De Beers Diamond Jewellers Limited

Trademark Trial and Appeal Board

Dec 22, 2014

No. 85315818 (T.T.A.B. Dec. 22, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re De Beers Diamond Jewellers Limited
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Serial No. 85315818
_______

Brian R. McGinley and Tara Reedy Sliva of Dentons US LLP, for De Beers Diamond
Jewellers Limited.

Rudy R. Singleton, Trademark Examining Attorney, Law Office 102,
(Mitchell Front, Managing Attorney).
_______

Before Quinn, Ritchie, and Wolfson,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
De Beers Diamond Jewellers Limited (“Applicant”) filed an application to
register the mark ADONIS ROSE (in standard characters) for
Precious metals and their alloys; goods in precious metal
or coated therewith, namely, rings, earrings, pendants,
bracelets, cufflinks, necklaces; jewellery and imitation
jewellery; precious stones; none of the foregoing including
alarm clocks, clocks, clocks and watches, clocks
incorporating radios, pocket watches, watch bands and
straps, stopwatches, clock housings, or dials for clock-and-
watch making (In International Class 14); and

Advertising, for others, in the field of precious metals and
their alloys and goods in precious metals or coated
therewith, jewellery and imitation jewellery, precious and
Serial No. 85315818

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semi-precious stones, horological and chronometric
instruments (in International Class 35).1

The Trademark Examining Attorney refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that Applicant’s mark,
when applied to Applicant’s goods in Class 14, so resembles the previously
registered mark shown below

for “alarm clocks; clocks; clocks and watches; clocks incorporating radios; pocket
watches; watch bands and straps; stopwatches; clock housings; dials for clock-and-
watch-making” in International Class 142 as to be likely to cause confusion. So as to
be clear, the Examining Attorney has not refused registration in Class 35.
When the refusal was made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, proceedings in
the appeal resumed, and Applicant and the Examining Attorney filed briefs.3

1 Application Serial No. 85315818, filed May 9, 2011, based on an intent to use the mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), and on European
Community application No. 009507229, filed November 9, 2010, under Section 44(d) of the
Trademark Act, 15 U.S.C. § 1044(d). Registration No. 009507229 issued on December 30,
2012.
2 Registration No. 4148260, issued May 29, 2012. The registration includes the following
description of the mark: “The mark consists of the image of a lion with the word ‘ADONIS’
underneath.”
3 Applicant submitted certain evidence for the first time with its appeal brief; specifically,
the evidence comprises additional excerpts from third-party websites showing uses of
ADONIS. The Examining Attorney objected to this submission on the ground that it is
untimely. Trademark Rule 2.142(d) provides that the record in the application should be
complete prior to the filing of an appeal, and that the Board will ordinarily not consider
additional evidence after the appeal is filed. Accordingly, the Examining Attorney’s
Serial No. 85315818

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Applicant argues that the marks are dissimilar, focusing on the additional
word ROSE in its mark and the lion design in Registrant’s mark. Applicant also
asserts that the goods are sufficiently different, and that they are relatively
expensive and are marketed to sophisticated, discerning purchasers who are not
likely to be confused. Further, Applicant points out that the respective marks have
coexisted in the marketplace without any known instances of actual confusion.
Applicant submitted excerpts of advertisements from its website, third-party
registrations of marks that include the terms ADONIS and ROSE, excerpts of third-
party websites, and a dictionary listing for the term “Adonis.”
The Examining Attorney maintains that the marks are similar, and the
goods are related. Further, the Examining Attorney states that even sophisticated
consumers would be confused as to source, and that the absence of actual confusion
is not probative inasmuch as the application is based on an intent to use and a
foreign registration. In support of the refusal the Examining Attorney submitted
third-party registrations, and excerpts of third-party websites.
Our determination under Section 2(d) is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or

objection is sustained, and we have not considered the evidence accompanying the appeal
brief.
Serial No. 85315818

