This Opinion is Not a
Precedent of the TTAB
Mailed: September 10, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Group Dekko, Inc.
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Serial No. 87725953
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Todd T. Taylor of Taylor IP, P.C.
for Group Dekko, Inc.

John S. Yard, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.

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Before Bergsman, Lykos and English,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Group Dekko, Inc. (“Applicant”) seeks to register on the Principal Register the

mark LUX-ILLUMINAIRE in standard characters for goods ultimately identified as

“electrical lighting fixtures and electrical lighting assemblies for commercial and

office applications consisting primarily of lighting housings, lenses, and electrical

connectors, sold as a unit” in International Class 11.1

1 Application Serial No. 87725953, filed December 19, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce.
Serial No. 87725953

The Trademark Examining Attorney refused registration of Applicant’s mark

pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground

that it so resembles the registered mark ILLUMINAIRE in typed format2 on the

Principal Register for “[e]lectric lighting fixtures” in International Class 11,3 that,

when used on or in connection with Applicant’s identified goods, it is likely to cause

confusion or mistake or to deceive.

When the refusal was made final, Applicant appealed and requested

reconsideration. The Trademark Examining Attorney maintained the refusal to

register and denied the request for reconsideration. The appeal is fully briefed

For the reasons set forth below, we affirm the Section 2(d) refusal.

I. Evidentiary Issue

Before addressing the substance of this appeal, we consider the Examining

Attorney’s objection to Applicant’s submission of website excerpts and Google search

results (Exhibits A-E) and search results from the Trademark Electronic Search

System (“TESS”) (Exhibit F) with its main brief as untimely. In response, Applicant

admits that Exhibit F constitutes new evidence and withdraws the TESS search

results. Applicant justifies the late submission of Exhibits A-E, however, on the

grounds that “[t]he attached exhibits may not be the exact web pages that were

previously present [sic] during prosecution, as web pages are a dynamic thing and

2A typed mark is the legal equivalent of a standard character mark. TRADEMARK MANUAL
OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018).
3 Registration No. 2770175, issued on September 3, 2003; renewed.

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Serial No. 87725953

change over time, but they are close and from the very same web sites.” Reply Brief,

p. 2; 10 TTABVUE 3.

Applicant’s position represents a misunderstanding of Board rules and procedure

regarding the submission of Internet evidence. Making specific pages from a

particular website properly of record during prosecution does not mean that any

updated or additional pages from that website are automatically of record, or can be

made of record on appeal. It is only those pages that were retrieved on a particular

date, properly identified, and timely submitted that are of record. To make Internet

material properly of record, the offering party must provide the full address (URL)

for the web page, and the date it was accessed or printed, either by the information

displayed on the web page itself, or by providing this information in an Office action

or an applicant’s response. See In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018);

In re Canine Caviar Pet Foods, Inc., 126 USPQ2d1590, 1593 (TTAB 2018). If

Applicant wished to submit updated pages from either its own or Registrant’s website

or any other Internet materials, it should have filed with the Board a separately

captioned request for remand for the purpose of submitting additional evidence to

rebut the likelihood of confusion refusal. See Trademark Rule 2.142(d), 37 C.F.R.

§ 2.142(d) (“If the appellant or the examining attorney desires to introduce additional

evidence after an appeal is filed, the appellant or the examining attorney should

submit a request to the Board to suspend the appeal and to remand the application

for further examination.”). See, e.g., In re Juleigh Jeans Sportswear Inc., 24 USPQ2d

1694, 1696 (TTAB 1992). Such a request for remand would also have to include a

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showing of “good cause” (i.e., a satisfactory explanation as to why the evidence was

not made of record prior to appeal), along with the additional evidence sought to be

introduced. See TBMP §§ 1207.01, 1207.02 and 1209.04.

In view thereof, the Examining Attorney’s objection is sustained and the objected-

to evidence submitted concurrently with Applicant’s appeal brief has been given no

consideration.4 See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“[t]he record in

the application should be complete prior to the filing of an appeal. The Trademark

Trial and Appeal Board will ordinarily not consider additional evidence filed with the

Board by the appellant or by the examiner after the appeal is filed.”). See e.g., In re

Fiat Grp. Mktg. & Corp. Commc’n S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014).

II. Likelihood of Confusion – Applicable Law

We turn now to the substantive refusal before us. Our determination under

Section 2(d) is based on an analysis of all of the probative evidence of record bearing

on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315

F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont

factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912

4 We have not considered Applicant’s argument based on the stricken evidence that
Registrant’s mark is no longer used in commerce. Even if we had, Applicant’s assertion
constitutes an improper collateral attack on the cited registration and is irrelevant during ex
parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir.
1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). A trademark registration
on the Principal Register is prima facie evidence of the validity of the registration and the
registrant’s exclusive right to use the mark in commerce in connection with the specified
goods. See 15 U.S.C. § 1057(b).

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Serial No. 87725953

F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). When analyzing these factors,

the overriding concern is not only to prevent buyer confusion as to the source of the

goods, but also to protect the registrant from adverse commercial impact due to use

of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d

1687, 1690 (Fed. Cir. 1993).

In any likelihood of confusion analysis, two key considerations are the similarities

between the marks and the similarities between the goods. See In re Chatam Int’l

Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.

v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The

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.”). These

factors, and the other relevant DuPont factors, are discussed below.

