Skylight Communications

Trademark Trial and Appeal Board

Dec 18, 2014

No. 85825266 (T.T.A.B. Dec. 18, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Skylight Communications
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Serial No. 85825266
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Rajeev Madnawat of Madnawat Law Office
for Skylight Communications.
Janet Lee, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Bucher, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Skylight Communications (“Applicant”) seeks registration on the Principal
Register of the mark Skylite Communications (in standard characters) for
Telecommunications and entertainment products,
namely, coaxial cables and set-top boxes, in International
Class 9.1
Applicant disclaimed the exclusive right to use the word “Communications.”

1 Application Serial No. 85825266 was filed on January 17, 2013, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as July 10, 1994.
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered marks SKYLIGHT,2 in
standard character form, and SKYLIGHT ACCESS,3 in standard character form,
owned by the same entity, both for the services set forth below, as to be likely to
cause confusion:
Providing a high speed access to area networks and
remote Internet access and electronic mail services to
healthcare facilities; cable television and television
broadcasting in healthcare facilities; providing interactive
communications services, namely, electronic mail services
and electronic bulletin boards featuring healthcare
facility information related to patients’ disease status,
patient-specific daily schedules, and dietary menu
services, in Class 38.

Our determination under Section 2(d) is based on an analysis of all of the
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., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. 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

2 Registration No. 3314896, issued September 16, 2007; Sections 8 and 15 affidavits
accepted and acknowledged.
3 Registration No. 3403697, issued March 25, 2008; Sections 8 and 15 affidavits accepted
and acknowledged. Registrant disclaimed the exclusive right to use the word “Access.”
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characteristics of the goods and differences in the marks”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
We confine our analysis to the issue of likelihood of confusion between
Applicant's mark and SKYLIGHT because SKYLIGHT ACCESS contains an
additional point of difference with Applicant's mark. That is, if confusion is likely
between SKYLIGHT and Skylite Communications, there is no need for us to
consider the likelihood of confusion with SKYLIGHT ACCESS and if there is no
likelihood of confusion between Skylite Communications and SKLIGHT, then
there would be no likelihood of confusion between Skylite Communications and
SKYLIGHT ACCESS. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010).
A. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. In a particular case, “finding of similarity as to any one factor (sight,
sound or meaning) alone ‘may be sufficient to support a holding that the marks are
confusingly similar.’” In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)
(citations omitted). See also In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1987). In comparing the marks, we are mindful that “[t]he proper test is not a side-
by-side comparison of the marks, but instead ‘whether the marks are sufficiently
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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, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted). See also San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972
F.2d 1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific impression of the
marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this
appeal Registrant renders its services to healthcare facilities while Applicant’s
goods are unrestricted and may be sold to all consumers, including healthcare
facilities.
Applicant’s mark is Skylite Communications. The dominant element of
Applicant’s mark is the term “Skylite” because the word “Communications” is
descriptive of communications equipment such as coaxial cable and set-top boxes
and has been disclaimed. There is nothing improper in 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 a consideration of the marks in their
entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). It is well-settled that disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See Cunningham v. Laser
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Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re
Nat’l Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has
noted that the descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc.,
60 USPQ2d 1699, 1702 (TTAB 2001).
The significance of the term “Skylite” as the dominant element of Applicant’s
mark is reinforced by its location as the first part of the mark. See Presto Prods. Inc.
v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”). See also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the
first word in the mark and the first word to appear on the label); Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992) (upon encountering the marks, consumers will first notice the identical
lead word).
“SKYLIGHT” and “Skylite” are phonetic equivalents. The terms are also visually
similar. The only point of difference is the misspelling of “light” in Applicant’s mark.
“SKYLIGHT” and “Skylite” have the same meaning (i.e., “a window in a roof or
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ceiling”)4 and they engender the same commercial impression (i.e., a portico for
admitting information).
In view of the foregoing, we find that Applicant’s mark Skylite
Communications is similar to Registrant’s mark SKYLIGHT in terms of
appearance, sound, connotation and commercial impression.
B. The similarity or dissimilarity and nature of the goods.
Applicant is seeking to register its mark for coaxial cable and set-top boxes. The
mark in the cited registration is registered for the services set forth below:
Providing a high speed access to area networks and
remote Internet access and electronic mail services to
healthcare facilities; cable television and television
broadcasting in healthcare facilities; providing interactive
communications services, namely, electronic mail services
and electronic bulletin boards featuring healthcare
facility information related to patients' disease status,
patient-specific daily schedules, and dietary menu
services.

