United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88462151
Mark: LIMELIGHT
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Correspondence Address:
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Applicant: Seidenfeld, Joe
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 28, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES PRESENTED IN THIS OFFICE ACTION:
· Section 2(d) Refusal—Likelihood of Confusion
· Prior-filed Applications—Advisory
· Persons Who May Sign Responses & Domestic Pro se Applicant Legal Counsel Advisory
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Applicant’s mark is “LIMELIGHT”, for use with:
Class 9: LED drivers
Class 11: LED (light emitting diode) lighting fixtures; Lighting fixtures
The registered marks are as follows:
U.S. Registration No. 3971066 “LIMELIGHT”, for use with:
Class 9: wireless lighting control systems, namely, computer software, gateways, and radio devices
Class 11: Lighting fixtures
U.S. Registration No. 1868164 “LIMELITE”, for use with:
Class flat electro luminescent low-temperature, light-emitting panel encased in flat housing, with wall plug prongs for connection into electric wall sockets, for use as a soft-glow night light
U.S. Registration No. 4627462 “LIMELITE” and design, for use with:
Class 9: portable lighting apparatus for photography, videography and cinematography, namely, lighting controllers for photography, videography and cinematography; portable battery power sources for photography, videography and cinematography; lighting control panels for photography, videography and cinematography; portable photography equipment, namely, light reflecting apparatus for photography, videography and cinematography, namely, light reflective screens for photography, videography and cinematography and light reflecting umbrellas for photography, videography and cinematography; light diffusing apparatus for photography, videography and cinematography, namely, diffusers for use in photography, videography and cinematography; portable photographic equipment, namely, softboxes for photography, videography and cinematography; portable photographic equipment, namely, collapsible light diffusing screens for photography, videography and cinematography; portable photographic equipment, namely, supports for studio and portable backgrounds for photography, videography and cinematography; portable photographic equipment, namely, supports for photographic light apparatus, namely, light stands; light projection apparatus for photography, videography and cinematography; portable photographic equipment, namely, light stands, supports, poles, booms, boom stands, lighting clamps and lighting clips all for photography, videography and cinematography; portable photographic equipment, namely, bags specially fitted for cameras and photographic equipment; portable photographic equipment, namely, accessories for lighting stands for photography, videography and cinematography, namely, brackets, bars, wind-bracing, sand bags, safety collars, stand holders, cable clips, cable grips, caster wheels, stand attachments; electric cables for cameras and photographic equipment; replacement parts for the aforementioned goods
Class 11: Lighting apparatus for photography, videography and cinematography, namely, LED, fluorescent, tungsten and other continuous light emitting devices, namely, light banks and spotlights; studio lighting apparatus for photographic, videographic and cinematographic studios; lamps; replacement parts for the aforementioned goods
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “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)); TMEP §1207.01(b).
As Compared to Registration No. 3971066
In the present case, applicant’s mark is “LIMELIGHT” and registrant’s mark is “LIMELIGHT”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
As Compared to Registration No. 1868164
Applicant's mark is “LIMELIGHT” and the registrant's mark is “LIMELITE”. The marks are phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv). Thus, applicant's and the registrant's marks are confusingly similar.
As Compared to Registration No. 4627462
Applicant's mark is “LIMELIGHT” and the registrant's mark is “LIMELITE” and design. Here, the word portions of the marks are nearly identical in appearance, and are identical in sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). Thus, applicant's and the registrant's marks are confusingly similar.
Comparison of Goods
As Compared to Goods in Registration No. 3971066
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the goods in the application and registration are identical. Specifically, both applicant and the registrant claim “lighting fixtures.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Applicant's goods also include LED drivers, and the registrant's goods also include wireless lighting control systems, namely, computer software, gateways, and radio devices. Applicant's and the registrant's goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from Inventronics, Philips, and ON Semiconductor showing LED drivers and wireless lighting control systems, namely, computer software, gateways, and radio devices provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.
As Compared to Goods in Registration No. 1868164
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe “lighting fixture,” which presumably encompasses all goods of the type described, including registrant’s more narrow “flat electro luminescent low-temperature, light-emitting panel encased in flat housing, with wall plug prongs for connection into electric wall sockets, for use as a soft-glow night light.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
As Compared to Goods in Registration No. 4627462
Further, as also discussed above, the compared goods need not be identical or even competitive to find a likelihood of confusion. They need only be related in some manner such that they could give rise to the mistaken belief that the goods emanate from the same source.
Applicant's goods also include LED lighting fixtures, and the registrant's goods also include studio lighting apparatus for photographic, videographic and cinematographic studios. Applicant's and the registrant's goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from Savage, Litepanels, and Godox showing LED lighting fixtures and studio lighting apparatus for photographic, videographic and cinematographic studios provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.
Conclusion
The relatedness of the goods here, coupled with the similar and identical marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant should additionally note the advisory below.
PRIOR-FILED APPLICATIONS—ADVISORY
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should additionally note the advisory below.
PERSONS WHO MAY SIGN RESPONSES & DOMESTIC PRO SE APPLICANT LEGAL COUNSEL ADVISORY
A response to an Office action must be personally signed by a qualified practitioner or, if the applicant is not represented by a qualified practitioner, by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer, or a general partner of a partnership). The signatory must personally sign his or her name. For electronic signatures on document filed through TEAS, the signatory must personally enter the elements of the electronic signature. See TMEP §712.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE