Hunt Control Systems, Inc. v. Koninklijke Philips Electronics N.V.

THIS OPINION IS A

PRECEDENT OF THE TTAB

Oral Hearing: Mailed:

November 2, 2010 April 27, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

______

Hunt Control Systems, Inc.

v.

Koninklijke Philips Electronics N.V.

_____

Opposition No. 91173417

to application Serial No. 79006105

filed on September 3, 2004

_____

Luke Santangelo of Santangelo Law Offices, P.C. for Hunt

Control Systems, Inc.

David M. Kelly of Finnegan, Henderson, Farabow, LLP for

Koninklijke Philips Electronics N.V.

______

Before Quinn1, Wellington, and Ritchie,

Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Koninklijke Philips Electronics N.V. (“applicant”), a

Dutch corporation, filed an application to register the mark

1

Administrative Trademark Judge James T. Walsh participated in

the oral hearing held before the Board on November 2, 2010. He

has since retired from the Board. Judge Quinn has been

substituted for Judge Walsh as a member of the panel deciding

this case. The change in composition of the panel does not

necessitate a rehearing of the oral argument. See, In re Bose,

772 F.2d 866, 227 USPQ 1, 4 (Fed. Cir. 1985).

Opposition No. 91173417

SENSE AND SIMPLICITY (in standard character format) for

goods in four different international classes, including a

lengthy identification of goods in International Class 9.2

Hunt Control Systems, Inc. (hereinafter, “opposer”) has

opposed registration of applicant’s mark, but only in regard

to certain goods in International Class 9, namely,

“electrical light dimmers, electrical circuit boards,

printed circuit boards, electrical circuits for electrical

conduction, printed circuits, [and] electrical

controllers.”3 As its ground for opposition, opposer

alleged that Hunt Control Systems, Inc. is an “assumed trade

name of Caribe Corporation” which is the owner of

application Serial No. 76596112 for the mark SIMPLICITY;4

that “since at least March 15, 1994, [opposer] has been, and

is now, using the mark SIMPLICITY in connection with the

sale of electrical light dimmers and lighting control

2

Application Serial No. 79006105 is a request for an extension

of protection, based on an international registration, under

Section 66(a). For USPTO purposes, the application has been

accorded a priority date of May 27, 2004, under Section 67.

3

Opposer’s contention that the scope of its opposition is

broader than this list will be discussed infra.

4

Since the filing of the notice of opposition, the application

matured into Registration No. 3254393 (issued on June 26, 2007)

covering the goods: “industrial and commercial electrical

lighting control panels.” The record establishes that the owner

of the registration, Caribe Corporation, is the holding company

for opposer, and that the two are separate legal entities.

Glaser Dec. 2:6-9; Certified status and title copy of the

registration was submitted under notice of reliance and is

identified as Trial Exhibit 9.

2

Opposition No. 91173417

panels” and that said use “has been valid and

continuous...and has not been abandoned”; and that

applicant’s mark and goods “so resembles Opposer’s mark

SIMPLICITY, that has been previously used in the United

States for electrical light dimmers, electrical control

panels and their related components, and not abandoned, as

to be likely to cause confusion, or to cause mistake, or to

deceive.”

In its answer, applicant admitted that opposer has

“made use” of its SIMPLICITY mark, but otherwise denied the

other allegations in the notice of opposition.

Scope of the Proceeding and Preliminary Matters

Several issues have been raised by motion during the

trial and briefing of this proceeding that require attention

before we can address the record and the merits of the

opposition. Specifically, the parties dispute the extent of

the goods in applicant’s application that are the subject of

this opposition; the scope of opposer’s goods that were

pleaded and should be considered for purposes of a

likelihood of confusion analysis; and the relevance of

opposer’s pleaded application and resulting registration.

A. Madrid Applications and Scope of Opposed Goods

The opposed application is a request for an extension

of protection under the Madrid Protocol, based on an

international registration, under Section 66(a), 15 U.S.C. §

3

Opposition No. 91173417

1141 of the Trademark Act. Applications filed under Section

66(a), often referred to as “Madrid applications,” are

treated differently in many key respects from other

applications. To fulfill its obligations under the Madrid

Protocol, the USPTO has promulgated regulations to

accommodate the particular aspects of these applications.

