Princeton Tectonics, Inc.

Trademark Trial and Appeal Board

Jun 16, 2010

No. 77436425 (T.T.A.B. Jun. 16, 2010)

Mailed:
June 16, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Princeton Tectonics, Inc.
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Serial No. 77436425
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George A. Smith, Jr. of Howson & Howson LLP for Princeton
Tectonics, Inc.

Jennifer M. Hetu, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Princeton Tectonics, Inc. (applicant) has applied to
register the mark EPIC in standard characters on the
Principal Register for goods now identified as “personal
headlamps” in International Class 11. Applicant filed the
application on April 1, 2008, and based the application on
its statement of a bona fide intention to use the mark in
commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
THIS OPINION
IS A PRECEDENT OF THE
T.T.A.B.
Serial No. 77436425
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The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on
the grounds that applicant’s mark is likely to be confused
with the mark in Registration No. 0932375, EPIC in standard
characters, registered on the Principal Register for goods
identified as “electric lighting fixtures” in International
Class 11. The registration issued on June 20, 2006.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We reverse.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods
identified in the application and the cited registration.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
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differences in the essential characteristics of the goods
and differences in the marks.”).
The marks are identical. The Examining Attorney
states, “Applicant alleges that ‘EPIC’ is a weak mark” and
addresses that contention at some length. In fact,
applicant merely makes a passing reference stating that
EPIC is “a relatively weak mark” without offering any
evidence or further argument on the point. Applicant’s
Brief at 10. The simple fact is that the marks are
identical and that we have no basis to find that EPIC is a
weak mark. Accordingly, we conclude that EPIC is a mark of
ordinary strength entitled to all protections accorded to
marks registered on the Principal Register consistent with
Trademark Act Section 7(b), 15 U.S.C. § 1057(b).
In fact, the only du Pont factor at issue in this
appeal is whether or not the goods identified in the
application are related to the goods identified in the
cited registration such that confusion is likely. The
goods of applicant and the registrant need not be identical
to find a likelihood of confusion under Section 2(d). They
need only be related in such a way that the circumstances
surrounding their marketing would result in relevant
purchasers mistakenly believing that the goods originate
from the same source. On-Line Careline Inc. v. America
Serial No. 77436425
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Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
2000).
Furthermore, in comparing the goods and the channels
of trade for those goods we must consider the goods as
identified in the application and registration. See
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”).
There is no real dispute as to the scope of the goods
identified in the application. Applicant explains that its
goods are lights an individual would wear on the head while
bicycling at night, exploring caves or while engaged in
other sports or recreational pursuits. Applicant also
acknowledges that the identification could also cover
lights attached to helmets used in mining and other
industrial activities.
The Examining Attorney argues that personal headlamps
and electric lighting fixtures are related because the
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primary purpose of both types of goods is “… to emit and to
provide light.” Examining Attorney’s Brief at 8. The
Examining Attorney argues further, “… registrant’s fixtures
are broad enough to encompass applicant’s goods. ‘Lighting
fixtures’ is (sic) defined as ‘a fixture providing
artificial light.’ … ‘Fixture’ is defined as an ‘object
in a fixed position: an object with a fixed position and
function.’ Therefore, a fixture can include a personal
headlamp, as such goods are placed in a fixed position on
one’s head or helmet.” Id.
At the outset we note that the mere fact that both
types of goods at issue here emit and provide light is not
a sufficient basis for us to conclude that the goods are
related. The goods, as identified, are sufficiently
different in their uses to require proof that they are
related. Nor can we conclude by intuition that both types
of goods would be sold through common trade channels.
The Examining Attorney has made of record six use-
based, third-party registrations and copies of pages from
several websites in an attempt to show that personal
headlamps and electric lighting fixtures are related. In
its brief applicant analyzed each piece of evidence in
detail in an attempt to show that the evidence lacks
Serial No. 77436425
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probative value. We find applicant’s analysis both
thorough and persuasive.
First, as to the third-party registrations, only one
arguably includes personal headlamps. Registration No.
319048 for CLUSTERLIGHT does identify "high-beam head
lamps," but Registration No. 3319016 for CAT'S MEGAMAN,
which is owned by the same registrant and identifies nearly
identical goods, identifies those same goods as "high-beam
head lamps in the nature of headlights for vehicles,"
thereby indicating that the CLUSTERLIGHT "head lamps" are
also for vehicles. Registration Nos. 2858799, 2991658 and
3331610 specifically state that the "headlamps" are for use
with vehicles. Only Registration No. 3411376 for the mark
PANASONIC identifies both "head lamps" and "fluorescent
lighting fixtures." Even if we read "head lamps" here to
refer to "personal headlamps" and not to "vehicle
headlamps," we find that this one third-party registration
is not sufficient to establish that "personal headlamps"
and "lighting fixtures" are goods that may emanate from a
single source, even when considered with the other
evidence.
The PANASONIC registration illustrates another
limitation in the probative value of a number of the third-
party registrations at issue here. In addition to goods
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concerned with lighting, the registration also identifies
automatic bread-making machines, rice cookers, various
types of cooking ovens, ventilation systems and air
conditioners. The diversity of the goods identified in
this registration diminishes the probative value in
establishing that any two items identified in the
registration are related. See In re Davey Products Pty
Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Without
speculating as to other uses of the PANASONIC mark, we
conclude that the diversity of goods identified in the
