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In Brief: There’s a limit to how many permutations of a word can avoid a likelihood of confusion.
Here’s What Happened:
Belgravia Wood Limited, a British Virgin Islands company, owns numerous trademarks, many of which involve Christmas lights (e.g. “Radian Micro LED”, “Greenwood Pine” and “Crystal Pine”). Belgravia has not always been successful in registering its trademarks.
This year, the USPTO dealt a Grinchy blow to Belgravia’s attempt to register “Holidazzle” for “Electric lights for Christmas trees; Christmas lighting, namely, electric holiday lights; electric holiday lights”. The Examining Attorney determined that Belgravia’s mark was likely to cause confusion with the registered mark “Dazzle” for "LED (light emitting diode) lighting fixtures; LED (light emitting diodes) lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications; LED and HID light fixtures; LED light strips for decorative purposes.”
In comparing “Holidazzle” to “Dazzle”, the Examining Attorney determined that adding “Holi” to “Dazzle” was not enough to distinguish the marks. “Holi” is a shortened version of “holiday” which is commonly used to describe Christmas lights. In further comparing Belgravia’s mark to “Dazzle”, the Examining Attorney stated that consumers would be more likely to put on emphasis on the second half of the word “Dazzle”.
Belgravia argued that two different trademark applications for the words “Dazzle” did not draw likelihood of confusion refusals with the cited “Dazzle” mar. The Examining Attorney responded that the decisions in different trademark applications are not binding on Belgravia’s application.
On appeal, the Trademark Trial and Appeal Board affirmed the refusal to register.
Belgravia will have use a different trademark for its dazzling Christmas lights.
Why You Should Know This: May your holiday be full of light.
Case Information: In re Belgravia Wood Limited, Trademark Trial and Appeal Board, Serial No. 90640925 (September 8, 2023) [not precedential]