This Opinion is not a
Precedent of the TTAB
Hearing: September 14, 2016 Mailed: September 21, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Line and Dot LLC
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Serial No. 86170528
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Erik M. Pelton and John Heinbockel of Erik M. Pelton & Associates,
for The Line and Dot LLC.
David I, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Seeherman, Greenbaum and Pologeorgis,
Administrative Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
The Line and Dot LLC (“Applicant”) has appealed from the final refusal of the
Trademark Examining Attorney to register LUMIÈRE, in standard characters, for
“women’s clothing, namely blouses, tops, dresses, pants and sweaters.”1 The
application includes the statement that “[t]he English translation of LUMIERE in
1 Application Serial No. 86170528, filed January 21, 2014, asserting first use and first use
in commerce as of 2010 (which is treated as December 31, 2010). See TMEP §903.06 (April
2016).
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the mark is LIGHT.” Registration was refused pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the mark LUMIERE PLACE, registered in standard characters for the
following goods, that as used in connection with Applicant’s identified goods, it is
likely to cause confusion or mistake or to deceive:
Blouses; coats; foul weather gear; gloves; headwear; jackets; jogging
suits; pants; polo shirts; robes; shirts; shorts; socks; sweat pants; sweat
shirts; sweaters; swimwear; t-shirts; tank tops; vests; wristbands.
The registration includes this translation statement: “The English translation of
‘LUMIERE’ in the mark is ‘LIGHT.’”
We affirm the refusal to register.
Our determination of the issue of likelihood of confusion under Section 2(d) of the
Trademark Act 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, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We turn first to the du Pont factor of “the similarity or dissimilarity and nature of
the goods or services as described in an application or registration or in connection
with which a prior mark is in use.” du Pont, 177 USPQ at 567. Applicant’s identified
blouses, pants and sweaters are legally identical to the blouses, pants and sweaters
identified in the cited registration, while Applicant’s identified “tops” encompass the
identified polo shirts, t-shirts and tank tops. In view of the identity of these goods, we
need not discuss the relatedness of Applicant’s identified dresses to the goods in the
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registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely
to be confusion with respect to any item that comes within the identification of goods).
Moreover, because the goods are legally identical, and there are no restrictions in the
channels of trade, they are deemed to be sold in the same channels of trade. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent
restrictions in the application and registration, legally identical goods and services
are presumed to travel in the same channels of trade to the same class of purchasers).
Applicant does not dispute this; in fact, it does not even address these points in its
brief. These two du Pont factors favor a finding of likelihood of confusion.
This brings us to a consideration of the marks, and in particular, the strength of
the cited registration. Applicant argues that because Registrant’s mark LUMIERE
PLACE contains the French word LUMIERE (the same word that comprises
Applicant’s mark), we should apply the doctrine of foreign equivalents and consider
the strength of the mark by looking at third-party registrations for clothing marks
that contain the English word “LIGHT.” Under the doctrine of foreign equivalents,
foreign words from common languages are translated into English to determine
genericness, descriptiveness, as well as similarity of meaning and connotation in
order to ascertain confusing similarity with English word marks. McCarthy on
Trademarks and Unfair Competition, 4th ed. § 23.36. The rationale of the doctrine of
foreign equivalents is that a foreign, non-English word familiar to an appreciable
segment of American purchasers may be confusingly similar to its English
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equivalent. Id. When the issue is likelihood of confusion, the doctrine is applied when
one party’s (or the Applicant’s) mark is in one language, and another party’s mark (or
the cited mark) is in another language; the concern is that a consumer who speaks
the foreign language and knows of the mark in that language, upon seeing a mark in
English with that same meaning, will assume that this product or service comes from
the same source, and is now being marketed to English-speaking consumers.
