Halogen Lighting Products

Trademark Trial and Appeal Board

Sep 29, 2008

No. 78426018 (T.T.A.B. Sep. 29, 2008)

Mailed: September 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Halogen Lighting Products
________

Serial No. 78426018
_______

Adam Sacharoff, Much Shelist, for Halogen Lighting
Products.

Sandra Manios, Trademark Examining Attorney, Law Office
104, Chris Doninger, Managing Attorney.
_______

Before Zervas, Cataldo, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Halogen Lighting Products seeks registration of the
following proposed mark for “electric lighting fixtures” in
International Class 11:1

1 Filed May 27, 2004. Statement of Use filed January 26, 2006,
alleging dates of first use and first use in commerce of May,
2005. The application contains the following description of the
mark: “The mark consists of a broken wine glass within a circle
and a cross bar.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78426018
2
Registration has been finally refused on the ground
that the proposed mark consists of purely informational
matter and does not function as a trademark. Trademark Act
§§ 1, 2, and 45; 15 U.S.C. §§ 1051, 1052, and 1127.
We affirm.
I. Applicable Law
The fundamental function of a trademark is to identify
the source of goods in commerce, and to distinguish them
from the goods of others. Trademark Act § 45, 15 U.S.C.
§ 1127. From this premise it directly follows that matter
which would not be perceived by potential purchasers as a
trademark may not be registered. In re Bose Corp., 546
F.2d 893, 192 USPQ 213, 215 (CCPA 1978)(“Before there can
be registration, there must be a trademark.”). In this
regard, it has been held that purely informational matter
and commonplace phrases do not function as trademarks. For
instance, the Board has found that the words USE WITH do
not identify the source of metal appliance connectors, In
re Brass-Craft Mfg. Co., 49 USPQ2d 1849 (TTAB 1998); that
DRIVE SAFELY would be perceived as a commonplace safety
admonition, and not as a trademark for automobiles, In re
Volvo Cars of North Am., 46 USPQ2d 1455, (TTAB 1998); and
that the words THINK GREEN would be seen as a phrase
encouraging environmental awareness, rather than as a
Serial No. 78426018
3
trademark for weatherstripping, In re Manco, Inc., 24
USPQ2d 1938 (TTAB 1992).
Much depends, of course, on the manner of use of the
proposed mark. For this reason, it is important to examine
how the mark is used, and not merely what the mark is. In
re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008).
II. Discussion
A. Applicant’s Proposed Mark and Goods
Applicant’s goods are identified as “electric lighting
fixtures.” The web page applicant originally filed as a
specimen with its Statement of Use includes the following
information:
SHATTERPROOF
2
™
A shatterproof bulb encased in a shatterproof
fixture.
* * *
Shatterproof Bulbs – “The Finest”
Our shatterproof protection is achieved by
directly and permanently fusing Mylon® to the
entire surface area of the bulb creating a sealed
beam unit guaranteeing total glass containment.
The Mylon® coating is a patented compound of
cross-linked polymers and nylon forming the
toughest/strongest coating and shatterproof
protection found in North America. Our
Shatterproof protection won’t distort or diminish
... the ... natural white high quality
illumination. Heat sealing is maximized to 486
degrees Fahrenheit.... Bulbs are guaranteed not
to yellow in this heat resistant glass
containment for the life of the bulb. Our
superior shatterproof bulb technology encased in
the finest and most resilient fixture designed
and field tested in the most abusive industrial
and machine environments in the world compose
Serial No. 78426018
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Shatterproof2. Don’t settle for less, use the
best.

http://www.halogen-lighting.com./shatterproof.htm
(submitted Jan. 26, 2006). Applicant’s proposed mark
appears further down on the same web page next to (and the
same size as) the Underwriter’s Laboratory certification
mark:

This specimen was rejected by the examining attorney
because it did not evidence use of the proposed mark on the
identified goods. In response, applicant submitted the
following specimen – which was deemed acceptable –
described as a “scanned copy of a label that is affixed to
the boxes of the goods.” Response, June 5, 2006.
Serial No. 78426018
5

B. Arguments
It is the examining attorney’s contention that the
proposed “mark is used purely as informational matter and
does not function as a trademark....” Trademark Act §§ 1,
2, 45; 15 U.S.C. §§ 1501, 1502, 1127; Ex. Att. Br. at 1.
Applicant’s proposed mark is the design of
the international prohibition symbol over a
broken wine glass, covering electric lighting
fixtures. Both specimens on record show the mark
used in connection with the wording “NO BROKEN
GLASS,” the very commercial impression created by
the proposed mark. The January 16, 2006 specimen
further explains the shatterproof feature of
applicant’s goods. ... The specimens of record
do not show use of the proposed mark functioning
as an indicator of source, but only to inform
consumers that applicant’s goods contain glass
elements that will not break. ... The Board in
Volvo Cars of N. Am., 46 USPQ2d [at] 1460-61, for
example, held the wording DRIVE SAFELY not
registrable because it would be perceived only as
an everyday, commonplace safety admonition rather
than as a trademark for “automobiles and
structural parts.” Similarly, the Board in In re
Manco, Inc., 24 USPQ2d [at] 1941 (TTAB 1992)[,]
held the wording THINK GREEN and design not
registrable because it would be perceived only as
Serial No. 78426018
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an informational slogan encouraging environmental
awareness and not as a trademark for weather
stripping and paper products.