The Trademark Examining Attorney submitted copies of five use-based, third
party registrations comprising both set-top boxes and cable television services,
television broadcasting services, or providing Internet access.5 Third-party
registrations which individually cover a number of different goods and services that
are based on use in commerce may have some probative value to the extent that
they serve to suggest that the listed goods and services are of a type which may
emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,

4 MACMILLAN DICTIONARY (macmillandictionary.com) attached to the April 1, 2013 Office
action.
5 September 4, 2013 Office action.
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1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988).6 The registrations are listed below:
Mark Reg. No. Goods and Services
SHAW 2768388 Integrated television set top receivers/decoders;
providing cable transmission and broadcast of radio
and television programming

2715585 Set-top boxes; satellite television broadcasting
services, broadcasting programs via a global
computer network, providing and processing
interactive access to information via an electronic
communication network, delivery of messages by
electronic transmission
ONLIVE 3617483 Cable TV set-top boxes; television broadcasting,
namely, television transmission via global computer
networks; streaming of audio and video material
over wireless computer networks

4199260 Set-top boxes; transmission of video, audio and data
programming and other video, audio and data
services, namely, radio and video broadcasting
services; radio and video broadcasting services
IRDETO 4382163 Set-top boxes; television broadcasting, satellite
television and radio broadcasting, internet
broadcasting, broadband Internet broadcasting
Telfaz 4367465 Set-top boxes; audio and video broadcasting over the
Internet; broadcasting of radio and television
programs, Internet protocol television services

The Trademark Examining Attorney also introduced excerpts from the XFINITY
COMCAST (xfinitytv.comcast.net), DIRECTV (directv.com), DISH (affiliate.
zap2it.com and dish.com), and VERIZON (entertainment.verizon.com and
verizon.com) websites displaying the marks XFINITY, DIRECTV, DISH and
VERIZON on set-top boxes and in connection with television broadcasting services

6 We did not include the entire description of goods and services for each registration. We
have listed only the goods and services relevant to this appeal.
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to show that Applicant’s goods and Registrant’s services may emanate from a single
source.7
Under this du Pont factor, the Trademark Examining Attorney need not prove,
and we need not find, similarity as to each and every product listed in the Class 9
goods and each and every activity listed in the Class 38 services. It is sufficient for a
refusal based on likelihood of confusion that relatedness is established for any item
and/or activity encompassed by the description of goods or services in the
application and registration. 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).
Applicant argues that the goods and services are not similar or related because
(i) Registrant provides services cable television and television broadcasting services
to hospitals and Applicant sells goods, and (ii) Registrant’s services and Applicant’s
goods do not compete.8
Applicant’s goods and Registrant’s services need not be similar or competitive, or
even move in the same channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective goods and services are related in some
manner, and/or that the conditions and activities surrounding the marketing of the
goods and services are such that they would or could be encountered by the same
persons under circumstances that could, because of the similarity of the marks, give
rise to the mistaken belief that they originate from the same producer. See On-Line

