Excellence Optoelectronics Inc.

Trademark Trial and Appeal Board

Jun 16, 2014

No. 85618362 (T.T.A.B. Jun. 16, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Excellence Optoelectronics Inc.
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Serial No. 85618362
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Morton J. Rosenberg of Rosenberg, Klein & Lee for Excellence Optoelectronics Inc.

Gina Hayes, Trademark Examining Attorney, Law Office 103 (Michael Hamilton,
Managing Attorney).
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Before Lykos, Adlin, and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Excellence Optoelectronics Inc. (“Applicant”) seeks registration of the
trademark shown below:1

Color is not claimed as a feature of the mark. The application contains the
following description of the mark:

1 Application Serial No. 85618362, filed May 7, 2012 based upon Applicant’s bona fide
intention to use the mark in commerce, Trademark Act § 1(b), 15 U.S.C. § 1051(b).
Serial No. 85618362
2

“The mark consists of the letters “e-lite star” having a star
like design over the “i” between a broken arcuate contour
extending over the letters “e-lite star.”
The following goods are identified in the application:
miniature night lights; vehicle turning signal indicator
light bulbs; ceiling lights; projector lamps; car head lights;
car brake light bulbs; downlights, namely, decoration
lights; illuminating lamps for street lighting and exterior
home area lighting; floor lamps; decorative lamps; electric
lamps; spot lights; theatrical and film stage lighting
apparatus; wall lamps; lighted party-themed decorations;
electric light decorative strings; light bulbs; fluorescent
lighting tubes; neon lights; neon lamps; desk lamps, in
International Class 11.
The Examining Attorney refused registration of the mark under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark,
when used in connection with Applicant’s goods, so resembles the two registered
marks shown below as to be likely to cause confusion or to cause mistake or to
deceive. The cited marks are registered to different owners for the goods set forth
next to them:
E-LITE electroluminescent lamps and panels, in
International Class 11.2
Electrical lighting lamps, namely, portable
headlamps for use in cold, hot or hazardous
environmental conditions; flashlights, in
International Class 11.3

2 Reg. No. 2760712, issued September 9, 2003; Section 8 affidavit accepted; Section 15
affidavit acknowledged; renewed. The mark is registered in typed form.
3 Reg. No. 3401908, issued March 25, 2008; Section 8 affidavit accepted; Section 15 affidavit
acknowledged. Color is not claimed as a feature of the mark.
Serial No. 85618362
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The Examining Attorney made her refusal final and this appeal ensued. Applicant
and the Examining Attorney have filed briefs.
Our determination under 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 as 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 Company, 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 goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case,
Applicant and the Examining Attorney have also submitted evidence and
arguments relating to trade channels, the relevant customers, and the extent of
third-party use of the common element of the marks at issue.
1. The marks.
We turn first to the similarity or dissimilarity of the marks at issue as to
appearance, sound, connotation and commercial impression. du Pont, 177 USPQ at
567. As Applicant correctly urges, we must consider each mark in its entirety.
However, 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 that our
ultimate conclusion rests upon a comparison of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 85618362
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We will first compare Applicant’s mark to the typed mark E-LITE in Reg. No.
2760712. Applicant’s mark incorporates the entirety of the cited mark, although it
appears in Applicant’s mark in stylized lettering. Likelihood of confusion has
frequently been found where the entirety of one mark is incorporated within
another. See The Wella Corp, v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977); Johnson Publishing Co. v. International Development
Ltd., 221 USPQ 155, 156 (TTAB 1982).
In comparing these two marks we bear in mind that displays of the cited
mark E-LITE would not be limited to any particular font, size, style, color, or other
graphic presentation. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed.
Cir. 2010); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983). We therefore must consider that Registrant’s mark might be displayed, like
Applicant’s mark, in lower-case letters with an italicized letter E. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012); Citigroup Inc. v.
Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.
2011).
As the literal element E-LITE in Applicant’s mark is identical to the cited
registered mark E-LITE, it would be pronounced the same in both marks and would
have the same connotation. Moreover, as the first part of Applicant’s mark, the
term E-LITE is most likely to be remembered. See Presto Products Inc. v. Nice-Pak
Products, 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
Serial No. 85618362
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remembered”). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992).
It is clear that the additional term STAR in Applicant’s mark creates a visual
and phonetic impression that is absent from the registered mark and, as Applicant
points out, “conjures images … of celestial bodies,” an impression that is reinforced
by the “star” design over the letter I.4 However, in terms of meaning, the word
STAR does not combine with the term E-LITE in such a way as to alter the meaning
or suggestiveness of E-LITE, so that E-LITE, as it appears in Applicant’s mark,
retains its similarity to the meaning or suggestiveness of the cited mark.
We give due consideration to the design elements of Applicant’s mark.
However, we do not agree with Applicant’s contention that the design is the
dominant portion of its mark. In the case of marks consisting of words and a
design, the words are normally given greater weight because they would be used by
consumers to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554
(TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560,
4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Moreover, Applicant’s design is
not highly distinctive.

