Koninklijke Philips N.V.

Trademark Trial and Appeal Board

Feb 29, 2016

No. 86301277 (T.T.A.B. Feb. 29, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Koninklijke Philips N.V.
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Serial Nos. 86301277, 86301384 and 86301547
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Michael Marcin of Fay Kaplun & Marcin, LLP for
Koninklijke Philips N.V.

Marlene Bell, Trademark Examining Attorney, Law Office 118,
Thomas G. Howell, Managing Attorney.
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Before Zervas, Adlin and Hightower,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Koninklijke Philips N.V. (“Applicant”) seeks registration of the following three
forms of the same mark:

Serial Nos. 86301277, 86301384 and 86301547
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(with DIMMABLE LIGHT disclaimed) for LED lamps.1 The Examining Attorney
refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
on the ground that Applicant’s mark so resembles the mark WARM GLOW, in
standard characters, the subject of two commonly-owned registrations, one for
“lighting fixtures”2 and the other for “LED (light emitting diode) lighting fixtures;
lighting fixtures,”3 that use of Applicant’s mark in connection with Applicant’s
goods is likely to cause confusion or mistake or to deceive. After the refusals became
final, Applicant appealed and filed motions for reconsideration which were denied.
After the appeals resumed, Applicant and the Examining Attorney filed briefs.
Appeals Consolidated
These appeals involve common questions of law and fact and the records are
substantially similar. Accordingly, we consolidate and decide all three appeals in
this single decision. See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP
§ 1214 (2015).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

1 From left to right, Application Serial Nos. 86301277, 86301384 and 86301547, each filed
June 5, 2014 based on an intent to use each form of the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b). The descriptions of each form of the mark
are highly similar, but for the colors mentioned in the descriptions, although color is not
claimed as a feature of any of the three forms of the mark.
2 Registration No. 4534222, issued May 20, 2014 (Principal Register).
3 Supplemental Register Registration No. 4553520, issued June 17, 2014.
Serial Nos. 86301277, 86301384 and 86301547
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(CCPA 1973); see also In re Majestic Distilling Company, 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. See 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.”). We focus on cited Principal Register
Registration No. 4534222, and accord it the presumptions under Section 7(b) of the
Act.
Turning first to the marks, they are highly similar because Applicant has
incorporated the entirety of Registrant’s mark, WARM GLOW, adding to it only the
descriptive and disclaimed term DIMMABLE LIGHT and a minimally distinctive
design element. In fact, when applicants add terms to previously-registered marks,
likelihood of confusion is often found. See e.g. Coca-Cola Bottling Co. v. Jos. E.
Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (confusion
found likely between BENGAL and BENGAL LANCER & Design for related goods);
International Paper Co. v. Valley Paper Co., 468 F.2d 937, 175 USPQ 704 (CCPA
1972) (DATA for “writing, typewriter and printing paper” likely to be confused with
DATA-SPEED for “paper sold in bulk rolls or bulk reams for conversion only into
business forms”); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660-61 (TTAB
2014) (PRECISION likely to be confused with PRECISION DISTRIBUTION
CONTROL); In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS
Serial Nos. 86301277, 86301384 and 86301547
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MVP for casino services likely to be confused with MVP for casino services offered to
preferred customers identified by special identification cards); In re Rexel Inc., 223
USPQ 830, 832 (TTAB 1984) (“we are firmly of the opinion that purchasers who
encounter applicant’s ‘LITTLE GOLIATH’ stapler kits and registrant’s ‘GOLIATH’
large diameter woodcased pencils are likely to believe … that both products
emanate from or are in some way associated with the same source”); Johnson
Publishing Co. v. International Development Ltd., 221 USPQ 155 (TTAB 1982)
(EBONY for cosmetics likely to be confused with EBONY DRUM for hairdressing
and conditioner).
Confusion is especially likely here, because Applicant merely added the
descriptive and disclaimed term DIMMABLE LIGHT to Registrant’s mark.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S
ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”). In other words, consumers familiar with Registrant’s WARM GLOW
lighting fixtures could believe that Applicant’s mark reflects a brand extension into
dimmable LED lamps.
Serial Nos. 86301277, 86301384 and 86301547
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Similarly, the fairly prosaic design elements of Applicant’s mark are not enough
to prevent confusion. To the contrary, it is settled that where, as here, a mark is
comprised of both words and a design, the words are normally accorded greater
weight, because consumers are likely to remember and use the word(s) to request
the goods. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(holding that “if one of the marks comprises both a word and a design, then the
word is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with
registrant’s mark that element responsible for creating its overall commercial
impression, the marks are confusingly similar”); see also In re Viterra Inc., 671 F.2d
1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and
design mark likely will be the dominant portion”). In this case, consumers familiar
with Registrant’s light fixtures may very well believe that Applicant’s mark is
simply a different version of Registrant’s mark.
Applicant’s argument that the words “warm” and “glow” are commonly used,
merely descriptive and accordingly weak is not well taken. While Applicant cites “at
least 18 active marks in the same class as Applicant’s mark that describe their
lighting products with the words ‘warm’ or ‘glow,’” none of these include the
composite term WARM GLOW.4 Rather, it appears from the record that Registrant
owns the only mark which includes this term and is registered for electric lighting

