Dougherty Enterprises, Inc.

Trademark Trial and Appeal BoardJan 8, 2009

No. 77127337 (T.T.A.B. Jan. 8, 2009)

Mailed: January 8, 2009 jtw UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Dougherty Enterprises, Inc. ________ Serial No. 77127337 _______ Mathew R.P. Perrone, Jr. for Dougherty Enterprises, Inc. Jaclyn N. Kidwell, Trademark Examining Attorney, Law Office 112 (Angela Bishop Wilson, Managing Attorney). _______ Before Zervas, Walsh and Bergsman, Administrative Trademark Judges. Opinion by Walsh, Administrative Trademark Judge: Dougherty Enterprises, Inc. (applicant) has applied to register the mark PRECIOUS PORTRAITS in standard characters on the Principal Register for “jewelry” in International Class 14.1 Applicant has disclaimed “PORTRAITS.” 1 Application Serial No. 77127337, filed March 9, 2007, claiming first use of the mark anywhere on June 1, 2001, and first use of the mark in commerce on December 31, 2003. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77127337 2 The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with Registration No. 2442051 for the mark PRECIOUS PRINTS in typed form for “jewelry incorporating prints of body parts” in International Class 14. The registration issued on April 10, 2001, and it is active. The registration includes a disclaimer of “PRINTS.” Applicant and the Examining Attorney have filed briefs. We reverse. Section 2(d) of the Trademark Act precludes registration of an applicant’s mark “which so resembles a mark registered in the Patent and Trademark Office… as to be likely, when used on or in connection with the goods of the applicant, to cause confusion….” The opinion in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the factors to consider in determining likelihood of confusion. We will consider each of the factors as to which applicant or the Examining Attorney presented arguments or evidence. Regarding the goods, in comparing the goods and the channels of trade for those goods we must consider the goods as identified in the application and registration. See Octocom Systems, Inc. v. Houston Computers Services Serial No. 77127337 3 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.”). Applicant’s “jewelry” logically includes the goods in the cited registration, “jewelry incorporating prints of body parts.” Accordingly, we conclude that the goods are legally identical. Furthermore, because the goods identified in the application and the cited registration are legally identical, we must presume that the channels of trade and classes of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003). A key factor in this case is the strength of the cited mark, in particular, the word PRECIOUS, the element common to both marks. In arguing that PRECIOUS is weak, Applicant states, “… the number and nature of similar marks overwhelmingly supports Appellant’s contention.” Applicant has properly made of record copies of third-party registrations for marks which include PRECIOUS, including the following: Serial No. 77127337 4 PRECIOUS TREASURES (Reg. No. 1453158) for jewelry; PRECIOUS MEMORY (Reg. No. 1653015) for jewelry, namely, finger rings; PRECIOUS MOMENTS (Reg. No. 1931009) for jewelry, clocks and watches; COSTAR FOR YOUR PRECIOUS MOMENTS (and design) for jewelry; PRECIOUS OCCASIONS (Reg. No. 2698075) for jewelry; PRECIOUS TIME (Reg. No. 3270347) for jewelry; PRECIOUS BLEND (Reg. No. 3280760) for jewelry, with “PRECIOUS” disclaimed; PRECIOUS FEET (Reg. No. 1687791) for jewelry, with “FEET” disclaimed; PRECIOUS PRECIOUS (Reg. No. 2028027) for jewelry; FOREVER PRECIOUS (Reg. No. 2730046) for jewelry; BORN PRECIOUS (Reg. No. 3193207) for jewelry; GOD’S PRECIOUS STONES (Reg. No. 3197530) for jewelry, with “PRECIOUS STONES” disclaimed; IMPERIAL PRECIOUS COLLECTION (Reg. No. 3301467) for jewelry, with “PRECIOUS COLLECTION” disclaimed; THE PRECIOUS METAL FOR THE NEW MILLENNIUM (Reg. No. 3303510) for jewelry, with “PRECIOUS METAL” disclaimed; PRECIOUS JEWELS BY MILANO (Reg. No. 2123135) for costume jewelry consisting of necklaces, earrings, bracelets and sets thereof, with “PRECIOUS JEWELS” disclaimed; BALOCCHI PRECIOSA (and design) (Reg. No. 2907595) for articles of jewelry of precious and semi- Serial No. 77127337 5 precious stones including a translation of “BALOCCHI PRECIOSA” as “PRECIOUS AMUSEMENTS”; PRIMAL ELEGANCE IN PRECIOUS METALS (Reg. No. 3330866) for jewelry, with “PRECIOUS METALS” disclaimed; PRECIOUS ACCENTS (Reg. No. 3356340) for retail jewelry store, online retail store services featuring jewelry; BRUCE G. WEBER PRECIOUS JEWELS (Reg. No. 3201561) for retail jewelry stores, with “PRECIOUS JEWELS” disclaimed; and LOVE IS PRECIOUS (Reg. No. 2724297) for retail jewelry stores. Attachments to Applicant’s Request for Reconsideration of January 15, 2008.2 The Examining Attorney argues that the marks in the third-party registrations which are properly of record “… convey a different commercial impression than applicant’s ‘PRECIOUS PORTRAITS’ mark.” Examining Attorney’s Brief at 6. The Examining Attorney continues, “The registrations incorporate other wording and/or design elements such that an entirely different commercial impression is created to