Diamonique Corp.v.Wieck Family, Ltd.

Trademark Trial and Appeal Board

Apr 21, 2004

No. 91123296 (T.T.A.B. Apr. 21, 2004)

Hearing: Mailed:
February 11, 2004 April 21, 2004
Paper No. 8
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Diamonique Corporation
v.
Wieck Family, Ltd.1
________
Opposition No. 91123296
against Application Serial No. 76052817
_______
Manny D. Pokotilow and Salvatore Guerriero of Caesar Rivise
Bernstein Cohen & Pokotilow, Ltd. for Diamonique
Corporation.
William G. Lane of William G. Lane, Inc., P.C., for Wieck
Family, Ltd.
_______
Before Chapman, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Wieck Family, Ltd. seeks registration on the Principal
Register of the mark DIAMONELLE for goods identified as
1 According to the records of the Assignment Division of the
United States Patent and Trademark Office, this application was
assigned to Opal Pacific, LLC on May 14, 2001, as reflected at
Reel 2336 Frame 0962.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91123296
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“jewelry made of precious metals with cubic zirconia2 with
or without semi-precious stones,”3 in International Class
14.
On June 13, 2001, registration was opposed by
Diamonique Corporation on the grounds that it owns
registrations for the mark DIAMONIQUE for “jewelry with
simulated gemstones, namely white and colored simulated
gemstones, including simulated diamonds,”4 in International
Class 14, and for “precious stones, namely, colored and
white simulated diamonds for use in jewelry other than
school class rings, recognition jewelry and sports award
jewelry,”5 also in International Class 14; that applicant’s
mark, when used in connection with the identified goods, so
resembles opposer’s mark as to be likely to cause
confusion, to cause mistake or to deceive; and that given
the fame of opposer’s DIAMONIQUE mark, applicant’s use of
2 Cubic zirconia is “a synthetic gemstone, ZrO2, used in
jewelry as an artificial diamond.” The American Heritage®
Dictionary of the English Language (Fourth Edition 2000).
3 Application serial number 76052817 was filed on May 19,
2000 based upon applicant’s allegation of use in commerce at
least as early as May 1, 2000.
4 Registration Number 1532950 issued on April 4, 1989;
Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
5 Registration Number 1538103 issued on May 9, 1989; Section
8 affidavit accepted and Section 15 affidavit acknowledged.
Opposition No. 91123296
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its mark causes dilution of opposer’s mark under the
Federal Trademark Dilution Act of 1995.
Applicant, in its answer, denied all the salient
allegations of opposer’s claims. Both parties fully
briefed the case, but only opposer made an appearance at an
oral hearing held before the Board.
We sustain the opposition.
The record consists of the pleadings; the file of the
involved application; and as opposer’s case-in-chief,
applicant’s answers to opposer’s first set of
interrogatories and the accompanying documents, submitted
under opposer’s notice of reliance of May 1, 2002; the
trial testimony deposition, with attached exhibits, of Neal
S. Grabell, opposer’s senior vice president and general
counsel; the trial testimony deposition, with attached
exhibits, of Michael Rappeport, founding partner of R.L.
Associates, a survey research and consulting firm; and the
rebuttal testimony deposition of Michael Rappeport.
Applicant, as its case-in-chief, has furnished the
testimony, with exhibits, of Albert Gardner, production
manager for third-party corporation, Diamonair,
Incorporated; the testimony, with exhibits, of Leon B.
Kaplan, president of the Princeton Research & Consulting
Center; the testimony, with exhibits, of Robert Paul
Opposition No. 91123296
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Stockwell, retired Professor of Linguistics at U.C.L.A.; and
applicant’s notice of reliance on a number of third-party
registrations, submitted on November 12, 2002.
Opposer manufactures and markets a wide variety of
jewelry with simulated gemstones, including cubic zirconia.
Opposer has been using the DIAMONIQUE mark in connection
with jewelry continuously since 1970 (initially adopted and
used by its predecessor in interest). According to the
testimony of opposer’s witness, Neal S. Grabell, opposer’s
sole shareholder is QVC, Inc., and a majority of opposer’s
goods are currently sold through the QVC television channel
distributed over nationwide cable and satellite systems.
QVC’s home shopping television program is broadcast to more
than 80 million homes in all fifty states of the United
States. Since QVC began selling DIAMONIQUE jewelry in
1987, DIAMONIQUE has been the largest single brand (Grabell
Trial Deposition at 12) among all the brands of goods that
QVC sells.6 QVC shipped more than twenty million units of
jewelry under the DIAMONIQUE mark between the years 1993
and 2001, generating sales revenues of almost $1.4 billion.7
6 QVC reportedly has approximately forty thousand products in
its active inventory (Grabell Trial Deposition at 10).
