Minka Lighting, Inc.v.Hachette Filipacchi Media U.S., Inc.

Trademark Trial and Appeal Board

Feb 12, 2009

No. 91167800 (T.T.A.B. Feb. 12, 2009)

Mailed:
February 12, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Minka Lighting, Inc.
v.
Hachette Filipacchi Media U.S., Inc.
_____

Opposition No. 91167800
to application Serial No. 78200403
filed on January 6, 2003

Opposition No. 91170140
to application Serial No. 75810801
filed on September 29, 1999
_____

Lisa H. Meyerhoff of Baker & McKenzie LLP for Minka
Lighting, Inc.

Doreen L. Costa of Baker Botts L.L.P. for Hachette
Filipacchi Media U.S., Inc.
______

Before Quinn, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Hachette Filipacchi Media U.S., Inc. (“applicant”), the
publisher of Metropolitan Home magazine, filed two intent-
to-use applications for METROPOLITAN HOME, shown below.
A. Serial No. 75810801 for the mark METROPOLITAN
HOME, in typed drawing form, for a variety of goods in five
classes, including the goods at issue set forth below:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91167800
Opposition No. 91170140
2
Electric lighting fixtures and lamps, in
Class 11;

Picture frames and case goods, namely,
chests, night stands, cabinets, dining
tables, coffee tables, desks, beds and
headboards; upholstered furniture, in
Class 20; and,

Table top accessories, namely, bowls,
platters, vases, in Class 21.

B. Serial No. 78200403 for the mark METROPOLITAN
HOME, shown below, for a variety of goods in 11 classes,
including the goods at issue set forth below:

Electric lighting fixtures and lamps, in
Class 11;

Candle holders of precious metal, in
Class 14;

Upholstered furniture; picture frames
and case goods, namely, chests, night
stands, cabinets, dining tables, coffee
tables, end tables, desks, beds,
headboards and mirrors, in Class 20;
and,

Table top accessories, namely, bowls,
platters, vases, and dinnerware; candle
holders not of precious metal, in Class
21.

In both applications, applicant disclaimed the
exclusive right to use the word “Home.” In application
Serial No. 75810801, applicant claimed ownership of
Opposition No. 91167800
Opposition No. 91170140
3
Registration No. 1235238 for the mark METROPOLITAN HOME, in
typed drawing form, for “magazines.”
Minka Lighting, Inc. (“opposer”) filed notices of
opposition against the registration of applicant’s marks on
the ground of priority of use and likelihood of confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d). Specifically, opposer alleged that,
through its predecessor-in-interest, it has been
continuously using the mark METROPOLITAN for electric
lighting fixtures since at least as early as 1935 and that
applicant’s marks are likely to cause confusion with
opposer’s mark.
Applicant in its answers denied the essential
allegations in the notices of opposition.
Preliminary Issues
A. Evidence attached to briefs.
Both parties submitted briefs with evidentiary
attachments comprising duplicates of evidence and testimony
previously filed during the assigned testimony periods.
Evidence which was timely filed during the parties’ trial
periods need not, and should not, be resubmitted. Life Zone
Inc. v. Middleman Group, Inc., 87 USPQ2d 1953, 1955 (TTAB
2008); Entm't Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d
2021, 2022 (TTAB 1998). The parties seem to be under the
impression that attaching previously-filed evidence to a
Opposition No. 91167800
Opposition No. 91170140
4
brief (and citing to the attachments, rather than to the
original testimony or notices of reliance) is a courtesy or
a convenience to the Board. It is neither. When
considering a case for final disposition, the entire record
is readily available to the panel. Because we must
determine whether such attachments are properly of record,
Trademark Rule 2.123(l), citation to the attachment requires
examination of the attachment and then an attempt to locate
the same evidence in the record developed during trial,
requiring more time and effort than would have been
necessary if citations were directly to the trial record.
Accordingly, we did not consider the attachments to the
briefs. We only considered the evidence that was timely
filed during the assigned testimony periods.
B. Responses to requests for production of documents.
Both parties filed responses to requests for production
of documents through notices of reliance. However, the
categories of materials which may be submitted under a
notice of reliance are limited, consisting only of an
adverse party's discovery deposition, answer to an
interrogatory, or admission to a request for admission,
Trademark Rule 2.120(j)(3)(i); printed publications and
official records, Trademark Rule 2.122(e). Documents
produced in response to a request for production of
documents may not be made of record by notice of reliance
Opposition No. 91167800
Opposition No. 91170140
5
alone, except to the extent that the documents are
admissible by notice of reliance as printed publications or
official records. Trademark Rule 2.120(j)(3)(ii).
Accordingly, we did not consider the responses to the
requests for production of documents.
C. Testimony of David Woods.
David Woods, President of Associated Investigative
Service, Inc., an intellectual property private
investigator, testified on behalf of applicant regarding
third-party uses of the mark METROPOLITAN. Through his
testimony, Mr. Woods introduced a copy of his investigative
report and testified about his investigative process,
including his conversations with employees of the various
third-party users. Although opposer did not object to any
hearsay statements during the testimony deposition, it
lodged that objection in its brief.1 In opposition to
opposer’s objection, applicant argued that “Mr. Woods’
testimony concerning his telephone discussions with third-
party sellers recounts statements made in what was believed
by the speaker to be a normal commercial context, namely,

1 “Objections to testimony are not waived for failure to make
them during or before the taking of the deposition, provided that
the ground for objection is not one that might have been obviated
or removed if presented at that time.” TBMP §707.03(a) (2nd ed.
rev. 2004) (Emphasis in the original). Because applicant could
not correct the hearsay nature of the testimony, opposer did not
waive its hearsay objections.
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Opposition No. 91170140
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telephone inquiries from a consumer. That testimony is
offered for the fact that the statements were made to a
Opposition No. 91167800
Opposition No. 91170140
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would-be purchaser to establish what would be conveyed to a
consumer and not for the truth of the matter asserted.”2
Mr. Woods’ testimony regarding what the third-party
employees told him is hearsay because it is proffered to
show that the third parties are using the mark METROPOLITAN.
Accordingly, we did not give those portions of Mr. Woods’
testimony any consideration. However, we did consider other
evidence of third-party use proffered by Mr. Woods’,
specifically copies of websites that he authenticated.
The Record
By rule, the record includes applicant’s application
files and the pleadings.3 Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
following testimony and evidence:
A. Opposer’s evidence.
1. A notice of reliance on the following items:
a. Applicant’s responses to opposer’s first set
of interrogatories;

b. Excerpts from the discovery deposition of
Mariane Guarnieri, applicant’s Vice President
of Licensing, with attached exhibits; and,

c. Excerpts from the discovery deposition of
Deborah Burns, the Vice President, Publisher
of Metropolitan Home magazine, with attached
exhibits;

