NSI Enterprises, Inc.v.Barnett, Inc.

Trademark Trial and Appeal Board

Aug 14, 2003

No. 91116679 (T.T.A.B. Aug. 14, 2003)

Mailed:
August 14, 2003
Paper No. 16
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
NSI Enterprises, Inc.
v.
Barnett, Inc.
________
Opposition No. 116,679
to Application Serial No. 75/153,003
_______
Christine M. Cason and William H. Brewster of Kilpatrick
Stockton LLP for NSI Enterprises, Inc.
Arthur G. Yaeger of Arthur G. Yaeger, P.A. for Barnett,
Inc.
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
An application has been filed by Barnett, Inc. to
register the mark LUMINA and design as shown below:
for “electrical hardware, namely, switches, boxes, cords,
circuit breakers, outlets, ground fault interrupters, smoke
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 116,679
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alarms, fuses, cover plates for outlets and wall switches,
adaptors, electrical testers” in International Class 9, and
for “flashlights, electrical lighting fixtures and electric
light bulbs,” in International Class 11.1
Registration has been opposed by NSI Enterprises, Inc.
on the ground that, it has been using (through its wholly-
owned subsidiary, Lithonia Lighting) the mark LUMINA on
electric lighting fixtures since 1992; and that applicant’s
mark, if used in connection with the identified goods, so
resembles opposer’s mark as to be likely to cause
confusion, to cause mistake or to deceive.
Applicant, in its answer, denied the salient
allegations as to opposer’s standing and priority as well
as the likelihood of confusion claim. The parties have
fully briefed this case, but an oral hearing was not
requested.
The record consists of the file of the involved
application; the trial testimony deposition of Douglas M.
Baillie, Lithonia Lighting’s director of marketing
communications, with accompanying exhibits,2 including a
1 Application Serial No. 75/153,003 was filed on August 9,
1996 alleging a bona fide intention to use the mark in commerce.
2 Opposer’s notice of reliance listed items also placed into
the record in the form of Mr. Baillie’s trial testimony and
accompanying exhibits.
Opposition No. 116,679
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copy of opposer’s pending application3; and the trial
testimony deposition, with exhibits, of Joel L. McEwen,
applicant’s director of advertising.
Opposer’s standing
Applicant charges in its brief that opposer “has
failed to establish its standing to be an Opposer herein.”
(applicant’s appeal brief, p. 9). However, the evidence of
record shows that opposer, through its related company, has
used its LUMINA trademark continuously since at least 1992
in connection with electric lighting fixtures. Under
Section 5 of the Trademark Act, 15 U.S.C. §1055, Lithonia
Lighting’s use inures to the benefit of opposer.4 That
opposer’s claimed usage took place through a wholly-owned
subsidiary in no way detracts from opposer’s showing of
standing. In view thereof, we find that opposer has
3 Application Serial No. 75/374,852 was filed on October 17,
1997, claiming use of the mark LUMINA on “electric lighting
fixtures” since at least as early as 1989.
4 “Where a registered mark or a mark sought to be registered
is or may be used legitimately by related companies, such
use shall inure to the benefit of the registrant or
applicant for registration, and such use shall not affect
the validity of such mark or of its registration, provided
such mark is not used in such manner as to deceive the
public.” [15 U.S.C. §1055].
Opposition No. 116,679
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established its standing to maintain this opposition
proceeding.5
Opposer’s priority
As noted above, the undisputed evidence of record
establishes that opposer has used its LUMINA trademark
continuously since at least 1992 in connection with
electric lighting fixtures, a date well prior to the
earliest date upon which applicant can rely, i.e., its
August 9, 1996 application filing date. Hence, we find
that opposer has also established its priority.
Likelihood of Confusion
We turn then to the substantive issue before us,
namely, the question of likelihood of confusion.
Opposer contends that even if LUMINA is a suggestive
designation as applied to lighting fixtures, its mark is
entitled to protection from applicant’s nearly identical
mark used on the same and closely related goods.
5 As noted, the evidence demonstrates opposer’s common law
rights. Hence, opposer’s proving ownership of a later-filed, co-
pending trademark application is not in any way critical to
establishing standing herein. In any case, on this disputed
point, we find that opposer has shown a chain of title for that
application from National Services Industries, Inc. (the original
applicant in the pending application) to NSI Enterprises, Inc.
(opposer herein).