4 As the Examining Attorney points out, by focusing on the individual words “warm” and
“glow,” rather than the composite WARM GLOW, Applicant is improperly dissecting
Registrant’s mark.
Serial Nos. 86301277, 86301384 and 86301547
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products. Therefore, Registrant’s mark on the Principal Register is not weak. With
respect to Applicant’s argument that the term is merely descriptive, this is an ex
parte proceeding, and “inasmuch as the cited mark is registered on the Principal
Register, we must assume that it is at least suggestive.” In re Fiesta Palms, 85
USPQ2d 1360, 1363 (TTAB 2007) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534-35 (Fed. Cir. 1997)).
None of the slight variations in the design elements of Applicant’s mark make
any difference — the forms of Applicant’s mark reflected in each of the three
applications are all quite similar to Registrant’s mark. This factor weighs heavily in
support of a finding that there is a likelihood of confusion.
Turning to the goods, the record reveals that the term “LED lamps” in
Applicant’s identifications of goods means a type of “lightbulb,” rather than what
many consumers would call a “lamp.” See Denial of Request for Reconsideration of
August 5, 2015 (printout from “vividleds.us,” which under the heading “LED
Retrofit Lamps” states “Replace your incandescent, CFL, HPS or MH bulbs with our
vast assortment of commercial grade lamps” and which under heading “Choosing an
LED Lamp states “New LED lamps are available in ‘cool’ white light … and ‘warm
light’ …);5 Request for Reconsideration of July 14, 2015 (printout from
“usailighting.com”). These “lamps” or “bulbs” may be used in lighting fixtures, such
as those identified in the cited registration. Id. Therefore, Applicant’s and
Registrant’s goods are complementary, which establishes that they are related. In re

5 Citations are to the record in application Serial No. 86301277.
Serial Nos. 86301277, 86301384 and 86301547
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Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984); General Mills, Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d
1584, 1597-98 (TTAB 2011), judgment set aside on other grounds, 2014 WL 343267
(TTAB 2014); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1272 (TTAB
2009).
Furthermore, the Examining Attorney has made of record more than 20 third-
party use-based registrations showing that a single mark has been registered for
LED lamps on the one hand and lighting fixtures on the other. Denial of Request for
Reconsideration August 5, 2015. “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009). Several of the third-party registrations illustrate
just how closely related Applicant’s and Registrant’s goods are:
ACCULAMP in standard characters (Reg. No. 4013627) is
registered for “Light emitting diode (LED) lamps for
electric lighting fixtures.”

PAGEANT in standard characters (Reg. No. 3949405) is
registered for “LED (light emitting diode) lighting
fixtures, namely, LED lamps.”6

6 Of course, to the extent that LED lamps are a type of lighting fixture, the parties’ goods
would be identical rather than merely closely related.
Serial Nos. 86301277, 86301384 and 86301547
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(Reg. No. 4744331) is registered for
“illumination systems comprised primarily of LED light
bulbs, LED light pods, LED lamps, LED lamps and their
fittings, LED lighting fixtures or LED luminaries.”

A ARTIVA & Design (Reg. No. 4605416) is registered for
“electrical lamps and lighting fixtures, namely, floor
lamps, table lamps, desk lamps, wall lamps, LED lamps,
outdoor lamps ….”

Applicant does not dispute that the goods are related. Accordingly, and based on the
record in its entirety, we find that the goods are at least closely related, and this
factor therefore also weighs in favor of a finding of likelihood of confusion.
As for channels of trade, while Applicant claims that its products “are sold
directly to the public through retailers such as Home Depot and Amazon” and
“Registrant’s products are sold through limited authorized representatives,”
Applicant’s Appeal Brief at 9, this is irrelevant. Neither Applicant’s nor Registrant’s
identification of goods includes these or any other trade channel restrictions, and we
must therefore presume that those identifications encompass all types of LED
lamps and light fixtures and that those goods move in all normal channels of trade
and are available to all classes of consumers therefor. Stone Lion Capital Partners,
L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014)
(“An application with ‘no restriction on trade channels’ cannot be ‘narrowed by
testimony that the applicant’s use is, in fact, restricted to a particular class of
purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98
Serial Nos. 86301277, 86301384 and 86301547
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USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Conclusion
Applicant’s mark incorporates as its dominant element the entirety of
Registrant’s mark, and Applicant intends to use its mark for goods which are closely
related and presumed to travel in the same channels of trade as Registrant’s goods.
Accordingly, confusion is likely.
Decision: The Section 2(d) refusals to register Applicant’s mark are affirmed in
each application.