See Rules of Practice for Trademark-Related Filings Under

the Madrid Protocol Implementation Act, 68 Fed. Reg. 55, 747

(Sept. 26, 2003); see also, In re Börlind Gesellschaft für

kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005), for

additional discussion. For example, Trademark Rule

2.101(b)(2) provides that any opposition to a Section 66(a)

application must be filed through the USPTO ESTTA electronic

filing system. Further, Rule 2.107(b) provides that,

“pleadings in an opposition proceeding against [a 66(a)

application]... may not be amended to add to the grounds for

opposition or to add to the goods or services subject to

opposition.” The impetus behind the aforementioned rules is

that the USPTO must promptly inform the International Bureau

of the World Intellectual Property Organization of the

institution of the opposition against the Madrid

application. Accordingly, ESTTA requires the opposer of a

Madrid application to provide essential information

involving the opposition including, inter alia, the specific

4

Opposition No. 91173417

goods and/or services in the application it is opposing,5

the ground(s) for opposition, and the application or

registration number for any mark owned by the opposer and

cited as a basis for the opposition. ESTTA then generates

an opposition form entitled “Notice of Opposition” that

lists, among other items, the information provided by the

opposer. This form, along with any attached supplementary

elaboration of the basis for the opposition, serves as the

complaint in the opposition proceeding. PPG Industries Inc.

v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB

2005)(ESTTA-generated opposition form is an integral part of

the pleading). The USPTO’s automated systems automatically

forward the information included in the Section 66(a)

application and the ESTTA opposition form to the

International Bureau.

As to the scope of the goods being opposed, the instant

opposition to the involved Section 66(a) application

necessarily is limited to the six specific goods identified

5

After confirming that the application is ripe for opposition,

ESTTA presents the opposer with the option of identifying the

goods and/or services that it seeks to oppose. For each and

every class in the application, the opposer must choose whether

it is opposing all, none, or some of the goods and/or services.

If the opposer chooses to oppose some, but not all of the items

in the class, it may edit (by “deletions only”) the

identification(s) of goods and services so that only the opposed

goods or services remain.

When opposer herein completed the ESTTA opposition filing,

it identified the opposed goods by deleting all of the goods in

International Class 9, but for six items, and checked “none” (no

goods being opposed) with regard to the application’s other two

international classes of goods.

5

Opposition No. 91173417

on the ESTTA opposition form and referenced at the beginning

of this decision. Again, these goods are: electrical light

dimmers, electrical circuit boards, printed circuit boards,

electrical circuits for electrical conduction, printed

circuits, and electrical controllers in International Class

9. Opposer argues that the scope of the opposed goods is

wider because, in the supplementary explanation of the basis

for the opposition that was attached to the ESTTA opposition

form, opposer specifically recites the same six goods and

adds to such recitation “and related products in

International Class 9” as constituting the objectionable

goods.

Although we must consider both the ESTTA-generated

notice of opposition form and opposer’s attached notice of

opposition as constituting the entire operative complaint,

opposer may not rely on the language “and related products”

in the latter attachment to include in its opposition goods

that were not specifically identified in the former, i.e.,

the ESTTA-generated notice of opposition form. In other

words, with respect to Section 66(a) applications, all

oppositions must be confined to the opposed goods identified

by opposers on the ESTTA-generated opposition forms. All

pertinent information regarding oppositions sent to the

International Bureau is ascertained solely from the ESTTA-

generated notice of opposition and the application itself.

6

Opposition No. 91173417

That is why Office rules require an opposition to a Section

66(a) application to be filed via ESTTA and preclude the

opposer from amending the scope of the opposed goods.

We see no perceived or actual unfairness to opposer in

limiting the opposition to those six items specified on the

ESTTA-generated notice of opposition. Opposer, on its own,

took the affirmative step of identifying International Class

9 as the only class being opposed and took the additional

step of deleting all of the goods, but for the six specified

items (see footnote 5). Thus, any argument that the

language “and related products” should somehow include goods

that opposer previously deleted is specious, at best.

Simply put, for an opposition against a Section 66(a)

application, the Board will not allow an opposer, in an

attachment to the ESTTA form, to add to the goods listed in

the ESTTA-generated notice of opposition form. To allow an

opposer to do so would violate the purpose of Rule 2.107(b),

and would result in an opposition impermissibly broader in

scope than noted in the information provided by the USPTO to

the International Bureau, contrary to the USPTO’s

obligations under the Madrid Protocol.

B. The Scope of Opposer’s Goods

Applicant argues that opposer’s asserted common law

rights in its SIMPLICITY mark should be limited to “lighting

control panels and electrical light dimmers” for purposes of

7

Opposition No. 91173417

this opposition. As previously noted, opposer pleaded

common law rights in its mark based on prior use of the mark

for those goods, as well as “their related components.”

Applicant asserts that the latter language is “ambiguous”

and “gave [applicant] neither ‘fair notice’ nor ‘sufficient

detail’ of the basis for [opposer’s] claim of common law

rights.” Brief, p. 31. We disagree and, to the extent that

opposer has shown that it has prior use on goods that are

“related components” of lighting control panels or

electrical light dimmers, find that opposer may rely on use

of the mark for said goods for purposes of establishing a

likelihood of confusion.

