Cartier International A.G.v.Lance Coachman

Trademark Trial and Appeal Board

Oct 5, 2016

No. 91209815 (T.T.A.B. Oct. 5, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: October 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Cartier International A.G.
v.
Lance Coachman
_____

Opposition No. 91209815
_____

John P. Margiotta of Fross Zelnick Lehrman & Zissu, P.C.
for Cartier International A.G.
Reginald J. Hill of Jenner & Block LLP
for Lance Coachman.
_____

Before Quinn, Bergsman and Richie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Lance Coachman (“Applicant”) seeks registration on the Principal Register of the
mark TRINITY (in standard characters) for “leather handbags,” in Class 18.1
Cartier International A.G. (“Opposer”) has opposed the registration of Applicant’s
mark on the ground that Applicant’s mark TRINITY for “leather handbags” so

1 Application Serial No. 85604000 was filed on April 20, 2012, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as March 2012.
Opposition No. 91209815
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resembles Opposer’s registered mark TRINITY, in typed drawing form, for “jewelry
made of precious metal or coated therewith,” in Class 18, as to be likely to cause
confusion.2 Opposer attached to the Notice of Opposition a copy of its pleaded
registration printed from the USPTO electronic database showing the current status
of and title to the registration.
Applicant, in his Answer, denied the salient allegations in the Notice of
Opposition.
I. The Record
The parties stipulated that direct testimony could be offered into evidence by
means of a sworn affidavit or declaration and cross-examination could be conducted
through oral examination or upon written questions.3
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file.
A. Opposer’s testimony and evidence.
1. Testimony declaration with attached exhibits of Alison Cohen, Assistant
Vice President of Merchandising and Jewelry Workshop at Cartier, a
division of Richemont North America, Inc., Opposer’s U.S. affiliate and

2 Registration No. 1927987, registered October 17, 1995; second renewal. Prior to November
2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the
legal equivalent of a standard character mark. TMEP § 807.03(i) (April 2016).
3 22 TTABVUE.
Opposition No. 91209815
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exclusive distributor and licensee of CARTIER branded products in the
United States;4
a. Alison Cohen cross-examination declaration;5
b. Alison Cohen supplemental declaration;6
c. Alison Cohen rebuttal declaration with attached exhibits;7
2. Testimony declaration with attached exhibits of Stacey Hallerman, Vice
President – Chief Legal Counsel of Richemont North America, Inc.;8
3. Notice of reliance on Internet printouts purporting “to show the existence
of third parties who offer both jewelry and bags under the same mark”;9
4. Notice of reliance on excerpts from Applicant’s discovery deposition with
attached exhibits;10
a. Rebuttal notice of reliance on excerpts from Applicant’s discovery
deposition with attached exhibits;11
5. Notice of reliance on Applicant’s responses to Opposer’s written discovery;12

4 25 TTABVUE. The confidential version of the Cohen declaration was filed at 24 TTABVUE.
5 33 TTABVUE.
6 34 TTABVUE.
7 44 TTABVUE.
8 27 TTABVUE. The confidential version of the Hallerman declaration was filed at 26
TTABVUE.
9 28 TTABVUE.
10 30 TTABVUE. The confidential version of Applicant’s discovery deposition was filed at 29
TTABVUE.
11 46 TTABVUE.
12 31 TTABVUE.
Opposition No. 91209815
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a. Rebuttal notice of reliance on Applicant’s responses to Opposer’s
interrogatory Nos. 18 and 19;13
6. Rebuttal notice of reliance on third-party websites purporting to show that
“certain of the third parties that Applicant claims sell only handbags or only
jewelry in fact have sold or sell both handbags and jewelry”;14 and
7. Notice of reliance on excerpts from Alison Cohen’s discovery deposition
which Opposer contends “should in fairness be considered so as not to make
misleading Applicant’s designated deposition excerpts.”15
B. Applicant’s testimony and evidence.
1. Applicant’s testimony declaration with attached exhibits;16
a. Lance Coachman cross-examination declaration;17
b. Lance Coachman supplemental declaration;18
2. Notice of reliance on Opposer’s responses to Applicant’s interrogatories;19
3. Notice of reliance on excerpts from the Alison Cohen’s discovery deposition
with attached exhibits;20 and