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services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
With respect to the first du Pont factor, we must compare the marks in their
entireties as to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du Pont de Nemours & Co., 177
USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
Although marks must be considered in their entireties, it is settled that one
feature of a mark may be more significant than another, and it is not improper to
give more weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”).
Insofar as Applicant’s mark ADONIS ROSE is concerned, we find the term
ADONIS to be dominant and the term ROSE to be subordinate. The term “Adonis”
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is defined in the record as “a youth slain by a wild boar but permitted by Zeus to
pass four months every year in the lower world with Persephone, four with
Aphrodite, and four wherever he chose; a very handsome young man.” (Random
House Dictionary (2014)). As often stated, purchasers in general are inclined to
focus on the first word or portion in a trademark, which in Applicant’s mark is
ADONIS. Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is likely to be impressed
upon the mind of a purchaser and remembered”). See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. Further,
the term ROSE in Applicant’s mark, when used in connection with Applicant’s
jewelry, is at least suggestive of the design of the jewelry and, as such, would
appear to be less distinctive than the first term ADONIS. In this connection,
Applicant’s website shows the following in regard to its jewelry:
“The Adonis Rose Collection Takes Inspiration From The
Love Story of Aphrodite and Her Adonis.”
Evoking this iconic fable, the rose and intricately
entwined leaves in this collection are symbolic of
enchantment and binding powers.

The design of the Adonis Rose pieces feature thread pave
that draw the eye along the gleaming stem of the rose.
Delicate Marquise diamonds prevail, mirroring the form
of the rose’s leaves.

With respect to Registrant’s mark ADONIS and design, where both a word
and a design comprise the mark (as in Registrant’s mark), the word is normally
accorded greater weight because the word is likely to make an overall more
significant impression upon purchasers, would be remembered by them, and would
Serial No. 85315818

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be used by them to verbally request the goods. CBS, Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a design and
words, the verbal portion of the mark is the one most likely to indicate the origin of
the goods to which it is affixed”); In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
462 (TTAB 1985). See also Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983) (finding the parties’ respective marks
dominated by the word “GIANT” and not by other wording or a hamburger design).
In Registrant’s mark, the literal portion of the mark, namely the term ADONIS, is
the dominant portion, and is accorded greater weight over the lion design feature
when comparing this mark to Applicant’s mark.
Accordingly, the dominant portion of each mark, the term ADONIS, is
identical. In discussing the dominant portion of the marks, we recognize, of course,
that the marks ultimately must be compared in their entireties. When this
comparison is made, we find that the marks are similar in sound, appearance and
meaning. Because of the similarities between the marks, Applicant’s and
Registrant’s marks engender similar overall commercial impressions. The presence
of the additional term ROSE in Applicant’s mark, and the design feature of
Registrant’s mark, are insufficient to distinguish the marks if they were to be used
in connection with similar goods.
The similarity between the marks weighs in favor of a finding of likelihood of
confusion.
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In connection with the sixth du Pont factor, namely “the number and nature
of similar marks in use on similar goods,” Applicant argues that the cited mark is
weak, relying on third-party uses and registrations. As the name of a mythical god,
“Adonis” is clearly not descriptive, or even suggestive of watches or jewelry. Nothing
in the record indicates an alternative meaning for the term that would suggest
otherwise. See In re Davia, 110 USPQ2d 1810, 1814-15 (TTAB 2014) (CHANTICO,
as the name of an Aztec mythological goddess, is arbitrary and strong in relation to
food products). Applicant submitted, however, several examples of third-party uses
of the term ADONIS in connection with jewelry, watches and clocks. Insofar as
these third-party uses are concerned, we do not find the evidence, standing alone, to
be compelling. Their probative weight is limited given the absence of any
corroborating facts bearing on the extent of these uses. That is to say, there are no
specifics regarding the extent of sales or promotional efforts surrounding the third-
party marks and, thus, what impact, if any, these uses have made in the minds of
the purchasing public is unclear. Accordingly, the record does not support a finding
that customers have become conditioned to recognize that other entities use
ADONIS marks for similar goods. See Anthony’s Pizza & Pasta Int’l, Inc. v.
Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1276-78 (TTAB 2009), aff’d, 415
Fed. Appx. 222 (Fed. Cir. 2010); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d
1100, 1112 (TTAB 2007); Carl Karcher Enterprises Inc. v. Stars Restaurant Corp.,
35 USPQ2d 1125, 1130-31 (TTAB 1995). Cf. In re Hartz Hotel Services Inc., 102
USPQ2d 1150 (TTAB 2012) (marks comprising term “Grand Hotel” for hotels
Serial No. 85315818

