SpaceCo Business Solutions, Inc.

Trademark Trial and Appeal Board

Nov 6, 2013

No. 85198235 (T.T.A.B. Nov. 6, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Hearing: October 24, 2013 Mailed: November 6, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SpaceCo Business Solutions, Inc.
________

Serial No. 85198235
_______

Carl A. Hjort III for SpaceCo Business Solutions, Inc.

David Taylor, Trademark Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Cataldo, Mermelstein and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Spaceco Business Solutions, Inc., filed, on
December 15, 2010, an application to register the mark
ADAPT in standard characters for, as amended, “desktop LED
lighting fixtures for use in commercial and industrial
lighting applications ordered through specialty office
furnishings ordering services” in International Class 11.1

1 Application Serial No. 85198235, based upon applicant’s
assertion of a bona fide intent to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. 1051(a).
Ex Parte Appeal No. 85198235

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The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when
applied to applicant’s goods, so resembles the previously
registered mark EDAPT in standard characters for
“electrical lighting fixtures” in International Class 11 as
to be likely to cause confusion.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs and, in
addition, presented arguments at an oral hearing held
before this panel on October 24, 2013.
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
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). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The

2 Registration No. 3181898 issued December 5, 2006. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
Ex Parte Appeal No. 85198235

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fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
We first turn to consider the du Pont factor regarding
the similarity between the identified goods. The goods in
the cited registration are broadly identified as
“electrical lighting fixtures.” Applicant’s goods,
identified as “desktop LED lighting fixtures for use in
commercial and industrial lighting applications ordered
through specialty office furnishings ordering services,”
are a subset of registrant’s goods. Because registrant’s
goods are broadly identified without limitation as to type,
we must presume that its “electrical lighting fixtures”
include lighting fixtures of all types and manners of use,
including applicant’s more narrowly identified desktop LED
lighting fixtures.3 See, e.g., In re Thor Tech, Inc., 90
USPQ2d 1634 (TTAB 2009)(finding “recreational vehicles,
namely, travel trailers and fifth wheel trailers” to be
encompassed by and legally identical to “trailers”); and

3 We note in addition that, to the extent there was any question
regarding the relationship between the goods as identified in the
involved application and cited registration, the examining
attorney made of record with his March 17, 2011 Office action
internet articles demonstrating that LED lighting products are in
fact a type of electrical lighting fixture.

Ex Parte Appeal No. 85198235

4
In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992)(finding
“computer software for data integration and transfer” to be
encompassed by and legally identical to “computer programs
recorded on magnetic disks”).
Applicant asserts in its brief that its goods are
fundamentally different from those of registrant in nature
and purpose and would not be confused therewith because
registrant’s lights are overhead lighting products, while
applicant’s goods are “LED lighting fixtures for use on an
office desktop.” (Applicant’s Brief at 17; Firkus
Declaration, ¶ 9.)4 However, even if we assume these
asserted facts regarding applicant’s and registrant’s
respective lighting products to be true, they would avail
applicant nothing here. This is because in our comparison
of applicant’s goods and registrant’s goods under the
second du Pont factor, “... it is the identification of
goods that controls, not what extrinsic evidence may show
about the specific nature of the goods.” In re La
Peregrina Ltd., 86 USPQ2d 1645 at 1646 (TTAB 2008). See
also Octocom Systems Inc. v. Houston Computers Services
Inc., 918 F2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);

4 Applicant submitted the Declaration of Darcy Firkus, its
President, with its September 16, 2011 response to the examining
attorney’s March 17, 2011 Office action.

Ex Parte Appeal No. 85198235

5
In re Thor Tech Inc., 90 USPQ2d at 1637; and In re
Association of the United States Army, 85 USPQ2d 1264,
1270-71 (TTAB 2007). As discussed above, registrant’s
identification of goods does not include any limitation or
specification as to the nature or type of its “electrical
lighting fixtures.”5
For these reasons, we find that the “desktop LED
lighting fixtures for use in commercial and industrial
lighting applications ordered through specialty office
furnishings ordering services” identified in applicant’s
application and the “electrical lighting fixtures”
identified in the cited registration are similar and indeed
legally identical, for purposes of the second du Pont
factor. Because the respective goods are legally
identical, we find that the second du Pont factor weighs

5 Moreover, even if this asserted difference between the
respective goods (i.e., overhead lights versus LED office desktop
lights) had been set forth in the respective identifications of
goods in the registration and the application, that would not in
itself have precluded a finding that the respective goods are
similar and related for purposes of the second du Pont factor.
It is not necessary that the respective goods be identical or
even competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is, the
issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to the
source of the goods. See Miss Universe L.P. v. Community
Marketing Inc., 82 USPQ2d 1562, 1568 (TTAB 2007); and In re Rexel
Inc., 223 USPQ 830, 831 (TTAB 1984).

