LG Corp.

Trademark Trial and Appeal Board

Jun 29, 2020

87525759 (T.T.A.B. Jun. 29, 2020)

Mailed: June 29, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re LG Corp.
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Serial No. 87525759
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Robert J. Kenney and Michael T. Smith of
Birch Stewart Kolasch & Birch, LLP for LG Corp.

Justin Miller, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
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Before Mermelstein, Adlin and Larkin, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant LG Corp. seeks registration of LG Q8, in standard characters, for
smartphones and related goods.1 The Examining Attorney finally refused registration

1 Application Serial No. 87525759, filed July 12, 2017 under Trademark Act Sections 1(b)
(based on an alleged intent to use the mark in commerce) and 44(e) (with a priority claim
under Section 44(d) based on Republic of Korea Registration No. 1351596). Applicant later
deleted the Section 1(b) basis and perfected the Section 44(e) basis. The full identification of
goods is: “Smartphones; Portable communications apparatus, namely, telephone handsets,
walkie-talkies, satellite telephones, mobile phones and Personal Digital Assistants (PDA);
Apparatus for recording, transmission or reproduction of sound or images; Application
software for smartphones, namely, software for use in database management and electronic
storage of data; Application software for mobile phones, namely, software for controlling
audio and video functions in mobile phones; Displays for mobile phones, namely, LED
displays for mobile phones, OLED (Organic Light Emitting Diode) displays for mobile phones,
liquid crystal displays for mobile phones and video displays for mobile phones; Cameras for
This Opinion is Not a
Precedent of the TTAB
Serial No. 87525759
2
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles these two registered marks, both owned by Samsung
Electronics Co., Ltd.:
Q8, in standard characters, for: “Television sets; Television
receivers; Display panel for television; Monitors, namely,
computer, television, video, and touchscreen monitors;
Digital signage; Digital signage display panels; Digital
signage monitors; Electronic displays, namely, digital
signage” in International Class 9;2 and

Q.8, in standard characters, for: “Television sets;
Television receivers; Electronic display panels for
televisions; Monitors for commercial purposes, namely,
computer, television, video, and touchscreen monitors;
Digital signage; Digital signage display panels; Digital
signage monitors; Electronic displays, namely, digital
signage” in International Class 93

that use of Applicant’s mark in connection with Applicant’s goods is likely to cause
confusion. After the refusal became final, Applicant appealed and filed a request for
reconsideration which was denied. The appeal is fully briefed.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record 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) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65

mobile phones; Batteries for mobile phones; Wireless headsets, namely, wireless headsets for
mobile phones, smartphones and portable media players” in International Class 9.
2 Registration No. 5522128, issued July 24, 2018.
3 Registration No. 5478421, issued May 29, 2018.
Serial No. 87525759
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USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). 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 our analysis on cited Registration No. 5522128 for Q8, because if we find
confusion likely between that cited mark and Applicant’s mark, we need not consider
the likelihood of confusion between Applicant’s mark and the other cited mark, while
if we find no likelihood of confusion between Applicant’s mark and Q8, we would not
find a likelihood of confusion between Applicant’s mark and the other cited mark. In
re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Goods, Channels of Trade and Classes of Consumers
There is no dispute that the goods are related. In fact, Applicant does not argue
or introduce any evidence to the contrary, thus “[a]pparently conceding the issue ….”
In re Morinaga Nyogyo K.K., 120 USPQ2d 1738, 1740 (TTAB 2016).
Furthermore, the goods have an obvious relationship, because as identified they
are not only all consumer electronics, but Applicant identifies “apparatus for …
transmission or reproduction of sound or images,” while televisions and video
monitors, identified in the cited registration, would also be expected to reproduce
sound and images. In any event, the goods need not be identical or even competitive
Serial No. 87525759
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in order to find a likelihood of confusion. Rather, the question is whether the goods
are marketed in a manner that “could give rise to the mistaken belief that [the] goods
emanate from the same source.” Coach Services Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
The Examining Attorney has established that smartphones, such as those
identified in the involved application, and televisions, such as those identified in the
cited registration, are offered under the same marks. In fact, Applicant and
Registrant themselves offer smartphones and televisions under their LG and
SAMSUNG marks:

November 9, 2018 Office Action TSDR 25, 30, 33, 37. In addition to Applicant and
Registrant, a number of third parties also offer both smartphones and televisions
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under the same mark. In fact, Sony promotes the same technology, OLED, for both
televisions and smart phones:

Id. at 19, 23. Asus uses its ASUS mark for video monitors such as those identified in
the cited registration, and smartphones, such as those identified in the involved
application:

May 2, 2019 Office Action TSDR 58, 63. The Examining Attorney introduced similar
evidence from Apple, Lenovo and Mi, each of which offer, under the same mark,
smartphones on the one hand and televisions or video monitors on the other. Id. at 8-
40.
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In addition, the Examining Attorney introduced more than 10 use-based third-
party registrations showing that the same marks are registered in connection with
smartphones on the one hand and televisions or video monitors on the other. Id. at
67-99. “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
1988), aff’d, 864 F.2d 149 (Fed. Cir.) (table).
This evidence establishes that smartphones are related to televisions and video
monitors. The website printouts also establish that these goods travel in the same
channels of trade to the same classes of consumers. These factors weigh in favor of
finding a likelihood of confusion.
B. The Marks
We consider the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). Here, the marks are similar because Applicant’s
mark incorporates the entirety of Registrant’s mark, Q8, but different because
Applicant’s mark begins with LG, Applicant’s house mark. In this case, Applicant’s
house mark is a distinction without a difference sufficient to avoid confusion. In fact,
Applicant’s use of its house mark may even exacerbate, rather than minimize, the
Serial No. 87525759
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likelihood of confusion arising from Applicant’s and Registrant’s use of Q8 for
consumer electronics.
Typically, the addition of a house mark or a trade name to a registered mark is
found insufficient to avoid confusion, and is sometimes even found to be an
“aggravation, and not a justification.” Menendez v. Holt, 128 U.S. 514, 521 (1888). See
also In re Fiesta Palms LLC, 85 USPQ2d 1360, 1367 (TTAB 2007) (affirming refusal
to register CLUB PALMS MVP based on prior registration of MVP, finding
consumers “likely to believe that the CLUB PALMS MVP casino services is simply
the now identified source of the previously anonymous MVP casino services”); In re
Pierce Foods Corp., 230 USPQ 307, 309 (TTAB 1986) (in dicta, stating that even if
Applicant’s proposed amendment to its drawing were accepted, “[a]pplicant’s
institutional purchasers, aware of registrant’s CHICKEN BAKE coating mix, may
well believe that applicant’s PIERCE CHIK’N BAKE pre-seasoned chicken is a
product produced under license from registrant or otherwise sponsored or produced
by registrant.”); In re Riddle, 225 USPQ 630 (TTAB 1985) (affirming refusal to
register RICHARD PETTY’S ACCU TUNE & Design based on registration for ACCU-
TUNE); In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985) (LE CACHET DE
