Quorum Inter-national, L.P.

Trademark Trial and Appeal Board

Mar 28, 2005

No. 76255593 (T.T.A.B. Mar. 28, 2005)

Hearing: January 19, 2005 Mailed: March 25, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Quorum International, L.P.
________

Serial No. 76255593
_______

Kenneth C. Hill of Hill & Hunn LLP for Quorum International, L.P.

Theodore McBride, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Walters, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Quorum International, L.P.
to register CRISTAL for the following goods (as amended):
"lighting fixtures, namely chandeliers and wall sconces and the
ceiling mounts, wall mounts, and light kits, namely electric
lighting fixtures for attachment to ceiling fans, lamps and
lampshades and electrical torches" in Class 11.1 The

1 Serial No. 76255593, filed May 11, 2001, based on an allegation of
first use on January 12, 1996 and first use in commerce in March 1996.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76255593
2
application contains the following statement: "The English
translation of the [word] 'cristal' is 'crystal'."
The Trademark Examining Attorney refused registration on the
basis of Section 2(e)(1) of the Trademark Act.2 When the refusal
was made final, applicant appealed. Applicant and the examining
attorney have filed briefs. An oral hearing was held.
Before proceeding further, we need to clarify the issue on
appeal. The examining attorney initially refused registration
under Section 2(e)(1) of the Trademark Act on the ground that
applicant's mark is merely descriptive of its goods. In
response, and without any argument that the mark is inherently
distinctive, applicant amended the application to seek
registration under Section 2(f) of the Act. The amendment was
accompanied by a declaration of five-years use from William S.
Davis, Sr., the president of Davoil, Inc., applicant's general
partner.
The Examining Attorney rejected the 2(f) evidence and
continued the refusal under Section 2(e)(1) contending that the
mark is generic for the goods and that no amount of evidence
would be sufficient to overcome the refusal based on

2 Registration was also initially refused under Section 2(d) of the Act
but that refusal was subsequently withdrawn in view of applicant's
claim of ownership of the cited registration (Registration No. 2149301
for the mark "CRYSTAL" for "ceiling fans"). That registration has
since been cancelled by the Office under Section 8 of the Trademark
Act.

Serial No. 76255593
3
genericness.3 Applicant responded to the refusal with evidence
and argument that the mark is not merely descriptive. The
examining attorney subsequently issued a final refusal solely on
the basis of the descriptiveness of the mark and the
insufficiency of applicant's 2(f) evidence. The issue of
genericness was not mentioned in the final refusal.
Applicant requested reconsideration of the final refusal,
admitting that the mark is "arguably descriptive" (Recon., p. 2)
and submitting additional evidence of acquired distinctiveness.
The evidence consisted of the declarations of Dean Mathis and
Denis Alison, two individuals in the lighting fixture industry.
In addition, applicant stated that "[t]he mark CRISTAL is clearly
not generic, nor was the refusal to register based on an argument
that it is." (Recon., p. 3). In denying the request for
reconsideration, the examining attorney maintained his position
that the mark is highly descriptive of the goods and once again
argued that the mark is generic.
In its brief on appeal, applicant states that as it has
converted its application to 2(f), "for procedural purposes,
applicant does not challenge the finding that CRISTAL is
descriptive." (Brief, p. 7). In addition, finding the basis for

3 The examining attorney also refused registration on the Supplemental
Register as well as the Principal Register, but since applicant never
sought to amend its application to the Supplemental Register this
refusal was premature.
Serial No. 76255593
4
the examining attorney's refusal "unclear," applicant included
arguments on the genericness issue but at the same time noted
that it would have presented evidence on genericness if that
issue had been maintained. In its reply brief, applicant
reiterated that "the only outstanding refusal was one based on
descriptiveness" and that its evidence was accordingly directed
solely to the acquired distinctiveness claim.
Under the circumstances, we find, with respect to issues
before the Board, that the examining attorney has withdrawn the
refusal based on genericness, and that applicant has conceded
that the mark is merely descriptive of its goods.4 Thus, the
only question on appeal is whether the evidence is sufficient to
establish that the mark has acquired distinctiveness under
Section 2(f) of the Trademark Act.
Applicant's goods are "lighting fixtures" including
chandeliers and wall sconces. Applicant admits, (Brief, p. 4),
and the dictionary evidence submitted by the examining attorney
shows, that CRISTAL is the French word for "crystal."5 In