4 Applicant’s brief at 10.
Serial No. 85618362
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Considering all of the foregoing, we find, with respect to the refusal based on
Reg. No. 2760712, that the du Pont factor of the similarity or dissimilarity of the
marks favors a finding of likelihood of confusion.
We next compare Applicant’s mark to the cited mark in Reg. No. 3401908
(both shown below):

Although both marks are presented in stylized form, we note substantial
similarities between them. Each mark begins with a lower-case letter E, and the
lettering styles of both marks are highly conventional rather than distinctive. We
note that in the cited mark, the term LITE is rendered in upper case letters, while
all of the lettering of Applicant’s mark is in lower case. However, this difference is
not likely to make a strong impression on the average customer and is irrelevant to
the mark’s sound and meaning. The appropriate test is not whether the marks can
be distinguished when subjected to a side-by-side comparison. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1,
3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (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 Industries, Inc. v. Oliver &
Serial No. 85618362
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Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
We note the difference between the hyphen in Applicant’s mark and the plus
sign in the cited mark. However, it is unlikely that customers will rely upon this
difference to distinguish the two marks. As we have discussed above, it is likely
that the literal elements E-LITE and E+LITE would be pronounced the same in
both marks and would have the same connotation. As with our analysis relating to
the other cited mark, we duly note the design elements in Applicant’s mark. We
also note the additional word STAR and, for the same reasons stated above, we find
that it does not alter the meaning or suggestiveness of the term E-LITE.
Overall, we find that the similarities between Applicant’s mark and the cited
stylized mark outweigh the differences. Accordingly, with respect to the refusal
based on Reg. No. 3401908, the factor of the similarity or dissimilarity of the marks
favors a finding of likelihood of confusion.
2. The goods.
We consider next the similarity or dissimilarity of the goods at issue. The
goods identified in cited Reg. No. 2760712 are “electroluminescent lamps and
panels.” The Examining Attorney has made of record a definition of “lamp” and
requests that we take judicial notice of a definition of “electroluminescent.” We will
consider those definitions and several others, as follows:5

5 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 85618362
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Lamp:
A device that generates light, heat, or therapeutic
radiation.6
Lamp:
1 a a light-giving device : as (1) : a device with an oil
reservoir and wick that gives light as it burns (2) : a glass
bulb enclosing a filament that glows because of its
resistance to electric current (3) : any of various other
devices that produce artificial light….7
Electroluminescent:
emitting light by a phosphor when activated by an
alternating field or by a gas when activated by an electric
discharge. 8
Electroluminescence:
luminescence resulting from a high-frequency discharge
through a gas or from application of an alternating
current to a layer of phosphor.9
Phosphor:
also phos·phore … : any of various phosphorescent or
fluorescent materials … that may occur as minerals …
but are now usu. produced synthetically and are used
chiefly in fluorescent lamps, in cathode-ray tubes (as for
television and radar), in instruments for detecting various
radiations, and in luminous paints and inks.10
These definitions make clear that the Registrant’s “electroluminescent
lamps” are electrical in nature; accordingly, they are included within the scope of

