Thomson Multimedia Inc.

Trademark Trial and Appeal Board

Jul 10, 2003

No. 75939305 (T.T.A.B. Jul. 10, 2003)

Mailed:
July 10, 2003
Paper No. 13
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thomson Multimedia Inc.
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Serial No. 75/939,305
_______
Scott J. Stevens of Woodard Emhardt Naughton Moriarty &
McNett for Thomson Multimedia Inc.
Stephanie M. Davis, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Hohein, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Thomson Multimedia Inc. seeks registration on the
Principal Register for the mark GLOW KEYS for goods
identified, as amended, as “remote control transmitters for
consumer electronic products, namely, television receivers,
VCRs, DVD players, satellite receivers, cable TV decoders,
and audio receivers,” in International Class 9.1
1 Application serial no. 75/939,305 was filed by Thomson
Consumer Electronics, Inc. on March 9, 2000 based upon
applicant’s claim of a bona fide intention to use the mark in
commerce. This application was later assigned to Thomson
Multimedia Inc., and this transfer was recorded with the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/939,305
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This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
GLOW CONTROL (with the word CONTROL disclaimed apart from
the mark as shown) which is registered by Jasco Products
Co. for “remote control devices,” also in International
Class 9,2 as to be likely to cause confusion, to cause
mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal but applicant did not request an
oral hearing.
We affirm the refusal to register.
Applicant contends that a review of the federal
register shows that the word “glow” is “non-distinctive.”
As a result, applicant argues that the terms CONTROL and
KEYS are really the dominant elements in these respective
marks, and that given the different meanings of the words
“control” and “keys,” these two composite marks create
different overall commercial impressions. Applicant also
Assignment Division of the United States Patent and Trademark
Office at Reel 2222, Frame 0402.
2 Registration No. 2,065,560, issued on May 27, 1997;
Sections 8 and 15 filed May 27, 2003.
Serial No. 75/939,305
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argues that in light of registrant’s broad identification
of goods,3 it is impossible to determine whether the goods
of applicant are related to those of registrant.
By contrast, the Trademark Examining Attorney takes
the position that the respective marks create substantially
similar overall commercial impressions; that the goods are
closely related, if not identical; and that applicant has
failed to demonstrate the weakness of GLOW-formative marks
in the field of remote controls.
Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Despite applicant’s arguments to the contrary, we find
that applicant’s remote control transmitters for consumer
3 “… [Registrant’s identification of goods] does not specify
in what field those devices apply. If, for example, Registrant
used its GLOW CONTROL goods as remote controls for blasting and
mining operations, or as remote controls for ceiling fans, such
goods would obviously be different than Applicant’s goods…”
[Applicant’s appeal brief, p. 6].
Serial No. 75/939,305
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electronic products are closely related, if not identical,
to registrant’s remote control devices. Although it is not
clear exactly what devices these remote controls are
actually used with, we must presume them to include
universal, multi-device remote controls suitable for use
with consumer electronic products such as those enumerated
by applicant. Hence, for purposes of this critical du Pont
factor, we find the goods to be legally identical.
Moreover, turning to the du Pont factors dealing with
the similarity or dissimilarity of established, likely-to-
continue trade channels as well as the conditions under
which and buyers to whom sales are made, we must presume
that applicant’s goods and registrant’s goods will move
through all of the normal channels of trade to all of the
usual purchasers for goods of the type identified. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987). Hence, in looking to these two related du Pont
factors, we conclude that the channels of trade and classes
of purchasers will be the same.
Accordingly, then, we turn to the question of whether
the respective marks are sufficiently similar such that
their use in connection with these legally identical
Serial No. 75/939,305
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consumer electronic accessories would be likely to cause
confusion.
Despite applicant’s arguments about the overall
dissimilarity of the marks, the Trademark Examining
Attorney continues to emphasize the similarity of the marks
based upon the common GLOW portions of the respective
marks.
Of course, it is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, “there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark … provided the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The proper test
for determining the issue of likelihood of confusion is the
similarity of the general commercial impression engendered
by the marks – not specific differences one can identify
when the marks are subjected to a side-by-side comparison.
See Johann Maria Farina Gegenuber Dem Julichs-Platz v.
Chesebrough-Pond, Inc., 470 F.2d 1385, 176 USPQ 199, 200
(CCPA 1972).
When comparing the marks as to sound and appearance,
it is often the first part of a mark that is most likely to
Serial No. 75/939,305
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be impressed upon the mind of a purchaser and subsequently
remembered. We find that would be the case herein. Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). GLOW is obviously the first term of both
of these marks, and we cannot easily dismiss its source-
indicating significance, as applicant would have us do.
Specifically, applicant argues that the word “GLOW” in
the cited mark is a weak term4 and, therefore, should be
afforded very little protection. As support for this
position, applicant has submitted a copy of an advertising
brochure showing a single example of an RCA universal
remote control having a “glow-in-the-dark” keypad. We
conclude from this ad, as well as the generally understood