4 We also point out that unless the question of inherent
distinctiveness is clearly reserved, which in this case it was not, a
claim of acquired distinctiveness under Section 2(f) is tantamount to a
concession that the mark is not inherently distinctive. See Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988) and General Foods Corporation v. MGD
Partners, 224 USPQ 479, 485 (TTAB 1984).

5 We note, in addition, that "cristal" is also the Spanish word for
"crystal," (see Cassell's Spanish-English English-Spanish Dictionary
Serial No. 76255593
5
addition, "cristal" is the phonetic equivalent, that is, a mere
misspelling, of "crystal." The evidence shows that the term
"CRISTAL," as either the foreign or phonetic equivalent of
"crystal," is highly descriptive of lighting fixtures.
The dictionary listing provided by the examining attorney
defines "crystal" as, "a. A high-quality clear, colorless glass.
b. an object, especially...an ornament, made of such glass."6 It
is clear from the examining attorney's Internet search summaries
and excerpts of third-party websites that elements or components
made of "crystal" are common decorative feature of lighting
fixtures, and that "crystal" is also commonly used to describe a
type of chandelier, i.e., a crystal chandelier. Examples of such
references are as follows (emphasis added):
Titanus Crystal Chandeliers & Frames[]The first crystal
chandelier site on the web ever, ... www.algonet.se

...Welcome to Krebs Crystal Chandeliers! Crystal chandeliers
of high quality has [sic] been our main ...
Description: Manufacturer of crystal chandeliers ...
www.worldclasslighting.com

...home address in the USA and Canada of 150 Bohemia hand
cut lead crystal chandeliers, wall sconces, table and floor
lamps... www.crystal-chandelier.cz

A collection of crystal chandeliers and crystal sconces from
manufacturers such as Nulco Lighting, Wilshire, Crystal
Clear and Pecasso ... www.lightingforum.com

(1959)), and as indicated on applicant's specimen labels, applicant's
lighting fixtures are a product of Spain.

6 The American Heritage Dictionary of the English Language (3rd ed.
1992).
Serial No. 76255593
6
Crystal lighting fixtures from Newton Electrical Supply and
AD Cola Lighting, ... www.newtonelectric.com

SENOV crystal lighting fixtures ...
...You can see and feel the difference. The assembled
chandeliers and lighting fixtures are then decorated with
various shapes and sizes of crystal trimmings ...
www.abcandg.com

Waterford Crystal Lighting Fixtures. Waterford Beaumont
Lantern Gold plated accents and Waterford Crystal
combination... www.crystalclassics.com

Manufacturer of crystal lighting fixtures and crystal
chandeliers... www.arch-details.com

Congratulations on choosing fine crystal light fixtures for
your home. We hope you will find the traditional, yet
timeless beauty of crystal as enchanting as we do.
www.chandelier.com

Schonbek Crystal Lighting Fixtures
Click on the crystal lighting fixtures below to see a larger
image along with the crystal lighting fixture's dimensions
and price. ... If you have any questions about ordering a
light fixture, table or floor lamp, or a crystal chandelier,
give Union Lighting a call... www.unionlighting.net

The "Crown Jewel Collection" of crystal lighting fixtures
features intricate swags of almond-shaped crystal beads with
delicate candlelights. The line includes crystal
chandeliers (shown), pendants, surface mounts, wall sconces
and other fixtures. www.visualstore.com