Inasmuch as lighting control panels and electrical

light dimmers are sufficiently clear in their description,

we do not see how the meaning of “related components” of

these goods is lost on applicant. Had applicant believed

that the wording “and their related components” was not

sufficiently clear, it could have taken discovery in this

regard or filed a motion for a more definite statement under

Fed. R. Civ. P. 12(c). Applicant did not file such a motion

and, at least at the pleading stage of this proceeding,

appeared to have had no problem with such language because

it used the same wording (“and their related components”) in

its answer to deny opposer’s allegations. See Answer,

paragraph 7.

8

Opposition No. 91173417

Accordingly, we find the opposition encompasses

opposer’s asserted common law rights in its SIMPLICITY mark

for the related components of lighting control panels or

electrical light dimmers. Of course, opposer must establish

that these “related components” are indeed related to the

specified goods, in addition to establishing its common law

rights in the goods and components.

C. Opposer’s Pleaded Application/Registration

Applicant objects to opposer’s reliance upon the

SIMPLICITY registration that matured from the pleaded

application. We agree that opposer may not rely on the

registration, but not for the reasons raised by applicant.6

That is, opposer’s holding company Caribe Corporation is the

6

For sake of completeness, applicant’s stated objections are not

well-taken. Applicant was clearly put on notice that opposer

sought to rely on the application that later matured into a

registration and applicant had an opportunity to object to

issuance of a registration, either by way of a notice of

opposition when the mark in the application was published, or by

way of a counterclaim for cancellation once the registration

issued. See UMG Recordings Inc. v. O’Rourke, 92 USPQ2d 1042,

1045 n.12 (TTAB 2009)(“The pleading of the application … provided

sufficient notice to the applicant that the opposer would rely on

a registration from the application for its likelihood of

confusion claim.”) Moreover, it is clear that once a

registration based on the pleaded application issued to opposer

and was not contested by applicant, priority would not be an

issue in this case with respect to the goods covered by said

registration. Id. (“while an opposer that pleads ownership of an

application would have to make any subsequently issued

registration of record, it would not have to amend its notice of

opposition prior to doing so); see also, King Candy Co. v. Eunice

King’s Kitchen, Inc., 496 F.2d 1400 (CCPA 1974)(noting that

Section 2(d) of the Act provides that an applicant may not

register its mark unless it causes confusion with “a mark

registered in [the USPTO], or ...previously used.” 15 U.S.C. §

1052(d), emphasis added.)

9

Opposition No. 91173417

named owner of the registration (see footnote 4) as

reflected by USPTO records, and the presumptions afforded by

Section 7(b) of the Trademark Act, 15 U.S.C. §1057, do not

inure to opposer; opposer may not rely on said registration

for purposes of priority. See Chemical New York Corp. v.

Conmar Form Systems, Inc., 1 USPQ2d 1139, 1144 (TTAB 1986)

(wholly-owned subsidiary of owner of registrations may not

rely on registrations to prove priority); Yamaha

International Corp. v. Stevenson, 196 USPQ 701, 702 (TTAB

1979) (opposer could not rely on 7(b) presumptions where

registration is owned by its parent company); Fuld Brothers,

Inc. v. Carpet Technical Service Institute, Inc., 174 USPQ

473, 475-76 (TTAB 1972) (although petitioner can rely on its

wholly-owned subsidiary’s use of a mark, petitioner cannot

rely on the registrations owned by its wholly-owned

subsidiary for statutory presumptions); and Joseph S. Finch

& Co. v. E. Martinoni Co., 157 USPQ 394, 395 (TTAB 1968)

(opposer cannot rely on registrations owned by its parent or

its parent’s subsidiaries). See also TBMP 704.03(b)(1)(B)

(2d ed. rev. 2004).

Although opposer may not rely upon the registration for

the above-mentioned purposes, the registration remains part

of the record.

We would be remiss if we did not point out that our

findings above in sections (B) and (C) are not outcome

10

Opposition No. 91173417

determinative with respect to the likelihood of confusion

ground. Opposer’s inability to rely upon the pleaded

registration is not crucial in view of applicant’s

acknowledgment, in its brief and at oral hearing, that

opposer has established prior common law rights in its mark,

SIMPLICITY, on “lighting control panels and electrical light

dimmers.” See Applicant’s Brief at p. 32. Opposer’s prior

common law rights in its mark for these goods are conceded

by applicant. Moreover, because opposer’s prior common law

rights cover goods that are identical to certain goods being

opposed, i.e., electrical light dimmers and controllers, we

focus on these goods for purposes of our likelihood of

confusion analysis and we need not also make determinations

regarding the similarity or dissimilarity of any of

opposer's other pleaded goods vis-à-vis the other opposed

goods in the application. Similarity between any of the

opposer’s goods and any of the opposed goods will suffice as

a basis for purposes of the second du Pont factor, and

dictates refusal as to all of the opposed goods in the

class, should the ultimate conclusion in the case be that a

likelihood of confusion exists. See Tuxedo Monopoly, Inc.

v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988

(CCPA 1981).

