SpeedTech Lights Inc.

Trademark Trial and Appeal Board

Apr 14, 2015

No. 86289240 (T.T.A.B. Apr. 14, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SpeedTech Lights Inc.
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Serial No. 86289240
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Houda El-Jarrah of Law Office of Houda El-Jarrah,
for SpeedTech Lights Inc.
Benji Paradewelai, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Quinn, Zervas and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
SpeedTech Lights Inc. (“Applicant”) seeks registration on the Principal Register
of the mark PRIME (in standard characters) for
Light bars for vehicles, namely, emergency and public
works vehicles; lights for vehicles in International Class
11.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 86289240 was filed on May 22, 2014, based upon Applicant’s claim
of first use anywhere since at least as early as January 25, 2010 and use in commerce since
at least as early as October 26, 2010.
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Applicant’s mark so resembles the registered mark PRIME (in typed form)2 for
“trouble lights, work lights, and outdoor light strings,”3 as to be likely to cause
confusion.
When the refusal was made final, Applicant appealed. We affirm the refusal to
register.
I Evidentiary Matter.
Applicant attached documents labeled Exhibits A and B to its brief. The
documents labeled Exhibit A were originally affixed to Applicant’s Response dated
July 25, 2015. It is unnecessary to re-submit evidence that is already of record,
however, since the evidence is of record, it will be considered. See TBMP §
1203.02(e) (2014). With respect to Exhibit B, which consists of other pages from the
SpeedTech Lights website, the webpages were first submitted with Applicant’s main
brief. Evidence submitted after the filing of an appeal is untimely and will not
ordinarily be considered by the Board. Trademark Rule 2.142(d); 37 CFR § 2.142(d).
Because of the untimely submission, this document will not be considered.
Applicant also referenced links to other webpages from the SpeedTech Lights
website in both its response and its brief. While evidence downloaded from the
Internet may be admissible if complete information as to the source or context of the

2 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended
to replace the term “typed” drawing with “standard character” drawing. Applicants
who seek to register a mark without any claim as to the manner of display must
submit a standard character drawing that complies with the requirements of
37 C.F.R. §2.52(a).
3 In addition to these goods in International Class 11, the cited registration covers
goods in International Class 9. These goods are not relevant to this proceeding.
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evidence is provided, and is done so in a timely manner, merely providing a link to
an internet site cannot guarantee its authenticity because the nature of a website is
dynamic, not static. Cf. In re Future Ads LLC, 103 USPQ2d 1571, 1572 n.3 (TTAB
2012) (“the Board will not utilize a link or reference to a website's internet address
to access the site to consider whatever content may appear therein.”); In re HSB
Solomon Associates, LLC, 102 USPQ2d 1269, 1274 (TTAB 2012). As such, the
referenced information will not be considered.
II Discussion
Our determination of the issue 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). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
A. Similarity or Dissimilarity of Marks.
We start our analysis with the first du Pont factor, the similarity of the marks.
In comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve
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Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Here, the marks are identical in appearance, sound, connotation and commercial
impression and therefore, the first du Pont factor strongly favors a finding of
likelihood of confusion.
B. Similarity or dissimilarity of the goods.
With this in mind, we look next at the second du Pont factor, the similarity of
the goods. When determining the relationship of the goods,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods as they are identified
in the involved application and cited registration, rather
than on what any evidence may show as to the actual
nature of the goods, their channels of trade and/or classes
of purchasers.
In re Total Quality Group Inc., 51 USPQ 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 - 1162 (Fed. Cir. 2014). The goods set forth in the application are “light bars
for vehicles, namely, emergency and public works vehicles; lights for vehicles,” and
the goods set forth in the cited registration are “trouble lights, work lights, and
outdoor light strings.” The question is whether these goods, as identified, are
related.
Further,
[t]he greater the degree of similarity in the marks, the
lesser the degree of similarity that is required of the
products or services on which they are being used in order
to support a holding of likelihood of confusion. In re
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Concordia International Forwarding Corp., 222 USPQ
352, 356 (TTAB 1983). Where, as in this case, applicant's
mark is identical to opposer's L'OREAL PARIS mark,
there need only be a viable relationship between the goods
to find that there is a likelihood of confusion. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993) (contemporaneous use of identical or nearly
identical marks can lead to the assumption that there is a
common source “even when [the] goods or services are not
competitive or intrinsically related”); and In re Thor Tech
Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). The issue here,
of course, is not whether purchasers would confuse the
parties’ goods, but rather whether there is a likelihood of
confusion as to the source of the goods. In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
L'Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012). In this case, since
the marks are identical, there need only be a viable relationship between the goods
to find that there is a likelihood of confusion.
Evidence submitted by the Examining Attorney establishes that the goods are
the type that emanate from the same source. See, for example, webpages from the
following companies that offer both light bars and work lights under the same
marks:
• Hanma Co. Ltd. – (www.hanma-auto.com);
• Sirennet, - (www.sirennent.com);4 and
• Grote – (www.grote.com).
Office Action dated August 14, 2014.
Applicant argues that its light bars are attached to vehicles, while Registrant’s
trouble lights, work lights, and outdoor light strings are not attached to vehicles.