Applicant has cited no cases in which the doctrine of foreign equivalents has been
applied in the manner it is seeking to use it, to show that the registration of various
LIGHT marks to third parties should limit the protection to be accorded the mark
LUMIERE PLACE. On the contrary, in In re Seal Prods., LLC, 107 USPQ2d 1580,
1588 (TTAB 2013), the Board found that third-party registrations for the marks
FORCE and FORTE were not considered direct equivalents of FORZA, the term in
the cited marks and also the mark for which registration was sought; the application
translated FORZA as “force.” Nor do we see a good rationale for applying the doctrine
of foreign equivalents to the present situation. Normally the doctrine of foreign
equivalents is used to avoid confusion by consumers who speak or understand both
English and the foreign language. But treating the word LIGHT in third-party
registrations as the equivalent of LUMIERE in order to conclude that consumers
would distinguish between Applicant’s mark LUMIÈRE and Registrant’s mark
LUMIERE PLACE would not take into consideration those consumers who do not
understand the foreign language, and on whom the various LIGHT marks would have
no impact. In any event, although the coexistence on the Register of a large number
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of marks for clothing that contain the element LIGHT might indicate a determination
by examining attorneys that additional words in such marks are sufficient to
distinguish them from each other, here the mark is LUMIERE PLACE and the
applied-for mark is LUMIÈRE, and the more relevant inquiry is whether they are
distinguishable from each other. LUMIERE PLACE is already distinguished from the
third-party LIGHT marks by the fact that LUMIERE has a different appearance and
pronunciation (and, for non-French speakers, a different meaning). There are only
two third-party registrations that contain the word LUMIÈRE, VOYAGE DE
LUMIÈRE (VOYAGE OF LIGHT) (Reg. No. 4289398) and PALAIS LUMIÈRE (Reg.
No. 4479340). The coexistence of just these two marks and the cited registration, all
of which have distinguishing elements, is not sufficient for us to conclude that the
cited mark is entitled to only a limited scope of protection.
We should add that normally third-party registrations are used in the manner of
dictionary definitions, to show that a term has a certain significance within an
industry. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). We
cannot ascertain from the various third-party registrations that LIGHT has a
particular significance for clothing, such that we can conclude that LUMIERE in the
mark LUMIERE PLACE has a suggestive or even descriptive significance. This is
because LIGHT has different meanings in these third-party marks. For example, it
is used as a verb in marks such as LIGHT UP THE HALO (Reg. No. 3951477), LIGHT
UP THE DARKNESS (LUTD) (Reg. No. 4515846), FOG IT LIGHT IT BLOW IT UP
(Reg. No. 3797774) and LIGHT THAT SPARK WITHIN (Reg. No. 3189768), and as a
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reference to God or inner spirit in I AM LIGHT (Reg. 4306343), LET YOUR LIGHT
SHINE and design (Reg. No. 4511353), KINDGOM CONFIDENCE LIVE IN THE
LIGHT and design (Reg. No. 4565445) and LIGHT SOURCE and Cross design (Reg.
No. 4575432). In other marks the word or element LIGHT is part of marks that each
appear to be arbitrary for clothing and different in meaning from each other, e.g.,
DREAMLIGHT (Reg. No. 4275193); HELP LIGHT (Reg. No. 4280877); NEON
LIGHTS (Reg. No. 4429332); BLACKLIGHT (Reg. No. 2837338). LIGHT YEARS
(Reg. No. 3402856); and FRIDAY NIGHT LIGHTS (Reg. 3872272).
In fact, the only mark in which LIGHT has a clearly descriptive meaning for
clothing is in LW LIGHT WEIGHT and design, in which “light weight” has been
disclaimed (Reg. No. 4046764), and it is the addition of the word WEIGHT that makes
the term as a whole descriptive; it does not show that LIGHT, or by extension
LUMIÈRE PLACE, has a descriptive or suggestive significance for clothing.
We now consider “the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression.” du Pont, 177
USPQ at 567. When marks would appear on virtually identical goods, as they do here,
the degree of similarity necessary to support a conclusion of likely confusion declines.