13 47 TTABVUE.
14 45 TTABVUE.
15 48 TTABVUE.
16 36 TTABVUE. The confidential version of Applicant’s declaration was filed at 35
TTABVUE.
17 42 TTABVUE.
18 43 TTABVUE.
19 37 TTABVUE. The confidential responses to Applicant’s interrogatories were filed at 38
TTABVUE.
20 39 TTABVUE.
Opposition No. 91209815
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4. Notice of reliance on Internet printouts purporting “to show the existence
of third parties that offer jewelry but not handbags under the same mark,
or vice versa, that offer handbags but not jewelry under the same mark,
and thus tend to show that jewelry and handbags are distinct, unrelated
products.”21
II. Standing and Priority
Because Opposer’s pleaded registration is of record, valid and subsisting,
Opposer’s standing to oppose registration of Applicant’s mark is established and its
priority is not in issue as to the goods listed in the registration (i.e., jewelry). See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
1982); King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Opposer also has shown that the mark in Applicant’s application involved herein
has been cited as a potential bar to the registration of Opposer’s mark TRINITY for
use in connection with various leather goods.22 This demonstrates that Opposer
would be damaged by the registration of Applicant’s mark. See Empressa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
Lipton Indus., Inc. v. Ralston Purina Co., 213 USPQ at 189.

21 40 and 41 TTABVUE.
22 Hallerman Decl. ¶8 and Exhibit CT21 (27 TTABVUE 4-5 and 134-190), referring to
Application Serial No. 79116170.
Opposition No. 91209815
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Applicant argues that Opposer has failed to show that it has priority for the mark
TRINITY for leather goods.23 However, Opposer is not relying on its use of the
TRINITY mark for leather goods; rather, Opposer is relying on its registration for the
mark TRINITY for jewelry. See Opposer’s Reply Brief wherein Opposer explained
that “[t[he question to be answered in this proceeding is whether Applicant’s
application to register its [sic] TRINITY mark in connection with handbags should be
rejected based on a likelihood of confusion with [Opposer’s] federally-registered
TRINITY mark. … To be clear, [Opposer] has not brought this proceeding alleging
priority in handbags per se.”24 Thus, the issue before us is whether Applicant’s mark
TRINITY for handbags so resembles Opposer’s previously registered mark TRINITY
for jewelry as to be likely to cause confusion.
III. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”) (cited in B&B Hardware, Inc. v. Hargis Ind.,
Inc., 575 U.S. __, 135 S.Ct.1293, 113 USPQ2d 2045, 2049 (2015). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We have considered each DuPont factor that is relevant and for which there is
evidence of record. See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378,

23 Applicant’s Brief, pp. 21-31 (53 TTABVUE 29-39).
24 Opposer’s Reply Brief, p. 4 (55 TTABVUE 6).
Opposition No. 91209815
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78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. and H.J. Heinz
Company v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have
considered each factor for which we have evidence, we focus our analysis on those
factors we find to be relevant.”). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”). See also In re i.am.symbolic, LLC, 116 USPQ2d 1406,
1409 (TTAB 2015).
A. The similarity or dissimilarity of the marks.

The marks are identical. There is no reason to believe that the commercial
impression would be any different for the goods of Applicant than for those of
Opposer. Cf. Coach Services Inc. v. Triumph Learning LLC., 668 F.3d 1356, 101
USPQ2d 1713, 1721-1722 (Fed. Cir. 2012).
B. The strength of Opposer’s TRINITY mark.

Applicant argues that Opposer’s mark is descriptive of jewelry “which are
commonly composed of, or includes three rings, three metals, three colors and/or three
finishes.25 Applicant may not attack the validity of Opposer’s pleaded registration
without having pleaded a counterclaim to cancel that registration. See Trademark
Rule 2.106(b)(2)(i), 37 C.F.R. §2.106(b)(2)(i) which provides that “[a] defense