Contrary to applicant's contention, the fact that "crystal"
is used as an adjective in the context of a "crystal chandelier"
does not prevent it from being a highly descriptive of a type of
chandelier. See, e.g., Roselux Chemical Co., Inc. v. Parsons
Ammonia Company, Inc., 299 F.2d 855, 132 USPQ 627, 634 (CCPA
1962) ("SUDSY", as an adjective, is "half of a common descriptive
Serial No. 76255593
7
name" [for "sudsy ammonia"] and "as such it is clearly, and in
common parlance, a type designation"); Miller Brewing Co. v. G.
Heileman Brewing Co., 561 F.2d 75, 195 USPQ 281, 285 (7th Cir.
1977) (the adjective "light" is a generic or common descriptive
term for beer), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978);
and In re Central Sprinkler Co., 49 USPQ2d 1194, 1198 (TTAB 1998)
(wherein the Board stated with regard to the mark ATTIC for attic
sprinklers, "[t]he fact that applicant has chosen to not include
the term "sprinkler" in the mark sought to be registered should
not lead to the registrability of ATTIC standing alone).
While admitting that "[s]ome lighting fixtures include
crystal as one of the materials used to make the fixture,"
applicant contends that "most lighting fixtures do not include
crystal" and, in particular, that "[a] majority of Applicant's
products do not include crystal." Applicant argues that its
identification of goods "is clearly not limited to fixtures
containing crystal components" and that although crystal is a
component of some goods that fall within its description, crystal
components are not a central characteristic or ingredient of
those goods. (Brief, pp. 4, 6). This argument misses the point.
The relevant point is that CRISTAL is highly descriptive of at
least some of applicant's lighting fixtures, that is, those of
applicant's fixtures that do include crystal elements or those
fixtures that are crystal chandeliers. See, e.g., Roselux
Serial No. 76255593
8
Chemical Co., Inc., supra at 634 (immaterial that "some of the
so-called 'sudsy' [ammonia] products marketed by opposers were
not in fact sudsy because they contained no detergent").
Applicant also argues that the foreign term "cristal" and
its English translation "crystal" are not "actually equivalent"
terms.7 Applicant contends that the two terms do not look the
same and are not pronounced the same. Applicant points to
statements made by Mr. Mathis and Mr. Alison in their
declarations that CRISTAL is pronounced "in the industry" with
the emphasis on the second syllable which, according to the
declarants, "mak[es] it easier to distinguish between the use of
CRISTAL to designate a source for a line of products."
Whether or not CRISTAL is pronounced the same as "crystal"
does not make this term any less descriptive. First, the
declarations fail to establish that "CRISTAL" would be perceived
by ultimate purchasers, as opposed to industry purchasers, as
anything other than simply the phonetic equivalent of "crystal"
rather than the foreign word for crystal. Further, CRISTAL
sounds at least similar to "crystal" and moreover conveys
precisely the same meaning and commercial impression as
"crystal," regardless of how it is pronounced. In any event,

7 The list of third-party registrations submitted for the first time in
applicant's reply brief is untimely and has not been considered. In
any event, a listing of registrations is insufficient to make them of
record. See In re Duofold, Inc., 184 USPQ 638 (TTAB 1974).
Serial No. 76255593
9
whatever applicant considers the correct pronunciation of its
mark is beside the point. It has been consistently held that
there is no "correct" pronunciation of a trademark. See In re
Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); and
Kabushiki Kaisha Hattori Seiko v. Satellite International Ltd.,
29 USPQ2d 1317. These are clearly equivalent terms with equally
descriptive meanings.
The burden is on applicant to show acquired distinctiveness,
and the more descriptive the term, the heavier that burden.
Yamaha International Corp. v. Hoshino Gakki Co., supra. We find
that CRISTAL is highly descriptive of applicant's goods. Thus,
applicant's burden in this case is substantial.
As we noted earlier, applicant's evidence consists of the
declaration of William S. Davis, Sr., president of Davoil, Inc.,
the general partner of applicant, attesting to substantially
exclusive and continuous use of the mark for 5 years, and the
declarations of Dean Mathis and Denis Alison.
Mr. Mathis is the owner and president of Porter Lighting,
Inc., a "lighting showroom" and a "retail lighting distributor,
with multiple outlet stores." Mr. Mathis has worked in the
industry for over 33 years, and has been the president and owner
of this company for over 19 years.
Mr. Mathis states that his company "provides a wide variety
of decorative lighting products for sale to individual consumers,
Serial No. 76255593
10
interior designers, and homebuilders"; that CRISTAL products have
been available for approximately 8 years; that he has had
extensive first-hand experience with purchasing and sales of
decorative lighting products "at both the retail and wholesale
level"; that he has "sold and discussed" CRISTAL products in his
stores and has seen them widely promoted at national lighting
shows; that based on his experience, the name CRISTAL is widely
recognized "in the industry" as designating a particular line of
lighting products sold by a single source and has achieved
prominence "in the industry;" that when people "in my industry"
refer to CRISTAL, they are referring to this line of products and
not to describe generally lighting fixtures having crystal in
them; and that "customers" recognize use of the name CRISTAL as a
brand name designating the supplier, not as a descriptive term.
Mr. Alison is an independent sales representative in the
lighting industry. He represents several lines of lighting
fixtures including the CRISTAL line, and sells lighting products
to independent lighting store retailers in the North Texas,
Oklahoma, and New Mexico territories. Mr. Alison has worked in
the industry for over 29 years and has sold lighting products in
his present capacity for over 22 years.
Mr. Alison states that CRISTAL products have been available
for approximately 8 years; that he has extensive experience with
lighting fixture products and is aware of most of the different
Serial No. 76255593
11
lighting product lines sold in his territory; that he has "sold
and discussed" CRISTAL products "with many different retailers,"
and has "discussed them with commercial and retail customers on
numerous occasions"; and that the name CRISTAL is not used "in
the industry" to describe generally lighting fixtures having
crystal in them but instead that the name CRISTAL is widely
recognized "in the industry" as designating a particular line of
lighting products sold by a single source.
Considering the highly descriptive nature of this term,
applicant's evidence of eight years use, without evidence which
would help determine the extent of consumer exposure to the mark,
such as sales figures or advertising expenditures relating to the
mark, is not particularly meaningful.
Moreover, the statements in the declarations of Mr. Mathis
and Mr. Alison are, for the most part, directed to industry
perception of the mark. The perceptions of those in the industry
concerning acquired distinctiveness are of little value because
they are not the ultimate purchasers for applicant's products.
See In re Edward Ski Products, Inc., 49 USPQ2d 2001, (TTAB 1999);
In re Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB 1988); and In
re Semel, 189 USPQ 285 (TTAB 1975). The statements by Mr. Mathis
and Mr. Alison regarding consumer, rather than industry,
perception consist essentially of vague assertions that they have
"discussed" crystal products with retail consumers, and
Serial No. 76255593
12
conclusory assertions that "customers" recognize CRISTAL as a
mark. First, it is unclear which "customers" the declarants are
referring to, industry or general consumers, and moreover without
any information as to the extent of the exposure or sale of
applicant's lighting fixtures to the public, such as number of
customers or number of units sold, such conclusory statements
about "customer" perception are of little value. In addition,
Mr. Alison is a sales representative who sells to lighting store
retailers. It is unclear how or to what extent he would even
have any contact with retail consumers.8 We also find that Mr.
Alison's relationship to applicant as a representative for
applicant's products further limits the probative value of his
opinions regarding the average customer's perception of the mark.
See, e.g., In re Paint Products Company, 8 USPQ2d 1863 (TTAB
1988).
Under the circumstances, we find that the evidence as a
whole fails to persuade us that CRISTAL would be perceived by the
purchasing public as a mark for lighting fixtures rather than

8 Applicant also relies on In re Bose Corporation, 216 USPQ 1001 (TTAB
1983), aff'd, 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985). While the
Board in that case found the statement of a retailer as to the
perception of ultimate purchasers to be competent evidence of acquired
distinctiveness, the Board went on to point out that the weight of the
evidence must "of course, be a matter of judgment on the trier of the
facts." In view of the highly descriptive nature of this mark, and for
the reasons stated above, the declarations in this case are not
entitled to much weight.
Serial No. 76255593
13
merely describing a type of lighting fixture or lighting fixtures
in general that have crystal components.
Decision: The refusal to register under Section 2(e)(1) of
the Trademark Act is affirmed.