Ex. Att. Br. at 4-5.
Applicant advances two principal arguments in favor of
registration: First, that the USPTO has registered
numerous other trademarks using the international
prohibition symbol, and that it would be unfair and
inconsistent to refuse registration of applicant’s proposed
mark. Second, applicant contends that its proposed mark
“is source indicative by creating an incongruity due to the
complex design the broken wine glass [sic] and the relation
of the design to Applicant’s subject electric lighting
fixtures goods.” App. Br. at 2-3. Applicant contends that
the examining attorney has not established a prima facie
case “since the stated communicative matter asserted to be
‘merely informational’ is based on speculation divorced
from the commercial and consumer context of Applicant’s
applied for goods....” App. Br. at 3. Finally, applicant
adds that any doubts as to registrability should be
resolved in its favor. Id.
C. Analysis
In support of its first argument, applicant submitted
evidence of fourteen trademark registrations which include
various matter overlaid with the “international prohibition
Serial No. 78426018
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symbol.” Applicant contends that there are some 900
similar registrations which have been registered.2 App. Br.
at 2.
For the reasons largely explained by the examining
attorney, we are not convinced by applicant’s evidence or
argument. While consistency is a worthy goal, the Board is
not bound by the actions of examining attorneys in
assessing different marks for different goods:
The Board must decide each case on its own
merits. In re Owens-Corning Fiberglas Corp., 774
F.2d 1116, 1127, 227 USPQ 417, 424 (Fed. Cir.
1985). Even if some prior registrations had some
characteristics similar to Nett Designs’
application, the PTO's allowance of such prior
registrations does not bind the Board or this
court.

In re Nett Designs Inc., 236 F3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Moreover, a refusal to register on the ground that the
applied-for material does not function as a trademark is
highly dependent on how the proposed mark is used on or in
connection with the identified goods or services.
Applicant has not submitted the specimens of use for any of
the registrations it has offered into evidence, and it is

2 Applicant also submitted records of several cancelled
registrations. We have not considered these records, as they are
not evidence that the previously-registered marks were valid or
in use. Further, we will not speculate on evidence that is not
in the record. Accordingly, we consider only the registrations
Serial No. 78426018
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therefore impossible to determine what – if anything – can
be learned from these registrations.
Second, applicant argues that the proposed mark is
incongruous and thus serves more than a purely
informational function:
Applicant’s MARK creates an incongruity. ...
The mark is not merely informational since it has
at least suggestive distinctiveness. In this
regard it is noted that a term is suggestive if,
when applied to goods, it requires imagination,
thought, and perception to reach a conclusion as
to the nature of the goods as opposed to a
descriptive term which immediately tells
something about the goods.

The incongruity appears when applying
Applicant’s MARK to its goods. Applicant’s goods
associated with the logo MARK are not glassware,
drinking cups, or crystal drinking ware, such as
one would automatically associate with the logo
MARK. Applicant is associating the MARK to
electric lighting fixtures. ... And it is only
with the association of Applicant’s goods that
the consumer processes and associates the MARK to
Applicant’s goods. The factual nature of the
meaning of Applicant’s MARK, as discussed above,
does not immediately convey to the consumer what
goods are contained therein. It is this
incongruity that allows Applicant’s MARK to serve
as a trademark.

App. Br. at 3-4.
The examining attorney admits that the proposed mark
“creates an incongruity,” but argues instead that
incongruity is only relevant when deciding whether one

which applicant has submitted, and not others which applicant
alleges have been registered.
Serial No. 78426018
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element of a mark must be disclaimed. Ex. Att. Br. at 6.
The examining attorney’s statements indicate an apparent
misunderstanding of applicant’s argument. As we understand
it, applicant is arguing that its proposed mark is
incongruous with its goods. What the examining attorney
addresses is the question of whether one element of the
mark is incongruous with another element of the mark. We
agree with the examining attorney that the latter concept
is not relevant.3 On the other hand, we do not agree with
applicant that its mark is incongruous with its goods, and
thus a distinctive indicator of source.4
The fallacy in applicant’s argument arises from the
assumption that the depiction of a broken wine glass as
part of a symbol on a box of applicant’s goods would convey
no relevant information to its customers. We disagree.