25 Applicant’s Brief, pp. 33-36 (53 TTABVUE 41-44).
Opposition No. 91209815
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attacking the validity of any one or more of the registrations pleaded in the opposition
shall be a compulsory counterclaim if grounds for such counterclaim exist at the time
when the answer is filed” and Trademark Rule 2.106(b)(2)(ii), 37 C.F.R.
§2.106(b)(2)(ii) which provides that “[a]n attack on the validity of a registration
pleaded by an opposer will not be heard unless a counterclaim or separate petition is
filed to seek the cancellation of such registration.”
We construe Applicant’s contention that TRINITY is descriptive of jewelry to
mean that TRINITY is an inherently weak mark entitled to only a narrow scope of
protection or exclusivity of use. In this regard, the word “Trinity” is defined, in
relevant part, as “a group of three; triad” or “the state of being threefold or triple.”26
Opposer adopted TRINITY as its mark for jewelry based on its principal’s creation of
a ring featuring three gold bands with three different types of gold.
9. The products sold under the TRINITY mark date
back to 1924, when Louis-Francois Cartier created a ring
for the French poet and novelist Jean Cocteau. The ring
was comprised of three intertwined bands, with each band
in a different metal. Mr. Cocteau wore the ring for the rest
of his life, …
10. … The term TRINITY was derived from the design of
the famous Jean Cocteau ring featuring three intertwined
bands. The three bands most often appear in pink gold,

26 Dictionary.com Unabridged based on the Random House Dictionary (2016). The Board
may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or have regular fixed editions.
In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d 823 F.3d 594, 118
USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d
1031, 1038 n.14 (TTAB 2010);In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Also, “Trinity” is defined as “the union of three persons (Father, Son, and Holy Ghost) in one
Godhead, or the threefold personality of one Divine Being.” Id. See also Applicant’s Testimony
Decl. ¶9 (36 TTABVUE 4).
Opposition No. 91209815
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yellow gold, and white gold, with the colors representing
different aspects of a relationship –pink of love, yellow for
fidelity, and white for friendship.
* * *
13. … the designs of the jewelry pieces within the TRINITY
collection are varied, but the common feature is that each
one contains three intertwined bands in different metals.27
Opposer emphasizes the composition of the jewelry in its advertising. For
example,
TRINITY DE CARTIER
Three bands. Three colors. Pink gold, yellow gold and white
gold, intertwined in a display of mystery and harmony. …
Three types of gold. Three symbolic colors: pink for love,
yellow for fidelity and white for friendship. Trinity, a
timeless design now available in a collection to life’s
memorable loves. Trinity, all about you forever.28
Despite Opposer’s advertising emphasizing three bands of three different golds,
on the spectrum of distinctiveness, Opposer’s TRINITY mark is at worst suggestive.
Thus, the TRINITY mark is inherently distinctive and immediately signals a brand
or a product source.
With respect to market strength, based on evidence discussed below, we find that
Opposer’s TRINITY mark is a strong mark. From 2002 through 2013, Opposer
advertised its TRINITY jewelry in publications such as The New York Times, Wall
Street Journal, Los Angeles Times, Washington Post, San Francisco Chronicle,
Chicago Tribune, Boston Globe, Newsday, In Style, Vogue, WWD, Marie Claire, New

27 Cohen Testimony Decl. ¶¶9, 10 and 13 (25 TTABVUE 4-5).
28 Cohen Testimony Decl., Exhibit CT4 (25 TTABVUE 88).
Opposition No. 91209815
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York Magazine, Elle, W Magazine, Harper’s Bazaar, Vanity Fair, and others.29
Opposer’s print and digital advertising expenditures are not insubstantial.30
Likewise, sales of Opposer’s TRINITY branded products are not insubstantial.31
The market strength of Opposer’s TRINITY jewelry line is best illustrated through
the unsolicited media notices it has received. For example, the articles set forth below
make note of the “iconic” or famous TRINITY design, and they are representative of
the unsolicited media that Opposer has made of record.
1. WWD (undated)
TRINITY
Probably the best-known of Cartier’s iconic designs, the
Trinity first appeared in 1924 when the French jeweler
designed an interlocking three-banded ring consisting of
platinum (a symbol of friendship), rose gold (for love) and
yellow gold (for fidelity). While the ring became popular
soon after it hit the sales floor, it was the three-banded
Trinity bracelet, created that same year and purchased
first by celebrated American interior decorator Elsie de
Wolfe, that really turned heads. Since then, the ring has
seen a variety of influential wearers over the years,
including Yves Saint Laurent, Jean Cocteau (who famously

