TTABlog Test: Is AGI2 for Lighting Fixtures Confusable With AGI & Design for Architectural Signage Lighting?

The USPTO refused to register the proposed mark AGI2 for "lighting fixtures," finding confusion likely with the registered mark AGI & Design for lights, lighting assemblies, and light fixtures for architectural signage. Applicant argued that the goods travel in different channels of trade to different customers (consumers and contractors versus businesses), and further that the purchasers are sophisticated and careful. How do you think this came out? In re B-K Lighting, Inc., Serial No. 88769422 (January 27, 2023) [not precedential] (Opinion by Judge Thomas Shaw).

The Board found the goods to be in part legally identical, since applicant’s broadly worded ""lighting fixtures" encompasses all types of lighting fixtures, including registrant’s more narrowly identified lights, lighting assemblies, and light fixtures for architectural signage. Applicant maintained the goods are different because they have different purposes: "Applicant’s goods are directed exclusively to consumers and contractors who are looking for light fixtures for residential and commercial properties. By comparison, Registrant’s goods are sold to businesses that need signs[.]" The Board was unimpressed.

The Board observed that it must consider applicant’s goods as described in its application, where there are no limitations as to purpose, targeted consumer, or channel of trade. Moreover, the Board must assume that the overlapping goods travel in the same channels of trade to the same classes of consumers.

Turning to the marks, the Board unsurprisingly found AGI to be the dominant element in the cited mark, since it is the part that "likely will appear alone when used in text and will be spoken when requested by consumers." The design element is "not nearly as significant as literal element AGI." In applicant's mark, AGI also is the dominant element, since it appears at the beginning of the mark. The numeral "2" suggests that applicant's products will be a newer or second version of earlier products.

Moreover, applicant's mark incorporates the whole of the literal element of the cited mark, and could be displayed in the type style and font. The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

As to the sophistication of consumers, the Board rejected applicant's contention as to the purchasers of "lighting fixtures." Applicant provided no evidence in support, and there are no restrictions in the application as to classes of consumers. "[T]hey are deemed to include both lighting professionals as well as ordinary members of the public, including unsophisticated do-it-yourself homeowners seeking to install new lights." The Board pointed out once again that determinations of likely confusion must be made based on "the least sophisticated potential purchasers."

We note that Registrant’s goods, by their nature, may be directed to more sophisticated consumers. But this alone does not ensure that Registrant’s consumers also will exercise greater than ordinary care and avoid being confused upon encountering Applicant’s goods which are not specialized or directed to a sophisticated consumer. Rather, on the record before us, we think it likely that consumers of Registrant’s goods, upon encountering Applicant’s goods, will think they are a more general line of lighting fixtures directed to a broader market.

And so, the Board affirmed the refusal.

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Text Copyright John L. Welch 2023.