Satco Prods. v. Thread Grp., 91231155
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board |
| Parties | Satco Products, Inc. v. Thread Group, Inc. |
| Docket Number | 91231155 |
| Decision Date | 30 September 2022 |
Satco Products, Inc.
v.
Thread Group, Inc.
No. 91231155
United States Patent and Trademark Office, Trademark Trial and Appeal Board
September 30, 2022
Oral Hearing: February 20, 2020
Philip M. Weiss of Weiss & Weiss, for Satco Products, Inc.
Andrew D. Dorisio of King & Schickli PLLC, for Thread Group, Inc.
Before Cataldo, Taylor and Dunn, Administrative Trademark Judges.
OPINION
Taylor, Administrative Trademark Judge:
Thread Group, Inc. ("Applicant" or "Thread Group") seeks to register on the Principal Register the standard character certification mark BUILT ON THREAD for:
Electrical and electronic equipment; general consumer electrical and electronic products; remote controlled apparatus; wirelessly controlled apparatus; apparatus and instruments for data communication; apparatus for lighting heating, air conditioning, and ventilating, and control thereof
in U.S. Class A, based on a bona fide intention to use in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Application Serial No. 87054625 was filed on May 31, 2016 and includes the following statement: "The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods provided comply with certain guidelines and standards enabling low power connectivity between or among electrical or electronic devices."
Satco Products, Inc. ("Opposer" or "Satco") has opposed registration of Applicant's BUILT ON THREAD mark as to the identified "apparatus for lighting and controls thereof" on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), pleading its previously registered standard character mark THREAD for "LED lighting systems, namely LED modules, power supplies, and wiring for use under cabinets and in coves," in International Class 11.[1] Not. of Opp. ¶¶ 5, 10 and 13.[2]
Opposer also asserts prior common law rights in the THREAD mark for LED lighting systems since as early as October 6, 2014. Not. of Opp. ¶¶ 4, 6, 8, and 13.[3]
Applicant, in its answer, denied the salient allegations in the notice of opposition.[4]Applicant also counterclaimed to cancel in part Opposer's pleaded registration No. 4741193 ('193 Reg.) for the mark THREAD for the identified LED lighting systems, based on its claim of priority and likelihood of confusion with the following registrations:
• Registration No. 4890626 for the standard character mark THREAD for "Computer services, namely, providing an Internet site featuring technology facilitating wireless communication among electronic and computer devices, in International Class 42.[5]
• Registration No. 4882071 for the standard character mark THREAD for "Electronic, electric, and digital transmission of data, signals and messages," in International Class 38.[6]
• Registration No. 5241768 for the standard character mark THREAD for,
Electronic and computer devices enabled for wired or wireless communication, including for use in conjunction with devices for environmental monitoring and control, namely, computer hardware, integrated circuits, computer chips, radio and communication transmitters and receivers, and network routers; computer software for facilitating wired and wireless communication among electronic and computer devices; devices, namely, computer hardware, integrated circuits, computer chips, radio and communication transmitters and receivers, and network routers; computer software that allows the sharing and transmission of data and information among electronic and computer devices
in International Class 9.[7]
By its amended counterclaim, Applicant alleges, in part, that it is a Delaware not-for-profit corporation founded by seven technology companies (Nest Labs, Samsung, Arm, Freescale Semiconductor, Silicon Labs, Yale Security, and Big Ass Fans) (Amended Counterclaim ¶ 1)[8]; that on May 13, 2013, prior to the filing date of Opposer's '193 Registration, Applicant's founding member Nest Labs, Inc. (Nest Labs) filed Jamaican Registration Application No. 62651 for the mark THREAD (id. at ¶ 4)[9]; that on November 11, 2013, Nest Labs filed Application Serial Nos. 86116997, 86977838 (child after division of application Serial No. 86115005), and 86115003, based on intent to use and claiming priority as to the Jamaican filing (id. at ¶ 5)[10];
that Opposer had no rights in the THREAD mark prior to the April 2, 2014 filing date of the '193 Registration (id. at ¶ 8)[11]; that by duly recorded assignment from Google, Inc. (which acquired Nest Labs in 2014), Applicant is the owner of U.S. Registration Nos. 4890626, 4882071 and 5241768, all for the mark THREAD (id. at ¶¶ 10, 11, 12)[12]; the THREAD mark in Opposer's 4741193 is identical to the THREAD mark in Registration Nos. 4890626, 4882071 and 5241768 (id. at ¶ 15)[13]; and that Opposer's THREAD mark so resembles Applicant's THREAD mark of Registration Nos. 4890626, 4882071 and 5241768 as to be likely, when used on or in connection with Opposer's goods, to cause confusion, to cause mistake, and/or to deceive under Section 2(d) (id. at ¶ 18).[14]