29 Cohen Testimony Decl. ¶17 (25 TTABVUE 6-7) and Exhibit CT13 (24 TTABVUE 430-459)
(Confidential).
30 Cohen Testimony Decl. ¶19 (24 TTABVUE 7-8) and Exhibit CT14 (24 TTABVUE 461)
(Confidential). Because Opposer designated its advertising expenditures as confidential, we
may only refer to them in general terms. Inasmuch as the advertising expenditures are not
overwhelming and have not been placed in context with the expenditures of competitors, we
cannot render a finding as to whether the expenditures support finding that the TRINITY
mark is famous or even well-known.
31 Cohen Testimony Decl. ¶20 (24 TTABVUE 8) and Exhibits CT15 and 16 (24 TTABVUE
465-475) (Confidential). Because Opposer designated it sales revenues confidential, we may
only refer to them in general terms. As with the advertising expenditures, Opposer’s sales
revenues are not overwhelming and they have not been placed in context so our ability to
place them on a scale of market strength is limited.
Opposition No. 91209815
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wore two Trinity rings on one finger), David Bowie and
Madonna.32
2. Papercity (June 1, 2012)
Trinity of Pearls
Cartier introduced its famed Trinity ring in 1924 and ever
since, the trio of white-, yellow- and rose-gold intertwined
bands (symbolizing respectively friendship, fidelity and
love) has inspired myriad designs through the decades
within this storied French house.33
3. Harper’s Bazaar (November 2011)
Editors’ Picks: The Best Gifts for Women
* * *
Kristina O’Neill, Executive Editor
What I’m wishing for …
“The Cartier Trinity ring is iconic, and in white gold,
palladium and ceramic it’s even more exquisite.”34
Applicant asserts that “[t]hird-party uses and registration of TRINITY marks for
handbags are sufficient to show that consumers are capable of distinguishing
between small differences in the marks or goods.”35 To support his argument,
Applicant introduced a copy of Registration No. 4688159 for the mark TRINITY
RANCH for “handbags, purses and wallets; luggage”36 and an excerpt from the

32 Cohen Decl. Exhibit CT17 (25 TTABVUE 372). Because the gist of the article is Cartier
designs for the American Centennial, we surmise that the article was published sometime in
1976 prior to July 4.
33 Cohen Decl. Exhibit CT17 (25 TTABVUE 387).
34 Cohen Decl. Exhibit CT17 (25 TTABVUE 384).
35 Applicant’s Brief, p. 36 (53 TTABVUE 44).
36 41 TTABVUE 356.
Opposition No. 91209815
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AMAZON.com website advertising the sale of TRINITY RANCH handbags, purses,
and wallets.37 Applicant also introduced excerpts from the AMAZON.com website
advertising the sale of ANNE KLEIN TRINITY handbags38 and TUMI ASTOR,
TRINITY carry-on bags.39
Evidence of extensive registration and use of a term by others can be “powerful”
evidence of weakness. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674 (Fed. Cir. 2015). But Applicant offers excerpts from three third-
party users and one registration owned by one of the third parties. Thus, there is
evidence of only three other users of the term “Trinity.” By comparison, in Juice
Generation, there were at least twenty-six relevant third party uses or registrations
of record, see 115 USPQ2d at 1672 n. 1, and in Jack Wolfskin, there were at least
fourteen, 116 USPQ2d at 1136 n. 2.
Moreover, Applicant proffered no evidence regarding the extent of such third-
party use. In this case, the evidence does not rise to the level of demonstrating that
the third-party use was so widespread as to “condition” the consuming public.
We find that Opposer’s TRINITY mark is a strong mark for jewelry.

