Hudson Lighting Inc.

Trademark Trial and Appeal Board

Dec 8, 2017

No. 87295151 (T.T.A.B. Dec. 8, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: December 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hudson Lighting Inc.
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Serial No. 87295151
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Gene Bolmarcich, Esq. of Law Offices of Gene Bolmarcich,
for Hudson Lighting Inc.
Parker Howard, Trademark Examining Attorney, Law Office 117,
Hellen Bryan Johnson, Managing Attorney.
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Before Kuhlke, Kuczma and Larkin,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Hudson Lighting Inc. (“Applicant”) seeks registration on the Principal Register of
the mark for “electric light bulbs” in International Class 11.1

1 Application Serial No. 87295151 was filed on January 10, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use anywhere
and first use in commerce since at least as early as April 1, 2015. Applicant describes the
mark as consisting “of the word ‘Hudson’ above the word ‘Lighting,’ all below a stylized image
of a light bulb in a circular design.” “Lighting” is disclaimed and color is not claimed as a
feature of the mark.
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No.
5129884 owned by Jo-Ann Stores, LLC (“Registrant”), for the mark HUDSON 43 in
standard characters, with “Hudson” disclaimed, for “LED candles; lamps; lamp
shades; LED string lighting fixtures; lanterns; chandeliers; pendant lighting” in
International Class 11, as a bar to registration.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under § 2(d) of the Trademark Act is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the
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., Inc., 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 and services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have carefully considered all of
the evidence of record and arguments as they pertain to the relevant du Pont factors,

2 Registration No. 5129884 issued on January 24, 2017, covers additional goods and services
in International Classes 4, 6, 14, 16, 20, 21, 24, 27 and 35 which were not cited in support of
the refusal. Additionally, the § 2(d) refusals previously maintained as final based on U.S.
Registration Nos. 4295003 and 4295004 have been withdrawn. See Examining Attorney’s
Appeal Brief (6 TTABVUE 3).
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including the channels of trade and the classes of purchasers, as well as any evidence
and arguments not specifically discussed in this opinion.
A. Similarity of the Goods, Channels of Trade, and Class(es) of Purchasers3
The nature and scope of the goods must be determined by the identification of
goods listed in the application and cited registration. The respective goods of the
parties need not be identical or even competitive to find a likelihood of confusion.
They need only be “related in some manner and/or if the circumstances surrounding
their marketing [be] such that they could give rise to the mistaken belief that [they]
emanate from the same source.” See, e.g., Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 46 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012).
The Examining Attorney contends that Applicant’s and Registrant’s goods can be
marketed to the same customers, namely, people who are interested in purchasing
lighting devices and bulbs. In support of the relatedness of Applicant’s light bulbs
and Registrant’s goods which include lamps, the Examining Attorney submits
evidence from the following websites4:

3 Applicant does not address these du Pont factors in its brief, and thus does not dispute the
similarity of the goods, channels of trade, or classes of customers.
4 April 7, 2017 Office Action at 3-19. Evidence obtained from the Internet may be used to
support a determination under § 2(d) that goods are related. See, e.g., In re G.B.I. Tile &
Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84
USPQ2d 1660, 1668 (TTAB 2007). Although the April 7, 2017 Office Action and the April 28,
2017 Final Office Action refer to attached evidence from “TCPI:
http://www.tcpi.com/business/products/,” nothing from that website is part of the record
or has been considered.
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1. LEDtronics: http://www.ledtronics.com/: offering lamps and other light
products, and LED light bulbs at 17-19.

2. Ikea Lighting: http://www.ikea.com/us/en/catalog/categories/departments
/lighting/: offering lights, lamps and LED light bulbs at 10-16.

3. Feit Electric: http://www.feit.com/String_Lights: offering String Lights,
including 15 bulbs; other bulbs also advertised for sale at 3-4.