11

Opposition No. 91173417

Record

The record includes the pleadings and, by operation of

Trademark Rule 2.122(b)(1), the file of the opposed

application.

On April 30, 2009, the parties filed a stipulation to

the authenticity of documents produced, allowing each party

that obtained documents in discovery from the other party

under Fed. R. Civ. P. 34 to make said documents of record by

notice of reliance alone. And, on May 29, 2009, the parties

filed a second stipulation permitting the introduction of

testimony in affidavit or declaration form (within certain

guidelines set forth in the stipulation).

During its testimony period, opposer filed the

testimonial declaration of Alan John Glaser, president of

Caribe Corporation, a holding company and owner of opposer.

Exhibits referenced in the Glaser declaration, and various

other documents and materials, including portions of the

discovery depositions of applicant’s witnesses Geert Van

Kuyck and Terry A. Fassburg, were submitted under numerous

notices of reliance.7 Opposer also filed the declaration of

Dan Hoffman, principal and founder of Market Perspective.

Applicant has submitted the testimonial declarations,

some with exhibits, of the following persons: Terry A.

7

The proper procedure for filing trial deposition exhibits is to

submit them with the copy of the transcript being filed.

12

Opposition No. 91173417

Fassburg, Vice President for Corporate Communication at

Philips Electronics North America Corporation (a subsidiary

of applicant); Mary Beth Walker, counsel for applicant;8

Geert Van Kuyck, Chief Marketing Officer for applicant;

Michael B. Mazis, Ph.D., Professor Emeritus of Marketing at

American University’s Kogod School of Business; Carolyn C.

Kerr, Director of Marcom and Brand for Philips Lighting

Company, a subsidiary of applicant; Steven K. Claremon,

litigation clerk for applicant’s counsel; Scott T. Harlan,

an attorney at applicant’s counsel’s law firm; April E.

Reeves, litigation clerk for applicant’s counsel; and Edward

W. Goodman, Senior IP Counsel for Philips Electronics North

America Corporation. In addition, applicant filed the

cross-examination testimony of Mssrs. Hoffman and Glaser,

with exhibits. Under notices of reliance, applicant

submitted copies of the following: dictionary definitions,

certain responses from opposer to applicant’s discovery

requests, USPTO electronic database printouts of third-party

registrations and applications, excerpts from the discovery

deposition testimony of Mr. Glaser and, pursuant to Rule

2.120(j)(4), excerpts from the discovery depositions of its

witnesses Messrs. Fassburg and van Kuyck.

8

Applicant submitted several declarations of Ms. Walker during

the course of this proceeding. The two testimonial declarations,

filed November 4, 2009, involve “inspection of opposer’s document

production” and “internet evidence.”

13

Opposition No. 91173417

In its rebuttal testimony period, opposer submitted a

“rebuttal” declaration of Mr. Glaser; non-confidential

excerpts from Mr. Glaser’s discovery deposition to “provide

context to and further explain the portions of the

deposition evidence submitted by [applicant]”; and copies of

printouts from applicant’s website and news articles.

Opposer and applicant have filed trial briefs,

including a reply brief from opposer.

Applicant’s Evidentiary Objections and Motions to Strike

Applicant has filed several motions to strike and

otherwise raised numerous objections to certain evidentiary

submissions from opposer. Many of these objections are

overruled or otherwise rendered moot based on the reasoning

and holdings discussed above. Applicant’s objection to

opposer’s reliance on Registration No. 3254393 is sustained

because opposer is not the owner of said registration.

Applicant also objects to opposer’s reliance on testimony

and evidence pertaining to goods of applicant that are not

specifically opposed in the notice of opposition, e.g.,

light bulbs. Applicant argues that the testimony and

evidence is irrelevant and thus inadmissible under Fed. R.

Evid. 402. Although opposer submitted testimony and

evidence involving applicant’s goods that are not being

opposed, we decline to strike this testimony or exhibits on

that basis in this proceeding. Without losing sight of

14

Opposition No. 91173417

applicant’s specific goods that are the subject of this

opposition, we simply accord the evidence whatever probative

value it deserves, if any at all. In similar fashion, we

decline to strike other evidence submitted by opposer,

including a business survey conducted by opposer itself, Mr.

Glaser’s testimony regarding purported instances of actual

confusion, and other documents and internet printouts.

Ultimately, the Board is capable of weighing the relevance

and strength or weakness of the objected-to testimony and

evidence in this specific case, including any inherent

limitations, and this precludes the need to strike the

testimony and evidence. Given the circumstances herein, we

choose not to make specific rulings on each and every

objection. As necessary and appropriate, we will point out

in this decision any limitations applied to the evidence or

otherwise note that the evidence cannot be relied upon in

the manner sought. Ultimately, while we have considered all

of the evidence and arguments of the parties, we have

primarily relied on the evidence discussed herein.

