Oldenburg Group Incorporatedv.Vita Living ApS

Trademark Trial and Appeal Board

May 17, 2017

No. 91222815 (T.T.A.B. May. 17, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 17, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Oldenburg Group Incorporated
v.
Vita Living ApS
_____

Opposition No. 91222815
_____

Daniel E. Kattman of Reinhart Boerner Van Deuren s.c.,
for Oldenburg Group Incorporated.

Martin Dahlgaard of Thomas Martin LLP,
for Vita Living ApS.
_____

Before Wolfson, Hightower, and Heasley,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Vita Living ApS (“Applicant”) seeks to register the mark on the
Principal Register for the following goods in International Class 11:
Based on use in commerce: Desk lamps; Electric lighting
fixtures; Lamp bases; Lamp shades; Lamps; Light shades;
Sockets for electric lights
Based on intent to use: Lamp bulbs; Lamps for outdoor use;
LED (light emitting diode) lighting fixtures; LED (light
emitting diodes) lighting fixtures for use in display,
Opposition No. 91222815
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commercial, industrial, residential, and architectural
accent lighting applications; LED lighting fixtures for
indoor and outdoor lighting applications; Solar powered
lamps; Wall lamps.1
The description of the mark states: “The mark consists of the wording ‘VITA’ stylized
in sharp letters.” The application also includes the following translation statement:
“The English translation of the word ‘VITA’ in the mark is ‘life.’”
Oldenburg Group Incorporated (“Opposer”) opposes registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of
confusion with its mark VISA LIGHTING, registered on the Principal Register in
standard characters and with LIGHTING disclaimed, for “lighting fixtures” in
International Class 11.2 The proceeding is fully briefed.
We sustain the opposition.
I. Record
The record in this case consists of the pleadings and the file of the involved
application. Trademark Rule 2.122(b)(1), 37 C.F.R. 2.122(b)(1).
In addition, Opposer made of record the following evidence:
• Its pleaded Registration No. 3766384. Opposer made this registration of
record by submitting with its opposition a copy of information from the
electronic database records of the U.S. Patent and Trademark Office’s
(Office) Trademark Electronic Search System (TESS) showing the current

1 Application Serial No. 86408300, filed September 29, 2014. Applicant claimed first use as
of November 13, 2008 and use in commerce at least as early as November 2010 for the goods
applied for pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and asserted
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), for the intent-to-use goods. Color is not claimed as a feature of the mark.
2 Registration No. 3766384, issued March 30, 2010; Section 8 & 15 declaration of use and
incontestability accepted and acknowledged July 27, 2015.
Opposition No. 91222815
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status and title of the registration, pursuant to Trademark Rule 2.122(d)(1),
37 C.F.R. § 2.122(d)(1).3
• Printouts of search results showing that both parties’ lighting fixtures are
offered for sale through Amazon.com in the “Tools & Home Improvement”
category.4
Applicant introduced the following evidence by Notice of Reliance:
• Dictionary definitions of the words “visa” and “vita.”5
• A TESS printout of a registration for VICA, in standard characters, for
“sconces[;] lighting fixtures; table lamps and floor lamps.”6
• A TESS printout of a registration for VIMA LED, in standard characters
and with LED disclaimed, for “LED lighting lamps, fixtures and modules.”7
• The first page of a TESS search result for live records of marks
incorporating VISA.8
II. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the 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); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). Opposer’s standing to oppose registration of
Applicant’s mark is established by its pleaded registration, which the record shows