4. Hudson Valley: https://www.hudsonvalleylighting.com/: offering light bulbs;
at 5-7 https://www.hudsonvalleylighting.com/Products/Category/Bulb:
offering light products at 8-9.

This evidence confirms that: (1) the same entities offer light bulbs, and lighting
fixtures including lamps, marketing these goods under the same mark; (2) these
goods are sold or provided through the same trade channels and used by the same
classes of consumers in the same fields of use, namely, consumers of light bulbs, and
light fixtures and lamps, who shop at the same location; and (3) these goods are
similar or complementary in terms of purpose or function, i.e., light bulbs are used in
light fixtures and in lamps. In re Davia, 110 USPQ2d 1810, 1816-17 (TTAB 2014); see
also Duro-Test Corp. v. Starobin Electric Products Corp., 165 USPQ 789, 790-91
(TTAB 1970) (electric lamps and lighting fixtures of the parties are competitive
products sold through some of the same trade channels to the same class of
purchasers).
Here, Registrant’s goods include lamps, chandeliers and pendant lighting while
Applicant’s goods are electric light bulbs. Inasmuch as Registrant’s “lamps,” by their
nature, require Applicant’s electric light bulbs to function when in use, the goods of
Applicant and Registrant are closely related. See, e.g., In re Davey Prods. Pty Ltd., 92
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USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266, 1268-69, 1271-72 (TTAB 2009).
Because the description of goods in Applicant’s application and in the cited
registration are broadly identified as to their nature and type, such that there is an
absence of any restrictions as to the channels of trade and no limitation as to the
classes of purchasers, we must presume that Registrant’s lighting devices and
Applicant’s electric light bulbs encompass all goods of the nature and type described
therein, and are marketed in all normal trade channels for such goods and to all
normal classes of purchasers for such goods. Octocom Sys., Inc. v. Houston Comput.
Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
Aside from the fact that there is no evidence supporting different purchasers for
Applicant’s and Registrant’s goods, given the relationship between electric light bulbs
and lighting devices, at least some of Applicant’s purchasers are part of the general
consuming public for Registrant’s goods. To the extent that Applicant’s and
Registrant’s goods are offered to the general consuming public, the channels of trade
and classes of purchasers overlap. This overlap weighs in favor of a finding of
likelihood of confusion, under the third and fourth du Pont factors. In re Wilson, 57
USPQ2d 1863, 1866 (TTAB 2001). Moreover, as noted above, the record shows that
these goods are sold or provided through the same trade channels and used by the
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same classes of consumers in the same fields of use, namely, consumers of light bulbs,
and light fixtures and lamps, who shop at the same locations.
In view of the foregoing, we find that the goods are closely related, travel in the
same channels of trade, and are sold to the same classes of purchasers, supporting a
likelihood of confusion under the second and third du Pont factors.
B. Similarity of the Marks
It is well settled that marks are compared in their entireties for similarities in
appearance, sound, connotation and commercial impression. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1160 (quoting Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005)). Registrant’s mark is HUDSON 43 while Applicant’s
mark is (referred to herein as “HUDSON LIGHTING and Design”).
Although the marks must be compared in their entireties, the word portion of
Applicant’s composite word-and-design mark is considered its dominant feature and
accorded greater weight in determining whether the marks are confusingly similar.
In re Viterra Inc., 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). The design
elements in Applicant’s mark deserve less weight in our analysis because customers
will use the wording of the mark, HUDSON LIGHTING, in describing and requesting
the goods. In re Viterra, 101 USPQ2d at 1908 (“In the case of a composite mark
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containing both words and a design, the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed” (internal quotation
marks omitted)); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)
(“In the case of marks which consist of words and a design, the words are normally
accorded greater weight because they would be used by purchasers to request the
goods.”).
Looking at the word portion of Applicant’s mark, the word “Hudson” is dominant
as it is the first word in the phrase HUDSON LIGHTING appearing in larger bolded
font than the descriptive term “Lighting” which has been disclaimed.
As discussed below, the mark in the cited Registration, HUDSON 43, like
Applicant’s mark, also begins with the dominant term “Hudson.” Additionally, the
cited mark is registered as a standard character mark and thus, could be utilized in
the same manner as the words HUDSON LIGHTING are shown in Applicant’s mark,
i.e., with HUDSON shown in larger font size than the number “43” in the mark.
Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB
2015) (citing Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011)).
While the first word in both marks is “Hudson,” resulting in the marks’ similarity
in appearance and sound,5 Applicant contends that the marks have different
commercial impressions. According to Applicant, the “43” in Registrant’s mark does