37 41 TTABVUE 359-362.
38 41 TTABVUE 364-368.
39 41 TTABVUE 370.
Opposition No. 91209815
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C. The similarity or dissimilarity and nature of the goods.
Opposer’s jewelry and Applicant’s leather handbags are different products.
However, in determining whether the goods at issue are related, it is not necessary
that the goods of the parties be similar or competitive in character to support a
holding of likelihood of confusion; it is sufficient for such purposes that a party
claiming damage establish that the goods are related in some manner and/or that
conditions and activities surrounding marketing of these goods are such that they
would or could be encountered by same persons under circumstances that could,
because of similarities of marks used with them, give rise to the mistaken belief that
they originate from or are in some way associated with the same producer. Coach
Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corporation
v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corporation
v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
Where identical marks are involved, as is the case here, the degree of similarity
between the parties’ goods that is required to support a finding of likelihood of
confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689
(Fed. Cir. 1993) (“even when the goods or services are not competitive or intrinsically
related, the use of identical marks can lead to the assumption that there is a common
source”); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); In
re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). It is only necessary that there be a
viable relationship between the two to support a finding of likelihood of confusion. In
Opposition No. 91209815
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re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The
issue here, of course, is not whether purchasers would confuse the parties’ goods, but
rather whether there is a likelihood of confusion as to the source of these goods. In re
Cook Medical Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB 2012); Helene Curtis
Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989); In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
Finally, we must consider the goods as they are described in the application and
registration. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of
registrability of an applicant's mark must be decided on the basis of the identification
of goods set forth in the application regardless of what the record may reveal as to
the particular nature of an applicant's goods, the particular channels of trade or the
class of purchasers to which the sales of goods are directed”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of confusion must be decided on
the basis of the respective descriptions of goods”). We do not read limitations into the
identification of goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983) (“There is no specific limitation and nothing in the inherent nature
of Squirtco's mark or goods that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read limitations into the
registration”). Therefore, we must presume that Opposer’s “jewelry made of precious
Opposition No. 91209815
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metal or coated therewith” includes all types of jewelry and that Applicant’s “leather
handbags” include all types of leather handbags.
Alison Cohen, Assistant Vice President of Merchandising and Jewelry Workshop
at Cartier, a division of Richemont North America, Inc., Opposer’s U.S. affiliate and
exclusive distributor and licensee of CARTIER branded products in the United
States, testified that Opposer markets its products as part of a collection of
products.40
7. … Generally these collections encompass a broad
spectrum of product offerings, not only jewelry, but also
perfume, leather goods, eyewear, and a plethora of other
products as well. … The products offered under these
brands change from year to year, and even season to
season, depending on market conditions.41
* * *
12. Because of the nature of [Opposer’s] rotating product
offerings, and because TRINITY is one of Opposer’s oldest
and most established brands, through the years, [Opposer]
has offered an extremely wide range of products under the
TRINITY mark.42
* * *
15. [Opposer] has offered other accessories under the
TRINITY mark, including leather belts, cufflinks, key
rings, diaries, organizers, travel clocks, and pens.43

40 Cohen Testimony Decl. ¶7 (25 TTABVUE 4).
41 Cohen Testimony Decl. ¶7 (25 TTABVUE 4). Ms. Cohen’s testimony that Opposer offers a
wide selection of products under the CARTIER house mark is not relevant in this case
because the CARTIER mark or variation thereof is not at issue.
42 Cohen Testimony Decl. ¶12 (25 TTABVUE 5).
43 Cohen Testimony Decl. ¶15 (25 TTABVUE 6).
Opposition No. 91209815
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In fact, in 2004 and 2005, Opposer advertised the sale of TRINITY handbags in the
United States.44 However, sales of TRINITY handbags were de minimis.45
To show that there is a viable relationship between jewelry and leather handbags,
Opposer introduced excerpts from 14 websites where third parties advertise the sale
of both jewelry and handbags under the same mark. Opposer introduced excerpts
from the websites listed below:46
1. Chanel.com using the CHANEL mark to advertise the sale of both products;47
2. Net-a-porter.com using the CHLOÉ mark to advertise the sale of both
products;48
3. Coach.com using the COACH mark to advertise the sale of both products;49
4. Gucci.com using the GUCCI mark to advertise the sale of both products;50

