Afendi, Inc.

Trademark Trial and Appeal Board

May 14, 2002

No. 75873722 (T.T.A.B. May. 14, 2002)

5/14/02
Paper No. 14
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Afendi, Inc.
________

Serial No. 75/873,722
_______

Ajay A. Jagtiani of Jagtiani + Guttag for Afendi, Inc.

Michael W. Baird, Trademark Examining Attorney, Law Office 109 (Ronald R.
Sussman, Managing Attorney).
_______

Before Cissel, Hairston and Rogers, Administrative Trademark Judges.

Opinion by Cissel, Administrative Trademark Judge:
On December 17, 1999, applicant filed
the above-identified application to register the mark shown below

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
on the Principal Register for “boxes made of precious metal, ankle and wrist
bracelets, brooches, cases made of precious metal, chains, costume jewelry,
findings, identification bracelets, jewelry, jewelry pins for use on hats, lapel pins,
and rings being jewelry,” in Class 14. The application was based on applicant’s
claim that it had used the mark in commerce since October of 1991. Applicant
claimed ownership of Registration No. 2,066,717 for the mark shown below.

The Examining Attorney refused registration under Section 2(d) of the
Lanham Act, 15 U.S.C. Section 1052(d), on the ground that applicant’s mark, as
used on the goods
specified in the application, so resembles the marks shown below,

and

which are currently registered1[1] for, respectively, “watches not made wholly or
in part of precious metals, costume jewelry, namely, earrings, cufflinks, and
ornamental pins, bracelets [and] necklaces,” and “watches, and parts therefor,”
that confusion is likely.
Applicant responded to the refusal to register by amending the
application to describe its goods as follows: “boxes made of precious metal, ankle
and wrist bracelets, brooches, cases made of precious metal, chains, costume
jewelry, findings, identification bracelets, jewelry, jewelry pins made of precious
metal for use on hats, lapel pins, and rings being jewelry,” in Class 14. Applicant
argued that confusion is not likely with the marks cited by the Examining
Attorney because the marks, when considered in their entireties, are not similar,
and, although the goods overlap, the trade channels differ and purchasers of
these products are sophisticated.
The Examining Attorney accepted the amendment to the identification-of-
goods clause in the application, but was not persuaded by applicant’s arguments

1[1] Reg. No. 1,433,773 issued on March 24, 1987 to Fendi Paola E
Sorelle, S.A.S, an Italian partnership; partial affidavit under
Section 8 of the Act accepted; and Reg. No. 1,569,570 issued on
December 5, 1989 to the same partnership; affidavits under
Sections 8 and 15 accepted and acknowledged, respectively;
renewed.
on the issue of likelihood of confusion. The refusal to register under Section 2(d)
of the Act was continued and made final in the second Office Action.
Applicant responded by amending the application to delete the term
“costume jewelry” from the identification-of-goods clause, and presenting
arguments on the issue of likelihood of confusion.
Applicant concurrently filed a Notice of Appeal, which was timely
followed by applicant’s appeal brief. The Board instituted the appeal, but
suspended action on it and remanded the application to the Examining Attorney
for consideration of applicant’s response, which was deemed to be a request for
reconsideration.
Responsive to the reconsideration request, the Examining Attorney
maintained the refusal to register. Submitted in support of the refusal were
photocopies from catalogues which demonstrate that watches are sold and
promoted along with other items of jewelry, such as rings, necklaces and
earrings. Also submitted were copies of a number of third-party registrations
wherein the identification-of-goods clauses include “watches,” “necklaces,”
“earrings,” “rings,” “chains” and “pins” as “jewelry.” The Examining Attorney
asserted that this evidence shows that different items of jewelry, including
watches, often emanate from a single source.
Applicant did not file a further response, so the Examining Attorney filed
his appeal brief. Applicant then filed a timely reply brief,2[2] but applicant did
not request
an oral hearing before the Board.
The issue before us in this appeal is whether confusion is likely in view of
the prior registration of the two registered marks identified above. A third
registered mark was originally cited as a bar to registration of applicant’s mark,
but the Examining Attorney subsequently withdrew the refusal based on that
registration.
After careful consideration of the record in this application in view of the
relevant legal authority and the arguments made by both applicant and the
Examining Attorney, we hold that the refusal to register is well taken. Confusion
is likely in this case because applicant’s mark is similar to both of the cited
registered marks and the goods specified in the application are related to those
listed in the registrations.
We have analyzed this application in light of the facts in evidence which
are relevant to the factors set forth in In re E. I. DuPont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). As in any likelihood of confusion