5 Applicant does not address the marks’ similarity in sound and appearance, and thus does
not dispute their similarity in these means of comparison.
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not convey any particular meaning and its presence appears unusual when following
the word “Hudson,” giving the mark an overall distinct, but unspecified, impression
as compared to the much more “traditional” format of Applicant’s mark which is
“{brand (or surname)} {type of product}”, i.e., HUDSON LIGHTING.6 However,
Registrant’s mark HUDSON 43, when viewed as a whole, could be thought to identify
a particular line of goods sold by the owner of Applicant’s HUDSON LIGHTING and
Design mark.
Moreover, because “Hudson” is the first word in each of the marks, we find it to be
dominant in both marks as consumers are generally more inclined to focus on the
first word, prefix, or syllable in any trademark. See Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692 (“VEUVE . . .
remains a ‘prominent feature’ as the first word in the mark and the first word to
appear on the label”); In re Integrated Embedded, 102 USPQ2d 1504, 1513 (TTAB
2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced
by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered” when
making purchasing decisions). Thus, although the marks must be compared in their
entireties, the first word may be accorded greater weight in determining whether
marks are confusingly similar, even where that word has been disclaimed, as it has

6 Applicant’s Ex Parte Appeal Brief p. 3 (4 TTABVUE 4).
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been in the cited registration.7 In re Viterra, 101 USPQ2d at 1911 (citing Giant Food,
Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ2d 390, 395 (Fed. Cir.
1983)).
While there are some differences between the marks, the proper test is not a side-
by-side comparison, but instead whether the marks are sufficiently similar in terms
of their overall commercial impression that persons who encounter the marks would
be likely to assume a connection between the parties. Coach Servs., 101 USPQ2d at
1721; In re Nat’l Data Corp., 224 USPQ at 750; 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

7 It is well settled that disclaimed matter still forms a part of the mark and cannot be ignored
in determining likelihood of confusion. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1900
(TTAB 2006). See also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (The technicality of a disclaimer in National’s application to register its mark has no
legal effect on the issue of likelihood of confusion. The public is unaware of what words have
been disclaimed….”). Thus, the fact that “Hudson” is disclaimed in Registrant’s mark does
not detract from the similarity between Applicant’s and Registrant’s marks. Although
Applicant notes that “Hudson” is a common surname and “[a]ny meaning that might be
assigned to ‘Hudson’ would necessarily imbue it with little distinctiveness,” it does not rely
on this meaning to support its argument that the marks are different. Applicant’s Ex Parte
Appeal Brief p. 3 (4 TTABVUE 4). The significance of “Hudson” in Applicant’s mark
HUDSON LIGHTING and Design was not raised during the examination of the application;
thus, whether it has geographical or surname significance, or both, is not at issue. A term’s
geographic significance may not be its primary significance if the term also has surname
significance. See In re Hamilton Pharm. Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993)
(HAMILTON held primarily merely a surname, even though the term had some geographical
connotations); In re Colt Indus. Operating Corp., 195 USPQ 75 (TTAB 1977) (FAIRBANKS
held not primarily merely a surname because the geographical significance of the mark was
determined to be just as dominant as its surname significance); Trademark Manual of
Examining Procedure (TMEP) § 1210.02(b)(i)(A) (Oct. 2017). In any event, Applicant does not
show how or why “Hudson” would be perceived as having one meaning in its mark and a
different meaning in the cited mark.
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whole in determining likelihood of confusion.”). Moreover, where the goods of an
applicant and registrant are “similar in kind and/or closely related,” the degree of
similarity between the marks required to support a finding of likelihood of confusion
is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350, 1354 (Fed. Cir. 2004).
In support of its argument during prosecution that “Hudson” is not “a particularly
strong source designator,” Applicant submits a summary Trademark Electronic
Search System (TESS) chart listing registered trademarks that contain the word
“Hudson” contending that the differences between Applicant’s mark and the cited
mark are sufficient to allow consumers to easily distinguish among them in the
marketplace.8 In order to make the registrations listed in the summary TESS report
of record, Applicant was required to submit soft copies of the registrations or their
electronic equivalent (i.e., complete printouts taken from any of the USPTO’s
automated systems, including TESS). See In re Ruffin Gaming LLC, 66 USPQ2d
1924, 1925 n.3 (TTAB 2002); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1456
n.2 (TTAB 1998). However, because the Examining Attorney failed to object to this
evidence or to advise Applicant of the insufficiency of the TESS summary chart, we
consider this evidence for whatever probative value it has. See In re 1st USA Realty
Prof’ls Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); Trademark Trial and Appeal Board