7 While the majority of opposer’s sales are generated by
promotions on cable television, opposer also sells DIAMONIQUE
(cont. on following page)
Opposition No. 91123296
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It appears from applicant’s discovery responses made
of record by opposer that applicant uses its marks in
connection with items of jewelry having simulated gems.
These manufactured gems include simulated diamonds and
other simulated gemstones such as emeralds, sapphires and
rubies. (Applicant’s answer to Interrogatory No. 2,
Exhibit 1 to opposer’s notice of reliance) The involved
application identifies the goods as “jewelry made of
precious metals with cubic zirconia with or without semi-
precious stones.”
Evidentiary Objections
Before turning to the merits of the case, we must
consider several evidentiary disputes that have arisen
between the parties.
One such dispute involves opposer’s objections to the
testimony deposition of applicant’s expert witness, Dr.
Leon B. Kaplan. First, opposer seeks to strike the
testimony in its entirety on the ground that applicant
failed to provide during discovery Dr. Kaplan’s report
entitled “An Evaluation of Consumer’s Perceptions of
jewelry through its online shopping site at QVC.com, QVC outlet
stores, through QVC’s Insider and Current magazines, and through
Target retail stores. (Grabell Trial Deposition at 20, 22 – 23,
31 – 32, 36 – 37)
Opposition No. 91123296
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Diamonique and Diamonesque.” Second, opposer seeks to
strike those portions of the Kaplan testimony involving
assertedly leading questions about opposer’s showing of
acquired distinctiveness and questions regarding the
compliance of Dr. Michael Rappeport’s survey with the
Federal Judicial Center’s Manual for Complex Litigation.
As to opposer’s motion to strike the Kaplan testimony
in its entirety, applicant argues as follows:
A critique of the other party’s survey report
does not constitute a market research study, a
survey, a test, and the like. Applicant had no
knowledge of Dr. Rappeport’s study and report
until the day of Dr. Rappeport’s deposition.
The report was furnished to Applicant’s counsel
at the deposition and not prior thereto. It
was only later that Applicant decided after
reviewing Dr. Rappeport’s transcript of the
deposition testimony and his report that the
decision was made to have Dr. Rappepport’s
report critiqued by a survey expert. This
study and report were limited to [a] critique
of Dr. Rappeport’s report and did not involve
any independent survey, study, market research
tests, or the like. Dr. Kaplan’s study did not
commence until almost six months after the
close of discovery and Dr. Kaplan’s report was
not finalized until the day prior to his
deposition. When the final report was
completed, it was promptly facsimiled to
Opposer’s attorney the day before Dr. Kaplan’s
testimony deposition. Applicant never refused
and never failed to provide the report.
Clearly it is impossible to provide a report
that was not completed and did not even exist
during the discovery period and it is
impossible to provide a report before the
report is finalized.
(Applicant’s brief, p. 3)
Opposition No. 91123296
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We find that applicant has offered a reasonable
explanation for the timing of Dr. Kaplan’s report.
Accordingly, we deny opposer’s motion to strike this
testimony in its entirety. Secondly, inasmuch as Dr.
Kaplan is an expert witness, his testimony is not
susceptible to the power of suggestion. Hence, we find it
is permissible for applicant’s counsel to have put leading
questions to applicant’s expert witness. We overrule
opposer’s objections to these portions of Dr. Kaplan’s
testimony, and permit his answers to these leading
questions to be part of the evidentiary record.
A second and similar dispute involves opposer’s
objections to the testimony deposition of applicant’s
expert witness, Dr. Robert P. Stockwell. First, opposer
seeks to strike the testimony in its entirety on the ground
that applicant failed to provide during discovery Dr.
Stockwell’s expert letter report. Second, opposer seeks to
strike those portions of the Stockwell testimony involving
assertedly leading questions about the similarity of the
DIAMONIQUE and DIAMONELLE marks.
As to opposer’s motion to strike the Stockwell
testimony in its entirety, applicant argues as follows:
The discovery period closed on January 13,
2002, three days after the request for
production of documents was mailed. The
Opposition No. 91123296
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response to Opposer’s first request for
production of documents was mailed on
February 9, 2002.