Finally, we address opposer’s reliance on evidence and

testimony that derives from or pertains to the parties’

communications in attempting to settle this matter.

Applicant objects to any reliance upon this evidence, citing

to Fed. R. Evid. 408 (prohibiting, with exceptions, use of

“conduct or statements made in compromise negotiations”).

15

Opposition No. 91173417

In response to the objection, opposer states that this

evidence was “offered only to counter [applicant’s] claim

that [applicant] was unaware of what [opposer] claimed to be

‘related products’ until it received [opposer’s] trial

brief.” Reply Brief, p. 20. Inasmuch as the scope of the

opposed goods has been resolved for reasons wholly unrelated

to this evidence, opposer’s stated sole purpose for relying

upon this evidence has been negated. We have not considered

this evidence.

Standing and Priority

Opposer has established its standing in this proceeding

through the testimony of Mr. Glaser that opposer is in the

business of selling various electrical lighting control

products bearing the SIMPLICITY mark.

As previously alluded to, opposer has established

through the trial declaration testimony of Mr. Glaser that

opposer, and its predecessor-in-interest, has used the

SIMPLICITY mark on goods that include lighting control

panels and electrical light dimmers since at least 1986.

Glaser Dec. at 3-6. Again, applicant has conceded this use

and opposer’s priority with respect to those specific goods.

Applicant’s Brief, p. 32 (“The evidence of record

establishes that prior to [applicant’s] priority date for

its SENSE AND SIMPLICITY Application, Hunt had sold only

16

Opposition No. 91173417

lighting control panels and electrical light dimmers in

connection with its SIMPLICITY mark.”)

Likelihood of Confusion

Our determination of the issue of likelihood of

confusion is based on an analysis of all of the probative

facts in evidence that are relevant to the factors set forth

in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973). See also, In re Majestic Distilling

Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).

We initially address the du Pont factors involving the

similarity or dissimilarity of opposer’s goods in relation

to applicant’s goods being opposed, their channels of trade,

and the conditions of purchase. As to the goods themselves,

we have already pointed out that the parties’ goods are in

part legally identical. Opposer’s electrical light dimmers

are the same as those opposed in the subject application and

applicant admits this in its brief at p. 42 (“one product

from [applicant’s] SENSE AND SIMPLICITY application,

‘electrical light dimmers,’ is identical to one of

[opposer’s] products.”) Furthermore, applicant’s

“electrical controllers” is a broad term encompassing

opposer’s lighting control panels and, as a result, the

respective goods are legally identical.

As to the trade channels and purchasers of the goods,

opposer has established through the Glaser trial declaration

17

Opposition No. 91173417

and testimony, with exhibits, that opposer’s products range

in use from “residential, commercial, and industrial wall

box controls and switch controls all across the spectrum of

lighting sources.” Glaser Dec. 17:12-14. Referencing one

of opposer’s websites, Mr. Glaser testified that the type of

purchaser for the goods on the website “runs the gamut of

our lighting industry” and would include “at the

professional level...a specifier, an architect, or an

engineer that might want to purchase or perhaps to specify

the item, so they could be here looking for more information

to make a decision on which item that they think would best

fit their client’s needs and so then to specify the item.”

Glaser Dec. 14:5-9. In addition, the purchaser “could range

from a commercial building owner to a homeowner. A broad

type of purchaser or consumer can be involved in [opposer’s]

lighting industry.” Glaser Dec. 14:17-18. To reach its

customers, opposer advertises its products through various

outlets, including trade shows, press releases and trade

magazines.

As to the commonality of the trade channels and

purchasers, opposer has shown that applicant has had a

presence at several of the same trade shows. Glaser Dec. at

26, 31-33 (with various related exhibits). Opposer and

applicant, through its subsidiaries, are also charter

members of the Lighting Controls Association, an industry

18

Opposition No. 91173417

consortium seeking to “grow the lighting controls industry

through education.” Glaser Dec. 4:20-5:3. Moreover,

because there are no restrictions or limitations in

applicant’s description of goods, we must assume that

applicant’s electrical light dimmers and electrical

controllers are sold in all of the normal trade channels for

such goods and to all of the normal purchasers for such

goods, including opposer’s channels of trade and purchasers

as demonstrated by the record.

Accordingly, in view of our finding that the parties’

goods are identical in part, have the same channels of

trade, and are sold to the same purchasers, these du Pont

factors all support a determination that a likelihood of

confusion exists.

