Regent Lighting Corp.

Trademark Trial and Appeal Board

Aug 15, 2001

No. 75508824 (T.T.A.B. Aug. 15, 2001)

8/15/01
Paper No. 8
DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Regent Lighting Corporation
________

Serial No. 75/508,824
_______

Keith A. Vogt of Niro Scavone Haller & Niro for Regent
Lighting Corporation.

Gwen Stokols, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______

Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Regent Lighting Corporation seeks to register
SURVEILLANCE for “outdoor electric lighting fixtures and
electric light bulbs for outdoor lighting,” in
International Class 11.1
Registration has been finally refused on the ground
that the mark SURVEILLANCE is merely descriptive within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Application Serial Number 75/508,824 was filed on June 25,
1998. The application is based upon applicant’s claim of a bona
fide intention to use the mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/508,824
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§1052(e)(1). Applicant and the Trademark Examining
Attorney have filed briefs, but an oral hearing was not
requested.
It is well settled that a term is considered to be
merely descriptive within the meaning of Section 2(e)(1) of
the Trademark Act, if it immediately conveys information
about an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services with
which it is being, or will be, used. See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order
for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a
significant attribute or idea about them. On the other
hand, the immediate idea must be conveyed with some “degree
of particularity.” In re Entenmann’s Inc., 15 USPQ2d 1750,
1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. Feb. 13, 1991);
In re TMS Corporation of the Americas, 200 USPQ 57, 59
(TTAB 1987).
Furthermore, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods
or services for which registration is sought. Thus,
Serial No. 75/508,824
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"[w]hether consumers could guess what the product [or
service] is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985). We must look to the context in which the term
is being, or will be, used on or in connection with those
goods or services and the possible significance that the
term would have to the average purchaser of the goods or
services because of the manner of its use. In re Bright-
Crest Ltd., 204 USPQ 591, 593 (TTAB 1979).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multistage
reasoning process, or the utilization of imagination,
thought or perception, is required in order to determine
what attributes of the goods or services the mark
indicates. See In re Abcor Development Corp., supra at
218, and In re Mayer-Beaton Corp., 223 USPQ 1347, 1349
(TTAB 1984). As has often been stated, there is a thin
line of demarcation between a suggestive mark and a merely
descriptive one, with the determination of which category a
mark falls into frequently being a difficult matter
involving a good measure of subjective judgment. See In re
Atavio, 25 USPQ2d 1361 (TTAB 1992) and In re TMS
Corporation of the Americas, supra at 58. The distinction,
furthermore, is often made on an intuitive basis rather
Serial No. 75/508,824
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than as a result of precisely logical analysis susceptible
of articulation. See In re George Weston Ltd., 228 USPQ
57, 58 (TTAB 1985).
The identification of goods is for “outdoor electric
lighting fixtures and electric light bulbs for outdoor
lighting.” However, in order to discuss the nuances on
which this case turns, we note that the total record shows
these exterior lighting fixtures to be upscale,
residential, security lighting. The lighting fixtures to
which applicant has applied the SURVEILLANCE mark are ones
prompted to turn on at night by motion sensors.2 Although
applicant’s broad identification of goods does not specify
any particular features of its lighting fixtures, certainly
this identification would include security lighting
prompted by motion detectors.
Applicant argues that the emphasis in the design of
its goods is on the décor and styling; that the lighting
involves relatively low wattage illumination rather than
piercing flood lights; that others in the lighting field
have not used the term “surveillance” in connection with

2 This application is still an Intent-to-Use application, but
as part of its response to the first Office action, applicant
submitted photocopies of four pages of one of its brochures
dealing specifically with its “SURVEILLANCE™ motion activated
floodlighting – Upscale Security Lighting Series.”

Serial No. 75/508,824
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such goods; and that a light is not capable, by itself, of
“watching” or “observing,” but rather can only provide
“illumination.” Finally, applicant argues that if there is
doubt, the Board should reverse the Trademark Examining
Attorney and have the mark published for opposition.
By contrast, the Trademark Examining Attorney relies
upon a dictionary definition of the word “surveillance,” as
well as the five excerpted stories retrieved from a ten-
year period of LEXIS/NEXIS stories referring to
“surveillance lighting,” reproduced below in the format
provided to the Board:
“Where the place [Ronald Ronald's Rancho del Cielo in
Santa Barbara] was once ringed by cameras, motion
sensors and surveillance lights and guarded by a small
army of Secret Service agents, the security now
consists of a blind poodle ...” The Washington Post,
April 24, 1998.