Dr. Stockwell’s report did not relate to or
refer to the use of Applicant’s mark in
connection with any products and/or services
marketed, offered for sale, advertised or
promoted by Applicant, including … those
related to confusion or likelihood of
confusion between Applicant’s products
and/or services and Opposer’s products
and/or services. The bottom line is that
the request for production of documents did
not envision or encompass the linguistic
study carried out by Dr. Stockwell.
The second point is that Dr. Stockwell’s
study was not initiated and his report was
not initiated and completed until after, way
after, the close of discovery.
The third point is that Dr. Stockwell’s
report, a draft thereof dated June 20, 2002,
was mailed to Opposer’s counsel on July 18,
2002. Applicant’s attorney and Opposer’s
attorney discussed the entry of the report
and Opposer’s attorney said that he might
consider stipulating to the entry of the
report…. The bottom line is that even though
the final report is dated June 20, 2002, the
final report was not completed until
September but retained the original date.
(Applicant’s brief, p. 4)
Again, this report was not in existence at the time of
opposer’s discovery request. Hence, we find that applicant
has offered a reasonable explanation for the timing of the
submission of Dr. Stockwell’s report and we deny opposer’s
motion to strike the same. Secondly, inasmuch as Dr.
Stockwell is an expert witness, we find it is permissible
Opposition No. 91123296
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for applicant’s counsel to have put leading questions to
Dr. Stockwell and permit his answers to these leading
questions to be part of the evidentiary record. Hence, we
overrule opposer’s objections to these portions of Dr.
Stockwell’s testimony, and permit his answers to these
leading questions to be part of the evidentiary record.
Priority
There is no dispute as to opposer’s Section 2(d)
priority, in view of opposer’s pleaded registrations, made
of record in this proceeding by appropriate identification
and introduction during the testimony of Mr. Grabell.8 See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Accordingly, we turn to the issue of whether or not a
likelihood of confusion exists in this case. In making
this determination, we have followed the guidance of In re
8 During Mr. Grabell’s testimony, a more recently issued
registration for the mark DISCOVER DIAMONIQUE for “home shopping
services in the field of general merchandise by means of cable
television,” in International Class 35 (Reg. No. 2490674, issued
on September 18, 2001) was also made of record.
While opposer did not move to amend its pleading, to
whatever extent it is necessary, we consider the pleading amended
to conform to the evidence under Fed. R. Civ. P. 15(b).
Therefore, opposer’s Registration No. 2490674 is considered of
record herein.
Opposition No. 91123296
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E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177
USPQ 563, 567-68 (CCPA 1973). The du Pont case sets forth
the factors that should be considered, if relevant, in
determining likelihood of confusion.
We turn first to the similarity of the goods as
described in the involved application and in opposer’s
registrations and in connection with which its prior mark
has been in use. Opposer uses its mark in connection with
jewelry having simulated gemstones, including simulated
diamonds. Applicant’s use is also on simulated diamonds
and jewelry designs having other simulated gemstones.
Hence, for purposes of a determination of likelihood of
confusion under the provisions of the Lanham Act, the goods
are legally identical.
As to the du Pont factors focusing on the similarity
or dissimilarity of established, likely-to-continue trade
channels and the conditions under which and buyers to whom
sales are made, in view of the identity of goods, and in
view of the absence of any restrictions in applicant’s
and/or opposer’s identification of goods as to trade
channels or classes of purchasers, we further find that the
parties’ respective goods move in the same trade channels,
and are marketed to the same classes of ordinary
Opposition No. 91123296
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purchasers.9 These facts weigh in favor of a finding of
likelihood of confusion.
We turn then to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. The test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Where, as in the present case, the
marks would appear on virtually identical goods, the degree
of similarity between the marks which is necessary to
support a finding of likely confusion declines. Century 21
9 Applicant argues that because opposer’s evidence shows that
the average purchase price of opposer’s jewelry items is seventy
dollars, these are clearly not impulse items. We agree with
applicant that this level of expenditure suggests greater care on
the part of consumers than would “a fifty-cent can of soup,” for
example. On the other hand, we cannot conclude from such a
mathematical exercise that we are faced, as a result, with
sophisticated purchasers herein.
Opposition No. 91123296
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Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ 1698 (Fed. Cir. 1992).
In making the case for why these marks are confusingly
similar, opposer argues as follows:
… Both marks possess the dominant feature
“DIAMON” in the beginning of each mark.