7 September 4, 2013 Office Action.
8 Applicant’s Brief, pp. 3 – 4.
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Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed.
Cir. 2000); Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1492
(TTAB 2007); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
As shown by the Internet evidence submitted by the Trademark Examining
Attorney, set-top boxes are used in connection cable and satellite television
broadcasting services. Under these circumstances, the Board has found that goods,
and services involving those goods, are related. See Corinthian Broad. Corp. v.
Nippon Elec. Co., Ltd., 219 USPQ 733 (TTAB 1983) (holding TVS for transmitters
and receivers of still television pictures and TVS for television broadcasting services
likely to cause confusion). See also In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S (stylized) for retail grocery and
general merchandise store services and BIGGS and design for furniture likely to
cause confusion); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961)
(holding SEILER’s for catering services and SEILER’S for smoked and cured meats
likely to cause confusion); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB
1986) (holding mark consisting of a design featuring silhouettes of a man and
woman used in connection with distributorship services in the field of health and
beauty aids and mark consisting of a design featuring silhouettes of a man and
woman used in connection with skin cream likely to cause confusion); In re U.S.
Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for
retail women’s clothing store services and CREST CAREER IMAGES (stylized) for
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uniforms likely to cause confusion); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433
(TTAB 1983) (holding STEELCARE INC. and design for refinishing of furniture,
office furniture, and machinery and STEELCASE for office furniture and
accessories, likely to cause confusion).
The relatedness of the goods and services in a proceeding such as this must be
determined on the basis of a comparison of the goods and services set forth in
Applicant's application vis-a-vis the services recited in the cited registration. See
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); Paula Payne Products Co. v. Johnson Publishing Co., Inc.,
473 F.,2d 901, 177 USPQ 76, 77 (CCPA 1973). In this regard, Applicant's goods are
broadly defined as “coaxial cables and set-top boxes.” This recitation of goods is
broad enough to be used in connection with cable television and television
broadcasting services in healthcare facilities.
In view of the foregoing, we find that Applicant’s goods are related to
Registrant’s services.
C. The established, likely-to-continue channels of trade.
Because there are no limitations as to channels of trade or classes of purchasers
in Applicant’s description of goods, it is presumed that Applicant’s goods move in all
channels of trade normal for those goods, and that they are available to all classes
of purchasers for those goods. See Paula Payne Products Co. v. Johnson Publishing
Co., 177 USPQ at 77; Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139
(CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Thus,
Applicant’s coaxial cable and set-top boxes may be sold to healthcare facilities for
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use in connection with the cable and television broadcasting services in their
facilities. Accordingly, they may be offered alongside the services in the cited
registration.
D. The conditions under which and buyers to whom sales are made,
i.e.“impulse” vs. careful, sophisticated purchasing.
Applicant argues that customers for Registrant’s cable and television
broadcasting services in healthcare facilities and Applicant’s coaxial cable and set-
top boxes will exercise a high degree of care.9 However, we have only Applicant’s
counsel’s statements as to the degree of care that customers will exercise and how
Applicant’s and Registrant’s customers view the role of the marks in making their
purchasing decisions. We have no foundational information about counsel's
investigation of, or understanding of, Applicant's business or Registrant’s business,
that would put him in a position to make statements regarding the thought process
of customers, which in this case is central to Applicant’s contention that consumers
exercise such a high degree of care that the likelihood of confusion will be
minimized. See In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014). Cf.
In re DeBaun, 687 F.2d 459, 214 USPQ 933, 934 & n.4 (CCPA 1982) (“we need not
evaluate the weight to be given to the attorney's declaration with respect to
statements more appropriately made by appellant”); In re Simulations Publications,
Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (where appellant argued that
the magazines at issue deal with unrelated subject matter, the court held that
“[s]tatements in a brief cannot take the place of evidence.”); In re Scarbrough, 500

9 Applicant’s Brief, p. 4.
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F.2d 560, 182 USPQ 298, 302 (CCPA 1974) (where patent claims were rejected for
the insufficiency of disclosure under Section 112, the response of appellant was
argument in lieu of evidence leading the court to hold that “argument of counsel
cannot take the place of evidence lacking in the record.”).
In view of the foregoing, we find that this du Pont factor to be neutral.
E. Balancing the factors.
Because the marks are similar, the goods and services are related and may move
in the same channels of trade, we find that Applicant’s mark Skylite
Communications for “telecommunications and entertainment products, namely,
coaxial cables and set-top boxes” is likely to cause confusion with the registered
mark SKYLIGHT for “providing a high speed access to area networks and remote
Internet access and electronic mail services to healthcare facilities; cable television
and television broadcasting in healthcare facilities; providing interactive
communications services, namely, electronic mail services and electronic bulletin
boards featuring healthcare facility information related to patients’ disease status,
patient-specific daily schedules, and dietary menu services.”
Decision: The refusal to register Applicant’s mark is affirmed.