DIOR for men’s dress shirts likely to be confused with CACHET for toilet soap,
dresses and cologne); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co.,
216 USPQ 168 (TTAB 1982) (finding likelihood of confusion between SKIN SAVERS
for face and throat lotion and MENNEN SKIN SAVER for cosmetic and toilet
preparations, namely, hand and body lotion); In re Champion Int’l Corp., 196 USPQ
Serial No. 87525759
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48 (TTAB 1977) (affirming refusal to register CHECK MATE based on registration of
HAMMERMILL MICR CHECK-MATE); In re C.F. Hathaway Co., 190 USPQ 343
(TTAB 1976) (affirming refusal to register HATHAWAY GOLF CLASSIC based on
registration of GOLF CLASSIC).
There are other times, however, where adding a house mark to a registered mark
is sufficient to avoid confusion. These cases tend to involve registrations for marks
containing shared terms which have been shown to be “highly suggestive.” For
example, in Knight Textile Corp. v. Jones Inv. Co., 75 USPQ2d 1313 (TTAB 2005), we
found no likelihood of confusion between NORTON MCNAUGHTON ESSENTIALS
and ESSENTIALS, both for women’s clothing, because evidence established that the
shared term ESSENTIALS was “highly suggestive.” See also Trademark Manual of
Examining Procedure (“TMEP”) §1207.01(b)(iii) (Oct. 2018) (“Additions or deletions
to marks may be sufficient to avoid a likelihood of confusion if … the matter common
to the marks is not likely to be perceived by purchasers as distinguishing source
because it is merely descriptive or diluted.”). In Knight Textile, we found
ESSENTIALS to be “highly suggestive” of women’s clothing based in part on a
dictionary definition, pointing out that the term “connotes that the clothing items
sold under the marks are basic and indispensable components of, or ‘essentials’ of,
one’s wardrobe.” Id. at 1316. This finding was supported by 23 third-party
registrations (registered to 21 different owners) for marks which include
ESSENTIALS for clothing, “at least two” of which “are comprised of the word
ESSENTIALS coupled with apparent house marks.” Id. at 1316-17 & n.7.
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Here, while Applicant argues that Q8 is “merely descriptive,” 7 TTABVUE 5, it
eventually and somewhat begrudgingly concedes that it may not attack the validity
of the cited mark in this ex parte proceeding. See In re Fiesta Palms, 85 USPQ2d at
1363 (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed.
Cir. 1997)). To the extent that Applicant argues that Q8 is “highly suggestive,” its
evidence falls far short, qualitatively and quantitatively, of that in Knight Textile.
Specifically, the only evidence which according to Applicant shows that Q8 is
highly suggestive is as follows:
A Forbes article entitled “What is QLED, And Why Does It
Matter?” According to the article, “[t]he LED part of QLED,
as most of you know, stands for light-emitting diode – the
lighting system used in the vast majority of LED/LCD TVs
for years now. The important bit of QLED is the Q, which
stands for Quantum Dot.” The article goes on to use QD as
an acronym for “Quantum Dot,” and indicates that certain
of Registrant Samsung’s model numbers, including Q8C,
are used in connection with Samsung’s QLED televisions.
October 23, 2019 Request for Reconsideration TSDR 8-15.