Although “DIAMON” may be a suggestive term,
meaning “diamond,” it is this term in each
mark which gives the mark its primary
significance, and would be the word most
likely to be impressed upon the minds of
purchasers and to be remembered and used in
calling for the goods. Moreover,
Applicant’s mark follows the same pattern as
Opposer’s mark, combining the term “DIAMON”
with a French-like term (“IQUE” and “ELLE”),
which when viewed as a whole, convey similar
overall commercial impressions. Opposer
respectfully submits that the meaning of the
terms “IQUE” and “ELLE” are likely to be
unfamiliar to American consumers; thus,
consumers are likely to have a hazy
recollection of these terms and simply
perceive them as terms from a foreign
language, probably French ….
(Opposer’s reply brief, pp. 22 – 23)
By contrast, applicant argues that the DIAMON- root is
descriptive of the goods and services, making opposer’s
mark inherently weak. Applicant’s linguistic expert, Dr.
Robert Stockwell, explains that “DIAMON- is an artificially
truncated root not existing in normal English parlance”
(i.e., it is used in commercial contexts like trademarks),
that still “retains the basic root reference (‘a gem
Opposition No. 91123296
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stone’) …”10 of the root word DIAMOND. Applicant goes on to
argue that these entirely different suffixes “change the
appearance of the marks, change the pronunciation of the
marks, gives the marks different connotations, and gives
the marks different commercial impressions.” Applicant
continues:
… Opposer contends that the ordinary
consumer would not be sophisticated enough
to appreciate the difference in sound,
appearance and meaning between the suffixes
“ique” and “elle.” Actually, these suffixes
appear in other English words that are
commonly used, such as Mademoiselle and
technique. …
(Applicant’s brief, p. 18)
Dr. Stockwell also confirms that these suffixes (-IQUE
and –ELLE) are both English language suffixes borrowed from
the French language at vastly different periods of time.
The –IQUE suffix suggests “related to” while the –ELLE
suffix is a diminutive suffix – meaning a smaller one of
the same type. He opines that the “suffixes of the marks
DIAMONIQUE and DIAMONELLE are semantically, phonetically
and historically different”; and that “[t]he marks
DIAMONIQUE and DIAMONELLE are not pronounced alike and do
10 Stockwell Trial Deposition at 24 – 25; Exhibit 129 at
unnumbered pages 2 – 3.
Opposition No. 91123296
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not sound alike because of the differences in their
suffixes.”11
As to appearance, the marks each consist of a single,
three-syllable word having ten letters in which the first
two syllables are identical. Hence, the marks are similar
in appearance. As to connotation, consumers will not find
these two set of suffixes as foreign as opposer would
suggest with its citations to cases discussing “a jaw-
breaking string of consonants.”12 On the other hand, these
are coined words where neither suffix creates a connotation
for the entire mark that one could easily derive or
verbalize. Finally, while it is beyond debate that the
respective sounds of the final syllables are different – ēk
versus el – they are not radically different. Hence, we
find that the marks are somewhat similar in overall
commercial impression, and this factor favors opposer
slightly. How decisive a factor this proves to be, in the
final analysis, is really a function of whether the record
demonstrates that opposer’s DIAMONIQUE is a strong mark.
11 Stockwell Trial Deposition at 29 – 35; Exhibit 129 at
unnumbered pages 3 – 4.
12 Stabilisierungsfonds fur Wein v. Peter Meyre Winery GmBH, 9
USPQ2d 1073, 1075 (TTAB 1988).
Opposition No. 91123296
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Accordingly, we turn to the related du Pont factor
focusing on the number and nature of similar marks in use
on similar goods. Applicant argues that the third-party
registrations of “Diamon-” and “Diamond-” formative marks
coexisting on the federal trademark registry show that the
United States Patent and Trademark Office has clearly taken
the position that numerous such marks do not result in a
likelihood of confusion.13 Of course, applicant’s own
expert, Dr. Stockwell, concludes that each of these third-
party marks (and including each of the marks involved in
this proceeding), taken as a full word, “is pronounced
differently from any of the others.”
In response to applicant’s arguments, opposer contends
that these third-party registrations are “unpersuasive and
insufficient to show that Opposer’s mark is lacking in
distinctiveness or entitled only to narrow protection in
relation to the issue of likelihood of confusion.”
(Opposer’s brief, p. 29)
In the only proof of actual use by any of these third
parties, applicant submitted the testimony of Albert
13 DIAMOND-ITE (Reg. No. 0843690), DIAMONTRIGUE (Reg. No.
1175519), DIAMONTOLOGY (Reg. No. 1453574), DIAMONESS (reg. No.