2 Applicant’s Brief, p. 46.
3 Accordingly, it was unnecessary for applicant to submit copies
of its applications through a notice of reliance.
Opposition No. 91167800
Opposition No. 91170140
8
2. Testimony deposition of Joann Turits, opposer’s
Showroom Director for the New York City Metropolitan
Lighting Showroom, with attached exhibits;
3. Testimony Deposition of Peter Decsy, opposer’s
Vice President and General Manager, with attached exhibits;
4. The rebuttal testimony deposition of Peter Decsy;
and,
5. The rebuttal testimony deposition of John Pearson,
Vice President of Marketing for Casablanca Fan Division of
Hunter Fan Co., a third-party.
B. Applicant’s evidence.
1. A notice of reliance on the following items:
a. Excerpts from the discovery deposition of
Peter Decsy with attached exhibits;

b. Opposer’s responses to applicant’s first set
of interrogatories;

c. Opposer’s amended responses to applicant’s
first set of interrogatories;

d. Opposer’s responses to applicant’s second set
of interrogatories;

e. The file history for Registration No. 2202666
for the mark MET HOME for goods in Class 16
and services in Class 42;

f. The file history for Registration No. 1235238
for the mark METROPOLITAN HOME for magazines;

g. The file history for application Serial No.
78200409 for the mark MET HOME for goods in
Classes 3, 20, 24, and 27;

h. The file history for application Serial No.
75810802 for the mark MET HOME for goods in
Classes 11, 20, 21 and 24;
Opposition No. 91167800
Opposition No. 91170140
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i. The file history for application Serial No.
77363989 for the mark METROPOLITAN HOME for
goods in Class 24;

j. The file history for application Serial No.
78200417 for the mark METROPOLITAN HOME in
Class 20;4

k. Copies of eight third-party METROPOLITAN
registrations for a variety of goods; and,

l. Four dictionary definitions of the word
“Metropolitan.”

2. Testimony deposition of Deborah Burns with
attached exhibits;
3. Testimony deposition of Gilbert Shapiro, the owner
of Urban Archeology, a third-party manufacturer and
wholesaler of lighting and bathroom accessories, with
attached exhibits;
4. Testimony deposition of John MacDonald, Executive
Vice President of Metropolitan Lighting Design Co., Inc., a
third-party lighting designer, with attached exhibits;
5. Testimony deposition of Robert J. Pape, President
and CEO of Lighting Partners Jax, a third-party designer,
importer and marketer of decorative, residential lighting,
with attached exhibits; and,
6. Testimony deposition of David Woods, President of
Associated Investigative Service, Inc., an intellectual
property private investigator, with attached exhibits.

4 Abandoned as of August 1, 2008.
Opposition No. 91167800
Opposition No. 91170140
10
Standing
“Any person who believes that he would be damaged by
the registration of a mark upon the principal register . . .
may, file an opposition . . . stating the grounds
therefore.” Section 13 of the Trademark Act of 1946, 15
U.S.C. §1063(a). Thus, a party has standing to oppose if it
can demonstrate a real interest in the proceeding. Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). “The purpose in requiring
standing is to prevent litigation where there is no real
controversy between the parties, where a plaintiff,
petitioner or opposer, is no more than an intermeddler.”
Id. To establish a reasonable basis for a belief that one
is damaged by the mark sought to be registered, an opposer
may assert a likelihood of confusion which is not wholly
without merit. Id.
Opposer sells lighting products identified by the marks
METROPOLITAN LIGHTING and METROPOLITAN LIGHTING FIXTURE
COMPANY. Opposer also uses the trade name METROPOLITAN
LIGHTING FIXTURE COMPANY.5 Accordingly, as the owner of the
marks METROPOLITAN LIGHTING and METROPOLITAN LIGTHING
FIXTURE COMPANY, as well as the trade name METROPOLITAN

5 Decsy Discovery Dep., pp. 33, 35, and 65; Opposer’s response to
applicant’s interrogatory Nos. 1 and 6; Turits Testimony Dep.,
pp. 9, 11-16, 24, 81-82; Decsy Testimony Dep., pp. 31-32, 42, 65-
66, 153-154, 168, Exhibit 95.
Opposition No. 91167800
Opposition No. 91170140
11
LIGHING FIXTURE COMPANY, opposer has a real interest in
preventing the registration of applicant’s mark METROPOLITAN
HOME when that mark is at least arguably confusingly similar
to opposer’s marks and trade name. Id.; Marmark Ltd. v.
Nutrexpa S.A., 12 USPQ2d 1843, 1844 (TTAB 1989).
Priority

Applicant filed Serial No. 75810801 for the mark
METROPOLITAN HOME, in typed drawing form, on September 29,
1999. For our purposes, we will consider September 29, 1999
to be applicant’s priority date. Mason Engineering v.
Mateson Chemical, 225 USPQ 956, 961 (TTAB 1985) (in the
absence of evidence regarding its date of first use, the
earliest date on which applicant can rely is the filing date
of its application). Because opposer is relying on an
unregistered mark, opposer must show that it began using its
mark(s) prior to the filing date of applicant’s application.
Miller Brewing Co. v. Anheuser-Busch Inc., 27 USPQ2d 1711,
1714 (TTAB 1993).
Opposer, through its predecessor-in-interest, began
using METROPOLITAN LIGHTING and METROPOLITAN LIGHTING
FIXTURE COMPANY in 1935.6 In addition, there is substantial
evidence of opposer’s use of the marks prior to the filing

6 Opposer’s response to applicant’s interrogatory No. 1; Turits
Testimony Dep., pp. 10-12; Decsy Testimony Dep., pp. 26-27.
Opposition No. 91167800
Opposition No. 91170140
12
date of applicant’s application.7 Accordingly, we find that
opposer has established its use of METROPOLITAN LIGHTING and
METROPOLITAN LIGHTING FIXTURE COMPANY prior to the filing
date of applicant’s application.
We have found only one example of opposer’s use of
METROPOLITAN as a stand alone mark prior to the filing date
of applicant’s application: the 1998 product catalog.8 In
this regard, we note that Ms. Turits, whose family owned
opposer’s predecessor-in-interest, testified that
METROPOLITAN LIGHTING first opened its doors for business in
the 30’s,9 that light fixtures were sold under the mark
METROPOLITAN LIGHTING,10 and that, in the 1960’s, the
showroom was called METROPOLITAN LIGHTING & FIXTURE
COMPANY.11 Accordingly, for purposes of our analysis, we
find that opposer has established rights in METROPOLITAN
LIGHTING and METROPOLITAN LIGHTING FIXTURE COMPANY, but not
METROPOLITAN as a stand alone mark.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood

7 Turits Dep. Exhibits 54-57; Decsy Testimony Dep., p. 31
(opposer has continuously used the METROPOLITAN LIGHTING mark
since its 1997 acquisition of Metropolitan Lighting Fixture
Company) and Exhibits 81-88.
8 Decsy Testimony Dep. Exhibit 92.
9 Turits Testimony Dep., p. 10.
10 Turits Testimony Dep., p. 12.
Opposition No. 91167800
Opposition No. 91170140
13
of confusion. 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).
A. The similarity or dissimilarity and nature of the goods
as described in applicant’s application and for which
opposer has used its mark.

