Nite Ize, Inc.v.Zhangwei Mo

Trademark Trial and Appeal Board

Apr 21, 2017

No. 92059235 (T.T.A.B. Apr. 21, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 21, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Nite Ize, Inc.
v.
Zhangwei Mo
_____
Cancellation No. 92059235
of Registration No. 4179235
_____
Robert P. Ziemian of Haynes and Boone, LLP for Nite Ize, Inc.

P. Jay Hines of Muncy, Geissler, Olds & Lowe P.C. for Zhangwei Mo.
_____

Before Kuczma, Masiello, and Larkin, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Zhangwei Mo (“Respondent”), an individual, owns U.S. Reg. No. 4179235 (the
“Registration”)1 for the mark shown below:

The mark is registered on the Principal Register for the following goods:

1 Issued July 24, 2012, based upon an application filed December 2, 2011. The Registration
states that “The wording ‘NITEYE’ has no meaning in a foreign language.”
Cancellation No. 92059235
2

Aquarium lights; Bicycle lights; Diving lights; Flashlights;
Landscape lighting installations; Overhead lamps; Pocket
search lights; Safety lamps for underground use;
Searchlights; Ultraviolet lamps not for medical purposes;
table, floor and street lamps, in International Class 11.
Nite Ize, Inc. (“Petitioner”) filed a petition to cancel the Registration on the ground
of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d); dilution under Section 43(c) of the Act, 15 U.S.C. § 1125(c);
misrepresentation of source; and fraud. Petitioner, in its brief, has expressly
withdrawn its claim of misrepresentation of source.2 Petitioner pleads that it owns
two registrations for the mark NITE IZE in typed form, as follows:
Reg. No. 1620077: headbands to be worn by a person and designed to hold a
flashlight, in International Class 25;3

Reg. No. 2237945: holders for and attachments to flashlights, namely, non-
metallic bands for holding a flashlight to a person or to
another object; non-metallic connectors for holding a
flashlight to a bicycle; cords for attachment to a flashlight
for use in carrying a flashlight; non-metallic loops for
holding a flashlight; non-metallic holders for carrying a
flashlight; non-metallic hand held holders for carrying a
flashlight and spare flashlight batteries; non-metallic
holsters for carrying a flashlight and spare flashlight
batteries; adapters for attaching a fiber optic light element
to a flashlight; connectors for holding a flashlight to a
helmet; magnetic holders for attaching a flashlight to
magnetic or magnetically permeable articles; mouthpiece
shaped holders for use in holding a flashlight in the mouth
of a person; non-metallic attachments for converting a
flashlight to a signal light; non-metallic holders in the
shape of a sleeve for holding a flashlight; non-metallic
holders in the shape of a sleeve with a combined hand strap
for holding a flashlight; non-metallic underwater holders

2 Petitioner’s brief at 3, fn1, 53 TTABVUE 4.
3 Issued October 30, 1990; Section 8 affidavit accepted; Section 15 affidavit acknowledged;
renewed.
Cancellation No. 92059235
3

for flashlights; non-metallic underwater holders, including
a float, for flashlights; and display racks for holding any or
all of the above flashlight holders and attachments, in
International Class 11.4

Respondent, in his answer, admitted that Petitioner’s pleaded registrations are valid,
subsisting, and incontestable; and that USPTO records support Petitioner’s claim of
a valid and subsisting mark.5 Respondent admitted that an entity called Niteyelight
Technology Co., Ltd. “began selling flashlights, bicycle lights, and tactical pens online
to the United States” on June 3, 2012.6 Respondent otherwise denied the salient
allegations of the petition and asserted, as affirmative defenses, that the marks of
Petitioner and Respondent “coexist in a crowded marketplace of ‘nite’ marks”; that
the marks have coexisted for “several years without any known instances of actual
confusion”; and that Petitioner’s mark is not famous.
Petitioner submitted evidence, testimony, and a brief on the case. Respondent
submitted no evidence or testimony and submitted no brief.
I. The record.
The record includes the pleadings and, by operation of Trademark Rule 2.122,
37 C.F.R. § 2.122, the file history of the Registration and underlying application.
Petitioner made of record the following testimony and evidence:
- Testimony deposition of Clinton L. Todd, Petitioner’s General Counsel (and
Exhibits). 51 TTABVUE; confidential pages at 52 TTABVUE.

4 Issued April 13, 1999; Section 8 affidavit accepted; renewed.
5 Amended answer ¶¶ 6, 20, and 24, 9 TTABVUE 5-7.
6 Id. ¶ 14, 9 TTABVUE 6.
Cancellation No. 92059235
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- First notice of reliance on official documents of the USPTO. 46 TTABVUE.