44 Cohen Testimony Decl. ¶14 (25 TTABVUE 6).
45 Cohen Testimony Decl. Exhibit CT16 (24 TTABVUE 467-475) (Confidential).
46 Because all of the third-party uses are for house or designer marks used to identify a broad
range of products, their probative value is not as great as product marks used to identify both
jewelry and handbags. See In re Donnay International, S.A., 31 USPQ2d 1953, 1954 n.3
(TTAB 1994); In re Xerox Corp., 194 USPQ 449, 450 (TTAB 1977) (“the Examiner's reliance
on the registrations of the third parties is not well-founded nor controlling herein if for no
other reason than that the marks covered by the registrations are house marks or primary
marks which are customarily used to cover all of the different and diverse products and
activities undertaken by corporations of the type identified in the registrations whereas here
the marks appear to be product marks of limited identification functions.”).
47 28 TTABVUE 7-85.
48 28 TTABVUE 87-92.
49 28 TTABVUE 94-123.
50 28 TTABVUE 125-170.
Opposition No. 91209815
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5. Shop.Guess.com using the GUESS mark to advertise the sale of both
products;51
6. JuicyCouture.com using the JUICY COUTURE mark to advertise the sale of
both products;52
7. KennethCole.com using the KENNETH COLE mark to advertise the sale of
both products;53
8. MichaelKors.com using the MICHAEL KORS mark to advertise the sale of
both products;54
9. Prada.com using the PRADA mark to advertise the sale of both products;55
10. YSL.com using the SAINT LAURENT mark to advertise the sale of both
products;56
11. ToryBurch.com using the TORY BURCH to advertise the sale of both
products;57
12. DKNY.com using the DKNY mark to advertise the sale of both products;58

51 28 TTABVUE 127-195.
52 28 TTABVUE 197-326.
53 28 TTABVUE 328-347.
54 28 TTABVUE 349-401.
55 28 TTABVUE 403-410.
56 28 TTABVUE 412-422.
57 28 TTABVUE 424-456.
58 40 TTABVUE 79-98 and 45 TTABVUE 5-8.
Opposition No. 91209815
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13. SteveMadden.com using the STEVE MADDEN mark to advertise the sale of
both products;59 and
14. Vancleefarpels.com using the VAN CLEEF & ARPELS to advertise the sale of
jewelry and fragrances and 1stdibs.com using the VAN CLEEF & ARPELS
mark to advertise the sale of handbags.60
To show that jewelry and leather handbags are not related products Applicant
introduced excerpts from 14 websites purportedly showing “the existence of third
parties that offer jewelry but not handbags under the same mark or, vice versa, that
offer handbags but not jewelry under the same mark, and thus tend to show that
jewelry and handbags are distinct, unrelated products.”61 Applicant’s evidence of
third-party use has less weight than Opposer’s evidence of third-party use because
there is no requirement that for goods to be related that all or even a majority of the
sources of one product must also be sources of the other products. Therefore, evidence
showing only that the source of one product may not be the source of products does
not aid Applicant in his attempt to rebut Opposer’s evidence. See In re G.B.I. Tile and
Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009). See also In re Kysela Pere et Fils
Ltd., 98 USPQ2d 1261, 1265 (TTAB 2011).

59 41 TTABVUE 281-285 and 45 TTABVUE 10-16.
60 41 TTABVUE 320-354 and 45 TTABVUE 18.
61 40 TTABVUE 2. Applicant introduced excerpts from 17 third party websites but, in
rebuttal, Opposer introduced excerpts from the three of the third parties showing that those
third parties sold both jewelry and handbags. The third parties are DNKY.com,
SteveMadden.com and VanCleefArpels.com noted above.
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Applicant also contends that Opposer’s “enforcement actions are against those
that distribute and sell counterfeit jewelry.”62 Applicant further contends that there
is no evidence or testimony regarding any enforcement actions against the third-
party users of TRINITY for handbags discussed supra (i.e., TRINITY RANCH, ANNE
KLEIN TRINITY and TUMI ASTOR, TRINITY) from which Applicant would have us
infer that even Opposer does not believe that handbags and jewelry are related
products. However, we decline to draw that inference because the reason Opposer has
not objected to those marks is that TRINITY RANCH, ANNE KLEIN TRINITY and
TUMI ASTOR, TRINITY are different than TRINITY as a stand-alone mark.63 Also,
the sales of the products identified by those marks may be so small as not to merit an
objection.64
We find that the goods are related.
D. Established, likely-to-continue channels of trade.
“Opposer offers its TRINITY products for sale in Opposer’s freestanding
boutiques, Opposer’s boutiques located within department stores, and through
authorized retailers of [Opposer’s] goods.”65