In its answer to the Amended Counterclaim, Opposer admits, in part, that on November 11, 2013 Nest Labs filed several U.S. applications based on an allegation of its intent to use THREAD claiming priority pursuant to a Jamaican filing (CC Answer at ¶ 5); that Opposer had no rights in the THREAD mark prior to April 2, 2014, the filing date of Applicant's pleaded registration (CC Answer at ¶ 5); and that the word marks THREAD of the pleaded registration and Opposer's registration are
the same (CC Answer at ¶ 15). Opposer otherwise denied the salient allegation in the Amended Counterclaim.[15]
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122, 37 CFR § 2.122, the files of the subject application and registration. During its main testimony periods, Opposer made of record the following:
1.The trial declaration, with exhibits, of Brian Brandes, Opposer's Senior Vice President of Product Development and Marketing - executed September 10, 2018[16]; and
2.Opposer's first through fourth Notices of Reliance on: copies (both plain and taken from the Trademark Status and & Document Retrieval (TSDR) system) of Opposer's pleaded registration, along with and the underlying application file history (First NOR); Applicant's responses to Opposer's interrogatory requests (Second NOR 2); excerpts from the discovery depositions of Sujata Neidig, Vice President of Marketing for Thread Group, Inc., Thomas Sciorilli, Director of Certification for Thread Group, Inc., Deepak Kamlani, former Executive Director of the Thread Group,
Inc. and Grant Erickson, President of Thread Group, Inc. (Third NOR); and Applicant's Answers to Opposer's first set of document requests (Fourth NOR).[17]
During its main testimony period, Applicant submitted the following:
1. The declaration testimony, with exhibits, of Grant Erickson,[18] Sujata Neidig,[19] and Thomas Sciorilli[20]; and
2.Applicant's first through third notices of reliance on: copies of Applicant's pleaded registrations showing current status and title taken from TSDR system (First NOR); copies of various third-party registrations and printouts from third-party websites to show relatedness of the goods, excerpts from the October 2018 edition of the Trademark Manual of Examining Procedure (TMEP), the definition of the word "feature," and relevant third-party pairs (or more) or registrations for identical or similar marks covering a variety of goods and services (Second NOR); and portions of and exhibits to the discovery deposition of Brian Brandes (Third NOR).[21]
During its rebuttal testimony period, Opposer submitted the following:
1.A second trial declaration of Brian Brandes - executed March 11, 2019[22];
2.Opposer's fifth notice of reliance on excerpts from the discovery depositions of Sujata Neidig, Thomas Sciorilli, Director of Certification for Thread Group, Inc., Deepak Kamlani, and Grant Erickson (Fifth NOR)[23];
3.Opposer's sixth through tenth notices of reliance on: Applicant's responses to some of Opposer's first set of interrogatory requests (Sixth NOR), Applicant's responses to Opposer's first set of documents requests (Seventh NOR),[24] various dictionary definitions (Eighth NOR 8), a copy of Opposer's petition to cancel Applicant's pleaded Registration No. 4890626 (Ninth NOR), and a copy of the file history of application Serial No. 86911714 (Tenth NOR)[25];
4. The testimony deposition transcripts, with exhibits, of Thomas Sciorilli,[26]Rusi Kelly, program manager for Thread Group,[27] Sujata Neidig,[28] and Grant Erickson,[29] from depositions taken during Opposer's rebuttal period.
During its rebuttal period, Applicant submitted the following:
1. The declaration testimony, with exhibits, of Gerald Connolly, Jr., Vice President and General Manager of Electrical Wiring Devices for Legrand North America, Inc.[30]; and
2.Applicant's fourth notice of reliance on various third-party registrations and printouts from third-party websites.[31]
II. Findings of Fact
A. Opposer, Satco Products, Inc.
Opposer supplies a wide variety of lighting products including "light bulbs, lamps, lighting fixtures, commercial fixtures, indoor/outdoor commercial lighting, track lighting, electrical components and accessories, and lighting component parts, glassware and hardware such as light bulb sockets, wall switches and dimmers."[32]Since 1966, Opposer has advertised and sold its lighting products throughout the United States to consumers "through retail, commercial and manufacturing trades, including lighting showrooms, lighting wholesalers, electrical distributors, hardware stores and e-commerce."[33] Opposer currently has 5,000 active distributors,...
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