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992). The similarities between the marks are obvious,
Applicant’s mark consists of the first word of the cited mark, and to this extent, the
marks are similar in appearance and pronunciation.2 Moreover, LUMIERE is a
2 We note that Applicant’s mark includes the French grave accent over the first “E” in
LUMIÈRE, and the cited mark does not. We do not regard this as a distinguishing feature
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prominent feature of the cited mark because it is the first word. See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
Applicant argues that the marks have different meanings and commercial
impressions because LUMIERE PLACE indicates a location due to the inclusion of
PLACE, which means, inter alia,; “a specific area or region of the world: a particular
city, country etc.” and “a building or area that is used for a particular purpose.”3 This
same dictionary also defines “place” as, e.g., “physical environment: SPACE; “physical
surroundings: ATMOSPHERE”; “a building or locality used for a special purpose
”; “a particular region, center of population,
or location ”; “a proper or designated niche or setting ”; “an appropriate moment or point ”; and “a distinct condition, position, or state
of mind ”. The
many dictionary definitions for “place” also includes “a public square; PLAZA” and “a
small street or court,” but in view of the different meanings that “place” has, we
cannot conclude that consumers will view LUMIERE PLACE when used as a mark
for clothing as a definite geographic location. Instead, they are just as, or even more,
likely to regard LUMIERE PLACE as an inchoate spot or area, akin to a store, where
(nor does Applicant argue this). The presence or absence of the accent is not likely to be
noticed by consumers, or if it were, it would not be viewed as having source-indicating
significance.
3 Merriam-Webster, m-w.com, August 13, 2014 response, p. 13-14.
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clothes are sold. As a result, upon encountering the mark LUMIÈRE for the identical
goods sold under the mark LUMIERE PLACE, they are likely to believe that these
goods come from the same source, and view LUMIÈRE as merely a shortened form of
the LUMIERE PLACE mark.
It must also be remembered that the goods are general consumer items, and that,
as identified, they may include inexpensive items that may be purchased without a
great deal of thought. Consumers who are aware of LUMIERE PLACE clothing, upon
seeing LUMIÈRE for the identical piece of clothing, are not likely to go through an
extended analysis and then conclude that the absence of the word PLACE in the
LUMIÈRE mark indicates a different source for the goods. They are more likely to
assume, as stated above, that the similar marks LUMIÈRE and LUMIERE PLACE
indicate a single source for the clothing.
We are not persuaded by Applicant’s arguments that because LUMIERE PLACE
is the name of a casino and hotel in St. Louis,4 consumers would associate the mark
as used for clothing with the physical location of that establishment, and that the
mark’s primary function is as an identifier of source for those hotel and casino
services. In an analogous situation, in Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937 (Fed. Cir. 1983), the opposer relied, in part, on its registration of the mark
SQUIRT for balloons. The Board discounted the significance of the use of SQUIRT on
these goods, characterizing the use as merely of promotional value. However, the
4 Applicant submitted evidence from LumierePlace.com and Wikipedia regarding this casino
and hotel. Response filed August 13, 2014, pp. 18-23.
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Federal Circuit found that the Board erred because the opposer’s registration had no
limitation that restricted the usage of SQUIRT to balloons to promote soft drinks,
and by treating the balloons as being promotional items, the Board “improperly read
limitations into the registration.” Id. at 940. “There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of
SQUIRT for balloons to promotion of soft drinks.” Id. In the present case, we will not
read a restriction into the Registrant’s goods, and limit the registration by treating
the mark solely as indicating a secondary source. Rather, we must consider the
Registrant’s goods to be sold throughout the United States in all trade channels in
which such clothing may be sold, and its customers—the public at large—may include
people who have never heard of the hotel and casino in St. Louis. See In re Big Pig
Inc., 81 USPQ2d 1436, 1438 (TTAB 2006) (because identification in application does
not limit the sale of applicant’s clothing items to applicant’s restaurants and the
identification in the cited registration does not limit the sale of registrant’s clothing
items to skateboarding venues and sporting goods stores, the goods must be assumed
to travel through all normal trade channels for clothing to all usual classes of
purchasers). Echoing what the court said in Squirtco, the issue presented here is a
simple one: is Applicant’s use of LUMIÈRE for sweaters, blouses, pants and tops
likely to cause confusion with the Registrant’s LUMIERE PLACE mark for sweaters,
blouses, pants and tank tops, t-shirts and shirts. For the reasons discussed above, the
answer is yes.
Decision: The refusal to register Applicant’s mark LUMIÈRE is affirmed.