2107566), DIAMONAIR (Reg. No. 2345366), DIAMONTI (Reg. No.
2,589629), DIAMONLITE (Reg. No. 2735231), and DIAMONDNA (Reg. No.
2821473).
Opposition No. 91123296
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Gardner, an employee of Diamonair Incorporated, about its
use of the DIAMONAIR mark over a period of thirty-three
years. However, as opposer has argued, we find that key
portions of Gardner’s testimony were vague and indefinite.
As reflected in the transcript of his testimony, the
proffered information on Diamonair’s sales volume is
largely useless, devoid, as it is, of any time frame or
unit of measurement.14 Furthermore, we know only that
Diamonair’s mark was stamped on the inside shank of rings,
on the mountings of pendants and on the posts of earrings.
Hence, it is not clear how noticeable this mark was to the
eyes of consumers. Finally, references to Diamonair’s
appearance at a single trade show targeted to retailers is
not persuasive of widespread awareness of the mark by
ordinary consumers.15
Moreover, opposer cites to Standard Brands
Incorporated v. RJR Foods, Inc., 192 USPQ 383 (TTAB 1976)
14 Q: What is your employer’s sales volume?
A: An average is – right now, around six million, maybe a
little bit more.
(Gardner Trial testimony, pp. 18 – 19)
15 Opposer referred in its brief to newly available
information contained in a paper filed with the Securities and
Exchange Commission (SEC) regarding an organization known as D.G.
Jewelry Inc. (allegedly the parent of Diamonair Incorporated)
that allegedly went into receivership on October 10, 2002. This
was untimely and inappropriately inserted into the record, and
hence, was not considered by the Board.
Opposition No. 91123296
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[CHERRY ROYAL fruit-flavored drinks likely to cause
confusion with ROYAL drink mixes] in an attempt to minimize
the weight accorded to this alleged evidence of third-party
usage:
With the exception of the trademark “ROYAL
CROWN” for cola, the use of which was
acknowledged by opposer’s witness, there is
no evidence that any of the third parties’
marks shown in the registrations submitted
by applicant is in use and the extent of use
of “ROYAL CROWN” is not shown. There is no
proof that the purchasing public that buys
opposer’s goods and would buy applicant’s
goods has been so conditioned by exposure to
a plethora of “ROYAL” marks for the same or
closely related goods in the market that
customers have been educated to distinguish
between different “ROYAL” marks on the basis
of minute distinctions. The mere submission
of registrations does not supply the proof.
See: Stanadyne, Inc. v. Lins, 180 USPQ 649
(CCPA, 1974).
We cannot conclude from this record that consumers
have actually been exposed in the marketplace to any of
these other DIAMON- formative marks such that they are
conditioned to look to the suffix on a DIAMON- formative
mark on jewelry to determine the source of the item of
jewelry.
Even if we were to presume some exposure to these
third-party marks, we find that the overall commercial
impressions of opposer’s mark and of applicant’s mark are
Opposition No. 91123296
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much closer to each other than either of them are similar
to the impressions of any of these third-party marks.16
We turn, then, to a most critical du Pont factor in
the instant case, and that is the fame of opposer’s prior
mark. We find that opposer has demonstrated by a
preponderance of the evidence that its DIAMONIQUE mark is a
well-known mark in the United States for jewelry having
simulated gemstones, including simulated diamonds. The
following table shows shipments of DIAMONIQUE products and
the total airtime DIAMONIQUE products received on the QVC
shopping channel:
16 Dr. Stockwell’s report reflected the reactions of an expert
linguist to each of the following third-party marks by noting
something about their suffixes, construction and/or overall
connotations:
•= DIAMOND-ITE: suggests a mineral;
•= DIAMONTRIGUE: a curious blend of root words suggesting
“intrigue about diamonds”;
•= DIAMONTOLOGY: suggest a person who works with gemstones
but this coined word has an unnecessary letter “t”;
•= DIAMONAIR: suggests “debonair” or “millionaire”;
•= DIAMONDNA: treats initialism DNA as if it were a suffix;
curious combination inasmuch as DNA is found only in
chromosomal matter;
•= DIAMONTI: this DIAMON- root would be pronounced
differently than the other marks herein, placing the stress
on the –MON- syllable
•= DIAMONLITE: perhaps suggesting the “light” that shines
through the stone, but overall mark has no resemblance to
either DIAMONELLE or DIAMONIQUE.