Opposition No. 116,679
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By contrast, applicant contends that “Lithonia
Lightings’ use of the term ‘lumina’ is merely descriptive
or generic” (applicant’s brief, p. 6) and is “incapable of
distinguishing Lithonia Lightings’ one piece contoured
diffusers” (applicant’s brief, p. 12); that the record
reflects “little if any similarity of goods” between
opposer’s catalogs and applicant’s lighting fixtures
(applicant’s brief, p. 19); that when compared in their
entireties, applicant’s stylized LUMINA mark has a vastly
different appearance from the plain typeface of opposer’s
LUMINA mark; that there are “differences in the trade
channels” (applicant’s brief, p. 20); and that opposer has
failed to demonstrate a single instance of actual confusion
on the part of consumers (applicant’s brief, p. 20).
After careful consideration of the facts before us and
the relevant law on the issue of likelihood of confusion,
we hold that applicant is not entitled to the registration
it seeks.
In the course of determining the question of
likelihood of confusion herein, we have followed the
guidance of the predecessor to our primary reviewing Court.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
1362, 177 USPQ 563, 567-68 (CCPA 1973). The du Pont case
sets forth each factor that should be considered, if
Opposition No. 116,679
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relevant information is of record, in determining
likelihood of confusion. We begin by looking at the goods
of the parties.
The involved application lists “electrical lighting
fixtures” among its identified goods. The record shows
that the only item on which opposer uses the LUMINA mark is
an electric lighting fixture.6 Hence, for purposes of our
likelihood of confusion analysis, these items are legally
identical.
As to the actual products sold under these marks, the
record shows that opposer, a large lighting fixtures
manufacturer, has been using the LUMINA mark on a
decorative, ceiling-mounted, fluorescent lighting fixture.
This one-piece, contoured, light-diffusing lens is designed
to provide general illumination in residential and light
commercial applications. Opposer’s literature describes
its features as having a “white acrylic lens” that “lifts
and shifts off housing for easy maintenance,” creating
“soft, uniform illumination” and “presenting a cloud-like
appearance.”7
6 The relevant uses of the mark appear in opposer’s sales
catalogs from the years 1992, 1996 and 2000.
7 We disagree with applicant’s arguments about opposer’s
failure to show use of the LUMINA mark on electric light
fixtures. The uses of opposer’s mark in three different sales
catalogs (from 1992, 1996 and 2000) clearly comprise displays
Opposition No. 116,679
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Applicant markets and distributes plumbing, HVAC,
electrical and hardware products. Its wide range of LUMINA
products include smaller, indoor, contractor-grade,
decorative, ceiling-mounted lighting fixtures for
residential or commercial use.8 Although applicant’s
catalog includes larger surface-mounted light fixtures that
appear nearly identical to those of opposer,9 these
particular fixtures do not appear to be sold under the
LUMINA mark.
Moving beyond applicant’s identified lighting
fixtures, opposer’s lighting fixture is also closely
related to the other electrical hardware and lighting
components identified in both International Classes 9 and
11 in the opposed application -- particularly applicant’s
light bulbs, switches, boxes, wires and connectors.
In view of our finding that some of the goods are
identical and that others are closely related, and inasmuch
as neither party has placed any restrictions on their
respective channels of trade, we must presume that the
parties’ respective goods will move in the same channels of
associated with the goods. Cf. Land's End, Inc. v. Manbeck, 797
F.Supp. 311, 24 USPQ2d 1314 (E.D. Va. 1992).
8 Applicant’s January-April 1999 catalog contains a special
glossy section of LUMINA products (pp. 673-704), having surface
mounted fistures on pp. 677 & 678.
9 Applicant’s January-April 1999 catalog, p. 671, 713-714.
Opposition No. 116,679
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trade to the same types of purchasers. Indeed, the
testimony of Mr. Baillie on behalf of opposer10 and the
testimony of Mr. McEven on behalf of applicant11 demonstrate
that both parties send promotional catalogs to, inter alia,
electrical wholesalers, lighting showrooms and facility
maintenance personnel.
We continue our analysis by turning next to the
similarity or dissimilarity of the respective marks in
their entireties as to sound, appearance and meaning.
Applicant argues from dictionary definitions12 that
opposer’s LUMINA mark is entitled to a narrow scope of
protection in that it is merely descriptive or even generic.
