April 29, 2024
Agent LIGHTSPEC Opposes Media Company's LIGHTSPEC Trademark Bid
Above: Examples of "LIGHTSPEC" as used by Endeavor Business Media (top & middle) and Lightspec LLC (bottom)
Lighting agent defends its decades-old business name against Endeavor Business Media's trademark pursuits
Lightspec LLC, an Upstate New York-based lighting agent with roots dating back to the 1990s, has found itself in a legal challenge in pursuit of the rights to trademark for "LIGHTSPEC." Despite its longstanding presence in the lighting industry, Lightspec LLC never secured a registered trademark for its business name or logo, a decision that is now at the center of a trademark opposition with Endeavor Business Media, a company with a diverse portfolio of media properties including some media and events focused on the lighting industry.
Lightspec: The Multi-Territory Lighting Agent
Lightspec LLC, headquartered in Rochester, New York, has expanded its agent footprint significantly in the U.S. and parts of Canada under President Steve Danzig in recent years. The company has been a prominent lighting agent for over three decades. Serving a wide range of stakeholders across Upstate New York, the Greater Toronto Area, Ohio, and Kentucky, Lightspec represents more than 150 manufacturers. It offers comprehensive services including technical consultation, marketing, project management, sales, and advisory services tailored to architectural, commercial, industrial and residential lighting projects.
Lightspec: Lighting Industry Trade Shows
Nashville-based Endeavor Business Media, established in 2017, quickly expanded its footprint in the media landscape by acquiring several business trade media and event properties. Among these were LEDs Magazine in 2019 and Architectural SSL in 2022, both important publications in the lighting industry. Endeavor Business Media's strategic acquisitions didn't stop there; the company also took over the assets of LightShow West and the LED Specifier Summit. These assets were purchased for $40,000 as part of the 2021 bankruptcy liquidation of Exponation. After acquiring the assets from Exponation, Endeavor Business Media reincarnated two of Exponation’s shows and called them Lightspec West and Lightspec Midwest.
Lightspec Midwest was planned to occur in Chicago in 2022, but the show was canceled months before showtime, seemingly due to insufficient local support. Lightspec West took place in Los Angeles in September 2022 with more than 170 exhibitors. Recently, in mid-April 2024, the second iteration of Lightspec West was held in Anaheim, California. This event hosted around 50 exhibitors. According to numerous reports from various exhibitors and agents who attended, the crowd size was modest.
It is suspected that Endeavor Business Media may be preparing for future Lightspec shows in other markets, as they are believed to be the owners of lightspecnortheast.com and lightspecsoutheast.com. These domain names were registered around the same time as other Endeavor Business Media Lightspec-related domains, all using the same registrar.
Lightspec: The Magazine
In January 2024, Endeavor Business Media renamed the longtime publication, Architectural SSL, to Lightspec. This rebranding was more than a mere change of name; it seemed to represent a strategic integration of Endeavor Business Media's various lighting-focused media and event services under a single, cohesive brand umbrella. By doing so, it seems that Endeavor Business Media aimed to leverage the market presence of Architectural SSL while aligning it more closely with its recently launched trade shows.
The domain for Lightspec the magazine is lightspeconline.com. It seems unlikely that Endeavor Business Media would acquire the domain lightspeconline.com without first checking the availability of lightspec.com, which, according to ICANN, seems to have been registered to LightSpec LLC since 1997. This may be immaterial in a trademark legal dispute, but it may lead one to believe that Endeavor Business Media was likely aware of Lightspec LLC and forged ahead with its trademark applications and business use of the LIGHTSPEC mark.
Core of the Conflict
At the heart of the legal dispute between Lightspec LLC and Endeavor Business Media is a contention over the "LIGHTSPEC" trademark. Last week, Lightspec LLC formally opposed Endeavor Business Media's two most recent trademark applications for the “LIGHTSPEC” term associated with printed and online magazines in solid-state lighting products and systems.
Lightspec LLC claims that Endeavor Business Media's use of the "LIGHTSPEC" name infringes on its lighting industry brand, which has been in use since the 1990s.
Importantly, Endeavor Business Media first filed for a “LIGHTSPEC” trademark in April 2021, related to conferences on architectural and commercial lighting, which was successfully registered in 2022. According to USPTO records, this trademark is registered, active and currently unopposed.
Above: Excerpt from Lightspec LLC's opposition filing
In contesting the two most recent trademark applications, Lightspec, the lighting agent, also argues that the similarities are not limited to the name alone but extend to the visual identity of the brands, with both companies utilizing notably similar logos. This resemblance, according to Lightspec LLC, could lead to substantial market confusion, potentially misleading customers and diluting the distinctive identity that Lightspec LLC has cultivated over decades.
Given the overlapping sectors in which both companies operate — Lightspec as a lighting agent and Endeavor Business Media in lighting industry media coverage and events — it is argued that the similarities in name and logo could cause stakeholders, including manufacturers and lighting professionals, to confuse the services or affiliations of the two entities.
The agent argues that this potential confusion could undermine Lightspec LLC’s established relationships and its reputation in the market, which is why they have taken legal steps to oppose the trademark registration, seeking to protect their brand and prevent any potential erosion of their market presence due to brand confusion.
Why Lightspec, the agent, may have a case:
Prior Use of the Mark: Lightspec LLC has used the "Lightspec" name since the early 1990s, predating Endeavor Business Media’s use by decades. Under U.S. trademark law, the first to use a mark in commerce is granted certain priority rights. Lightspec LLC's long-term use could secure its rights in trademark disputes.
Likelihood of Confusion: Lightspec LLC claims that Endeavor Business Media's identical use of the "Lightspec" mark could confuse industry stakeholders and professionals. Given that both companies operate in the lighting industry and partner with manufacturers, albeit differently, this similarity may bolster Lightspec LLC’s case for likelihood of confusion, a key criterion in trademark cases.
Established Goodwill and Reputation: Lightspec LLC asserts it has invested heavily in advertising the "Lightspec" name, earning significant goodwill and a strong market reputation. This mark’s consumer recognition and associated goodwill are important in trademark protection. Lightspec LLC's established brand equity and the recognizability of their mark suggest that any similar use by others could harm their brand.
Why Endeavor Business Media may have a case:
Intent to Use Application: Endeavor Business Media filed an intent-to-use trademark application for "Lightspec" to potentially secure rights for printed materials and events in the lighting industry. This filing with the USPTO allows companies to establish trademark rights before actual use.
Differentiation in Services and Market: Endeavor Business Media and Lightspec LLC both use the "Lightspec" mark but operate in different sectors of the lighting industry. Endeavor Business Media specializes in media publication and event management, which may not directly compete with Lightspec LLC’s manufacturer sales representation, potentially reducing consumer confusion.
Lack of Formal Trademark Registration by Lightspec LLC: Although Lightspec LLC has used the "Lightspec" name since the 1990s, it never formally registered the trademark. This lack of registration may weaken their position in trademark disputes. Endeavor Business Media’s proactive trademark filings in 2021 and 2023 aim to protect its interests in an area where prior rights were not formally established.
Last week, Endeavor Business Media declined to comment on the matter to Inside Lighting, citing a policy of refraining from making statements on ongoing disputes.
As the legal proceedings unfold before the Trademark Trial and Appeal Board, Lightspec LLC and Endeavor Business Media will each present their claims to the "LIGHTSPEC" trademark, focusing on prior use and prior strategic filings with the USPTO.
