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Archived updates for Wednesday, January 24, 2007

NDGA: Genericness of "Nite Lites" for Landscape Lighting Is a Factual Issue

In Nightlight Systems, Inc. v. Nitelites Franchise Systems (Order dated January 4, 2007) United States District Judge Pannell of the Northern District of Georgia denying defendants’ motion for summary judgment as to the generic nature of the term “nite lites.” Thomas, Kayden's own Harold Marquis represented the successful plaintiff on the defendant's motion.

NLFS had an incontestable registration covering a composite mark consisting of the term “nite lites” and a three pine tree design. The plaintiffs claimed that the term “nite lites” alone is generic as applied to landscape lighting. The court initially determined that the presumption of validity afforded federal registrations extended to the term “nite lites” alone:

The court has considered NLFS’s composite mark and concludes that the term “nite lites” is the most salient feature of the logo. Because the term “nite lites” is the most salient feature of the mark, it is entitled to the presumption of validity. The plaintiffs, therefore, bear the burden of overcoming the presumption that the term “nite lites” is not generic. This
presumption of validity, however, is rebuttable. See Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 405 (Fed. Cir. 2002). “Its only function is to incite [evidence of invalidity], and when the function has been performed the presumption drops out of the case.” Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 172 (7th Cir. 1996).
In support of their claim that the term “nite lites” is generic, the plaintiffs produced evidence that 20 landscape lighting businesses throughout the nation use some form of the term “night lights” in their business name. However, as noted by the court, "Use of the term in a tradename, however, is not necessarily a generic use of the term."

The plaintiffs also produced evidence that they conducted a Google search for the term “night lights” and “night lighting” and the search revealed 198 generic uses of the term. This evidence weighs in favor of a finding that the term “nite lites” is generic regardless of whether there are 198 generic uses or 100 as the defendants contend.

In addition to these business names and the Google search, the plaintiffs presented evidence that Pergantis, the original owner of the NITE LITES & DESIGN trademark, was quoted using the term “night lighting” generically in one article. A biography of Pergantis also uses the term “night lighting” generically stating, “About 80 percent of Pergantis’ work involves night lighting.” Again, this evidence weighs in favor of a finding that the term “nite lites” is generic.

Finally, in Gates’ affidavit, Gates testified that he has seen several advertisements and articles using the terms “nightlights” and nightlighting” generically for landscape lighting. The court notes, however, that Gates only located these articles and advertisements after his deposition, and the articles were not attached to his affidavit. This statement, therefore, weighs only weakly in favor of a finding of genericness.

The defendants, on the other hand, presented evidence that dictionaries define the phonetic equivalent of “nite lite,” “nightlight,” as a “small, dim light kept burning all night, as in the halls of rooming houses;” “a light (as a candle or small bulb) that burns in a bedroom at night (as for children or invalids)”; and “a small, dim light left on all night.” Webster’s New Twentieth Century Dictionary (2d ed. 1969); WordNet Dictionary 2.0 (2003); American Heritage Dictionary of the English Language (4th ed. 2000). The defendants point out that none of these definitions specifically refer to landscape lighting or landscape lighting services. While not dispositive, “[t]he dictionary definition of the word is an appropriate and relevant indication of the ordinary significance and meaning of the words to the public.” American Heritage Life Insurance, 494 F.2d at 11 n. 5.

In addition to the dictionary definition of the term “nite lites” or its phonetic equivalent, “night lights,” the defendants produced evidence that NSI does not use the term generically. Instead, NSI describes itself as “a provider of outdoor architectural and landscape lighting systems,” a “lighting consultant,” or a “landscape contractor.” Similarly, NSI has never
referred to any of its products or services as a “night light” or “nightlighting.”

Like NSI, the defendants produced evidence that none of NSI’s suppliers identify any of their products as a “night light” or a “night light cable.” In fact, Gates testified that he is not aware of any manufacturer of exterior lighting that calls its product “night lighting” or a “night light.” Gates also testified that he has never seen a TV story or radio program refer to outdoor landscape lighting as a “night light” or “night lighting.”

In addition to the dictionary definition and Gates’ admissions, the defendants presented survey evidence in support of their claim. As noted above, the defendants hired Kenneth Hollander to conduct a survey to determine whether the term “nite lites” is a generic designation for systems that provide lowvoltage nighttime illumination on the exteriors of upscale residences, including both the installation of lights and fixtures
and the lights and fixtures themselves. Hollander concluded that
consumers do not use the term “nite lites” in any of its variant
spellings to describe a system of low-voltage outdoor illumination
of trees and houses. NSI, on the other hand, did not conduct its
own survey.

Based upon the facts, Judge Panell concluded:

Whether a term is generic is a question of fact. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:12 (4th ed. 2006). Although it is a close question, the court concludes that the plaintiffs have presented evidence
sufficient to overcome the presumption that the term “nite lites” is not generic. The plaintiffs evidence is sufficient to demonstrate that a genuine issue of material fact exists as to whether the public perceives the term “nite lites” primarily as a generic name for landscape lighting or as a trademark associated with the defendants. Accordingly, the court denies the defendants’ motion for summary judgment as to the generic nature of the term “nite lites.”
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