2[2] Applicant attached additional evidence as “Exhibit A” to its
reply brief. Trademark Rule 2.142(d) provides that the record is
closed when a Notice of Appeal is filed, but the rule also
provides a procedure whereby additional evidence can be submitted
subsequently. Applicant did not follow this procedure, however,
so we have not considered the additional evidence untimely
submitted with applicant’s reply brief.
analysis, two key considerations are the similarities between the goods and
similarities between the marks. In re Azteca Restaurant Enterprises Inc., 5
USPQ2d 1209 (TTAB 1999).
We agree with the Examining Attorney that the goods must be considered
to be in part identical. The application, as amended, still lists “jewelry,” and this
term encompasses the registrant’s more narrowly identified “costume jewelry.”
Applicant presents a convoluted argument wherein a dictionary definition
of “costume jewelry” is quoted as “jewelry designed for wear with current
fashions and usually made of inexpensive materials” in support of its argument
that costume jewelry is “separate” and “distinct” from jewelry. As applicant’s
own definition shows however, costume jewelry is jewelry. Watches are also
considered to be jewelry; even if this were not the case, this record plainly
establishes that items of jewelry such as pins, bracelets and rings are promoted
and marketed, together with watches, by the same businesses to the same
potential purchasers. Moreover, the third-party registrations made of record by
the Examining Attorney provide a basis for our conclusion that consumers have
reason to expect that the use of the same or similar trademarks on these products
is an indication that they emanate from a common source. Albert Trostel & Sons
Co., 29 USPQ 2d 1783 (TTAB 1993); In re Mucky Duck Co., 6 USPQ2d 1467
(TTAB 1988).
Applicant’s arguments with respect to differences in the channels of trade
and sophistication of the purchasers for its goods, as opposed to the goods sold
under the registered marks, are unsupported by evidence. Whether confusion is
likely must be determined on the basis of the goods as they are identified in the
application and the registrations, respectively. Toys “R” Us, Inc., v. Lamps R Us,
219 USPQ 340, (TTAB 1983). Neither the application nor the registration limits or
restricts the trade channels or purchasers to whom these goods are sold. In the
absence of such limitations, we must assume that the goods include all products
which fall within the descriptions set forth in the application and registration,
respectively, and that these products are sold to all the usual purchasers of them.
In re Elbaum, 211 USPQ 639 (TTAB 1981). Thus in the instant case, where the
goods identified in the application include “costume jewelry” and the cited
registrations include both “jewelry” and “watches,” the goods are in part
identical and therefore the trade channels and prospective purchasers, for
purposes of determining whether confusion is likely, must be considered the
same.
As noted above, applicant’s mark is similar to both of the registered
trademarks cited by the Examining Attorney. Applicant’s mark combines the
word “FENDI” with a design element consisting of a double letter “A,” one of
which is inverted beneath the other. A small triangular design appears above the
letter “I.” One of the registered marks is the word “FENDI.” The other combines
“FENDI” with a design consisting of a double letter “F,” one of which is inverted
beneath the other. When applicant’s mark is considered in its entirety and
compared with the registered marks in their entireties, they are similar enough to
be likely to cause confusion when they are all used on the same or closely related
goods.
We do not dispute that there are differences between applicant’s mark and
the cited registered marks, but these differences are insufficient to obviate the
likelihood of confusion. Simply put, notwithstanding the distinctions argued by
applicant, these marks create similar overall commercial impressions. The
registrant uses “FENDI” by itself and “FENDI” with an inverted double-letter
design. Applicant has appropriated the “FENDI” mark in its entirety, and has
added to it an inverted double-letter design of its own, along with the
aforementioned triangle design in place of the dot over the letter “I.” Prospective
purchasers of jewelry who are familiar with either of the registered marks are
likely to assume that applicant’s mark indicates that the products on which it is
used emanate from the same source as the goods marketed under the registered
marks. The use of a different letter inverted under itself before the mark of
applicant is likely to be viewed simply as an indication of another line of
“FENDI” jewelry or watches, perhaps even as an indication of a less expensive
line of the goods for which applicant indicates registrant is famous.
In this regard, in its brief (at p. 16), applicant states that the registered
marks “have substantial associated fame,” but then proceeds to argue that the
fame of the registered marks aids in distinguishing the origin of the goods
“because of the desire of a purchaser to acquire a genuine ’FENDI’ product.”
This argument is simply wrong-headed. In essence, applicant is contending that
the fame of the registered trademarks should be held against the registrant
because purchasers will be aware that other sources of the same types of
products are going to try to appropriate the goodwill the registrant has
established in its famous mark and attach it to their own, less desirable, products.
To the contrary, if this record provided a basis upon which we could conclude
that the cited registered marks are famous, such a record would constitute an
even stronger showing that confusion is likely. In reality, when a mark is
famous, a purchaser is even less likely to perceive differences between the
famous mark and one with which he or she is not familiar. In re Kenner Parker
Toys, Inc., 963 F.2d 350, 22 USPQ2d 1453, (Fed. Cir. 1992). In the instant case, the
fame of the registered mark certainly does not cut in applicant’s favor.
We have no doubt that we have reached the proper resolution of this
appeal, but even if we had doubts, they would necessarily have to be resolved in
favor of the registrant and prior user, and against applicant, who, as the
newcomer, had a duty to select the mark which is not
likely to cause confusion with the mark of the registrant and prior user.
Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).
DECISION: The refusal to register is affirmed.