6 Definition from Yahoo! Education, Office action of November 21, 2012 at 28-29.
7 1267 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993).
8 Definition from , filed with the Examining Attorney’s brief.
9 732 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993).
10 Id. at 1701.
Serial No. 85618362
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the “electric lamps” identified among Applicant’s goods. It is also clear that they
are included within the scope of Applicant’s “ceiling lights,” because “fluorescent
lamps”11 are a common type of ceiling light and are also a type of electroluminescent
lamp. Finally, it is clear that Applicant’s “fluorescent lighting tubes” are included
within the scope of Registrant’s “electroluminescent lamps.” Accordingly,
Applicant’s identified goods are, in part, identical to the goods covered by the cited
registration.
Applicant claims that electroluminescent lamps are “intended for decorative
purposes.”12 However, this limitation is not set forth in the identification of goods
in the cited registration, and it is not supported by the dictionary definitions of the
words “electroluminescent” and “lamp.” Nor has Applicant submitted any evidence
to prove this contention.
Turning to cited Reg. No. 3401908, we see that the goods identified in that
registration are “Electrical lighting lamps, namely, portable headlamps for use in
cold, hot or hazardous environmental conditions; flashlights.” These goods are
included within the scope of Applicant’s broadly defined “electric lamps.”
Applicant’s identified goods are, therefore, identical in part to the goods covered by
this cited registration.
Accordingly, with respect to both cited registrations, the du Pont factor of the
similarity or dissimilarity of the goods favors a finding of likelihood of confusion.

11 See id., definition of “phosphor.”
12 Applicant’s brief at 13.
Serial No. 85618362
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3. Trade channels; customers.
Applicant states that its own goods “would be purchased most commonly [b]y
casual consumers for day-to-day lighting needs,” but that, by contrast, the
customers for Registrants’ goods “would not be casual shoppers.”13 Applicant
contends that purchasers of “decorative” lighting would be “well-versed in the
particular design lighting… they were in search of.” Applicant argues further that
“portable headlamps” and flashlights are “emergency lighting”; that they would
generally be sold in sporting goods stores or stores featuring “adventure-based or
outdoor products”; and that they would be purchased by persons “well-versed” in
emergency lighting.14
We are not persuaded by these distinctions. Because Applicant’s goods are,
in part, legally identical to those of the cited Registrants, we must presume that the
goods move in the same channels of trade and are offered to the same classes of
consumers. See In re Viterra Inc., 101 USPQ2d at 1908; American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Moreover, flashlights and “electroluminescent lamps” such as fluorescent lights are
common consumer items that would be marketed through non-specialized stores
that offer lighting, such as hardware, “big box” and other stores, to “casual
consumers.” Applicant’s broadly defined “electric lamps” include all kinds of such

13 Id.
14 Id.
Serial No. 85618362
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goods, including headlamps that might be sold in sporting goods stores or stores
offering “adventure-based” products.
Accordingly, with respect to the goods in both cited registrations, we find that
the du Pont factors relating to trade channels and relevant customers favor a
finding of likelihood of confusion.
4. Similar marks in use.
Applicant contends that “the common portions of the marks at issue are
inherently weak” and that this fact reduces the likelihood of confusion:
The letter “E” is commonly used as an abbreviation for
“electronic” and the word “LITE” is a common misspelling
of the word “light.” Thus “E-LITE” is at least highly
suggestive of the goods of the cited Registrations.15
Applicant also argues that “The word ‘E-LITE’ and variations thereof are commonly
used by many other sellers in the marketplace.”16 In support of this contention,
Applicant has made of record copies of U.S. registrations for the following marks
and goods:17
E-LITE Blank recordable compact discs.