8 April 13, 2017 Response to Office Action at 1, 3-5. While Applicant represents there were
309 registrations listed, Applicant only submitted a list of 100 registered marks from TESS,
not 309.
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Manual of Procedure § 1208.02 (June 2017). Applicant’s summary TESS report omits
critical information such as the nature of the goods and services identified in the
listed registrations, making it impossible to assess the significance of these third-
party registrations for the use of “Hudson” in connection with Applicant’s and
Registrant’s goods. Accordingly, the summary TESS report provides no probative
evidence of the weakness of the term “Hudson” for light bulbs or lighting devices.
The marks, when viewed in their entireties, are highly similar in connotation and
convey commercial impressions that are more similar than dissimilar. Even if we
were to afford the mark HUDSON 43 in the cited registration a limited scope of
protection, it nonetheless would extend to prevent the registration of such a similar
mark as Applicant’s HUDSON LIGHTING and Design mark especially when it is
used on related goods. See In re Integrated Embedded, 120 USPQ2d 1504, 1513-14
(TTAB 2016):
[A]s used in connection with the recited services in both
marks, the term BARR has no meaning or connotation
other than that of a surname. As a result, we find that the
marks, when viewed as a whole, are also highly similar in
connotation and convey commercial impressions that are
far more similar than dissimilar. Thus, even if we afford
the mark BARR in the cited registration a limited scope of
protection, it nonetheless extends to prevent the
registration of such a similar mark.
See also NutraSweet Company v. K & S Foods Inc., 4 USPQ2d 1964, 1968 (TTAB
1987) (purchasers familiar with NUTRASWEET product, upon viewing NUTRA
SALT, would be likely to believe it was a new product line put out by the
NUTRASWEET producer or that the product was somehow associated with or
sponsored by the people producing the NUTRASWEET product).
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Inasmuch as both marks are similar in appearance and sound, and convey the
same overall commercial impression and connotation when considered in their
entireties, this du Pont factor supports a finding of a likelihood of confusion.
II. Conclusion
Given that Applicant’s goods and the goods in the cited Registration are closely
related and travel through the same channels of trade to the same classes of
customers, the differences between the marks are insufficient to avoid a likelihood of
confusion. Both marks begin with the word “Hudson” followed by the descriptive word
“Lighting” in Applicant’s mark and the number “43” in Registrant’s mark, rendering
the marks in their entireties more similar than dissimilar in appearance, sound and
commercial impression. We find that confusion is likely.
Decision: The refusal to register Applicant’s mark under § 2(d) is
affirmed.