1. Opposer’s products.
Opposer uses METROPOLITAN LIGHTING for lighting
fixtures.12 A “fixture” is “something securely, and usually
permanently, attached or appended, as to a house, apartment
building, etc: a light fixture; kitchen fixtures.”13 These
lighting fixtures include chandeliers, sconces,14 track
lighting and other lights that are fixed in place.
Specifically, METROPOLITAN LIGHTING is a high-priced
product.15 Opposer’s “products vary in style from some
traditional transitional times, modern contemporary.”16

11 Turits Testimony Dep., p. 15.
12 Opposer’s response to applicant’s interrogatory No. 1; Decsy
Discovery Dep., pp. 35, 65; Turits Testimony Dep., pp. 24; Decsy
Testimony Dep., p. 32.
13 The Random House Dictionary of the English Language
(Unabridged), p. 727 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. 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).
14 A “sconce” is a bracket for lights placed on a wall, mirror,
picture frame, etc.14 The Random House Dictionary of the English
Language (Unabridged), p. 1718. In opposer’s catalogs, sconces
are lamps attached to walls.
15 Decsy Discovery Dep., pp. 35-36; Turits Testimony Dep., p. 36;
Decsy Testimony Dep., pp. 20, 26, 139-140.
16 Decsy Testimony Dep., p. 20.
Opposition No. 91167800
Opposition No. 91170140
14
2. Applicant’s natural expansion argument.
Applicant contends that because its Metropolitan Home
magazine is so well known in connection with contemporary
home design and decoration, the use of the mark METROPOLITAN
HOME in connection with the goods at issue “will be
immediately and strongly associated exclusively with
Applicant’s publication and no other source. . . . Indeed,
this type of brand extension, from magazine title to
products covered in the publication, has previously been
undertaken by well-known publications such as Country Home
and Better Homes and Gardens.”17 In essence, applicant is
arguing that it is entitled to register its METROPOLITAN
HOME marks for the goods at issue because they are within
the natural scope of expansion of its magazine.
Under the doctrine of natural expansion,
the first user of a mark in connection
with particular goods or services
possesses superior rights in the mark
not only as against subsequent users of
the same or similar mark for the same or
similar goods or services, but also as
against subsequent users of the same or
similar mark for any goods or services
which purchasers might reasonably expect
to emanate from it in the normal
expansion of its business under the
mark.
* * *

[T]he determination of whether an
expansion is or would be natural must be
made on the basis of the circumstances
prevailing at the time when the
subsequent user first began to do

17 Applicant’s Brief, pp. 18-19.
Opposition No. 91167800
Opposition No. 91170140
15
business under its mark, i.e., what was
“natural” in the relevant trade at that
time. [Citations omitted].

Mason Engineering v. Mateson Chemical, 225 USPQ 956, 962
(TTAB 1985).
There are several problems with applicant’s “natural
expansion” argument. First, opposer, not applicant, is the
first user of the mark. As indicated above, opposer first
began using the marks METROPOLITAN LIGHTING and METROPOLITAN
LIGHTING FIXTURE COMPANY in 1935. Applicant began
publishing METROPOLITAN HOME magazine in 1981.18
Second, applicant did not prove that other well-known
magazines expanded to sell products covered in the
publications. The only evidence supporting applicant’s
contention is the testimony of Deborah Burns, the Vice
President, Publisher of Metropolitan Home magazine.
Q. To your knowledge, has any other magazine
expanded from a magazine title to a product
line?

A. Yes.

Q. Who?

A. Better Homes and Gardens is a much more mass
brand, but they have a line of furniture
right now. Martha Stewart Living could be
the best example. It’s a multi-platform - -
there was Martha Stewart first, but then came
the product lines, then came the magazines,
and now come more product lines and an
exclusive with Macy’s.19

18 Applicant’s response to opposer’s interrogatory Nos. 2 and 3.
19 Burns Testimony Dep., pp. 81-82. The Martha Stewart example
does not support applicant’s argument because the product line
Opposition No. 91167800
Opposition No. 91170140
16
Ms. Burns also testified that opposer’s parent company
publishes ELLE magazine which has strong brand recognition.
Based on the strength of the ELLE brand, opposer’s parent
corporation created a licensing platform from which it has
derived enormous revenues.20 While opposer did not
corroborate Ms. Burns’ testimony with evidence of ELLE
branded products, because Ms. Burns was testifying regarding
a magazine affiliated with applicant, we find that she has a
basis for this testimony.
Nevertheless, three uncorroborated examples of the
expansion from a magazine to a product line do not prove
that purchasers would generally expect a magazine and
products with the same name to emanate from a single source.
Finally, even assuming that the key date in analyzing
applicant’s natural scope of expansion argument was the date
that it first began publishing METROPOLITAN HOME magazine in
1981, applicant failed to prove whether its expansion would
have been natural in 1981. There was no evidence or
testimony as to when Better Homes and Gardens, Martha
Stewart or applicant began marketing products to capitalize
on the goodwill established by their magazines.

came before the magazine. Moreover, the product line and the
magazine were derived from Martha Stewart’s fame. The product
line was not a natural expansion of the magazine.
20 Burns Testimony Dep., p. 78.
Opposition No. 91167800
Opposition No. 91170140
17
In view of the foregoing, applicant’s natural scope of
expansion argument is not persuasive. To the extent that
applicant is arguing that because its METROPOLITAN HOME
magazine is famous, and therefore it is entitled to a broad
scope of protection or exclusivity of use, we note that the
du Pont fame factor addresses the strength of the prior
mark. In re E. I. du Pont de Nemours & Co., 177 USPQ at 567
("(5) The fame of the prior mark"). See also Kenner Park
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992) ("the Lanham Act’s
tolerance for similarity between competing marks varies
inversely with the fame of the prior mark").21
3. Electric lighting fixtures and lamps.
Applicant seeks to register its marks for electric
lighting fixtures and lamps. Applicant intends to license a
modern, high-end, luxury line of electric lighting fixtures

21 Even if we were to consider the fame of applicant’s
METROPOLITAN HOME magazine, and were to agree with applicant’s
argument that, due to the fame of its magazine, purchasers will
associate the mark METROPOLITAN HOME for lighting fixtures,
furniture and candle holders with applicant, there could still be
a likelihood of confusion. Under this scenario, even though
purchasers would not mistakenly believe that opposer is the
source of applicant’s products, the converse may not be true.
The fame of applicant’s mark could lead consumers to mistakenly
assume, upon encountering opposer’s lighting fixtures, that
applicant is the source of those goods or that opposer’s use of
its METROPOLITAN LIGHTING mark is pursuant to a license or other
authorization by applicant. This too is source confusion which
could preclude the registration of applicant’s mark under Section
2(d). See American Hygienic Laboratories v. Tiffany & Co., 12
USPQ2d 1979, 1983 (TTAB 1989); In re General Motors Corp., 196
USPQ 574, 575-576 (TTAB 1977).
Opposition No. 91167800
Opposition No. 91170140
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and lamps.22 However, because the description of goods in
applicant’s application is not restricted to modern, high-
end, luxury electric lighting fixtures and lamps, we must
presume applicant’s electric lighting fixtures and lamps
includes all such products. 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”). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002); CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). In any
event, the testimony establishes that opposer uses its marks
on a broad spectrum of lighting fixtures, including modern
designs that encompass applicant’s electric lighting
fixtures. Accordingly, we find that the goods of the
parties are in part identical (i.e., electric lighting
fixtures).