Although we have concluded that the classes of

purchasers are the same, we must also 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. In this regard, we have noted often that merely

because the goods are expensive or purchased after careful

deliberation does not mean that the purchasers are

sophisticated in trademark matters, or that confusion would

therefore be avoided. Even consumers who exercise a high

degree of care are not necessarily knowledgeable regarding

19

Opposition No. 91173417

the trademarks at issue, and therefore immune from source

confusion. In re Wilson, 57 USPQ2d 1863, 1865-66 (TTAB

2001); In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988)

(“Being knowledgeable and/or sophisticated in a particular

field does not necessarily endow one with knowledge and

sophistication in connection with the use of trademarks.”).

Applicant points to the testimony of opposer’s witness,

Mr. Glaser, and argues that opposer’s customers are “highly

sophisticated and make purchases only after careful

consideration.” Brief, p. 23. On cross-examination, Mr.

Glaser did state that the purchasers of its larger and more

expensive “systems” were commercial users, but he further

testified that opposer also markets “components” such as

lighting and dimming controls that are less complicated,

less expensive and for residential use. Glaser Cross

159:10-164:12. These goods include the type of electric

lighting and dimming controls that may be purchased by

individual homeowners at the retail store level. Glaser

Cross 160:21-162:13. Thus, while some of opposer’s

customers may be considered sophisticated, this is not true

for all products and we cannot conclude that the non-

sophisticated consumers constitute a de minimis number.

Accordingly, we must consider the customers who will be

exercising only the usual amount of care or diligence when

20

Opposition No. 91173417

purchasing goods such as the electric lighting and dimming

controls.

We turn then to the du Pont factor concerning the

similarity or dissimilarity of the marks when viewed in

their entireties in terms of appearance, sound, connotation

and commercial impression. See Palm Bay Imports, Inc. v.

Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d

1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In doing so, we have

also considered applicant’s arguments directed to what it

believes is the lack of strength of opposer’s SIMPLICITY

mark. Finally, we also keep in mind that when marks would

appear on identical goods, as they do in part here, the

degree of similarity between the marks necessary to support

a finding of likelihood of confusion declines. See Century

21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698

(Fed. Cir. 1992).

The obvious similarity in appearance and sound between

the parties’ marks stems from the fact that applicant’s

proposed mark, SENSE AND SIMPLICITY, incorporates opposer’s

previously used and registered mark, SIMPLICITY, in its

entirety.

In cases such as this, a likelihood of confusion has

frequently been found. “When one incorporates the entire

arbitrary mark of another into a composite mark, the

inclusion of a significant, non-suggestive element will not

21

Opposition No. 91173417

necessarily preclude a likelihood of confusion. [Internal

citations omitted]. An inclusion of a merely suggestive or

descriptive element, of course, is of much less significance

in avoiding a likelihood of confusion.” The Wella Corp. v.

California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422

(CCPA 1977) (CALIFORNIA CONCEPT and surfer design is similar

to the mark CONCEPT). See also Coca-Cola Bottling Co. v.

Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA

1975) (BENGAL LANCER and Bengal Lancer soldier design is

similar to the mark BENGAL); In re Bissett-Berman Corp., 476

F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (E-CELL is similar

to the mark E). Nevertheless, it is often pointed out that

there is no absolute rule and exceptions have been made when

the additional matter was found sufficient to distinguish

the marks under circumstances where the marks in their

entireties convey significantly different meanings or

commercial impressions or the incorporated matter has been

so merged with the other matter that it “loses its separate

identity.” See, e.g., Castle & Cooke, Inc. v. Oulevay,

S.A., 370 F.2d 359, 152 USPQ 115 (CCPA 1967) (FARANDOLE not

confusingly similar to DOLE for related food products

because DOLE is so merged into FARANDOLE that it loses its

individual identity therein). See also, Lever Brothers

Company v. The Barcolene Company, 463 F.2d 1107, 174 USPQ

392 (CCPA 1972) (mark ALL CLEAR! not confusingly similar to

22

Opposition No. 91173417

ALL); and Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432

F.2d 1400, 167 USPQ 529 (CCPA 1970) (no likelihood of

confusion found between marks PEAK for dentifrice and PEAK

PERIOD for personal deodorant).

Applicant offers several arguments why it believes,

despite the fact it has incorporated opposer’s SIMPLICITY

mark, “the differences between the two marks dictate a

finding a finding of no likelihood of confusion.” Brief, p.

35. First, applicant argues that the term “simplicity” is

“highly suggestive, laudatory, and weak, and thus is only

entitled to a narrow scope of protection.” Id. at 32. In

support, applicant relies on several dictionary definitions

showing that “simplicity” means, “[t]he property, condition,

or quality of being simple or uncombined.”9 In addition,

applicant relies on the parties’ own usage of their

respective marks as well as 58 third-party registrations for

marks that include SIMPLICITY (or the phonetic equivalent

thereof) and 30 more for marks containing a SIMPL-formative

term.10 While numerous, these third-party registrations

cover a very broad range of goods and/or services; to wit,

the first three registrations submitted are, respectively,

9

American Heritage College Dictionary (3d edition, 2001);

submitted by applicant under its notice of reliance no. 1 (filed

November 4, 2009). Additional dictionary entries for the same

term were also submitted.