We note that the question of descriptiveness or genericness
of the term LUMINA for lighting devices is not squarely
before us. Furthermore, the dictionary entries submitted by
applicant demonstrate only that this term may well be highly
suggestive for lighting products. However, even if we were
to assume that opposer’s mark is weak, we note that “even
weak marks are entitled to protection against registration
of similar marks” for identical goods. In re Colonial
10 Testimony deposition of Douglass M. Baillie, pp. 8-9.
11 Testimony deposition of Joel L. McEven, pp. 11-12, 21-22.
12 Lumen, n.: pl LUMINA 1. A unit of light (luminous power);
the light emitted in a unit solid angle (steradian) by a uniform
point source of one international candle.” Webster’s New
International Dictionary, Second Edition.
Lumen, n. a unit of luminous flux – the light emitted in
one second in a solid angle of one steradian from a point source
Opposition No. 116,679
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Stores, 216 USPQ 793, 795 (TTAB 1982). See also In re The
Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978)
(ERASE for a laundry soil and stain remover held
confusingly similar to STAIN ERASER, registered on the
Supplemental Register, for a stain remover).13
In addition to trying to accord opposer’s mark a
minimal scope of protection, applicant places significant
weight on the fact that its own composite mark contains the
word LUMINA in all upper-case, black letters having an
accent placed above the letter “U,” and that this literal
element is then superimposed over a highly-stylized “red
squiggle”14 representing a “lightening bolt.”
However, while we must base our determination on a
comparison of the respective marks in their entireties, we
are guided, equally, by the well-established principle
that, in articulating reasons for reaching a conclusion on
the issue of confusion, “there is nothing improper in
of uniform intensity of one candela … pl. lumina … Chambers 20th
Century Dictionary, New Edition 1983.
13 Moreover, as to the du Pont factor focused on the number
and nature of similar marks in use on similar goods, there is no
indication in the record that anyone else is using any variations
of LUMINA on related goods.
14 Opposer is also correct in noting that the drawing is not
lined for the color red, so this characterization does not factor
into our analysis. On the other hand, to the extent that the
squiggle is shown in several contrasting colors throughout
applicant’s catalogs, the sole word element (LUMINA) presented in
black simply stands out visually that much more prominently, by
comparison.
Opposition No. 116,679
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stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In this context, we agree with opposer that applicant
cannot rely on its design element to distinguish its mark
from opposer’s mark. Where a composite mark comprises both
word and design elements, the word generally predominates
over design elements because the word is what creates an
impression upon prospective purchasers and it would be
remembered and relied upon in calling for these goods. See
In re Comexa Ltda., 60 USPQ2d 1118 (TTAB 2001); and In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Specifically, it is the literal element of applicant’s
LUMINA and design mark that would be utilized by consumers
when asking about or otherwise referring to its goods. As
to sound and meaning, this element is identical to
opposer’s LUMINA mark. While it does create a somewhat
different appearance, the addition of such a background
design does not avoid a likelihood of confusion in this
case given that the two marks have the same literal
elements. The presence of an accent mark and the squiggle
design element in applicant’s mark are therefore
Opposition No. 116,679
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insufficient to distinguish applicant’s mark from opposer’s
mark. Overall, when utilized in connection with the
respective goods of the parties as indicated above,
applicant’s LUMINA and design mark engenders a commercial
impression that is substantially similar to the commercial
impression projected by opposer’s LUMINA mark.
Applicant argues that under the du Pont factor
focusing on the length of time during which there has been
contemporaneous use of the parties’ marks, opposer has
provided no evidence of actual confusion between the
parties’ respective marks.15 Of course, evidence of actual
confusion is notoriously difficult to obtain, so we cannot
conclude from the lack of such evidence that confusion is
not likely to occur. Moreover, the test is whether there
is a likelihood of confusion, not whether actual confusion
has occurred. See Weiss Associates Inc. v. HRL Associates
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
15 While the instant application remains an intent-to-use
application for which no statement of use has been filed, the
record does show substantial commercial usage of the mark by
applicant since sometime in 1996. Applicant’s catalog shows
thirty-three warehouse locations spread across much of the
continental United States, and Mr. McEven testified to more than
$20 million in sales of LUMINA products between October 1996 and
the end of 2000. Nonetheless, the record does not contain
sufficient evidence upon which we might base a conclusion that
there has been a meaningful opportunity for actual confusion to
have occurred.
Opposition No. 116,679
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In conclusion, we find that opposer has demonstrated
its standing to bring this action and has established its
priority; and we find that the parties’ goods herein are
legally identical and otherwise closely related, that the
goods move in the same channels of trade to the same types
of consumers, that the marks create substantially the same
overall commercial impressions, and as a result, that
opposer has shown a likelihood of confusion herein.
Decision: The opposition is sustained and
registration to applicant is refused as to International
Classes 9 and 11.