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accorded narrow scope of protection in view of numerous third-party uses of
GRAND HOTEL for hotel services); In re Broadway Chicken, Inc., 38 USPQ2d 1559,
1565 (TTAB 1996) (evidence of third-party use of the term “Broadway” for
restaurant services was so common that consumers would look to the other
elements of applicant's mark BROADWAY CHICKEN to distinguish the source of
the goods from BROADWAY PIZZA and BROADWAY BAR & PIZZA).
Applicant also submitted twenty-five third-party registrations for marks that
include either the term ADONIS or ROSE. As pointed out by the Examining
Attorney, however, only six of the registrations cover goods in Class 14. See In re
Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) (third-party registrations for
goods unrelated to the goods at issue are irrelevant to the likelihood of confusion
analysis). With respect to this evidence in general, “[t]he existence of [third-party]
registrations is not evidence of what happens in the market place or that consumers
are familiar with them nor should the existence on the register of confusingly
similar marks aid an applicant to register another likely to cause confusion,
mistake or to deceive.” AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973); In re Max Capital Group Ltd., 93 USPQ2d 1243,
1248 (TTAB 2010). Simply put, none of the third-party registered marks for goods
in Class 14 is as similar to Registrant’s mark as is Applicant’s mark.
In view of the above, we find the sixth du Pont factor to be neutral.
We next direct our attention to the second du Pont factor regarding the
similarity/dissimilarity between the goods. It is well settled that the goods of
Serial No. 85315818

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Applicant and Registrant need not be identical or competitive, or even be offered
through the same channels of trade, to support a holding of likelihood of confusion.
It is sufficient that the respective goods of Applicant and Registrant are related in
some manner, and/or that the conditions and activities surrounding the marketing
of the goods are such that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source. See Hilson Research,
Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
The issue here, of course, is not whether purchasers would confuse the goods, but
rather whether there is a likelihood of confusion as to the source of these goods.
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223
USPQ 830 (TTAB 1984).
It is settled that in making our determination regarding the relatedness of
the goods, we must look to the goods as identified in the application and the cited
registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990,
1991 (TTAB 2011). Applicant’s identification of goods includes the following: “goods
in precious metal or coated therewith, namely, rings, earrings, pendants, bracelets,
cufflinks, necklaces; jewellery and imitation jewellery.” Further, the identification
specifically excludes the goods listed in Registrant’s identification of goods, namely
“alarm clocks, clocks, clocks and watches, clocks incorporating radios, pocket
Serial No. 85315818

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watches, watch bands and straps, stopwatches, clock housings, or dials for clock-
and-watch making.”
Even though Registrant’s goods are specifically deleted from Applicant’s
identification of goods, it is well settled that the goods are not required to be
identical or competitive. As indicated above, it is sufficient that they are
commercially related. The evidence of record herein establishes this relationship.
The Examining Attorney’s evidence bearing on the relatedness of the goods
comprises copies of several use-based third-party registrations which individually
cover, under the same mark, both types of goods involved herein. “Third-party
registrations which cover a number of differing goods and/or services, and which are
based on use in commerce, although not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with them, may
nevertheless have some probative value to the extent that they may serve to
suggest that such goods or services are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988),
aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993) (limiting value of third-party registrations to
those not based on Section 44(e) of the Act). Examples of these use-based, third-
party registrations include the following: Reg. No. 4158822 for the mark AWI
INTERNATIONAL and design; Reg. No. 4160014 for the mark TANTRA; Reg. No.
4164766 for the mark ROCAWEAR; Reg. No. 4165336 for the mark MR
BRAINWASH; Reg. No. 4167993 for the mark POPSY; Reg. No. 4170337 for the
Serial No. 85315818

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mark H. EMPEROR and design; and Reg. No. 4172953 for the mark
RIVERBERRY.4 So as to be clear, the registrations specifically list, at a minimum,
both “jewelry” and “watches.”
As for the exclusion of Registrant’s goods in Applicant’s identification of
goods, this constitutes an ineffective attempt to avoid a finding that the involved
goods are similar. As indicated above, the goods need not be identical to support a
finding of likelihood of confusion. In this case, both types of goods fall under the
general category of jewelry or fashion accessories and, as shown by the evidence,
they may emanate from the same source. See In re Swatch Grp. Mgmt. Servs. AG,
110 USPQ2d 1751, 1754-55 (“The evidence persuades us that, in the marketplace,
some watches are readily recognized to be included in the category of jewelry.”).
Accordingly, the relatedness of the goods is a factor weighing in favor of a
finding of a likelihood of confusion.
Because there are no limitations to the identifications of goods in the
application or the cited registration as to channels of trade and classes of
purchasers, we must presume that the goods travel through all usual channels of
trade and are offered to all normal potential purchasers. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981); see also Paula Payne Prods. Co. v. Johnson Publ’g Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). As for trade channels, the relevant