(Stockwell Trial Deposition Exhibit 129 at unnumbered pages 3 –
4)
Opposition No. 91123296
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Year Units
shipped
Dollars
shipped
Minutes of
Airtime
1993 1,160,169 $ 87,992,663 24,100
1994 1,181,504 $ 94,613,965 22,287
1995 1,842,538 $ 130,214,430 21,320
1996 2,409,752 $ 155,588,849 21,669
1997 2,156,344 $ 150,481,769 21,677
1998 2,348,218 $ 164,930,630 22,117
1999 3,038,829 $ 184,208,736 21,906
2000 2,922,277 $ 201,186,338 22,229
2001 3,168,423 $ 213,762,340 22,773
Total 20,228,054 $ 1,382,979,720 200,078
(Opposer’s exhibit 20)
According to the testimony of opposer’s witness, Neal
S. Grabell, during these extended on-air presentations, the
DIAMONIQUE mark is used prominently several places on the
television screen. The host or hostess repeatedly mentions
the trademark as he/she displays the ring, bracelet,
pendant, necklace or earrings. The jewelry box, packaging,
hangtags and any pieces of enclosed literature contain the
mark. (Grabell Trial Deposition at 19) Opposer also
advertises in QVC’s own Insider and Current magazines as
well as in TV Guide magazine. (Grabell Trial Deposition at
27) In fact, one article made of record credited QVC with
giving cubic zirconia “its first big push into the jewelry
boxes of the American public.” (“Faux Sparklers Sub for
Diamonds,” Omaha World-Herald (Neb.), February 26, 1998,
Opposer’s Exhibit No. 15)
Opposition No. 91123296
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In order to corroborate the degree of consumer
recognition for the DIAMONIQUE mark, opposer submitted an
expert report entitled “Consumers’ Perceptions of
Diamonique and Diamonesque.” This report was based upon a
mall intercept survey conducted by Dr. Michael Rappeport in
November and December 2001 for opposer’s litigation against
another mark – a civil action in a federal district court
[Diamonique Corporation v. Valuevision International, Inc.,
Civil Action No. 01-CV-6551 (E.D. Pa.)]. Because
DIAMONIQUE jewelry is sold primarily through a television
shopping channel, Dr. Rappeport testified that he limited
his sampling to women who had purchased something from any
cable or satellite television channel in the previous year.
Dr. Rappeport argued that to the extent this was over
inclusive (not limited to those who purchased jewelry
through a television channel dedicated exclusively to
shopping), it was only damaging to opposer’s position.
Nonetheless, according to Dr. Rappeport, the respondents
reflected 24% unaided recognition of DIAMONIQUE as a
product sold through QVC and/or other television shopping
channels. Dr. Rappeport explained that this means that a
significant portion of those who buy products from home
shopping channels recognize that DIAMONIQUE is a brand
associated with, and sold through, QVC.
Opposition No. 91123296
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Applicant, in turn, hired Dr. Leon B. Kaplan to review
this survey and report. During his testimony in this case,
Dr. Kaplan declared the Rappeport survey and report to be
so fatally flawed as to be worthless in demonstrating
acquired distinctiveness for the DIAMONIQUE mark. He
objected to the way the universe was “operationalized” for
the survey, the way the questionnaire was constructed and
the way the data was analyzed.
Without discussing in detail Dr. Kaplan’s criticisms
of Dr. Rappeport’s report, we find that the accumulation of
specific weaknesses and minor omissions he has highlighted
reduce the probative value of this report to the point that
we cannot be sure that, standing alone, this report
demonstrates strength for this mark in the way opposer
contends. Nonetheless, we find that the significant levels
of promotion and sales of DIAMONIQUE jewelry shown in the
record is consistent with the conclusions that opposer
would have us draw from this study, namely that the term
DIAMONIQUE has acquired distinctiveness, and indeed, is a
well-known mark, for jewelry having simulated diamonds and
other simulated gemstones.
Upon balancing all the relevant du Pont factors, and
giving each its appropriate weight, we find a likelihood of
confusion herein.
Opposition No. 91123296
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Dilution
Finally, we note that opposer also contends that given
the fame of opposer’s DIAMONIQUE mark, applicant’s use of
its mark causes dilution of opposer’s mark under the
Federal Trademark Dilution Act of 1995. However, given our
determination that opposer has priority of use and that
there is a likelihood of confusion herein, we find it
unnecessary to reach a determination on the question of
dilution in this proceeding.
Decision: The opposition is sustained on the ground
of likelihood of confusion and registration to applicant is
hereby refused.