22 Burns Testimony Dep., pp. 118 (“there’s an opportunity for our
modern point of view to create some exciting designs within that
category”), 120, 139, 174; Burns Discovery Dep., p. 39-40.
Opposition No. 91167800
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4. Furniture.
Applicant seeks to register its marks for furniture.
Applicant intends to feature a modern line of furniture
products.23 Applicant contracted with designer Benjamin
Noriega-Ortiz to create its METROPOLITAN HOME furniture
collection. Mr. Noriega is noted for his “total interior
environments which include custom furniture, rugs and
lighting with classicist aesthetics.”24 Applicant
introduced its METROPOLITAN HOME furniture collection to the
public at the fall 2006 Furniture Market in High Point,
North Carolina.25 “[T]here were room vignettes, where
living room furniture, bedroom furniture were all organized
throughout the whole showroom.”26 According to Mariane
Guarnieri, applicant’s Vice President of Licensing,
“lighting is a part of interior design.”27 Accordingly, “we
are launching a line of furniture, and as a logical

23 Burns Discovery Dep., pp. 39-40.
24 Burns Testimony Dep. Exhibit 33.
25 Burns Testimony Dep., pp. 82 and Exhibit 33. For a variety of
reasons that are not relevant to our analysis, applicant’s
licensee was not able to launch the product line.
26 Burns Testimony Dep., p. 83.
27 Guarnieri Discovery Dep., p. 30. “Interior design” is “the
design and coordination of the decorative elements of the
interior of a house, apartment, office, or other structural
space, including color schemes, fittings, furnishings, and
sometimes architectural features.” The Random House Dictionary
of the English Language (Unabridged), p. 994. See also Burns
Testimony Dep., pp. 9-10 (Metropolitan Home magazine focuses on
home furnishings and interior design, including furniture,
lighting, fabrics, and accessories), 29.
Opposition No. 91167800
Opposition No. 91170140
20
extension, we would need some lighting to go with the
collection of furniture.”28
Opposer’s lighting fixtures are the types of products
that might be displayed for sale in furniture stores.29 In
addition, architects and interior designers might specify
pieces from the METROPOLITAN HOME furniture collection, as
well as METROPOLITAN LIGHTING brand fixtures in buildings
designed by them.30 Also, opposer’s lighting fixtures might
complement some of applicant’s furniture settings. In this
regard, Peter Decsy, opposer’s Vice President, testified
that “we look at lighting as home furnishings. And
furniture is an extension of lighting, and lighting is an
extension of furniture.”31 In view of the foregoing, we
find that opposer’s electric lighting fixtures and
applicant’s furniture are related products. See Drexel
Enterprises, Inc. Prescolite Mfg. Corp., 148 USPQ 92, 93
(TTAB 1965) (electric lighting fixtures and household
furniture are of such nature that that they would be assumed
to originate from a common source were they to be marketed
under similar marks).

28 Guernieri Discovey Dep., p. 35.
29 Decsy Testimony Dep., p. 35 (independent sales representative
sell opposer’s products to retail lighting showrooms and
furniture stores).
30 Decsy Testimony Dep., pp. 35 (independent sales
representatives make calls on architects, specifiers and
designers to promote opposer’s products), 62 (sales
representative distribute catalogs to specifiers and designers).
31 Decsy Testimony Dep., p. 148.
Opposition No. 91167800
Opposition No. 91170140
21
5. Table top accessories and candle holders.

Applicant seeks to register its marks for table top
accessories, namely bowls, platters, and vases, and candle
holders. However, opposer asserts that these products are
related to its electric lighting fixtures because “when we expand
our lighting line, the natural progression is sometimes home
decor type items. And although we don’t have furniture or wall
decor or table top accessories in all the divisions, they
certainly exist in some of the divisions. And at some point in
time in the future, it’s an area that we may wish to expand in.”32
In fact, opposer identifies its table and floor lamps, vanities,
mirrors, boxes, and candle holders with its AMBIENCE mark.33
We note that since 1935, opposer has not expanded its
METROPOLITAN LIGHTING line beyond lighting fixtures, and has
identified its accent pieces under another mark. Thus,
opposer has longed believed that these different products
are best identified by different marks. Also, there is no
evidence of any third parties using the same mark to
identify lighting fixtures and table top accessories or
candle holders. Finally, electric lighting fixtures and
table top accessories and candleholders appear to be very
different products. In view of the foregoing, opposer has
failed to prove that electric lighting fixtures and candle
holders are related products.

32 Decsy Testimony Dep., pp. 148-149.
33 Decsy Discovery Dep., pp. 34, 153.
Opposition No. 91167800
Opposition No. 91170140
22
B. The similarity or dissimilarity of established, likely-
to-continue trade channels and classes of consumers.

1. Opposer’s electric lighting fixtures.
Opposer sells its products through lighting showrooms
and furniture stores.34 The METROPOLITAN LIGHTING product
line is sold in 1,200 retail outlets.35 Also, it is sold
through some online retail sales websites.36 To generate
sales, however, opposer’s independent sales representatives
will make sales calls on architects, specifiers, and
designers.37 Opposer provides sales catalogs to its
independent sales representatives to distribute to their
customers, including designers and specifiers.38 Because
opposer’s METROPOLITAN LIGHTING electric lighting fixtures
are expensive, opposer targets more affluent and
sophisticated consumers.39 Opposer advertises in various
magazines including Architectural Digest, House Beautiful,
Home Observer, Array, and in Metropolitan Home through the
New York Design Center co-op advertising program.40

34 Decsy Discovery Dep., p. 37; Decsy Testimony Dep., p. 35.
Opposer does not sell directly to end users. (Decsy Discovery
Dep., p. 87). Also, opposer does not sell its METROPOLITAN
LIGHTING electric lighting fixtures through its website. (Decsy
Discovery Dep., p. 41).
35 Decsy Discovery Dep., p. 40; Decsy Testimony Dep., p. 154.
36 Decsy Discovery Dep., p. 41.
37 Decsy Testimony Dep., p. 35.
38 Decsy Testimony Dep., pp. 62-63.
39 Decsy Discovery Dep., p. 45; Decsy Testimony Dep., p. 38;
Turits Testimony Dep., p. 36.
40 Decsy Testimony Dep. p. 123 and Exhibits 111-121; Burns
Testimony Dep., pp. 31, 150.
Opposition No. 91167800
Opposition No. 91170140
23
2. Electric lighting fixtures and lamps.
Because we have found that the parties’ goods are in
part identical, with respect to electrical lighting
fixtures, and because there are no restrictions in the
application, we must presume that applicant’s electrical
lighting fixtures are sold in all the normal channels of
trade for those goods, including the retail outlets where
opposer’s goods are sold, to all the usual purchasers,
including the purchasers of opposer’s goods. Thus, we find
that the channels of trade and classes of purchasers are the
same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part (sic) identical and in-part (sic)
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
3. Furniture.
Applicant is developing a licensing program to trade on
the goodwill of its METROPOLITAN HOME magazine in the field
Opposition No. 91167800
Opposition No. 91170140
24
of interior design, including a line of modern furniture.41
The products will be sold by applicant’s licensees, not by
applicant itself.42 Therefore, applicant will not sell the
products through its magazine or its website.43 The
licensees will sell directly to department stores or
retailers.44 The METROPOLITAN HOME furniture collection was
introduced at the fall 2006 Furniture Market in High Point,
North Carolina, for distributors to buy and sell for
retailers; specifically, department stores and higher-end,
independent retail chains.45 Applicant is aiming for an
affluent customer base.46
In analyzing the intended sales of applicant's
METROPOLITAN HOME furniture, we start with the proposition
that because applicant’s description of goods does not
contain any restrictions or limitations as to channels of
trade or classes of consumers, we must presume that
applicant’s furniture moves in all channels of trade normal
for those products, and that they are available to all
classes of purchasers for the listed products. See Hewlett-

41 Guarnieri Discovery Dep., pp. 35, 45 (“Any product that would
be a logical extension of the Metropolitan Home trademark”);
Burns Discovery Dep., pp. 35, 52; Burns Testimony Dep., pp. 78-
79.
42 Guarnieri Discovery Dep., p. 101; Burns Discovery Dep., pp. 62,
65.
43 Guarnieri Discovery Dep., p. 42; Burns Discovery Dep., p. 41.
44 Guarnieri Discovery Dep., p. 133.
45 Guarnieri Discovery Dep., pp. 42-43; Burns Testimony Dep., p.
83 and Exhibit 33.
46 Guarnieri Discovery Dep., p. 138; Burns Discovery Dep., p. 24.
Opposition No. 91167800
Opposition No. 91170140
25
Packard Co. v. Packard Press Inc., 62 USPQ2d at 1004;
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
The evidence shows that opposer sells its electric
lighting fixtures in furniture stores, and that it targets
affluent, sophisticated consumers. Applicant’s furniture
will be sold in furniture stores, and applicant, also,
targets an affluent customer base. Finally, we note that
opposer advertises its products in applicant’s METROPOLITAN
HOME magazine through the New York Design Center co-op
advertising program. Accordingly, we find that applicant’s
furniture and opposer’s electric lighting fixtures move in
the same channels of trade and are sold to the same classes
of customers.
4. Table top accessories and candle holders.
There is no evidence or testimony regarding how and to
whom table top accessories and candle holders are sold.
Even assuming, however, that these products are sold to the
same consumers who would buy opposer’s lighting fixtures,
opposer did not meet its burden of showing that table top
accessories and candle holders move in the same channels of
trade as opposer’s electric lighting fixtures.
Opposition No. 91167800
Opposition No. 91170140
26
C. The strength of opposer’s mark.

Applicant contends that opposer’s mark is inherently
weak, and that it has been used extensively in connection
with electric lighting fixtures and home furnishings and
decorations.47
1. Inherent strength.
To support its argument that METROPOLITAN is an
inherently weak mark, applicant submitted several dictionary
definitions of the word “metropolitan” which means “of,
relating to, or typical of a [city].”48 We also find that
the following evidence relevant as it relates to the
inherent strength of the word “Metropolitan” used as a mark:
a. Amazon.com describes a desk tray it sells as
having an “Elegant Warm Metropolitan Look.”49
b. Furniture companies have a “Metropolitan”
line to identify their modern components.50
c. The name METROPOLITAN LIGHTING was chosen by
opposer’s predecessor-in-interest because the
company was originally located in New York
City, “And New York being a very large
metropolitan area, something that everyone

47 Applicant’s Brief, pp. 25-39.
48 Webster’s II New College Dictionary, pp 690-691 (1995) attached
as applicant’s Exhibit No. 22. See also applicant’s Exhibit Nos.
21, 23 and 24.
49 Woods Dep., Exhibit 47, Tab 29.
50 Burns Discovery Dep., p. 40.
Opposition No. 91167800
Opposition No. 91170140
27
can identify with is where the name was
originated.”51
d. John MacDonald, the Executive Vice President
of Metropolitan Lighting Design Co., Inc.,
located in Virginia, selected the trade name
Metropoliton Lighting Design Co. because the
word “Metropolitan” engenders professionalism
and “that you’re contemporary.”52 Mr.
MacDonald also testified that “[e]verybody
has some type of Metropolitan collection or,
you know, those particular names,”
specifically referencing LLB Lighting (a
Metropolitan fixture) and Kichler.53
e. Gilbert Shapiro, the owner of Urban
Archeology, a manufacturer and wholesaler of
lighing and bathroom accessories, sells a
variety of products identified by a
METROPOLITAN mark, including hanging light
fixtures and wall sconces.54 He selected the
name METROPOLITAN because he “viewed it as
more of a city line . . . it just reminded me
of Manhattan.”55

51 Decsy Discovery Dep., p. 84.
52 MacDonald Dep., p. 25.
53 MacDonald Dep., p. 33.
54 Shapiro Dep., p. 11.
55 Shapiro Dep., p. 20.
Opposition No. 91167800
Opposition No. 91170140
28
f. Robert Pape, the President and CEO of
Lighting Partners Jax, and designer, importer
and marketer of decorative residential
lighting, testified that its predecessor
(Hunter Fan Co. through its Kenroy
International lighting division) used
METROPOLITAN to identify two styles of
portable lamps.56 Kenroy used the
METROPOLITAN name to engender an “urban
appeal” because “Metropolitan is someone who
lives in the city or an appeal of someone who
lives in a city.”57
g. Third-party registrations:58
Mark Reg. No. Goods

METROPOLITAN
COLLECTION
2995868 Kitchen sinks, bathroom sinks,
bathtub and shower enclosures

METROPOLITAN 2812792 Vacuum cleaners, electric fans

56 Pape Dep., p. 14. Mr. Pape was previously employed by his
company’s predecessor. (Pape Dep., pp. 9-10).
57 Pape Dep., pp. 18-19.
58 Applicant’s notice of reliance Exhibits 15-20, 26 and 27. All
the registrations are on the Principal Register and the right to
use the word “metropolitan” is not disclaimed. Third-party
registrations may be probative to show the sense in which a term
is used in commercial parlance. In other words, they are similar
to dictionary definitions. Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1285-1286 (Fed.
Cir. 1984). See also In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991) (third-party registrations may demonstrate the
meaning of a word to show that there is a commonly understood
meaning and the mark conveys that meaning; as a result, multiple
registrations comprising a particular word may show that there is
an inherent weakness in the word at issue).
Opposition No. 91167800
Opposition No. 91170140
29

Mark Reg. No. Goods

METROPOLITAN
BY PETER
BRAMS
2406701 Jewelry

THE
METROPOLITAN
TEA COMPANY
2298374 Kitchen accessories used in
connection with tea

METROPOLITAN 1419216 Mattresses and box springs

METROPOLITAN
WINDOW
FASHIONS
3111384 Retail store, online retail store
and distributorship services in the
field of window treatments

METROPOLITAN 3265682 Furniture for use in patient rooms
and waiting areas of healthcare
facilities

METROPOLITAN
COLLECTION
1725755 Dinnerware, including serving
platters and bowls.

h. Opposer concedes that “Metropolitan” is used
extensively in connection with furniture and
home decorating.59
In view of the foregoing, we find that the word
“Metropolitan” when used as a trademark suggests an urban or
contemporary style.
2. Third-party users.60

59 Decsy Discovery Dep., p. 142.
60 We have not considered the photocopies of the third-party uses
of METROPOLITAN in the discovery deposition of Peter Decsy
(Exhibits 15-41) because they were not authenticated. Starbucks
U.S. Brands LLC v. Ruben, 78 USPQ2d 1741, 1748 (TTAB 2006)
(printed excerpts from Internet web sites that trademark
applicant sought to introduce into evidence during deposition
were not considered because the searches were not conducted by
the witness, and the witness could not name the individual who
conducted search or testify to search parameters, and therefore
the evidence was not properly authenticated). See also Raccioppi
v. Apogee, Inc., 47 USPQ2d 1368, 1370-1371 (TTAB 1998) (Internet
Opposition No. 91167800
Opposition No. 91170140
30