3 Exhibit B to the Notice of Opposition, 1 TTABVUE 7. Opposer also submitted a copy of the
registration with its Notice of Reliance, but it is a plain copy rather than a status and title
copy prepared by the Office pursuant to Trademark Rule 2.6(b)(4), 37 C.F.R. § 2.6(b)(4), and
thus was not properly made of record via notice of reliance. See Trademark Rule 2.122(d)(2),
37 C.F.R. § 2.122(d)(2); TBMP § 704.03(b)(1)(A) (Jan. 2017). Once evidence is in the record,
moreover, it need not be resubmitted. See Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a).
4 Opposer’s Notice of Reliance, Exhibits 2 and 3, 7 TTABVUE 7-18.
5 Applicant’s Notice of Reliance, Exhibits A and B, 8 TTABVUE 6-7 (from ahdictionary.com,
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2016)).
6 Id., Exhibit C, Registration No. 4020000, 8 TTABVUE 8.
7 Id., Exhibit D, Registration No. 4091978, 8 TTABVUE 9.
8 Id., Exhibit E, 8 TTABVUE 10.
Opposition No. 91222815
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to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship
v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). In addition,
because Opposer’s pleaded registration is of record, priority is not at issue with
respect to the goods covered by Opposer’s pleaded registration. Mini Melts, Inc. v.
Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
III. Likelihood of Confusion
Our determination under Trademark Act 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 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (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 or services, the first two du Pont factors. 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.”). Opposer
bears the burden of proving its claim of likelihood of confusion by a preponderance of
the evidence. Cunningham, 55 USPQ2d at 1848.
We address in turn each of the du Pont factors for which the parties submitted
evidence or argument.
Opposition No. 91222815
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A. Similarity of the Goods and Channels of Trade
The second and third du Pont factors assess the similarity or dissimilarity of the
parties’ goods and services and their established, likely-to-continue trade channels.
“In comparing the parties’ goods, ‘[t]he issue to be determined . . . is not whether the
goods of plaintiff and defendant are likely to be confused but rather whether there is
a likelihood that purchasers will be misled into the belief that they emanate from a
common source.’” Anheuser-Busch, LLC v. Innvopak Sys. Pty. Ltd., 115 USPQ2d 1816,
1825 (TTAB 2015) (quoting Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d
1618, 1624 (TTAB 1989)).
The parties’ goods or services need not be similar or even competitive to support a
finding of likelihood of confusion. It is sufficient that the respective goods or services
are related in some manner, or that the conditions surrounding their marketing are
such that they would be encountered by the same purchasers under circumstances
that could, in light of the similarity of the marks, give rise to the mistaken belief that
they originate from or are associated with the same source. Bond v. Taylor, 119
USPQ2d 1049, 1053 (TTAB 2016) (quotation omitted); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
We must focus on the wording of the application and registration, rather than
what the record may reveal regarding the parties’ particular goods and services,
because “‘the question of registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the application.’” Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014) (quoting Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16
Opposition No. 91222815
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USPQ2d 1783, 1787 (Fed. Cir. 1990)). A likelihood of confusion may be found as to a
particular class based on any item within the description of goods for that class. Bond
v. Taylor, 119 USPQ2d at 1052-53.
The goods identified in Opposer’s pleaded registration are lighting fixtures.
Applicant’s identified goods include electric lighting fixtures, LED lighting fixtures,
and lamps. Applicant’s more specifically identified goods are subsumed within
Opposer’s identified lighting fixtures. The parties’ goods thus are legally identical in
part.
Turning to du Pont factor three, the similarity of the parties’ channels of trade,
there are no limitations as to channels of trade in the descriptions of goods in the
application or pleaded registration. Therefore, we presume that both parties’ goods
move in all channels of trade normal for those goods. See Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Moreover,
because certain of Applicant’s goods are legally identical to those identified in the
cited registration, we must presume that those overlapping goods of Applicant and
Opposer move in the same channels of trade and are available to the same classes of
customers for such goods. See Am. Lebanese Syrian Assoc. Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled
to rely on this presumption).
The second and third du Pont factors strongly support a finding of likely confusion.
Opposition No. 91222815
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B. Strength of Opposer’s Mark
In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength. Couch/Braunsdorf Affinity,
Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also In re
Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A
mark’s strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).”).
Applicant argues that Opposer’s mark consists of a commonly used word entitled
only to narrow protection, which relates to the mark’s inherent strength, and also
that it has been weakened and diluted by third-party use of similar marks in the
marketplace. In support of its argument, Applicant cites the dictionary definition of
“visa,” the two third-party registrations for VICA and VIMA LED, and the first page
of TESS search results for “visa”-formative marks.
With respect to the inherent strength of Opposer’s mark, while “visa” is not a
coined term, we find it to be arbitrary in association with lighting fixtures and
therefore inherently strong in Opposer’s mark. See Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005); Am. Lebanese Syrian Assoc. Charities, 101 USPQ2d at 1028.
Third-party registrations may be relevant to show the sense in which a mark is
used in ordinary parlance; that is, an element common to both parties’ marks may
have a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
Opposition No. 91222815
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F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). Here, the third-party
registrations for VICA and VIMA LED cover relatively similar marks and legally
identical goods. Nonetheless, they number only two.
The one-page result of the TESS search submitted by Applicant for live records
comprising “visa” did not make the underlying registrations and applications listed
of record. See Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012);
Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337 (TTAB 2006). The list
contains insufficient information to carry probative value as to the strength of
Opposer’s mark because we cannot ascertain the goods or services identified in the
registrations. See, e.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738,
1745 (TTAB 2016) (“[T]hird-party registrations are relevant evidence of the inherent
or conceptual strength of a mark or term because they are probative of how terms are
used in connection with the goods or services identified in the registrations.”). We
also note that every mark displayed incorporates other matter in addition to VISA,
and that the included applications are evidence of nothing more than that they were
filed with the Office. See Edom Labs., 102 USPQ2d at 1550.
As for the commercial strength of Opposer’s mark, the shortcoming in Applicant’s
argument is that it submitted no evidence of third-party use of similar marks in
connection with similar goods that would support a finding that VISA is weak or
diluted in association with lighting fixtures.
Opposition No. 91222815
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Opposer’s mark VISA LIGHTING is conceptually strong, and the record evidence
does not persuade us that it is weak in the marketplace and entitled to only a
circumscribed scope of protection. The strength of the cited mark weighs in favor of a
finding of likelihood of confusion.
C. Customer Sophistication
Applicant also argues that consumers of the parties’ goods are sophisticated,
careful purchasers. This contention pertains to the fourth du Pont factor, the
conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful,
sophisticated purchasing. 177 USPQ at 567.
The only evidence relevant to this analysis are the printouts showing the parties’
goods for sale on Amazon.com, at prices starting – in the case of Applicant’s lighting
fixtures – at a relatively modest $79.9 Although consumers certainly may exercise
care in selecting lighting and décor, we must base our decision on the least
sophisticated potential purchasers. Stone Lion, 110 USPQ2d at 1163. The record does
not support a finding that purchasers of lighting fixtures are particularly
sophisticated or careful. We find the fourth du Pont factor to be neutral.
D. Similarity of the Marks
Finally, we turn to the first du Pont factor, the similarity of the parties’ marks. In
a likelihood of confusion analysis, we evaluate the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and overall
commercial impression. Palm Bay, 73 USPQ2d at 1692. “The proper test is not a side-

