A recent Trademark Trial and Appeal Board (TTAB) decision is noteworthy for the lighting-design industry. This trademark application rejection sheds light on strategies for lighting designers seeking to protect their trademarks. This begins with the approach to the application process itself.
In In re B-K Lighting, Inc., Serial No. 88769422 (January 27, 2023) [not precedential], the USPTO refused to register “AGI2” for “lighting fixtures,” finding confusion likely with the registered mark “AGI & Design” for lights, lighting assemblies, and light fixtures for architectural signage. As is often the case, applicant B-K Lighting was left scrambling to distinguish its trademark from the cited “AGI & Design” registration. The TTAB’s analysis of nature and relatedness of the goods, the trade channels, and the classes of purchasers, may be helpful to other brands in the lighting industry when trying to protect their trademarks.
If you own a brand, you own a trademark. It can be the company name, the product name, design, sound, or image. Trademark rights arise from use, not registration, although registration is HIGLHY recommended because of the many benefits it provides. Trademark registration at the federal level secures certain rights and remedies to trademark owners. The federal trademark registration process begins with an application. It is critical at an early stage to consider the description of the goods and services as this will likely have consequences in any future challenges to the application whether from the USPTO or a third party. In In re B-K Lighting, Inc., the TTAB concluded the relatedness of the goods, the trade channels, and the classes of purchasers favored Registrant.
B-K Lighting argued the goods are dissimilar because they are sold to different consumers for different purposes: “B-K Lighting’s goods are directed exclusively to consumers and contractors who are looking for light fixtures for residential and commercial properties” but “Registrant’s goods are sold to businesses that need signs.” The TTAB found this argument unpersuasive. B-K Lighting’s “goods as … described … contain no limitation as to purpose, targeted consumer, or channel of trade.” 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)
Trademark take-away: consider limitations in the description as to purpose or targeted consumer.
Because the goods were not restricted, the TTAB “must presume” they were sold in all normal trade channels to all normal classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1906 (Fed. Cir. 2012).
Trademark take-away: consider limitations in the description as to channels of trade.
B-K Lighting argued that confusion is unlikely because consumers “are likely to exercise one of the highest standards of care” when purchasing lighting fixtures since the nature of the goods “clearly require selection with care and deliberation after significant investigation.”
Applicant’s argument was not successful. The TTAB agreed with the Examining Attorney that sophisticated consumers and careful purchasing conditions do not overcome similarity in appearance for identical goods and noted that the record did support a finding of consumer sophistication. “[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. See Sock It to Me, Inc. v. Fan, 2020 USPQ2d 10611, at *7-8 (TTAB 2020). “Board precedent requires our decision to be based on the least sophisticated potential purchasers.” In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion, 110 USPQ2d at 1163).
Trademark take-away: consider limitations in the description as to the targeted consumer and be prepared to support it with evidence.
Any business seeking to strengthen its brand should consider registering its trademarks. However, the federal application process is nuanced and may lead the uninitiated to incorrect assumptions, missed opportunities and ultimately, fatal flaws. Consulting with an experienced attorney is highly recommended. If you have questions about the requirements, the process the cots or any other question about your trademarks, feel free to contact us. no-fee, no-obligation, phone consultation to discuss the scope of the project, what I’ve done for others like you, and discuss my fees if I were to be engaged.