a. Kenroy International.
Robert Pape, a former employee of Hunter Fan Company,
testified that Kenroy International, the lighting division
of Hunter Fan Company, sold two portable lamps identified by
the mark METROPOLITAN: a torchiere and a table lamp.61
Kenroy International sold the METROPOLITAN torchiere from
2001 through 2007, and it sold the table lamp from 2001
through 2005.62 The METROPOLITAN lamps were sold through
“lighting showrooms, furniture stores, catalogs, home
decorating stores.”63 Although Kenroy International did not
actively advertise the METROPOLITAN lamps, they were
promoted through showrooms, catalogs, and websites.64
Kenroy International sold “fewer than several hundred pieces
per year,”65 and therefore it discontinued the METROPOLITAN
line because of poor sales.66
b. Metropolitan Lighting Design Co., Inc.
John MacDonald testified on behalf of Metropolitan
Lighting Design Co., Inc., a Virginia corporation.
Metropolitan Lighting Design was formed in 1986.67 It is a

printouts are not the electronic equivalents of printed
publications, and do not fall within the parameters of Trademark
Rule 2.122(e)).
61 Pape Dep., pp. 14-15.
62 Pape Dep., pp. 15-16.
63 Pape Dep., p. 17.
64 Pape Dep., pp. 19-20.
65 Pape Dep., pp. 26 and 35.
66 Pape Dep., p. 29.
67 MacDonald Dep., p. 10.
Opposition No. 91167800
Opposition No. 91170140
31
lighting designer.68 “It provides design services to
interior design firms, to architectural firms, and those
design services are primarily targeted towards major hotels,
five and six-star hotels, restaurants, and condominium and
apartment buildings.”69 Specifically, Metropolitan Lighting
Design works “with the architect to promote the
architectural design of the building to highlight it in any
way possible using all current lighting technologies. . . .
It also “design[s] lighting fixtures from scratch and have
them custom built by a number of custom manufacturers.”70
Mr. MacDonald estimates that Metropolitan Lighting Design
Co., Inc. has “probably done 500 to 1,000 lighting design
jobs in the past 20 years.”71
Mr. MacDonald is also involved with Metropolitan
Lighting Co., Inc., a wholesale lighting distributor.
Metropolitan Lighting Co. sells to electrical contractors,
builders and developers.72 It purchases products from all
major lighting manufacturers, including opposer and
opposer’s METROPOLITAN LIGHTING electric lighting
fixtures.73 Metropolitan Lighting Co. “does about $10
million a year.”74

68 MacDonald Dep., p. 12.
69 MacDonald Dep., p. 11.
70 MacDonald Dep., p. 12.
71 MacDonald Dep., p. 28.
72 MacDonald Dep., pp. 17-18.
73 MacDonald Dep., pp. 14-15.
74 MacDonald Dep., pp. 28-29.
Opposition No. 91167800
Opposition No. 91170140
32
Mr. MacDonald keeps the two companies separate. If
Metropolitan Lighting Design Co., Inc. is hired to render
services, Metropolitan Lighting Co., Inc. does not sell the
lighting products to customers of Metropolitan Lighting
Design Co.75 Both companies render their services
nationwide.76 Neither company advertises, although
Metropolitan Lighting Design Co., Inc. has a website.77
Finally, Mr. MacDonald testified about instances of
confusion with opposer based on the similarity of their
trade names.
Q. Are you aware of any confusion that’s
arisen between [opposer’s] use of
Metropolitan and your company name?

A. The only confusion is on the 800
telephone listing. I’m listed first.

Q. So people intending to call Minka will
call you because you are listed first?

A. No. People intending to call
Metropolitan Lighting Fixture Company in
New York will call me, and I will just
say – they say, “We need one of your
fixtures.” And I say, “What is your
catalog number?” And then I’ll tell
them Metropolitan’s 888 number. I’ve
been doing that for years.

Q. How many times does that happen?

A. It used to happen a lot. It probably
only happens two or three times a year
right now.78

75 MacDonald Dep., pp. 15-16.
76 MacDonald Dep., p. 15
77 MacDonald Dep., p. 17.
78 MacDonald Dep., pp. 29-30.
Opposition No. 91167800
Opposition No. 91170140
33
* * *

The only people that have ever made the
confusion is when they do it on the 800
number, and then we explain that we’re
designers and we’re not the
manufacturer.79
Joann Turits, opposer’s New York Showroom Director,
testified that she has received purchase orders for products
from the “Metropolitan Lighting Company” in Virgina, and at
least one customer sent the Virginia company a purchase
order meant for opposer.80
c. Urban Archeology.
Gilbert Shapiro, the owner of Urban Archeology, a
manufacturer and wholesaler of lighting and bathroom
accessories, testified that his company sells METROPOLITAN
hanging light fixtures, wall sconces, sink bases, toilet
paper holders, towel bars, glass shelves,and mirrors.81
Urban Archeology sells its products nationwide. It has
approximately 45 distributors and it also sells its products
through its showrooms in New York City, Bridgehampton (Long
Island), Boston and Chicago.82 Its customers are high-end
homeowners, hotels and casinos.83 Urban Archeology first
used the METROPOLITAN mark in the late 1970’s.84 Urban
Archeology features a METROPOLITAN product in two or three

79 MacDonald Dep., p. 31.
80 Turits Dep., p. 72.
81 Shapiro Dep., pp. 10-11, 14.
82 Shapiro Dep., pp. 9-10, 12, 14.
83 Shapiro Dep. p. 14.
84 Shapiro Dep., p. 20.
Opposition No. 91167800
Opposition No. 91170140
34
of its advertisements in six-to-eight regional
advertisements in national magazines.85 Mr. Shapiro opined
that the reason that there has not been any confusion
between his company’s products and opposer’s products is
because his customers are architects and designers who focus
on the product, not the brand name.86
d. David Woods’ Investigation.
David Woods, an intellectual property private
investigator, investigated “a listing of citations with
regard to third-party usage of the name metropolitan on
assorted products.”87 Applicant proffered Mr. Woods’ report
regarding the results of his investigation into evidence.88
The following tables are a summary of the admissible
evidence in Mr. Woods’ report relating to the goods at
issue. Mr. Woods’ report also included other METROPOLITAN
marks for other products not recounted here.

85 Shapiro Dep., p. 24.
86 Shapiro Dep., pp. 29, 32, 38. Ms. Turits also testified that
her customers do not focus on the brand name. Their purchasing
decision is based on the “total design package,” or they simply
buy something that they like. (Turits Testimony Dep., p. 123).
See also Decsy Testimony Dep., p. 38 (“much of the lighting
purchases are based on price points and design or what is most
suitable for the intended purpose”); Decsy Discovery Dep., pp. 45
(“They will buy product that fits their decor the best”), 93-94
(customers are trying to find “something that’s suitable for the
particular location that they’re trying to fill”).
87 Woods Dep.,p. 4.
88 Woods Dep., Exhibit 47.
Opposition No. 91167800
Opposition No. 91170140
35
1. Electrical lighting fixtures.
Third-party Mark Product

Nova Lamps89 METROPOLITAN 84 inch arc lamp

Arteriors
Home
METROPOLITAN Table lamp

Urban
Archeology
METROPOLITAN Hanging lights, interior
sconce, light shade for
sconce

Wilshire Mfg.
Co.90
METROPOLITAN Wall sconce, chandelier

Staccy Garcia
Inc.
METROPOLITAN Chandeliers, table lamps,
floor lamp,

Bellacor
Lighting and
Home
Furnishings
METROPOLITAN Floor lamp, bath fixture,
ceiling light wall lamp, wall
sconce, hanging lamp,
chandelier, wall torchiere