- Second notice of reliance on Respondent’s answers to interrogatories and
requests for admission; and on two sets of requests for admission to which
Respondent gave no response. 47 TTABVUE (confidential pages at 50
TTABVUE).

- Fourth notice of reliance on materials from the internet. 49 TTABVUE.

- Fifth notice of reliance, containing confidential matter. 50 TTABVUE.

We have excluded from the record Petitioner’s third notice of reliance (48 TTABVUE)
which apparently consists of materials produced during discovery. They are not the
types of materials that may be introduced under a notice of reliance. See 37 C.F.R.
§§ 2.122(g) and 2.120(k), Trademark Board Manual of Procedure (“TBMP”) § 704.02
(Jan. 2017). We have also excluded Exhibit K in Petitioner’s confidential fifth notice
of reliance, which is of the same character.
II. Standing.
Standing is a threshold issue that must be proven by a plaintiff in every inter partes
case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The plaintiff must
show that it has a real interest in the proceeding beyond that of a mere intermeddler
and that it has a reasonable basis for its belief of damage resulting from registration
of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.
Cir. 1999).
Petitioner has properly made of record its pleaded registrations by filing a current
printout of information from the electronic database records of the USPTO showing
Cancellation No. 92059235
5

the status and title of the registrations.7 Petitioner has thus established its standing
to seek cancellation of the Registration. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 50 USPQ2d 1023;
and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
III. Petitioner’s claim under Section 2(d).
Petitioner seeks to cancel the Registration under Trademark Act § 2(d), on the
ground that Respondent’s mark “so resembles a mark registered in the Patent and
Trademark Office, or a mark or trade name previously used in the United States by
[Petitioner] and not abandoned, as to be likely, when used on or in connection with
the goods of [Respondent], to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). As Respondent’s mark is registered on the Principal Register, both
the mark and the Registration are presumed to be valid. 15 U.S.C. § 1057(b). “[O]ne
seeking cancellation of such a registration must rebut this presumption by a
preponderance of the evidence …” Martahus v. Video Duplication Services Inc., 3 F.3d
417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).
A. Priority.
In a cancellation proceeding in which both plaintiff and defendant own
registrations, priority is in issue and the plaintiff has the burden of proving its
priority. Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281 (TTAB 1998).
Under Section 7 of the Trademark Act, each party is entitled to rely upon the filing

7 46 TTABVUE 30-34; 118-121.
Cancellation No. 92059235
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date of the application underlying its registration for purposes of establishing a date
of first use of its registered mark. 15 U.S.C. § 1057(c); Cent. Garden & Pet Co. v.
Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013); Larami Corp. v. Talk To Me
Programs Inc., 36 USPQ2d 1840 (TTAB 1995). Respondent’s underlying application
was filed on December 2, 2011. The applications underlying Petitioner’s two pleaded
registrations were filed on February 20, 1990 and July 22, 1996, respectively, long
prior to Respondent’s filing date. Respondent has offered no proof of trademark use
earlier than the filing date of his application.8 Accordingly, Petitioner has
demonstrated its priority of use with respect to the mark and goods set forth in its
two pleaded registrations.
B. Likelihood of confusion.
Our determination 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).
1. The goods.
We turn first to the similarity or dissimilarity of the goods at issue, as identified
in the Respondent’s Registration and Petitioner’s two pleaded registrations. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-1162 (Fed. Cir. 2014); Octocom Syst. Inc. v. Houston Computers Servs. Inc., 918

8 Petitioner submitted testimony and dated marketing material confirming use of its mark
in 1990, but this showing does not establish use as of any date earlier than February 20,
1990. See Todd dep. 9:5-10:6, 51 TTABVUE 5, and Ex. 3, 51 TTABVUE 49.
Cancellation No. 92059235
7

F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Our purpose is to determine
whether the goods at issue “are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). We need not consider
whether each of Respondent’s identified goods is related to Petitioner’s goods; for
purposes of a du Pont analysis, it is sufficient if likelihood of confusion is found with
respect to use of Respondent’s mark in connection with any of the identified goods in
the Registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90
USPQ2d 1393, 1398 (TTAB 2007). In this case, Petitioner has focused its attention
on Respondent’s “flashlights.” (Indeed, Petitioner has elicited an admission from
Respondent that he has never sold many of the other goods identified in the
Registration.)9
Respondent has admitted that “some of [his] goods … are related to the goods of
[Petitioner’s] Registrations to the extent that accessories for flashlights are related
to flashlights.”10 Petitioner’s evidence confirms that there is a close commercial
relationship between the parties’ goods. Petitioner’s goods are, by their nature,
intended to be used together with flashlights. Almost of all of the goods identified in