MITE-E-LITE LCD projectors.

VEE-LITE Solid-state LED lighting unit comprised of an LED
lighting fixture for indoor and outdoor lighting
applications that retrofits into existing high intensity
discharge luminaries.

15 Id. at 14.
16 Id.
17 Response of October 12, 2012, Exhibits B-D; Response of May 21, 2013, Exhibits E-J.
Serial No. 85618362
12

ELITE CHRISTMAS Electric Christmas tree lights (and other goods).

ELITE ELEGANCE Lighting fixtures, lighting tracks, arc lamps, lighting
tubes, landscape lighting installations (and parts thereof,
among other goods).

ETS ELITE Commercial and residential suntanning lamps, light-
emitting diode lamps, ultraviolet lamps not for medical
purposes, indoor tanning lamps (and components).

ELITE SYSTEMS Custom manufacture of automotive tail lights, grills,
exhaust, air dynamics, wheels, interior, and engine
performance parts.

ELITE (with design) Materials used in the fabrication of neon signs, namely,
electrodes, neon lamp tubing and electrical transformers
(among other goods).

ELITE SERIES Remote control systems and components thereof, namely,
radio controls for… lights (among other goods).

Applicant argues that the above registrations “clearly show the wording ‘E-LITE’ in
use by numerous other parties in the marketplace for goods which are the same or
highly similar to those associated with Applicant’s ‘E-LITE STAR’ & Design mark”;
and that “The concurrent registration of [such] marks … establishes that the U.S.
Patent and Trademark Office recognizes that such terms are entitled to a relatively
narrow scope of protection and that persons who purchase such goods can readily
distinguish between the marks containing such terms without confusion.”18
The relevant du Pont factor is not the existence of other registered marks,
but “[t]he number and nature of similar marks in use on similar goods.” du Pont,
177 USPQ at 567 (emphasis supplied). The fact that a mark is registered does not
establish that the mark is in use or that the public has become familiar with it. See

18 Applicant’s brief at 15.
Serial No. 85618362
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Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations reposing in the U.S.
Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria
La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). Absent evidence of the
extent of actual use of such marks, the probative value of third-party registrations
is minimal. Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407
(C.C.P.A. 1967). There is, in fact, no evidence of record to show that the marks
listed above are in use in the marketplace.
The relevance of these third-party registrations is further undermined by the
fact that there is only one example of a mark that includes the designation E-LITE,
and that registration relates to goods that are very different from the goods at issue
in this case. (We consider the mark MITE-E-LITE to be substantially different from
Registrants’ marks because, in that mark, the E combines with the preceding
letters to create the impression of the word “mighty.”) Most of the registrations that
relate to lighting products cover marks that include the designation ELITE, rather
than E-LITE. These marks differ from the E-LITE marks at issue because they
lack the suggestiveness of “electronic light” that Applicant discusses in its brief at
14. Instead, they clearly convey the meaning of the common laudatory word “elite”
in the sense of superior, choice or select, and customers would perceive this
significance. We recognize that Applicant’s mark, as well as the two registered
marks cited against it, could be perceived to suggest the word “elite”; however,
inasmuch as they are used for lighting products and combine with the concept of
Serial No. 85618362
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“elite” the additional concept of “electronic light,” they are substantially different
from a straightforward presentation of the word “elite.”
Overall, we find that the third-party registrations do not demonstrate that
the cited registered marks are weakened in their source-indicating power by the
presence in the market of other similar marks. Accordingly, the du Pont factor of
the number and nature of similar marks in use on similar goods is neutral.
5. Balancing the factors.
Having considered the arguments and evidence of record, including those not
specifically discussed herein, and all relevant du Pont factors, we find that
Applicant’s mark, as used in connection with Applicant’s goods, so resembles the
cited registered marks as to be likely to cause confusion, mistake or deception as to
the source of Applicant’s goods.
Decision: The refusal to register is affirmed.