62 Applicant’s Brief, p. 20 (53 TTABVUE 28).
63 Opposer’s Reply Brief, p. 20 (55 TTABVUE 22).
64 Id.
65 Opposer’s response to Applicant’s Interrogatory No. 9 (37 TTABVUE 11). See also Cohen
Discovery Dep., pp. 11-12 and 18 (39 TTABVUE 14-15 and 21) (Opposer’s products are sold
in Opposer’s retail boutiques and through authorized dealers, including jewelry stores and
department stores such as Neiman Marcus and Saks Fifth Avenue).
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Applicant has marketed his leather handbags to the congregation at the
Resurrection House for All Nations in Union City, Georgia as well as to Glory Works,
a ministry for entrepreneurs sponsored by Resurrection House for All Nations.66 He
has also sold his leather handbags at Lalo Fine Italian Handbags in Atlanta,
Georgia.67 He intends to sell the TRINITY leather handbags at upscale boutiques and
department stores, such as Macy’s, Saks Fifth Avenue and Neiman Marcus.68
Q. So in terms of specific retail channels, where do you
intend to offer your bag?
A. Upper middle boutiques, primarily, not so much
chain. My target market is upper scale, upper
middle scale boutiques is really my target market in
upper Manhattan, Georgetown, Miami Beach, L.A.
Rodeo Drive area, Buckhead, people who have
discretionary income and also have a little bit
forward-thinking fashion, because a lot of people
follow trends. But I want boutiques that set trends.69
Applicant’s target market “are women between the ages of 25-40, with disposable
income, predominantly aimed at corporate or wealthy women.”70
Because there are no limitations as to channels of trade or classes of purchasers
in Opposer’s and Applicant’s descriptions of goods, it is presumed that Opposer’s

66 Applicant’s Testimony Decl. ¶¶11-12 (36 TTABVUE 5).
67 Dep., pp. 74-75 (30 TTABVUE 46-47). See also Applicant’s testimony Decl. ¶14 (36
TTABVUE 6).
68 Applicant’s Discovery Dep., pp. 80-81 (30 TTABVUE 51-52); Applicant’s cross-examination
response to Question No. 8; Applicant’s response to Interrogatory No. 5 (31 TTABVUE 17)
and Interrogatory No. 18 (47 TTABVUE 6).
69 Applicant’s Discovery Dep., p. 83 (30 TTABVUE 54).
70 Applicant’s response to Interrogatory No. 5 (31 TTABVUE 17); Applicant’s Testimony Decl.
¶16 (36 TTABVUE 6).
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jewelry and Applicant’s leather handbags move in all channels of trade normal for
those goods, and that they are available to all classes of purchasers for those goods.
See Paula Payne Products Co. v. Johnson Publishing Co., 177 USPQ at 77; Kalart Co.
v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139, 140 (CCPA 1958); In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Accordingly, Opposer’s target market also
includes “women between the ages of 25-40, with disposable income, predominantly
aimed at corporate or wealthy women.”
Because both parties sell or intend to sell their products in upscale boutiques,
department stores such as Saks Fifth Avenue and Neiman Marcus, and both parties
target the same consumers, and since neither has any limitations in their respective
identifications, we find that the goods move in the same channels of trade.
E. “The conditions under which and buyers to whom sales are made, i.e. ‘impulse’
vs. careful, sophisticated purchasing.”

Applicant contends that the relevant consumers of Opposer’s jewelry and
Applicant’s leather handbags exercise a high degree of purchaser care, thus,
minimizing the likelihood of confusion.71
In this case, the purchasers of [Opposer’s] jewelry products
may spend as much as $18,700 for TRINITY cufflinks.
With the exception of some key chains it sells, its products
are considered “high-end.” Given the expensive nature of
the [Opposer’s] products, consumers are unlikely to make
that purchase indiscriminately without understanding the
source. While less expensive, [Applicant’s] TRINITY
handbags are sold for XXX to XXX to college-educated and
wealthy women with the disposable income to afford the

71 Applicant’s Brief, pp. 42-43 (53 TTABVUE 50-51).
Opposition No. 91209815
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price of a high-quality leather handbag.72 (Internal
citations omitted).
As noted previously, the Board may not read limitations into the descriptions of
goods. Squirtco v. Tomy Corp., 216 USPQ at 940. Because the respective descriptions
of goods include “jewelry” and “leather handbags” without any limit regarding a
particular price point, we must treat the goods as including inexpensive as well as
more costly jewelry and leather handbags, and therefore presume that purchasers for
the products include ordinary consumers who may buy inexpensive jewelry and
leather handbags. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014) (recognizing Board precedent
requiring consideration of the “least sophisticated consumer in the class”). See also
In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (finding that all
purchasers of wine may not be discriminating because while some may have preferred
brands, “there are just as likely to be purchasers who delight in trying new taste
treats.”); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence
that relevant goods are expensive wines sold to discriminating purchasers must be
disregarded given the absence of any such restrictions in the application or
registration).
Accordingly, we find that this du Pont likelihood of confusion factor is neutral.