9 Petitioner’s first set of requests for admission, response to Request for Admission No. 7, 47
TTABVUE 19 (“Admit that the following products … have never been sold to the public:
Aquarium lights, Diving lights, Landscape lighting installations, Overhead lamps, table,
floor and street lamps.”).
10 Id., Respondent’s response to Request for Admission No. 2, 47 TTABVUE 18.
Cancellation No. 92059235
8

Petitioner’s registrations are holders of various types designed to allow for hands-free
use of flashlights. Petitioner’s original product was a headband designed to hold a
small flashlight to the side of the user’s head. Other goods are holders designed to
attach a flashlight to a bicycle; some are non-specialized so as to attach a flashlight
to any object; and some are magnetized for affixing a flashlight to “magnetically
permeable” metallic objects. Typical advertisements for Petitioner’s goods include a
depiction of a flashlight; and the goods have been advertised as “flashlight
accessories; “Compatible with most mini-flashlights” and “creat[ing] hundreds of new
uses for, and reasons to buy, a mini-flashlight.”11 Importantly, Petitioner has
marketed its goods in “combo packs” that included the holder together with a MINI
MAGLITE brand flashlight.12 Examples of such combo packs shown in the record
include the NITE IZE Flashlite Friend,13 NITE IZE Mini Lite-Lok,14 a headband, and
a fiber optic adapter,15 all packaged together with a MINI MAGLITE flashlight.
Petitioner has also shown that Respondent has offered, under his mark, a “Grip
Carry Handle” designed to carry one of his flashlights.16 This product is analogous in
purpose to Petitioner’s goods, although the product itself is different in design.

11 See Todd Exs. 3-5, 51 TTABVUE 49-55.
12 Todd dep. 39-40, 51 TTABVUE 12.
13 Todd Ex. 8, 51 TTABVUE 63-4.
14 Todd Ex. 13, 51 TTABVUE 82.
15 Fourth notice of reliance, 49 TTABVUE 13-16.
16 Id., 49 TTABVUE 5-7.
Cancellation No. 92059235
9

Finally, the connection between Petitioner’s business and the field of flashlights
is illustrated by the fact that in 2010 Petitioner acquired a business offering “five
separate lines of high performance LED flashlights.”17 Petitioner markets its
flashlights under the acquired trademark INOVA, but clearly associates the brand
with its mark NITE IZE.18
The evidence of record persuades us that there is a strong commercial relationship
between flashlights and Petitioner’s identified goods. We find that the du Pont factor
regarding the similarity or dissimilarity of the goods weighs in favor of a finding of
likelihood of confusion.
2. Trade channels.
Petitioner’s witness testified that Petitioner’s goods are offered through hardware
outlets, sporting goods outlets, specialty retail channels, mass merchant retailers,
armed forces exchanges, and online. He stated that retailers would place Petitioner’s
goods “in areas by the register or in the areas where they were already selling
flashlights in order to target those consumers who needed a solution to that
problem.”19 “They would be sold next to other illumination devices or other flashlight
devices.”20 He indicated that Petitioner’s goods are sold at Home Depot, Lowe’s REI,
Bass Pro Shops, Wal-Mart, Target, sporting goods stores, and the armed forces

17 Todd Ex. 20, 51 TTABVUE 105-6.
18 See, e.g., Todd Ex. 26, 51 TTABVUE 124.
19 Todd dep. 35; see also id. 22:22-23:6, 51 TTABVUE 11, 8.
20 Id. 42:17-18, 51 TTABVUE 12.
Cancellation No. 92059235
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exchanges.21 He also stated that Petitioner has an online presence, offering the goods
through its own website at and through ,
, , and other retail websites.22
Although there is little evidence regarding Respondent’s trade channels, we
presume that Respondent’s flashlights move in all channels of trade that are normal
for such goods. See Octocom, 16 USPQ2d at 1787; Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Petitioner elicited an admission that
Respondent has sold his goods through .23 Inasmuch as Petitioner has
shown that its own goods are sold together with or nearby flashlights, and many of
Petitioner’s trade channels would be normal channels for flashlights, we find that the
du Pont factor of trade channels weighs in favor of a finding of likelihood of confusion.
3. Customers.
According to Petitioner’s witness, the “target consumers” for Petitioner’s goods are
“anyone who wanted to be able to see at night or do things with a flashlight and have
their hands free at night or in areas where you can’t see very well.”24 An
advertisement for one of Petitioner’s products states:
GREAT FOR:
- Mechanics