registration of record is sufficient to establish that
PANASONIC is a house mark, or the equivalent, used on a
wide variety of goods which are otherwise unrelated.
Perhaps the best example of this difficulty is
Registration No. 2991658. Though the registration is
limited to International Class 11 and is based on use in
commerce, it includes a single-spaced identification of
goods extending over five pages with an alphabetical
listing of hundreds of items, including, among other
things, agricultural irrigation units, bicycle lights,
cotton candy making machines, drinking fountains,
cryorefrigerators, electric blankets, electric espresso
machines, energy storage plants, facial saunas,
incinerators, nuclear reactors, portable toilets, sewage
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treatment plants, tanning beds, used oil recovery units,
sinks and hot tubs – virtually everything under the sun,
including the kitchen sink.
In sum, we find that the third-party registrations are
not probative of whether personal headlamps and electric
lighting fixtures are related. While third-party
registrations can play an important role in establishing
that the types of goods at issue are related, examining
attorneys must review the registrations carefully to ensure
that each registration presented is probative and that the
number of registrations is sufficient, along with other
types of evidence, to establish that the types of goods at
issue are related.
Turning to the website evidence, we likewise find the
evidence not probative of the relatedness of personal
headlamps and electric lighting fixtures. Here also, the
evidence generally either fails to identify the particular
types of goods at issue here, or the evidence is from
sources which sell a broad range of varied and unrelated
goods online. In discussing this evidence we will first
concentrate on the evidence the Examining Attorney
specifically cites and defends in her brief.
The Examining Attorney takes issue with applicant’s
criticism of the evidence from the thestar.com website.
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Attachment to Office Action February 18, 2009. The
Examining Attorney argues that, although the site features
a wide variety of goods, the site lists personal headlamps
and flashlights in the same category, and that the site
refers to “home lighting, lighting fixtures and ceiling
fans” as “related categories.” Id. We find the connection
between the specific goods at issue here too attenuated.
This evidence falls far short of showing that the
circumstances surrounding the marketing of the respective
goods would result in relevant purchasers mistakenly
believing that the goods originate from the same source
when the same mark is used on both types of goods. Again,
the Examining Attorney effectively concedes that the site
offers a wide range of goods, virtually any product or
service a consumer may desire. The organization of the
goods on the site, and in particular, the designation of
related categories, is largely academic in view of the
variety of goods.
The Examining Attorney also argues, “Furthermore, the
TOOTOOMART cite (sic) shows both personal lighting products
as well as what the applicant would term light fixtures.”
Examining Attorney’s Brief at 7. However, there is no
evidence of a personal headlamp for sale on the site.
Also, the pages provided state that the site is an “online
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B2B [business to business] trading platform for both small
and medium-sized international buyers and China suppliers.”
Attachment to Office Action of February 18, 2009. Again,
this evidence is not probative of whether potential
purchasers of the two relevant types of products would
encounter them in circumstances which would lead to
trademark confusion.
As to the other website evidence, we generally concur
with applicant in concluding that it is not probative. For
example, the evidence from the alibaba.com website consists
of a listing of suppliers of various types of products.
Nearly forty companies are listed, but not a single one
indicates that it supplies both specific types of products
at issue here. If anything, this evidence shows that
suppliers concentrate in specific types of lighting
products, for example, focusing on vehicle lights, outdoor
lighting or flashlights. In any event, the evidence is not
probative of the issue before us.
Also, applicant correctly points out that the evidence
from the esources.co.uk website is not probative because
the site merely provides a directory of wholesale
distributors in the United Kingdom for a wide range of
products. Therefore, it is not probative of how relevant
U.S. consumers would view the respective types of goods.
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Furthermore, although the Examining Attorney does not
highlight this particular piece of evidence, applicant
suggests that Item 17 shown in the pages from the
theledlight.com website refers to personal headlamps. The
site specializes in all things LED, including LED lighting
fixtures and related parts, from various sources. The item
in question refers to LED headlamps and other products.
Even though the site refers to both LED personal headlamps
and LED lighting fixtures, this single instance of both
types of items appearing on a website is insufficient to
establish that the two types of goods at issue are related.
Also, we reject the Examining Attorney’s contention
that the term electric lighting fixtures includes personal
headlamps because the latter are in a “fixed position” on a
person’s head. "Fixture" is defined as "something attached
as a permanent appendage, apparatus, or appliance: plumbing
fixtures"; and "Law A chattel bound to realty." The
American Heritage Dictionary of the English Language (4th
ed. 2009).1 Based on this definition, we find that the more
reasonable construction is that electric lighting fixtures
would generally include lighting fixtures which are

1 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).

Serial No. 77436425
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permanently installed in a building or on other property
and would exclude lighting devices worn temporarily on a
person’s head.
We also reject the Examining Attorney’s argument that
applicant has failed to show that the respective goods are
not related. Apart from the inherent difficulty in proving
a negative, it is the Examining Attorney’s burden to make a
prima facie showing that the goods are related. In this
case the showing falls short.
In sum, we find the evidence of record insufficient to
show that the circumstances surrounding the marketing of
electric lighting fixtures, on the one hand, and personal
headlamps, on the other hand, are such that relevant
purchasers would mistakenly believe that the respective
goods originate from the same source, even if the same mark
is used on both.
Decision: We reverse the refusal under Trademark Act
Section 2(d).