Test Your TTAB Judge-Ability: Are BOW and BOWPERF Confusable for Lighting Fixtures?
Applicant Visionaire Lighting sought to register the mark BOW for "LED (light emitting diode) lighting fixtures," but Examining Attorney William T. Verhosek issued a Secion 2(d) refusal to register, deeming the mark confusingly similar to the registered mark BOWPERF for "lighting fixtures." The goods were legally identical, but are the marks that close? How do you think this came out? In re Visionaire Lighting LLC, Serial No. 85590109 (December 31, 2013) [not precedential].
Applicant Visionaire argued that its goods are used specifically in parking garages, but the Board observed that there was no such limitation in the identification of goods in the subject application, nor is the cited registration limited as to scope. Because the goods are legally identical (applicant's goods being encompassed by those of the registration), the Board must assume that they travel in the same, normal channels of trade to the same classes of customers.
Visionaire urged that its customers are "very savvy," but neither the application nor the registration is contains any limitation as to sophisticated purchasers. Nor was there any evidence that purchasers of LED lighting fixtures are better informed or more careful than ordinary consumers.
Turning to the marks, the Examining Attorney and applicant disagreed as to which portion of the BOWPERF mark is dominant. Applicant Visionaire asserted that the suffix "PERF" stands out in registrant's mark because of its reference to perforations in registrant's goods. [Perhaps this was not a good move by applicant - ed.] The Examining Attorney maintained that BOW is dominant because consumers are generally more inclined to focus on the first part of a mark, and he also pointed to the evidence that PERF is suggestive or descriptive while there was no evidence that BOW is descriptive of the goods.
The Board agreed with the Examining Attorney because of the position of BOW as the initial element of the mark, the lack of meaning of BOW in the context of the goods, giving it greater significance as a source indicator, and the suggestiveness of PERF, which reduces its strength as a source indicator.
There is no reason to believe that BOW would be pronounced differently in the two marks. The mark BOWPERF has no apparent meaning, but applicant and the Examining Attorney "appear to agree" that PERF refers to the perforations in registrant's goods.
Nothing in the record suggested that customers would ascribe some different meaning to BOW in applicant's mark than that of BOW in the registered mark.
The Board found that the overall commercial impressions created by the two marks are similar. Because of the admitted suggestiveness of PERF in the registered mark, "goods sold under the BOWPERF mark could be perceived as a line of BOW brand lighting fixtures having perforated features."
Balancing these pertinent duPont factors, the Board found confusion likely, and it turned out the light on the subject application.
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TTABlog note: So how did you do?
Text Copyright John L. Welch 2014.
posted by John L. Welch @ 1/16/2014
3 comments
3 Comments:
i agree with the ttabs affirmance but this wasnt a wyha
Arguing that the alleged dominant portion of the registrant's mark is descriptive...yikes!
I would agree with the TTAB ruling. Before we even get to the mark, we have two parties putting out very similar products that are unlikely to be the subject of sophisticated purchasing. Light bulbs are unlikely to be rigorously examined and usually purchased in bulk, especially for commercial applications (e.g. parking garage bulbs). Light fixtures/bulbs are ubiquitous and expendable. They are unlikely to warrant extensive testing, and a consumer is likely to rely on a brand she has used before. Barring some extraordinary evidence put forth by the applicant, I think the notion that applicant's customers are "very savvy" is more a compliment than a legal conclusion.
The marks themselves are obviously not identical but close enough to incite confusion. A consumer might assume that the marks are both part of a product line, with the BOWPERF being a more sophisticated and/or durable light fixture (the "-PERF" in this case standing in for "performance"). A consumer could easily be forgiven for assuming that applicant also manufactured the BOWPERF goods, when the goods are viewed side-by-side in a storefront or online. This type of source/origin confusion is exactly what the Lanham Act was authored to inhibit.
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