3 While applicant offered to disclaim the “international
prohibition symbol” apart from the mark as shown, the examining
attorney held the disclaimer to be inappropriate because the
proposed mark is unitary. Applicant has made no mention of the
disclaimer in its appeal brief, and we accordingly view the issue
waived.
4 Applicant’s arguments (and to some extent, the examining
attorney’s) rely on reasoning and cases discussing
descriptiveness which – strictly speaking – is not the basis for
the final refusal in this case. While a descriptiveness analysis
under Trademark Act § 2(e)(1) asks whether the proposed mark
conveys information about the goods, a refusal under Trademark
Act §§ 1, 2, and 45 asks whether the proposed mark would be seen
as an indication of source. As seen here, however, the concepts
are related, and it can usually be said that purely descriptive
matter does not function as a source indicator, unless it has
acquired distinctiveness.
Serial No. 78426018
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Non-literal symbols are ubiquitous in our culture, and
are frequently used as a simple and easily-recognizable
message, particularly where it is necessary to immediately
convey a message (as with a warning), and it cannot be
assured that the recipient will be able, or have time to,
read a written message.
The examining attorney’s evidence establishes that
among other things, when used on a box, the image of a wine
glass – or a broken wine glass – is used to indicate that
the goods inside are fragile:

Henry Dreyfuss, SYMBOL SOURCEBOOK: AN AUTHORITATIVE GUIDE TO
INTERNATIONAL SYMBOLS, 98 (1972). Dreyfuss also indicates that
symbols “are often combined with other symbols to develop
more complex meanings and instructions. Thus a kind of
grammar of semiotics evolves.” Id. at 28. This point is
illustrated with some graphics, including the following,
which is particularly relevant:

Serial No. 78426018
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Id. It is easily seen that the “international prohibition
symbol,” combined with another symbol means “no” or “not”
with respect to the second symbol’s meaning.
Using this “grammar,” the meaning of applicant’s
proposed mark is apparent:

We think it quite clear that when used on a box
containing lighting fixtures, applicant’s proposed mark – a
broken wine glass under the prohibition symbol – readily,
and without further thought or reasoning – conveys the
information that the contents are not fragile or, as the
examining attorney put it, the specimens of record serve
“only to inform consumers that applicant’s goods contain
glass elements that will not break.” Ex. Att. Br. at 5.
Indeed, the wording applicant uses with its proposed mark
fully supports this interpretation. In both specimens of
record, the words “No Broken Glass” appear on or near the
proposed mark.
It is beyond dispute that many, if not most, lighting
fixtures are easily breakable, and that broken bulbs often
result in hazardous shards of sharp glass. While an
annoyance under any circumstance, a shattered bulb is a
Serial No. 78426018
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serious health and safety hazard in some settings,
particularly those involving the manufacture or packaging
of food or other items which come into close contact with
the body. The information on the web page submitted as
applicant’s original specimen of use makes much of the fact
that applicant’s goods are “shatterproof,” and therefore
highly suited for use in environments where breakage is
likely or problematic. The durability of applicant’s goods
is thus a central characteristic and a selling point of
those goods.
Applicant makes much of the fact that its goods are
not wine glasses or similar items, asserting that the use
of a symbol including a wine glass is therefore
“incongruous.” We disagree. As used in the specimens of
record, it is apparent that the proposed mark would be
viewed symbolically, not literally. The record contains a
number of examples of similar symbols, and the public is
exposed to many of them on a daily basis. The examining
attorney has demonstrated that the symbols comprising
applicant’s proposed mark have a recognized meaning.
Applicant has presented no evidence that, as used by
applicant, the symbols would be understood differently.
Given this evidence we cannot assume that applicant’s
customers would believe that the mark is an arbitrary
Serial No. 78426018
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reference to drinking glasses. On the contrary, all
evidence in the record indicates that the mark would be
perceived as an indication that the contents of applicant’s
boxes are not fragile. Rather than indicating the source
of the goods inside, applicant’s proposed mark instead
would simply inform the customer of this fact.
D. Request for Amendment to Supplemental Register
Finally, we note applicant’s request that if not found
registrable on the Principal Register, applicant’s proposed
mark be considered for registration on the Supplemental
Register. App. Br. at 11.
An application which has been considered and decided
on appeal will not be reopened except for the entry of
a disclaimer ... or upon order of the Director, but a
petition to the Director to reopen an application will
be considered only upon a showing of sufficient cause
for consideration of any matter not already
adjudicated.

Trademark Rule 2.142(g).
Applicant’s request to amend is accordingly denied.
III. Conclusion
After careful consideration of the record, we conclude
that the proposed mark, as used by applicant, would be
perceived as merely informational, and would not be
perceived as an indication of source.
Decision: The refusal to register under Trademark Act
§§ 1, 2, and 45 is accordingly affirmed.