to LTG’s adoption of its
distinctive mark or while LTG was acquiring secondary
meaning in the marketplace” (brief, p. 30). In that
respect, the record is not clear on the extent of use made
by the petitioners other than H & H or the third party uses
Cancellation Nos. 92042050; 92042382; and 92042496
21
of the color gold on end caps. Nonetheless, such uses are
sufficient to be acknowledged by respondent, and further
made the subject of testimony on the merits of these cases
by petitioners. Further, respondent cites to no authority
in support of its contention that such use must have
occurred prior to respondent’s adoption of the color gold in
order to be probative of its failure to make substantially
exclusive use thereof.
From the evidence of record, we conclude that
petitioners’ use has been substantial and that additional
third parties have made use of the color gold applied to end
caps for fluorescent lights. Such use seriously undercuts
respondent’s claim of acquired distinctiveness. Though not
entirely clear from the record, it is possible that
respondent used the color gold on end caps for up to four
years prior to petitioners’ adoption – or, in at least one
case, resumption - of the same designation on various types
of fluorescent lamps. However, at least H & H’s sales and
advertising expenditures related to its gold capped
fluorescent lamps has been substantial, and while there is
no exact evidence bearing on the extent of additional use of
gold end caps by the other petitioners and third parties,
such users are too numerous to ignore.
Respondent’s Proposed Amendment
Cancellation Nos. 92042050; 92042382; and 92042496
22
As noted above, in coming to its determination on
petitioner H & H’s summary judgment motion in Cancellation
No. 92042050, the Board deferred until final hearing
respondent’s unconsented motion to amend its identification
of goods from “fluorescent lamps” to “fluorescent lamps for
use other than in connection with the tanning and movie
lighting industries.” Turning now to respondent’s motion to
amend, we find that petitioners have introduced testimony
and evidence that they and third parties have made use of
the color gold on the end caps of various types of
fluorescent lamps used for a variety of purposes. While the
record supports a finding that some of those uses are
confined to the tanning and movie lighting industries, the
use of gold end caps by the following entities acknowledged
by respondent, including petitioner H & H, and third parties
Litronics International, Ushio, Hitachi, Voltarc, Paclantic,
Light Sources, Neptun Light, Inc. and Orion, are not so
confined. That is to say, the record in this case supports
a finding that, at the very least, this petitioner and these
third parties are using gold end caps on fluorescent lamps
for general purpose use by a variety of businesses and
industries. In addition, there is testimony and evidence of
record that certain petitioners and third parties produce
and/or sell fluorescent lamps both for general purpose use
as well as use in the movie industry. As a result,
Cancellation Nos. 92042050; 92042382; and 92042496
23
respondent’s proposed amendment fails to identify a
meaningful subcategory of fluorescent lamps. See Eurostar
Inc. v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266,
1273 (TTAB 1995); and Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1286 (TTAB 1998). In other words, even if we
permitted the amendment, we would reach the same ultimate
conclusion, and therefore, to do so would be futile. In
view thereof, respondent’s motion to amend its
identification of goods is denied.
We conclude that respondent’s use of its designation
has not been substantially exclusive, and that the evidence
of acquired distinctiveness is insufficient to support
registration on the Principal Register under Section 2(f).
Functionality
Finally, we note that petitioners also argue that the
asserted mark is functional and therefore incapable of
registration under Section 2(e)(5) of the Trademark Act.
However, given our determination herein that respondent has
failed to make a sufficient showing of acquired
distinctiveness under Section 2(f), we decline to reach a
determination on the question of functionality in this
proceeding.
DECISION: The consolidated cancellations are
sustained, and Registration No. 2638129 will be cancelled in
due course.