9 Opposer’s Notice of Reliance, Exhibit 2, 7 TTABVUE 8, 9; see also id., Exhibit 3, 7 TTABVUE
13 (showing “Visa Lighting” wall sconce priced at $225).
Opposition No. 91222815
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by-side comparison of 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, 101
USPQ2d at 1721 (quotation omitted).
Where, as here, the parties use their marks in connection with goods that are
legally identical in part, the degree of similarity required to support a determination
that confusion is likely declines. Bridgestone Ams. Tire Operations LLC v. Federal
Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); see also Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services,
the degree of similarity necessary to support a conclusion of likely confusion
declines.”).
Applicant’s mark differs by only one letter from VISA, the only
distinctive and therefore dominant portion of Opposer’s mark VISA LIGHTING.
Applicant’s mark merely substitutes a “t” for an “s” as the fourth letter. Thus, we find
that consumers are likely to pronounce the terms somewhat similarly. The marks
also are relatively similar in appearance, considering that Opposer may choose to
display its standard character mark similarly or identically to Applicant’s stylized
lettering. See Viterra, 101 USPQ2d at 1909 (pointing out that standard character
marks are not limited to any particular depiction); Weider Publ’ns, LLC v. D&D
Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014).
Opposition No. 91222815
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The marks vary significantly in meaning and connotation. The dictionary
definitions of “vita” and “visa” are:
• Visa: An official authorization appended to a passport, permitting entry
into and travel within a particular country or region subject to certain
conditions, such as length of time and purpose of the visit.
1. To endorse or ratify (a passport).
2. To give a visa to.10
• Vita:
1. A curriculum vitae.
2. A short account of a person’s life.11
We remain mindful, however, that confusion may be likely where less similar marks
are used for legally identical goods. Here, despite their different meanings,
Applicant’s mark and the dominant portion of Opposer’s mark both are arbitrary,
four-letter terms differing only with respect to the third letter. Considered in their
entireties, we find the appearance, pronunciation, and overall commercial impression
of Applicant’s mark sufficiently similar to Opposer’s mark to outweigh the divergent
meanings.
We find that the first du Pont factor weighs in favor of a likelihood of confusion.
IV. Conclusion
In sum, we have found that the first, second, and third du Pont factors weigh in
favor of a likelihood of confusion, while the fourth factor is neutral.

10 Applicant’s Notice of Reliance, Exhibit A, 8 TTABVUE 6.
11 Id., Exhibit B, 8 TTABVUE 7.
Opposition No. 91222815
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Our primary reviewing court has long instructed that “a new entrant presenting
a new mark for registration has an obligation to avoid confusion with established
marks in the same market.” Bridgestone, 102 USPQ2d at 1063; see also In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (stating that “‘the
newcomer has the opportunity of avoiding confusion, and is charged with the
obligation to do so’”) (quoting In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1691 (Fed. Cir. 1993)). Considering the record evidence as a whole, we find that
Opposer has established by a preponderance of the evidence that Applicant’s mark is
likely to cause confusion with Opposer’s mark when used in association with the
parties’ identified goods.
Decision: The opposition is sustained.