10

Submitted by applicant under its notice of reliance no. 2

(filed November 4, 2009).

23

Opposition No. 91173417

for “water treatment chemicals for use in swimming pools and

spas,” “wood stains” and “face cleansers….” Nevertheless,

several of the registered marks are for electrical

controllers or related goods. Of most relevance are the

following:

SIMPLY BRILLIANT for automated lighting controllers,

not for sale in retail hardware stores;11

SIMPLICITY for electric controllers for heating,

ventilation, and air conditioning units in commercial

use;12

SIMPLE CONTROL (stylized with design) for home and

office automation systems comprising wireless and wired

controllers, controlled devices, and software for

lighting, HVAC, security, safety and other home and

office monitoring and control applications;13

SIMPLEREMOTE for, inter alia, electronic remote control

units and systems comprising computer hardware,

operating software, application software, networking

software, and handheld devices for the control and

automation of electronic, audio, video, lighting,

security, and environmental equipment, apparatus and

appliances, namely, players and recorders for

PVRs/DVRs, CDs, DVDs, video cassettes, audio cassettes,

mini-discs players and MP3 files, amplifiers, loud

speakers, headphones, earphones, television sets, radio

sets, telephones for transmission of data through the

Internet and other networks, cameras and monitoring

systems for activating and controlling heating,

ventilation, and air conditioning systems;14 and

SIMPLE SYNCHRONOUS for power supply controllers and

manuals sold therewith as a unit.15

11

Registration No. 3163623.

12

Registration No. 2602798.

13

Registration No. 3475205.

14

Registration No. 3245563.

15

Registration No. 2988287.

24

Opposition No. 91173417

While the third-party registrations are not evidence

that the registered marks are actually in use, they may be

given some weight to show the meaning of a mark, or a term

in the mark, in the same way that dictionaries are used. In

re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006)

(“[T]hird-party registrations can be used in the manner of a

dictionary definition to illustrate how a term is perceived

in the trade or industry”). See also In re J.M. Originals

Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird party

registrations are of use only if they tend to demonstrate

that a mark or a portion thereof is suggestive or

descriptive of certain goods and hence is entitled to a

narrow scope of protection”).

In this case, we find that the existence of numerous

registrations for marks containing SIMPLICITY or SIMPLE-

formative terms indicates that such terms lend themselves

for adoption in trademarks for a variety of goods and

services because they serve to suggest that the goods sold

under that mark may be “simple” in design and thus may be

easier to utilize, install, understand, etc. Such

suggestiveness is corroborated by the parties’ own

advertisements that highlight the “simple” or “easy-to-

operate” features of their goods. For example, opposer

touts its SIMPLICITY-branded goods as “simple” or “simple-

25

Opposition No. 91173417

to-install.”16 At the same time, we note that very few of

the third-party registrations submitted cover goods that are

closely related to opposer’s electrical light dimmers and

lighting controls. And, for those few registrations which

do, opposer’s mark SIMPLICITY is not the same as the SIMPLE-

formative term employed in the marks.

We agree with applicant to the extent that opposer’s

mark, SIMPLICITY, is suggestive and thus may not be entitled

to the wide scope of protection that we would normally

accord a non-suggestive, stronger mark; however, this is not

fatal to the likelihood of confusion ground. It has often

been emphasized that even weak marks are entitled to

protection against confusion. King Candy, 182 USPQ at 109

(“likelihood of confusion is to be avoided, as much between

‘weak’ marks as between ‘strong’ marks, or as between a

‘weak’ and ‘strong’ mark.”).

In considering the marks in their entireties, as we

must, we do not disregard the additional term SENSE in

applicant’s mark, SENSE AND SIMPLICITY. Applicant contends

that the term SENSE is “ambiguous” and, because it appears

first, it forms the dominant element of applicant’s mark,

thus serving to distinguish the two marks.

We agree with applicant that, in general, distinctive

terms appearing first in marks are more likely to play a

16

See, e.g., Glaser Dec. exhibits 1-3, 5, 10, and 14-15.

26

Opposition No. 91173417

prominent role in forming a commercial impression than any

latter, less distinctive terms. We disagree, however, with

applicant in its assertion that the term “sense” is

ambiguous. Rather, we believe that consumers are likely to

understand “sense” as being suggestive of the products’

practicality in that the goods “make sense.” In the same

manner that the parties’ advertisements play on the

suggestive nature of the term “simplicity,” applicant’s

advertisements containing the SENSE AND SIMPLICITY mark also

highlight the suggestive value of the term “sense.” For

example, alongside its mark SENSE AND SIMPLICITY,

applicant’s advertisements for a variety of products contain

the text:17

...Simplicity can be the goal of technology. It

certainly is the goal at Philips. It just makes sense.

