IQ Hong Kong, Ltd.

Trademark Trial and Appeal Board

Feb 20, 2008

No. 78737340 (T.T.A.B. Feb. 20, 2008)

Mailed: 2/20/08

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re IQ Hong Kong, Ltd.
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Serial No. 78737340
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Mark D. Schneider of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski for IQ Hong Kong, Ltd.

Lana H. Pham, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
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Before Quinn, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

IQ Hong Kong, Ltd. filed an application to register
the mark ORBIT for the following goods:
lights, namely, dynamo powered
flashlights and dynamo powered
flashlights comprising a keychain sold
as a unit (in International Class 11);
and

toys, namely, remote controlled
vehicles, toy trains, toy robots, and
accessories therefor (in International
Class 28).1

1 Application Serial No. 78737340, filed October 20, 2005, based
upon a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78737340
2
The trademark examining attorney refused registration
under Section 2(d) in Class 11 only. As grounds for the
refusal, the examining attorney asserts that applicant’s
mark, if applied to the goods in International Class 11,
would so resemble the previously registered mark ORBIT for
“lamps in metal”2 in International Class 11 as to be likely
to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that its goods are different from
registrant’s goods as evidenced by excerpts from
registrant’s webpage showing that registrant’s goods are
decorative or designer metal lamps. In addition, applicant
has submitted a photograph of its specific product.
Applicant also contends that the trade channels for the
respective products will be different inasmuch as
applicant’s goods are an emergency or novelty item whereas
registrant’s goods are associated with home décor.
The examining attorney maintains that the marks are
identical, a point not disputed by applicant. With respect
to the goods, the examining attorney asserts that they “are
closely related because they emit light.” In support of
her finding that the goods are related, the examining

2 Registration No. 1950079, issued January 23, 1996; renewed.
Ser No. 78737340
3
attorney submitted numerous third-party registrations
showing that each registrant adopted a single mark for
goods of the types involved herein, and excerpts from
third-party websites to show that both types of goods move
in the same trade channels.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
The marks are identical in sound, appearance, meaning
and overall commercial impression, and applicant does not
contend to the contrary. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). Further, the cited
Ser No. 78737340
4
mark is arbitrary. The identity between the marks weighs
heavily in favor of a finding of likelihood of confusion.
We next turn to a consideration of the goods. We
note, at the outset of considering this du Pont factor,
that the greater the degree of similarity between
applicant’s mark and the cited registered mark, the lesser
the degree of similarity between applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). If the marks are the same, as in
this case, it is only necessary that there be a viable
relationship between the goods in order to support a
finding of likelihood of confusion. In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
In determining the issue of likelihood of confusion in
ex parte cases, the Board must compare applicant’s goods as
set forth in its application with the goods as set forth in
the cited registration. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Where the goods in the cited registration are
broadly identified as to their nature and type (as is the
case herein), such that there is an absence of any
restrictions as to the channels of trade and no limitation
as to the classes of purchasers, it is presumed that in
Ser No. 78737340
5
scope the identification of goods encompasses not only all
the goods of the nature and type described therein, but
that the identified goods are offered in all channels of
trade which would be normal therefor, and that they would
be purchased by all potential buyers thereof. Id.
In view thereof, registrant’s identification of goods
reading “lamps of metal” covers all types of such lamps,
and is not limited to decorator/designer lamps for home
décor. Applicant’s reliance on registrant’s website in an
attempt to restrict the scope of registrant’s goods is to
no avail. An applicant may not restrict the scope of the
goods covered in the cited registration by argument or
extrinsic evidence. In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986).
The examining attorney submitted numerous use-based
third-party registrations showing that each registrant
adopted a single mark for the goods of the type involved
herein, namely lamps and flashlights. Third-party
registrations that individually cover different items and
that are based on use in commerce serve to suggest that the
listed goods and/or services are of a type that may emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467 (TTAB 1988). Also of record are
Ser No. 78737340
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excerpts of various third-party websites showing that the
same on-line retailer sells both lamps and flashlights.
Based on the evidentiary record, we find that the
goods are related.
We conclude that consumers familiar with registrant’s
“lamps of metal” sold under the mark ORBIT would be likely
to believe, upon encountering applicant’s “lights, namely,
dynamo powered flashlights and dynamo powered flashlights
comprising a keychain sold as a unit” under the identical
mark ORBIT, that the goods originated with or are somehow
associated with or sponsored by the same entity.
Decision: The refusal to register the mark in
International Class 11 is affirmed. The application will
proceed in International Class 28 only.