Ex Parte Appeal No. 85198235

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heavily in support of a conclusion that confusion is
likely.
Furthermore, where the goods in a cited registration
are broadly described, such that there are no restrictions
as to trade channels and purchasers, it is presumed that
the identification of goods encompasses not only all goods
of the nature and type described therein, but that the
identified goods are offered in all the normal channels of
trade for such goods, and that they would be purchased by
all the usual customers for them. See, e.g., In re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
In this case applicant’s goods, as identified in its
application, are specifically “ordered through specialty
office furnishings ordering services.” However, because
registrant’s goods are not limited to any particular trade
channel or class of purchasers, we must assume that they
will be available in all trade channels common for
electrical lighting fixtures, including specialty office
furnishing ordering services, and be available to all usual
customers, including customers of applicant’s more narrowly
identified goods. Thus, the customers and trade channels
for registrant’s goods must be presumed to include those of
applicant. As a result, these du Pont factors also weigh
Ex Parte Appeal No. 85198235

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heavily in support of a conclusion that confusion is
likely.
We next turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177
USPQ at 567. In comparing the marks, we are mindful that
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
USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992).
Moreover, in comparing the marks, we observe that
where, as here, the goods are legally 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. Century 21 Real Estate Corp.
Ex Parte Appeal No. 85198235

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v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); and Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
In this case, applicant’s mark ADAPT, is highly
similar in appearance to registrant’s mark, EDAPT, both in
standard characters, inasmuch as the marks differ solely by
their first letter, and otherwise consist of the identical
letters “-DAPT.” In addition, the marks are highly similar
in sound, inasmuch as both contain two syllables, the first
consisting of a vowel in both marks and the second
consisting of the root “-DAPT.” Furthermore, while there
is no correct pronunciation of trademarks, it stands to
reason that the two marks will be verbalized in a very
similar manner by consumers. Cf. In re Teradata Corp., 223
USPQ 361, 362 (TTAB 1984) (“as we have said many times,
there is no ‘correct’ pronunciation of a trademark”).
With regard to meaning or connotation, applicant’s
mark, ADAPT, is a recognized word and suggests that
applicant’s desktop LED lighting fixtures adapt to their
environment or conditions. With regard to registrant’s
EDAPT mark, applicant argues that this tribunal’s
precedential determinations with regard to “E-” formative
Ex Parte Appeal No. 85198235

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marks compel a finding that EDAPT connotes “electronically
adaptable.” (Applicant’s Brief at 12.) See, e.g., In re
Styleclick.com Inc., 57 USPQ2d 1445, 1447 (TTAB 2000) (in
applied-for E FASHION mark, “e” is abbreviation for
“electronic”). Nonetheless, regardless of whether
registrant’s EDAPT mark is perceived as a misspelling of
“adapt” or viewed as “electronically adaptable,” either
connotation is highly similar to that of applicant’s ADAPT
mark. Thus, even if applicant is correct that registrant’s
EDAPT mark connotes lighting fixtures that electronically
adapt, such connotation is closely related to that of
applicant’s ADAPT mark.
Based upon the foregoing, we find that applicant’s
mark is highly similar to registrant’s mark in appearance,
sound and connotation and that, when viewed in the context
of their respective goods, convey highly similar commercial
impressions. This du Pont factor further favors a finding
of likelihood of confusion.
Applicant also urges us to consider consumer
sophistication. To the extent we accept that applicant’s
goods may be marketed to more careful purchasers with some
advanced knowledge of lighting fixtures, we expect that
with highly similar marks used on legally identical goods,
even a careful, sophisticated consumer of these goods may
Ex Parte Appeal No. 85198235

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experience confusion as to their source when offered under
the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943,
948-949 (Fed. Cir. 2000). As stated by our primary
reviewing court, “[t]hat the relevant class of buyers may
exercise care does not necessarily impose on that class the
responsibility of distinguishing between similar trademarks
for similar goods. ‘Human memories even of discriminating
purchasers ... are not infallible.’” In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986) quoting Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Accordingly, we deem this du Pont factor to be neutral or,
at best, to slightly weigh in favor of a finding of no
likelihood of confusion.
Finally, to the extent that any of applicant’s
arguments raise a doubt about likelihood of confusion, we
must resolve that doubt in favor of the prior registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984).
Summary
Decision: The refusal to register under Trademark Act
Section 2(d) is affirmed.