meaning of this term, that the word “glow” may well be
suggestive of a feature of a remote control device have
backlit keys.
In arguing against applicant’s position that “GLOW” is
weak in registrant’s mark, the Trademark Examining Attorney
has demonstrated that the only registered mark for remote
controls containing the word GLOW is the cited registration
for GLOW CONTROL. Contrary to applicant’s arguments, the
4 “… [T]he word “glow,” when applied to remote controls, is
not distinctive, but is rather viewed by consumers as a
descriptive term associated with a back-lit display.” (Emphasis
supplied) Applicant’s request for reconsideration of January 2,
2002.
Serial No. 75/939,305
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Trademark Examining Attorney contends that the word GLOW is
strong as applied to these goods, and is the dominant term
in both registrant’s mark and applicant’s mark. In this
context, we specifically note that the cited registered
mark is on the Principal Register and, hence, is entitled
to the statutory presumptions under Section 7(b) of the Act
(e.g., it is prima facie evidence of the validity of the
registration and of registrant’s exclusive right to use the
mark in connection with the goods specified). Applicant’s
argument that the registered mark is entitled to severely
limited protection actually appears to be a collateral
attack on the validity of the registration that cannot be
entertained in the context of an ex parte proceeding.
Accordingly, we find that based on this record, applicant
has failed to demonstrate that the cited mark is weak as
applied to remote control devices.
Then, totally apart from these specific electronic
accessories, applicant has argued consistently during the
prosecution of this application that the term “glow” is
“non distinctive” by referencing the United States Patent
and Trademark Office’s general treatment over the years of
composite marks containing the word “GLOW”:
The propensity of the Trademark Office in granting
registrations to different marks which contain the
term “glow,” for similar or identical goods
Serial No. 75/939,305
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demonstrates that the Trademark Office does not
view the term “glow” as being particularly
distinctive when it appears as an adjective
modifying a noun as the other term in a mark…”
(Applicant’s appeal brief, p. 6). Applicant then proceeds
to highlight a variety of “couplets” of federal
registrations for similar or identical goods where both
registered marks contain the leading word GLOW. These
third-party registrations placed into the record by
applicant do indeed show the term “glow” registered as part
of composite trademarks used in conjunction with a variety
of luminous goods. However, the noted registrations all
involve goods unrelated in any manner to remote control
devices, and most of the identifications of goods contain
words such as “glitter,” “adhesive-backed wall decorations
of celestial bodies,” “glow in the dark stickers,”
“phosphorescent marking compounds,” “decorating materials,”
etc. In composite marks for such goods, it seems that the
word “glow” immediately conveys information about a
significant feature of the involved goods, and was
correctly disclaimed in many of these registrations.
We turn from a discussion of the first word (GLOW) in
each of these marks to the second word in each mark. As to
sound, “control” and “keys” both begin with a similar “k”
sound. As to mearning, in the cited mark, the generic word
Serial No. 75/939,305
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“CONTROL” (used on remote controls) is correctly
disclaimed. While there is no disclaimer of the word
“KEYS” in the instant application, it is clear from the
information submitted by applicant that “keys,” “keypad,”
etc., occur frequently in the descriptions of features of
remote control devices or transmitters. Hence, in looking
closely at applicant’s mark, arguably the words “glow” and
“keys” are both suggestive of remote controls with keypads
having glow-in-the-dark buttons (or keys). In looking
closely at registrant’s mark, arguably the word “glow” is
suggestive while the word “control” is generic.
Accordingly, in determining whether these marks are
confusing similar, we find that the word “KEYS,” coming as
it does at the tail end of applicant’s mark, is unlikely
sufficiently to distinguish it from registrant’s mark
having the generic word “CONTROL” at the end.
Due to the fallibility of memory and the consequent
lack of perfect recall by members of the consuming public,
in determining whether confusion as to source or
sponsorship is likely, the proper emphasis is on the likely
recollection of the average customer, who normally retains
a general rather than a specific impression of trademarks
or service marks. Spoons Restaurants, Inc. v. Morrison,
Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d. No. 92-1086 (Fed.
Serial No. 75/939,305
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Cir. June 5, 1992); In re United States Distributors, Inc.,
229 USPQ 237, 239 (TTAB 1986); and In re Steury
Corporation, 189 USPQ 353 (TTAB 1975). Accordingly, we
also conclude that as applied to remote controls having
glow-in-the-dark keys, the marks, when viewed in their
entireties, have quite similar connotations.
Considering the marks GLOW CONTROL and GLOW KEYS in
their entireties, we are of the view that they are similar
in sound and appearance, and are substantially similar in
connotation. Hence, when compared in their entireties, the
two marks create similar overall commercial impressions.
In conclusion, inasmuch as the goods are legally
identical, we assume that the remote control devices of
registrant and of applicant will move in similar channels
of trade to the same class of ordinary consumers. The
marks GLOW CONTROL and GLOW KEYS create similar overall
commercial impressions, particularly as applied to these
goods. Based upon these key considerations, we conclude
that consumers would be likely to believe mistakenly that
registrant’s remote control devices, sold under the mark
GLOW CONTROL, and applicant’s remote control transmitters
for consumer electronic products, sold under the mark GLOW
KEYS, originated with, or are somehow associated with, or
sponsored by, the same entity.
Serial No. 75/939,305
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Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.