72 Applicant’s Brief, p. 43 (53 TTABVUE 51). Applicant has designated the price of his leather
handbags confidential.
Opposition No. 91209815
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F. The nature and extent of any confusion and the length of time during and
conditions under which there has been concurrent use without any evidence of
confusion.

Applicant asserts that “[t]he lack of actual confusion between [Applicant’s]
TRINITY handbags and [Opposer’s] TRINITY jewelry for nearly four years supports
that there is no confusion between them.”73
The absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by the parties of their marks for a
significant period of time in the same markets. Citigroup Inc. v. Capital City Bank
Group, Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d
1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). In other words, for the absence of actual confusion to be probative, there
must have been a reasonable opportunity for confusion to have occurred. Barbara’s
Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value
of the absence of actual confusion depends upon there being a significant opportunity
for actual confusion to have occurred); Red Carpet Corp. v. Johnstown American
Enterprises Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya Co., Inc. v.
North American Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of actual
confusion over a reasonable period of time might well suggest that the likelihood of
confusion is only a remote possibility with little probability of occurring”).
For the following reasons, we find that there has not been a reasonable
opportunity for confusion to have occurred:

73 Applicant’s Brief, p. 44 (53 TTABVUE 52).
Opposition No. 91209815
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1. Applicant’s has spent $6,000 on advertising and promoting his TRINITY
handbags through samples, giveaways, and entertainment;74
2. “The majority of [Applicant’s] advertising and promotional expenses have
taken the form of giveaways.”;75
3. “Applicant has not utilized nor promoted the TRINITY leather handbags at
any events nor trade shows and does not currently have plans to promote the
handbags at any events or trade shows.”;76
4. The only “media” advertising that Applicant has done is giving a TRINITY
leather handbag to Cynthia Bailey, one of the Housewives of Atlanta, who
posted photographs of herself and the TRINITY leather handbag on her twitter
page;77
5. Although Applicant has sold TRINITY leather handbags in Chicago, D.C.,
Miami and Atlanta,78 all of his sales have been to individuals.79 Applicant has
not sold to any retailers;80 and
6. Applicant’s sales have been de minimis.81

74 Applicant’s Discovery Dep., p. 113 (30 TTABVUE 59); Applicant’s Response to Opposer’s
Interrogatory No. 11 (31 TTABVUE 19).
75 Applicant’s Testimony Decl. ¶11 (36 TTABVUE 5).
76 Applicant’s response to Opposer’s Interrogatory No. 9 (31 TTABVUE 19).
77 Applicant’s Discovery Dep., p. 85 (30 TTABVUE 56); Applicant’s response to Opposer’s
Interrogatory No. 8 (31 TTABVUE 18); Applicant’s Testimony Decl. ¶13 (36 TTABVUE 5).
78 Applicant’s response to Opposer’s Interrogatory No. 6 (31 TTABVUE 17).
79 Applicant’s Discovery Dep., p. 45 (30 TTABVUE 45).
80 Applicant’s Discovery Dep., p. 72 (30 TTABVUE 44).
81 Applicant’s Discovery Dep., pp. 63 and 67-68 (30 TTABVUE 35 and 39-40); Applicant’s
Response to Interrogatory No. 12 (31 TTABVUE 26-27).
Opposition No. 91209815
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In view of the foregoing, we find that Applicant’s TRINITY handbags have made
little impact in the market and that, therefore, there has not been a reasonable
opportunity for actual confusion to have occurred. This du Pont likelihood of confusion
factor is neutral.
G. Balancing the factors.
Because the marks are identical, the goods are related and the goods move in the
same channels of trade to some of the same general consumers, we find that
Applicant’s mark TRINITY for “leather handbags” is likely to cause confusion with
Opposer’s registered mark TRINITY for “jewelry made of precious metal or coated
therewith.”
Decision: The opposition is sustained and registration to Applicant is refused.