Art Specialty
Company
METROPOLITAN Desk lamp

Quoizel METROPOLITAN Flush mount ceiling lights,

Flos USA,
Inc.
METROPOLITAN Torchiere

Thomas
Lighting
METROPOLITAN Sconce, bath fixture,
chandelier, light pendant,

Capital
Lighting
Fixture
Company
METROPOLITAN Chandelier

89 Because Mr. Woods had to go through a convoluted process to
find the Nova Lamps METROPOLITAN product, this particular third-
party use has little probative value. (Woods Dep., pp. 23-28,
Exhibit 47, Tab 7). It is unlikely that any product this
difficult to find has any significant market impact because
consumers would not go to such lengths to locate the product.
90 These METROPOLITAN lights were found on the Quality Bath
website (qualitybatch.com), not the Wilshire website.
Opposition No. 91167800
Opposition No. 91170140
36
2. Furniture.91

Third-party Mark Product/Services

Metro Office
Furniture
Rental Inc.
METRO Furniture rental services
located in New York City

Metropolitan
Furniture
METROPOLITAN
FURNITURE
Retail furniture store
services (Houston, Texas)

Metropolitan
Furniture
Corporation
METRO Trade name for a furniture
manufacturing company, not
used as a trademark.92

Pottery Barn METROPOLITAN
COLLECTION
Coffee tables, side tables,
console tables,

Amazon.com METROPOLITAN Folding bookcase
(unavailable),
chair (ships from and sold by
target.com)

Target METROPOLITAN Lounge chair, loveseat, sofa,
ottoman

Morris Home
Furnishings
METROPOLITAN Dining table and side chairs
manufactured by FFDM

Braxton
Culler
METROPOLITAN
Collection
Sleeper sofa, sofa

Stickley Audi
& Co.
METROPOLITAN
Collection
Beds, TV consoles, tables,
kitchen island, mobile
servers, chest of drawers,
chairs, buffet

91 The Natuzzi of Italy website was in Italian. (Woods Dep.,
Exhibit 47, Tab 39). Because it is unlikely that an Italian
website is directed toward U.S. consumers, we did not give this
website any consideration. There is also a website for
Metropolitan Furniture in Panama. (Woods Dep., Exhibit 47, Tab
45). However, we cannot tell if the website is directed toward
U.S. consumers, and therefore we did not give this website any
consideration.
92 Woods Dep., Exhibit 47, Tab 20.
Opposition No. 91167800
Opposition No. 91170140
37

Third-party Mark Product

Century
Furniture
Metro Luxe Poster beds, headboards,
chests of drawers, tables,
side boards, chairs

Passport
Furniture
METROPOLITAN Desks, chairs, tables,
cabinets (sold through
Amazon.com)93

Brownstone METROPOLITAN Beds, nightstands, amoires,
chests of drawers, dressers,
benches

Shermag METROPOLITAN
COLLECTION
Dining room furniture

3. Table top accessories.

Third-party Mark Product/Services

Lenox, Inc. METROPOLITAN Flatware (discontinued) but
still available through
websites specializing in
replacement pieces94

Target METROPOLITAN Wall clock

Howard Miller HOWARD MILLER
TRIBECA
METROPOLITAN
TABLETOP CLOCK
Tabletop clock

Waterford METROPOLITAN Clocks, chandlesticks

GI Designs METROPOLITAN Candleholders

Evidence of widespread and significant third-party use
of marks containing elements in common with the mark being

93 Mr. Woods could not find any current use of METROPOLITAN by
Passport Furniture. He found a cached page at Amazon.com.
(Woods Dep., pp. 93-94). Accordingly, we find that there is no
evidence that Passport Furniture is currently using the mark
METROPOLITAN.
94 Woods Dep., p. 18, Exhibit 47, Tab 4.
Opposition No. 91167800
Opposition No. 91170140
38
opposed has been considered in the likelihood of confusion
analysis to demonstrate that the common elements have been
so extensively used by others that purchasers will rely on
other elements of the marks to distinguish source. Carl
Karcher Enterprises Inc. v. Stars Restaurant Corp., 35
USPQ2d 1125, 1131 (TTAB 1995). See also NCTA v. American
Cinema Editors, 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed.
Cir. 1991). How purchasers perceive the common element of
the marks depends on the extent and intensity of their
exposure to the third-party marks. In re The Clorox Co.,
578 F.2d 305, 198 USPQ 337, 343 (CCPA 1978). See also Carl
Karcher Enterprises Inc. v. Stars Restaurant Corp., 35
USPQ2d at 1131; Tiffany & Co. v. Classic Motor Carriages, 10
USPQ2d 1835, 1840-1841 (TTAB 1989). In other words,
applicant has the burden of proving that the third-party
uses have made an impact on the relevant public.
We have carefully considered the evidence of third-
party use, but find that it is not persuasive to reach the
result urged by applicant (i.e., that the word
“metropolitan” is used so extensively in connection with the
goods at issue that consumers will look to the other
elements of the mark to distinguish source).
Applicant’s best evidence of third-party use are John
MacDonald’s Metropolitan Lighting Design Co., Inc. and
Metropolitan Lighting Co., Inc. in Virginia, and Gilbert
Opposition No. 91167800
Opposition No. 91170140
39
Shapiro’s Urban Archeology’s METROPOLITAN Collection of
products. Both companies sell their METROPOLITAN products
and services nationally. However, both opposer and John
MacDonald have testified regarding instances of confusion
because of the use of the name “Metropolitan.” On the other
hand, Mr. Shapiro, at Urban Archeology, testified that, in
his opinion, there has not been any confusion with opposer
because his consumers focus on the product to fit their
design requirements, not on the trademark.
The testimony regarding the Kenroy International
METROPOLITAN lighting product has little probative value
because Mr. Pape testified that his company’s predecessor
stopped selling METROPOLITAN lighting because of poor sales.
For whatever reason, this product did not make a significant
impact on the public.
The evidence from David Woods’ testimony shows that
various companies have identified their products with some
variation of a METROPOLITAN trademark or trade name. There
is no evidence regarding the extent of the use by third
parties, the geographic locations, or the degree to which
the public is aware of these products and services. See AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177
USPQ 268, 270 (CCPA 1973) (listings in trade magazines are
similar to third-party registrations because they do not
provide any information as to sales, length of use, or
Opposition No. 91167800
Opposition No. 91170140
40
customer familiarity). While Mr. Woods’ testimony
establishes that numerous third parties have at one point in
time used METROPOLITAN as a trademark or trade name, we
cannot infer that those uses have been so extensive that the
public has become conditioned to distinguish between those
uses based on small distinctions among the marks. As
indicated above, both opposer and John MacDonald have
testified regarding instances of actual confusion because of
the similarity of their METROPOLITAN marks and trade names.
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods and services.
Century 21 Real Estate Corp. v. Century Life of America, 970
Opposition No. 91167800
Opposition No. 91170140
41
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate
One, Inc. v. Real Estate 100 Enterprises Corporation, 212
USPQ 957, 959 (TTAB 1981); ECI Division of E-Systems, Inc.
v. Environmental Communications Incorporated, 207 USPQ 443,
449 (TTAB 1980).
In addition, in comparing the marks, the test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. 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 USPQ 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 & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
While the marks must be compared in their entireties,
in analyzing the similarity or dissimilarity of two marks,
there is nothing improper in stating that for rational
reasons, more or less weight has been given to a particular
Opposition No. 91167800
Opposition No. 91170140
42
feature of a mark. In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). This is an
important principle in analyzing the similarities in the
appearance and sound of the marks at issue because both
marks start with the suggestive word “Metropolitan” followed
by a descriptive word: METROPOLITAN LIGHTING or
METROPOLITAN LIGHTING FIXTURE CO., INC. and METROPOLITAN
HOME.95 Thus, the word “metropolitan” is the dominant
portion of both marks.
The importance of the word “metropolitan” is further
highlighted by its position as the first word of the marks.
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a
mark which is most likely to be impressed upon the mind of a
purchaser and remembered”). See also Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005)(“Veuve” is the most prominent part of
the mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label); Century
21 Real Estate Corp. v. Century Life of America, supra (upon
encountering the marks, consumers must first notice the
identical lead word).