A. The Goods and Established, Likely-to-Continue Channels of Trade

First we compare the goods. As noted above, Registrant’s goods “[e]lectric lighting

fixtures” are identical to the first item listed in Applicant’s electrical lighting products

sold as a unit.5 Applicant, however, attempts to distinguish the goods by noting that

its products are used only in the office furniture and commercial sectors whereas

5 Under this DuPont factor, the Examining Attorney need not prove, and we need not find,
similarity as to each activity listed in the description of goods. It is sufficient for a refusal
based on likelihood of confusion that relatedness is established for any item encompassed by
the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic,
llc, 116 USPQ2d 1406, 1409 (TTAB 2015); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5
(TTAB 2015) (“it is sufficient for finding a likelihood of confusion if relatedness is established
for any item encompassed by the identification of goods within a particular class in the
application.”).

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Serial No. 87725953

Registrant’s lighting products are for other uses such as residential and outdoor.

Applicant’s argument necessarily fails because the respective goods must be

compared as they are identified in the application and the cited registration. See

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d

1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918

F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The fact that Applicant limited its

identification of goods to a particular field of use does not distinguish the goods since

Registrant’s electric lighting fixtures are unrestricted and therefore could also be

used in the office and commercial fields. See, e.g., In re Hughes Furniture Indus., Inc.,

114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of

‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and

commercial furniture.’”). Thus, on their face, Applicant’s and Registrant’s goods are

in-part identical.

Because the goods are in part identical in part and unrestricted as to trade

channels, we must also presume that these particular goods travel in the same

ordinary trade and distribution channels and will be marketed to the same potential

consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.

2012) (even though there was no evidence regarding channels of trade and classes of

consumers, the Board was entitled to rely on this legal presumption in determining

likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,

723 (CCPA 1968) (where there are legally identical goods, the channels of trade and

classes of purchasers are considered to be the same); American Lebanese Syrian

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Serial No. 87725953

Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028

(TTAB 2011). Accordingly, these DuPont factors weigh in favor of finding a likelihood

of confusion.

B. The Marks

Next, we consider “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 (Fed. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these

elements may be sufficient to find the marks confusingly similar.” In re Inn at St.

John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d

1810, 1812 (TTAB 2014)).

“The proper test is not a side-by-side comparison of the marks, but instead ‘whether

the marks are sufficiently similar in terms of their commercial impression’ such that

persons who encounter the marks would be likely to assume a connection between

the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101

USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW

Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Our analysis cannot be

predicated on dissection of the involved marks. Stone Lion, 110 USPQ2d at 1161.

Rather, we are obliged to consider the marks in their entireties. Id. See also Franklin

Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It

is axiomatic that a mark should not be dissected and considered piecemeal; rather, it

must be considered as a whole in determining likelihood of confusion.”). Nonetheless,

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Serial No. 87725953

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 a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at

1161. Finally, it is well-settled that where, as here, the goods are identical in part,

less similarity between the marks is needed for us to find a likelihood of confusion.

Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real

Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.

1992) (“When marks would appear on virtually identical goods or services, the degree

of similarity necessary to support a conclusion of likely confusion declines.”).

Applicant argues that because consumers are more likely to focus on the term

LUX, the first portion of Applicant’s mark, the marks are distinct in appearance and

sound. We disagree. With the exception of the addition of the term LUX, Applicant’s

mark LUX-ILLUMINAIRE is identical to the cited mark ILLUMINAIRE. Adding a

term to a registered mark generally does not obviate the similarity between the

compared marks. See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526

F.2d 556, 557, 188 USPQ 105, 106 (CCPA 1975) (finding BENGAL and BENGAL

LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d

1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar);

In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and

MACHO COMBOS confusingly similar). This is especially true here given that the

additional term LUX as applied to the involved goods is highly suggestive. See The

Latin Dictionary “lux” translated to “light” and third-party registered marks for

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Serial No. 87725953

lighting products incorporating LUX6 submitted with Office Action dated August 28,

2018. Under these circumstances, consumers may perceive Applicant’s products

identified as LUX-ILLUMINAIRE to be a new line of ILLUMINAIRE products.

Overall, Applicant’s applied-for mark is similar in appearance, sound, connotation

and commercial impression to the registered mark. In other words, when considered

in their entireties, the marks are more similar than dissimilar. This DuPont factor

also weighs in favor of finding a likelihood of confusion.

C. Conditions of Sale

Lastly, we consider the conditions under which the goods are likely to be

purchased, e.g., whether on impulse or after careful consideration, as well as the

degree, if any, of sophistication of the consumers. Purchaser sophistication or degree

of care may tend to minimize likelihood of confusion. Conversely, impulse purchases

of inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at

1695.

Applicant argues that the lighting fixtures for the office and commercial sectors

are expensive, and therefore are not impulse purchases. As Applicant contends, such

consumers will devote a great deal of time researching various products to find ones

that meet all of the consumers’ needs. Applicant further asserts that because its and

Registrant’s goods are sold through distributors, the distributors will be able to

distinguish the differences between the brands.

6The registered marks include LUX PRO, URBAN LUX, LUX BY MIGHTY BRIGHT, LUX-
RAY, LUXBETTER, LUX LIGHTING SOLUTIONS & DESIGN, iLUX, LUX COMMANDER,
LUX LINEARIS, LUX EX MACHINA, LUXGUILD, LUXFIT, LUX-PANEL, and LUX.

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Serial No. 87725953

We agree that the relevant consumers are likely to exercise a certain degree of

care due to the intrinsic nature of the involved goods. This DuPont factor therefore

weighs somewhat against a finding of likelihood of confusion.

III. Conclusion – Balancing the DuPont Factors

Although we find that the relevant consumers are likely to exercise some degree

of care, this is outweighed by the strong similarity of the marks, the in-part identical

nature of the goods and overlapping established, likely-to-continue channels of trade.

Balancing the DuPont factors, we find that confusion is likely between Applicant’s

applied-for mark and the mark in the cited registration.

Decision: The Section 2(d) refusal is affirmed.

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