“A contractor was working on surveillance lights when
the arm of his lift bucket stopped working about 6:15
p.m., fire department officials said.” Union Leader,
Manchester, NH, May 21, 1997.

“An interior alarm system and exterior surveillance
lights were added in 1987 after the first of three
vandalism incidents at the tomb in the last 10 years.”
Chicago Sun Times, February 25, 1997.

“Karen's father, a policeman, knew that the law was
powerless against what seemed like a persistent creep.
Even the surveillance lights Glenn's parents installed
around their home had no effect last Feb. 16.”
Newsweek, July 13, 1992.

“... 1984-1985 month strike Massey -- which Smith was
advising – hired armed security guards and installed
Serial No. 75/508,824
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fences, observation posts and surveillance lights as a
way to heighten tension, the report said.” The
Washington Post, October 23, 1989).

Applicant repeatedly argues that this scant
LEXIS/NEXIS evidence is meaningless inasmuch as “the only
group that uses the term ‘surveillance’ in connection with
outdoor lights, other than Applicant, are columnists [sic]
– a group well removed from the relevant lighting
industry.”
Granted, these few examples, supra, drawn from a
gigantic database spanning more than ten years seem to
reflect extremely rare usage of such terminology.
Moreover, it is difficult to draw too many conclusions from
these most abbreviated excerpts. Nonetheless,
“surveillance lights” in the context of these uses often
refers to security lighting for a public or commercial
establishment where the lighting is integrated with more
active security features. In the darkness, surveillance
methodologies such as automated cameras and human guards
are aided by lighting. If such lighting is specifically
designed to help illuminate a security area for observation
by a camera or a guard, it may well be seen as
“surveillance lighting.” Hence, while “surveillance
lighting” may aid cameras or guards in their “watching” or
Serial No. 75/508,824
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“observing,” it is clear that a simple floodlight alone
lacks the capacity to watch or observe.
On the other hand, we are not convinced by applicant’s
argument early on in the prosecution of this application
that the involved goods are not correctly characterized as
“security lights.” Its brochures prove otherwise.
However, even so, both applicant and the Trademark
Examining Attorney seem to agree that still leaves us with
the question of whether security lights with motion sensors
are truly involved in surveillance?
“Security” in the instant context is defined as
‘something designed to assure safety.’ Without a doubt,
applicant is selling security lighting. Security or safety
measures may be active, passive or some combination of the
two. However, the definitions for “surveillance” include
the concept of actively watching or observing. Thus, we
find a different connotation from their respective
dictionary definitions and from nuances in ordinary
English-language usage.
In the context of safety measures for buildings,
whenever there is active watching or observing going on,
the words “security” and “surveillance” are used almost
interchangeably with words like camera (i.e., “security
camera” and “surveillance camera”), system (i.e., “security
Serial No. 75/508,824
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system” and “surveillance system”), equipment (i.e.,
“security equipment” and “surveillance equipment”), etc.
However, this is not the case with lights. That is, the
word “security” is frequently used with light, lights, or
lighting (including repeatedly by applicant in its
brochures), while the record demonstrates that the word
“surveillance” is almost never used with light, lights, or
lighting. In those few examples where journalists have
used this combined phrase, it seems to be in connection
with lighting that aids the observations of a guard or the
watchful eye of a camera. The question on which this case
turns then, is whether a security light, that on its own
illuminates an area outside a residence based upon a motion
detector or motion sensor but itself does no active
watching or observing fits the definition of
“surveillance.” We find it does not.
On the other hand, if these goods were defined as
components of a larger security / surveillance system, or
if applicant’s lighting fixtures were fitted with a small
camera (as some such devices are), we would be hard pressed
not to affirm the position of the Trademark Examining
Attorney.
This is a close case, but to the extent that we have
doubt as to whether applicant’s mark is merely descriptive
Serial No. 75/508,824
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of its goods, we consider it appropriate to resolve such
doubt in the favor of applicant. Then upon publication of
applicant’s mark, any person (including a juristic person)
who believes that she/he/it would be damaged by the
registration of the mark will have the opportunity to file
an opposition thereto. See In re Merrill Lynch, Pierce,
Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.
Cir. 1987); In re Rank Organization Ltd., 222 USPQ 324, 326
(TTAB 1984); In re Morton-Norwich Products, Inc., 209 USPQ
791 (TTAB 1981); and In re Gourmet Bakers, Inc., 173 USPQ
565 (TTAB 1972).
Decision: The refusal to register is reversed.