4 This website offers different brands of products. Among the brands offered is SoundOff,
under which both light bars and work lights are sold.
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This argument is irrelevant, because we may consider a commercial relationship
between the goods, and not just uses of the goods. In addition, Applicant’s
identification of goods includes “lights for vehicles” and Registrant’s identification of
goods includes work lights, and work lights can be affixed to vehicles for the
purposed of providing additional lighting:

Product description – “The 51W Spot/Flood LED work
lights are made to withstand the elements of nature while
brightening up the terrain ahead and/or around your
automobile. Compatible with 9-32 volts of DC power
source, the 51W LED utility light draws a very low
amount of amperage, and is perfect for off road vehicles,
bikes and motorcycles, to be used as a marine boat lights
[sic], mounted on 4X4 and SXS, UTV, agriculture
purposes, for anyone who is looking for intense lighting on
demand.
Office Action dated August 14, 2014.
Based on the evidence of record, we find that lights for vehicles and work lights
for vehicles are commercially related based on the website evidence in the record.
Accordingly, the second du Pont factor favors a finding of likelihood of confusion.
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C. Channels of Trade.
Applicant argues that the channels of trade in which the goods travel are
different since “Applicant sells directly to its consumers from its online retail store
or through carefully selected dealers.” Appeal Brief, p. 14, 4 TTABVUE 15.
Applicant’s arguments are not persuasive inasmuch as we must make our
determination based on the goods as identified. See In re Bercut-Vandervoort & Co.,
229 USPQ 763, 764 (TTAB 1986). Moreover, “where the goods in a cited registration
are broadly described and there are no limitations in the identification of goods as
to their nature, type, channels of trade or classes of purchasers, it is presumed that
the scope of the registration encompasses all goods of the nature and type described,
that the identified goods move in all channels of trade that would be normal for
such goods, and that the goods would be purchased by all potential customers.” In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
The Examining Attorney has established that work lights and lights for vehicles
are related products that may be sold by the same parties on their websites. As
such, we find that Applicant’s and Registrant’s goods may travel in the same
channels of trade.
Accordingly, the third du Pont factor favors a finding of likelihood of confusion.
D. Sophistication of Customers
Applicant contends that its light bars for emergency vehicles are expensive
products that are sold to careful, sophisticated purchasers and that Registrant’s
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goods, including the utility work lights are inexpensive products.5 Applicant has
submitted no admissible evidence of the cost of these products. Documentation
introduced by the Examining Attorney reflects prices for light bars for the public
safety service profession ranging from a low of $209.99 (LED Mini Light bars &
Light Bars)6 to a high of $3705.50.7 Prices for light bars for off-road vehicles ranged
from a low of $29.99 to a high of $84.99.8 The webpages did not indicate whether the
light bars for off-road vehicles are also used in the safety service profession.
The Examining Attorney’s evidence also included prices for work lights for
vehicles, $69.99,9 as well as for grille deck headlights, $42.99 - $57.99 and
windshield dash lights, $54.99.10 The prices for these lights (both work lights and
lights for vehicles) are similar. There is no evidence regarding the sophistication of
the purchasers.
However, even assuming arguendo that the purchasers are sophisticated and
that they may exercise care in purchasing the products, such facts do not preclude a
finding of likelihood of confusion. The fact that “the relevant class of purchasers
may exercise care does not necessarily impose on that class the responsibility of

5 Applicant makes no reference to the type of purchaser of Registrant’s products.
6 Exhibit to Office Action dated August 14, 2014 consisting of webpages from Online LED
Store (www.online-ledstore.com/mini-lightbar-lights/11863.htm).
7 Exhibit to Office Action dated August 14, 2014 consisting of webpages from Sirennet
(www.sirennet.com/exterior_lightbars.html).
8 Exhibit to Office Action dated August 14, 2014 consisting of webpages from Online LED
Store (www.online-led-store.com/off-road-atv-jeep-light-bar-p/orzledwk10511.htm).
9 Id.
10 Exhibit to Office Action dated August 14, 2014 consisting of webpages from Online LED
Store (www.online-ledstore.com/emergency-vehicl-varning-s/1842.htm).
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distinguishing between similar marks for similar services. Human memories even
of discriminating purchasers are not infallible.” In re Research and Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (internal citation omitted).
Accordingly, the fourth du Pont factor, while not favoring a finding of likelihood
of confusion, is neutral.
E. Actual Confusion
Finally, Applicant’s argument that there have been no known instances of
actual confusion is not persuasive. The contemporaneous use of Applicant’s and
Registrant’s marks for a period of almost four years without actual confusion is
entitled to little weight, particularly in an ex parte context, where there is no
opportunity for registrant to indicate whether registrant has experienced instances
of actual confusion and because there is no indication that registrant’s and
Applicant’s goods have been offered in the same geographic areas. See Majestic
Distilling Co., Inc., 65 USPQ2d at 1205 (“uncorroborated statements of no known
instances of actual confusion are of little evidentiary value”); Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
Accordingly, the seventh du Pont factor is neutral.
III . Conclusion.
Having considered all the evidence and arguments on the relevant du Pont
factors, whether discussed herein or not, we find that Applicant’s mark PRIME (in
standard characters) for “light bars for vehicles, namely, emergency and public
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works vehicles; lights for vehicles,” is likely to cause confusion with Registrant’s
identical mark PRIME (in typed form) for “trouble lights, work lights, and outdoor
light strings.”
Decision: The refusal to register Applicant’s mark PRIME is affirmed.