4 Applicant, in its reply brief, indicates that there are thousands of active registrations for
marks covering jewelry, but which do not also cover watches. Applicant states that “[q]uite
simply the number of federal registrations for marks containing jewelry but excluding the
term watches in the identification of goods dwarfs the handful of registrations cited by the
Examining Attorney.” (Reply Brief, p. 4). There is no timely submitted evidence to support
this argument and, thus, it has not been further considered in making our decision.
Serial No. 85315818

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question is not whether the specific goods of Applicant and Registrant are actually
marketed in the same trade channels. It is whether goods of the types identified in
the application and the registration are typically marketed in the same or related
trade channels. See Octocom Sys. Inc. v. Houston Computers Svcs. Inc., 16 USPQ2d
at 1787 (“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 sales of the goods
are directed”). Those trade channels for jewelry and watches include jewelry stores,
jewelry sections of department stores, online retail jewelry stores, and the like. In
this connection, the Examining Attorney submitted pages from two third-party
websites showing that the same online retailer offers for sale both jewelry and
watches: ; and . This evidence tends
to show that the goods move through the same trade channels. Accordingly, we find
that the du Pont factor of “established, likely-to-continue trade channels” weighs in
favor of a finding of likelihood of confusion.
Insofar as classes of purchasers are concerned, the identifications of goods are
not limited in this regard. Thus, it is presumed that Applicant’s jewelry and
Registrant’s watches would be bought by all customers for those types of goods,
including ordinary consumers. This overlap weighs in favor of a finding of likelihood
of confusion.
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Applicant argues that the cost of the goods at issue and the sophistication of
the consumers who buy them negate the likelihood of confusion between the marks.
In this regard, Applicant asserts that its goods “cost thousands of dollars and
upwards,” are “high-dollar luxury pieces that cannot be found at just any jewellery
store in the country,” and that the high price tag “tremendously limits the consumer
base to which they appeal and can be sold.” (Brief, p. 17). Due to the high cost,
Applicant states that purchasers work closely with Applicant to select and purchase
the jewelry items. The problem with Applicant’s argument is that the identification
is not limited to expensive, “high-dollar luxury” jewelry; thus, the identification
must be construed broadly to include jewelry that is relatively inexpensive, and
subject to purchase by ordinary consumers. In any event, even assuming that
Applicant’s and Registrant’s goods may involve a careful purchase after exercising
due diligence, it is settled that even sophisticated purchasers are not immune from
source confusion, especially in cases such as the instant one involving similar marks
and related goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986), (citing Carlisle Chemical Works, Inc. v. Hardman & Holden
Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers...are not infallible.”)). See also In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
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Applicant also asserts that there have been no instances of actual confusion
between the marks, despite over three years of contemporaneous use.5 It is not
necessary to show actual confusion in order to establish likelihood of confusion. See
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-
43 (Fed. Cir. 1990). Applicant’s assertion, particularly in this ex parte proceeding, is
entitled to little weight. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known
instances of actual confusion are of little evidentiary value”). See also In re Bisset-
Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that
testimony of applicant’s corporate president’s unawareness of instances of actual
confusion was not conclusive that actual confusion did not exist or that there was no
likelihood of confusion); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009); In re 1st
USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, the record
is devoid of evidence relating to the extent of use of Applicant’s and Registrant’s
marks that would enable us to determine whether there have been meaningful
opportunities for instances of actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000). Accordingly, the du Pont factor of the length of time during and
conditions under which there has been contemporaneous use of the marks without
evidence of actual confusion is considered neutral.

5 The Examining Attorney contends that Applicant is estopped from making this argument
because its application is based on an intention to use the mark. Inasmuch as the record
shows that Applicant has commenced use, we are considering the merits of this argument.
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We have carefully considered all of the evidence made of record pertaining to
the issue of likelihood of confusion, as well as all of the arguments related thereto,
including any evidence and arguments not specifically discussed in this opinion. We
conclude that purchasers familiar with Registrant’s watches sold under the mark
ADONIS and design will be likely to mistakenly believe, upon encountering
Applicant’s mark ADONIS ROSE for jewelry, that the goods originated with or are
sponsored by or associated with the same source.
Decision: The refusal to register Applicant’s mark in Class 14 is affirmed.
The application in Class 35 will proceed.