A screenshot of the “Manuals and Downloads” page for
Samsung’s 2018 QLED TV “Q8FN Series,” which according
to Applicant “informs consumers that the television
contains quantum dot light emitting diode technology and
it is 8th in the series.” Id. at 16; 7 TTABVUE 7.

This is quite thin gruel if proffered as a basis for finding that Q8 is “highly
suggestive.”
Indeed, the technology which Applicant claims to be described or suggested by the
letter Q is not called “Q,” or even “quantum,” but instead “QLED,” in which the “Q”
stands for the term “quantum dot.” Neither “Quantum Dot,” “QD” nor for that matter
“LED” are part of the cited mark, and to the extent the “Q” in Registrant’s mark is
Serial No. 87525759
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intended to stand for “quantum dot,” there is no evidence that ordinary television
consumers are familiar with this potential abbreviation or any intended meaning of
the number “8.” In short, there is no evidence that an appreciable number of
consumers − even those familiar with the Forbes article and Q8FN Series Manuals
and Downloads page − recognize Q8 by itself as signifying quantum dot light emitting
diode technology or any particular product or series of products.
This contrasts sharply with the evidence in Knight Textiles, which included not
only a dictionary definition of the term in question, “essentials,” which directly
related to the goods, but also 21 separately-owned trademark registrations of the
same term for the same goods, including two which included house marks combined
with the term in question. There is nothing like that here, as the single article
Applicant introduced provides a significantly more tangential connection between the
Q in Q8 with consumer electronics than the connection between ESSENTIALS and
clothing in Knight Textile. Furthermore, here the record indicates that Applicant and
Registrant are the only users of Q8 in connection with consumer electronics, so there
is no indication that consumers have learned to distinguish the sources of products
labeled Q8.
As for Applicant’s argument that Q8 is a model number and thus descriptive
(which we construe as an argument that the term is “highly suggestive”), we are not
persuaded. The evidence Applicant cites for the proposition is the Manuals and
Downloads page, depicted below:
Serial No. 87525759
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October 23, 2019 Request for Reconsideration TSDR 16; 7 TTABVUE 7 & n.2. As
shown, the page’s heading is “2018 QLED TV,” with a subheading of “Q8FN Series.”
Thus, this evidence does not establish that Registrant uses Q8 alone as a model
number. Furthermore, even if it did, that would not necessarily establish that the
mark is highly suggestive, because it could also be used to designate source. Cf.
Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1748 (TTAB 1989) (“Depending upon
the nature and manner of use, it is possible for an alphanumeric designation, which
functions only in part to designate model or grade, to be inherently distinctive ….”)
(citing In re Clairol, 457 F.2d 509, 173 USPQ 355, 356 (CCPA 1972)).4

4 While Applicant would have us adjudicate the cited mark’s degree of distinctiveness in this
ex parte proceeding, we must presume that the cited mark is inherently distinctive. Here,
there is no evidence that the mark in the cited Section 44(e) registration has been used in the
United States, and without evidence of how the mark is used it would be quite difficult to
make a complete determination of the type Applicant is requesting. See Eastman Kodak Co.
v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 26 USPQ2d 1912, 1917 (Fed.
Cir. 1993) (“the issue of whether the numerical marks are merely descriptive cannot be
resolved until they have been used, because it is the manner in which the numerical marks
are used that renders them merely descriptive (solely model designators) or not.”).
Serial No. 87525759
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Turning back to comparing the marks, even though LG comes first in Applicant’s
mark, and even if it is more distinctive than Q8, we find that its addition to the
entirety of the registered mark is not sufficiently distinguishing. To the contrary, in
this case, especially because Applicant and Registrant are competitors who both offer
televisions and smartphones, consumers who encounter Applicant’s LG Q8 mark for
smartphones could very well assume that there is some connection or affiliation
between Applicant and Registrant, or that LG is the source of Registrant’s Q8
televisions. Coach Servs., 101 USPQ2d at 1721 (finding sufficient similarity when
“persons who encounter the marks would be likely to assume a connection between
the parties”). Cf. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(“Applicant has taken registrant’s mark and added its ‘product mark’ to it. It is not
clear why the addition of the word VANTAGE would avoid confusion. It is more likely
to be considered another product from the previously anonymous source of TITAN
medical diagnostic apparatus, namely, medical ultrasound devices.”). See also, Stone
Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014) (finding STONE LION CAPITAL confusingly similar to LION
and LION CAPITAL).
C. Consumer Sophistication and Care
Applicant argues, without supporting evidence, that its and Registrant’s goods
“are expensive items that involve careful deliberation on the part of consumers.
Smartphones and televisions often cost more than $1000 and the goods are feature-
specific.” 7 TTABVUE 8. In fact, the record reveals one television that retails for
Serial No. 87525759
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$649.99, May 2, 2019 Office Action TSDR 57, but many more that are more than
$1,000.
While we can assume based on the price of these goods alone that many consumers
would exercise greater care in purchasing them, we find this factor outweighed by
the relatedness of the goods which move in the same channels of trade to the same
consumers, and the similarity of the marks. See, In re Research Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman
& Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); see also HRL Assoc.,
Inc. v. Weiss Assoc., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods).
II. Conclusion
The marks are similar, the goods are related and the channels of trade and classes
of consumers overlap. These factors outweigh any purchaser care or sophistication.
Confusion is likely.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.