21 Id. 58:16-24; 88:6-11, 51 TTABVUE 16, 23.
22 Id. 59:6-16, 51 TTABVUE 17
23 Petitioner’s first set of requests for admission, response to Request for Admission No. 6, 47
TTABVUE 19.
24 Todd dep. 18:18-22, 51 TTABVUE 7.
Cancellation No. 92059235
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- Home Owners
- Sportsmen
- Technicians
- Gunsmiths
- Photographers
- Hobbyists
- Electricians25
There is little evidence regarding the nature of Respondent’s customers. However,
we must assume that Respondent’s goods are available to all classes of customers for
such goods. See Paula Payne Products Co. v. Johnson Publishing Co., 177 USPQ at
77-78. The class of customers interested in Petitioner’s holders for flashlights would
naturally overlap with the class of customers interested in purchasing flashlights
themselves. The goods of both parties would typically be offered to a wide range of
ordinary consumers, including the home owners, sportsmen, and hobbyists
mentioned in Petitioner’s advertisement. Because the parties’ customer classes would
overlap, at least in part, this du Pont factor favors a finding of likelihood of confusion.
4. The marks.
Next we consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of

25 Todd Ex. 7, 51 TTABVUE 61.
Cancellation No. 92059235
12

the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1721 (internal quotation marks omitted).
In appearance, the marks are similar to the extent that they share the initial letters
NITE and the final letter E. They differ visually by virtue of their internal letters and
the fact that Petitioner’s mark consists of two words instead of one. The very modest
stylization of the lettering of Respondent’s mark is also a point of visual difference.
However, we bear in mind that Petitioner’s mark is registered in standard character
form, such that it is not limited to any particular form of display, Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983), and could be displayed in
the same manner as Registrant’s mark.
With respect to sound, Petitioner’s witness stated that Petitioner’s mark is
pronounced “night eyes”;26 and evidence indicates that third parties perceive the
mark to have that pronunciation.27 Although Respondent resisted admitting that his
mark NITEYE has a particular pronunciation, Respondent’s website has displayed
the slogan THE EYES AT NIGHT in proximity to the mark.28 Clearly the two marks
can be pronounced in a highly similar manner, such that Petitioner’s mark would
have the sound of the plural form (“night eyes”) of Respondent’s mark (“night eye”).

26 Todd dep. 83:16-19, 51 TTABVUE 22.
27 Todd Exs. 31 and 32, 51 TTABVUE 143, 145 (product reviews explaining the pronunciation
of the mark); Fourth notice of reliance, 49 TTABVUE 24, 27 (online directory of stores and a
runner’s blog, both explaining the pronunciation).
28 Fourth notice of reliance, 49 TTABVUE 115 (web page at ).
Cancellation No. 92059235
13

With respect to meaning and connotation, clearly both marks are coined terms that
have no literal meaning. However, customers are likely to perceive the initial letters
of both marks (NITE) to be a misspelling of the common word “night.” Further, when
we consider that the two marks are likely to be given highly similar pronunciations,
it is equally likely that they would be perceived, overall, to connote, respectively,
“night eyes” and “night eye.”
When the two marks are used on, respectively, flashlights and accessories for
flashlights, we find that they would create, overall, similar commercial impressions.
Flashlights are a useful aid against darkness, they are frequently used at nighttime,
and their purpose is to help the user to see better. In this commercial context, the
likely pronunciation of the marks as “night eyes” and “night eye” is reinforced; and
both marks would create the impression of a product that is an aid to the eyes at
night. Although there are differences in appearance between the marks, they are
outweighed by the marks’ similarities in sound, connotation, and commercial
impression. We find that the du Pont factor of the similarity or dissimilarity of the
marks weighs in favor of a finding of likelihood of confusion.
5. Balancing the factors.
We have considered all of the arguments and evidence of record, including those not
specifically discussed herein, and all relevant du Pont factors. The marks are similar
in sound, connotation, and overall commercial impression. The parties’ goods are
closely related and travel through the same channels of trade to the same classes of
customers. Petitioner has demonstrated priority of use of its mark vis-à-vis
Cancellation No. 92059235
14

Respondent. We find that Respondent’s mark so closely resembles Petitioner’s
previously used mark as to be likely, when used on or in connection with the goods of
Respondent, to cause confusion, or to cause mistake, or to deceive. Accordingly, we
GRANT the petition to cancel on the basis of Petitioner’s claim under Section 2(d).
Inasmuch as we have determined that Respondent’s Registration must be cancelled
on grounds of likelihood of confusion, we need not reach Petitioner’s claims of fraud
and dilution.
Decision: The petition for cancellation is GRANTED on Petitioner’s claim of
likelihood of confusion under Section 2(d). Registration No. 4179235 will be cancelled
in due course.