95 Applicant agreed to disclaim the exclusive right to use the
word “home” in response to the Examining Attorney’s requirement
for a disclaimer because the word “home” is descriptive.
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43
While the marks are not identical, we find that in
terms of appearance and sound, the similarities of the marks
outweigh the dissimilarities. Also, we find that the marks
have similar meanings and engender similar commercial
impressions. As discussed in the previous section, the word
“metropolitan” means of, or pertaining to, a city.
Accordingly, METROPOLITAN LIGHTING suggests city lighting
and the mark METROPOLITAN HOME suggests city home, and the
marks both engender a commercial impression relating to an
urban environment.
In view of the foregoing, we find the similarity of the
marks weighs in favor of finding that there is a likelihood
of confusion.
E. The conditions under which and buyers to whom sales are
made, i.e., “impulse” vs. careful, sophisticated
purchasing.

This du Pont factor focuses on the degree of care
consumers use in purchasing the products at issue. For our
purposes, the issue of consumer care relates to the degree
to which consumers consider the marks, as well as any other
information regarding source. Thus, we analyze consumer
care based on the role trademarks play in the decision
making process and how relevant consumers react to the
METROPOLITAN LIGHTING and METROPOLITAN HOME trademarks. In
considering the role of consumer care in the likelihood of
confusion analysis, we must determine whether the products
Opposition No. 91167800
Opposition No. 91170140
44
at issue are sold under circumstances to insure care in
discerning the source of the goods. Industrial Nucleonics
Corp. v. Hinde, 475 F.2d 1197, 177 UPQ 386, 387 (CCPA 1973).
Applicant contends that the circumstances under which
lighting fixtures and other home furnishings are purchased
minimize the potential for confusion because consumers “can
be expected to exercise care, to deliberate and to seek
professional assistance prior to purchasing such products.
Likewise, these are not impulse purchases and the buyers
tend to be sophisticated.”96 Applicant relies, in part, on
the testimony of Peter Decsy that opposer’s customers are
“more sophisticated” and that opposer’s lighting fixtures
are not impulse puchases.97
However, the evidence of record demonstrates that
consumers for lighting make their purchases based on factors
other than source. Peter Decsy testified that “much of the
lighting purchases are based on price points and design or
what is most suitable for the intended purpose.”98
[W]here a customer walks in to more of
retail-type showroom, they’re going to
be looking at price points and [making
a] selection on their own, sometimes
with the help of an associate from the
lighting showroom, whereas the showroom
that tends to be catered more to the
designer specifier, that end user is

96 Applicant’s Brief, p. 51.
97 Decsy Testimony Dep., p. 38. However, Mr. Decsy also testified
that “[t]he end-users that purchase lighting I don’t think are
very sophisticated.” (Decsy Discovery Dep., p. 45).
98 Decsy Testimony Dep., p. 38.
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45
using the specifier’s or the designer’s
learning, knowledge, experience to help
select the products that would suit
(sic) into their theme or decor.99

In other words, “[t]hey will buy product that fits their
decor the best.”100
Ms. Turits, opposer’s New York Showroom Director,
testified that her customers do not focus on the brand name.
Their purchasing decision is based on the “total design
package,” or they simply buy something that they like.101
Gilbert Shapiro, the owner of Urban Archeology, echoed this
perceiption testifying that his customers are architects and
designers who focus on the product, not the brand name.102
Finally, applicant’s contention that consumers of its
home furnishings are discriminating purchasers who would be
familiar with applicant’s METROPOLITAN HOME magazine is
entitled to little weight because there are no restrictions
in applicant’s applications limiting the goods to particular
channels of trade or classes of consumers. In re Bercut-
Vaandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Accordingly, applicant’s “degree of consumer care” argument
is inconsistent with the description of goods in the
applications (i.e., not all lighting fixtures, furniture,

99 Decsy Testimony Dep., p. 39.
100 Decsy Discovery Dep., pp. 45. See also Decsy Discovery Dep.,
93-94 (customers are trying to find “something that’s suitable
for the particular location that they’re trying to fill”).
101 Turits Testimony Dep., p. 123.
102 Shapiro Dep., pp. 29, 32, 38.
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Opposition No. 91170140
46
and table top accessories are expensive and not all of the
potential consumers for such products are sophisticated,
discriminating consumers). Because the products at issue in
these proceedings may be sold to consumers with diverse
backgrounds and varied levels of expertise, no special
standard of care is applicable to the conditions of sale
factor in our likelihood of confusion analysis.
F. Balancing the factors.
1. Lighting fixtures.
Because the marks are similar, the goods are in part
identical, and there is a presumption that the goods move in
the same channels of trade and are sold to the same classes
of consumers, we find that applicant’s METROPOLITAN HOME
marks for electric lighting fixtures and lamps is likely to
cause confusion with opposer’s METROPOLITAN LIGHTING and
METROPOLITAN LIGHTING FIXTURE COMPANY marks for electric
lighting fixtures.
2. Furniture.
Because the marks are similar, the goods are related,
and the goods move in the same channels of trade and are
sold to the same classes of consumers, we find that
applicant’s mark METROPOLITAN HOME for upholstered
furniture, picture frames and case goods, namely, chests,
night stands, cabinets, dining tables, coffee tables, end
tables, desks, beds, headboards and mirrors is likely to
Opposition No. 91167800
Opposition No. 91170140
47
cause confusion with opposer’s METROPOLITAN LIGHTING and
METROPOLITAN LIGHTING FIXTURE COMPANY marks for electric
lighting fixtures.
3. Table top accessories and candle holders.
The differences between the goods and lack of evidence
in connection with the channels of trade warrant a finding
that there is no likelihood of confusion between applicant’s
mark METROPOLITAN HOME for table top accessories, namely,
bowls, platters, vases, and dinnerware and candle holders
and opposer’s METROPOLITAN LIGHTING and METROPOLITAN
LIGHTING FIXTURE COMPANY marks for electric lighting
fixtures.
In reaching these conclusions, we have carefully
considered all of the evidence pertaining to the relevant
duPont factors, as well as all of the parties’ arguments
with respect thereto (including any evidence and arguments
not specifically discussed in this opinion). To the extent
that we have any doubts regarding the likelihood of
confusion, we resolve them, as we must, in opposer's favor.
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983); Carlisle Chemical
Works v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 111,
112 (CCPA 1970).

Opposition No. 91167800
Opposition No. 91170140
48
Decision:
A. Opposition 91167800 (Serial No. 78200403).
1. The opposition is sustained and registration is
refused in Classes 14 and 20.
2. The opposition is dismissed with respect to
Classes 11 and 21.
B. Opposition No. 91170140 (Serial No. 75810801).
1. The opposition is sustained and registration is
refused in Classes 11 and 20.
2. The opposition is dismissed with respect to Class
21.