...Now doctors can see just what they need to see...at

the push of a button, which could be the difference

between life and death. It just makes sense.

...You don’t just see what’s on the screen, you see

beyond the edges of it. It’s an experience more like

life and not at all like ordinary television. You’ve

never seen anything like it. It just makes sense.

...Hospitals can be frightening places, so to help

patients relax and let doctors get their work done more

easily, it make sense to let patients decide what they

want to see around them...

These examples illustrate the suggestive nature of the

term “sense” in connection with a variety of goods.

17

Fassburg Decl. Ex. Nos. 2 and 7.

27

Opposition No. 91173417

Consumers likewise would perceive the same meaning from the

term in connection with electric controllers or light

dimmers. And, while we cannot conclude that the term

“sense” is as equally suggestive as “simplicity,” it does

connote a “practical” quality or “makes sense” value to the

goods being advertised.

Bearing in mind the suggestiveness of the terms

“simplicity” and “sense,” the overall commercial impressions

or connotations created by the marks in their entireties are

not so different. Opposer’s mark connotes goods possessing

simple-construction or an easy-to-use quality; applicant’s

mark shares the same connotation with the additional

connotation that the goods “make sense” or are practical in

nature.

Applicant has also argued that SENSE AND SIMPLICITY is

a “unitary mark that creates a strong and distinctive

commercial impression.” Brief, p. 36. While the

alliteration employed in applicant’s mark may assist

consumers’ perception of the mark as a combination of both

terms rather than just focusing on one, we find no separate

distinct overall commercial impression as a result.

Applicant’s mark will still be perceived as the combination

of the two terms and, as explained above, imparts a meaning

that the goods advertised under the mark are practical and

simplistic in design and/or easy to use. The combination of

28

Opposition No. 91173417

the terms SENSE and SIMPLICITY does not alter the

connotation of either of those terms. Together they retain

the same respective meanings as separate terms.

Ultimately, we cannot conclude that opposer’s

SIMPLICITY mark is so suggestive and entitled to such a

narrow scope of protection that consumers will easily

differentiate applicant’s SENSE AND SIMPLICITY mark, when

used on identical goods. In sum, we find that this du Pont

factor weighs in favor of finding a likelihood of confusion.

Several other du Pont factors were argued by the

parties in their briefs. However, we find that either the

parties failed to submit sufficient evidence to substantiate

the arguments or the factors simply remain neutral in our

likelihood of confusion analysis. In particular, we note

that opposer contends that instances of actual confusion

have occurred, whereas applicant points to nearly six years

of concurrent use without any instances of actual confusion

as a strong indicator that there is no likelihood of

confusion. Here, opposer’s evidence in support of instances

of actual confusion consists essentially of Mr. Glaser’s

testimony that he was approached at several trade shows

regarding incorrect assumptions that opposer was affiliated

with applicant. Mr. Glaser, however, admitted that he is

not able to provide the names or companies that were

purportedly confused based on the parties’ use of their

29

Opposition No. 91173417

respective marks. Nevertheless, we acknowledge that

evidence of actual confusion is difficult to find and it is

well settled that evidence of actual confusion is not

required in order to establish likelihood of confusion. See

Herbko International Inc. v. Kappa Books Inc., 308 F.3d

1156, 64 USPQ2d 1375 (Fed. Cir. 2002); and Weiss Associates,

Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840

(Fed. Cir. 1990). Under the circumstances, we find that

even the lack of any evidence of actual confusion would not

establish that confusion would not be likely to occur from

the contemporaneous use of these marks.

Conclusion

Having found that the marks are similar, that the goods

are identical in part, and that we must presume that said

goods move in the same trade channels and are available to

the same classes of purchasers, we find that applicant’s

mark SENSE AND SIMPLICITY is likely to cause confusion with

opposer’s mark SIMPLICITY when used on those goods. To the

extent that any doubts might exist as to the correctness of

our likelihood of confusion conclusion, we resolve such

doubts against applicant. See Century 21 Real Estate Corp.,

supra; Ava Enterprises Inc. v. Audio Boss USA Inc., 77

USPQ2d 1783 (TTAB 2006); and Baseball America Inc. v.

Powerplay Sports Ltd., 71 USPQ2d 1844 (TTAB 2004).

30

Opposition No. 91173417

Decision: The opposition is sustained and registration

is refused to applicant as to the opposed goods in

International Class 9, namely, electrical light dimmers,

electrical circuit boards, printed circuit boards,

electrical circuits for electrical conduction, printed

circuits, and electrical controllers. The application will

be forwarded for issuance of a registration as to the

remaining goods in International Class 9 and the other three

classes.

31