that of the mark ‘PRECIOUS PORTRAITS.’” Id. The Examining Attorney does not address directly the probative value of this evidence. In Red Carpet Corp. v. 2 We have not considered the copy of the registration for PRECIOUS PRONG, which applicant submitted with its brief, because the submission was not timely. Trademark Rule 2.141(d). Serial No. 77127337 6 Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB 1988), the Board explained that third-party registrations may be used in evaluating likelihood of confusion to show that a portion common to two marks has an understood and well-known meaning. If the third-party registrations show that the common element has such a meaning, the remaining portions of the marks may be sufficient to distinguish the marks as a whole, even when the goods are the same or closely related. In such cases the mere presence of the common element in each mark may be insufficient to find that the marks are confusingly similar. Red Carpet, 7 USPQ2d at 1406. See also Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005). We must consider applicant’s evidence, in particular the third- party registrations, to determine whether PRECIOUS is such a common, weak element in this case. Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334 (TTAB 2006) (GENUINE held to be inherently weak and laudatory and therefore entitled only to the narrowest scope of protection). “Precious” is defined, in relevant part, as “of great value or high price (jewels).”3 The third-party 3 We take judicial notice of this definition from Merriam- Webster’s Collegiate Dictionary (11th ed. 2003). University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 77127337 7 registrations further illustrate the particular meanings of “precious” as applied to jewelry. We note the disclaimed terms “precious stones,” “precious metals” and “precious jewels” in the marks in the third-party registrations, as well as the use of “precious and semi-precious stones” in one identification of goods. “Valuable” materials, such as precious stones and precious metals, are often used in making jewelry. Thus, we conclude that the evidence of record, in particular the third-party registrations, shows that PRECIOUS is highly, and indeed extremely suggestive, and therefore extremely weak, as applied to jewelry. We now turn to the comparison of the marks in their entireties. To determine whether the marks are confusingly similar, we must consider the appearance, sound, connotation and commercial impression of each mark. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Furthermore, although the marks at issue must be considered in their entireties, it is well-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. See In re Chatam International Inc., 380 F.3d Serial No. 77127337 8 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Applicant argues that PRECIOUS is weak, and therefore, that the other elements in the respective marks, PORTRAITS and PRINTS, are sufficient to distinguish the marks overall. Applicant argues further that PRECIOUS PORTRAITS and PRECIOUS PRINTS differ in sound and appearance, and further that the marks differ in meaning and commercial impressions. Applicant states, “A print conjures the impression of a reproduction or mechanical copy of an original art (sic). While a portrait creates the impression of a handmade drawing or painting portraying a living subject (sic).” Applicant’s Brief at 8. The Examining Attorney argues, on the other hand, that the terms PORTRAITS and PRINTS have similar meanings and are insufficient to distinguish the marks. After careful consideration of the respective arguments, we conclude that the marks are not confusingly similar. While there are similarities between the marks, most notably the fact that each begins with PRECIOUS, we conclude that the marks, when viewed in their entireties, are sufficiently different to conclude that there is not a likelihood of confusion, particularly in view of the Serial No. 77127337 9 extreme weakness of PRECIOUS as applied to jewelry. We find the Examining Attorney’s arguments that PORTRAITS and PRINTS are similar unpersuasive. The Knight Textile case is instructive here. In Knight Textile the applicant sought to register NORTON MCNAUGHTON ESSENTIALS for various items of “ladies sportswear.” Knight Textile, 75 USPQ2d at 1314. Knight Textile Corporation opposed registration based on its registration for the mark ESSENTIALS for various items of “women’s clothing.” Id. at 1314. In the opinion the Board found that the applicant’s goods were “in part identical to and otherwise highly similar to the goods in opposer’s pleaded registration.” Id. at 1315. The Board then concluded, as follows, with regard to the comparison of the marks, “We find that the parties’ marks are dissimilar rather than similar when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression.” Id. at 1315. In Knight Textile, the critical factual issue was the strength or weakness of ESSENTIALS. In concluding that ESSENTIALS was highly suggestive the Board relied primarily on a dictionary definition for “essential-s” and “twenty- three extant ESSENTIAL registrations on the register in the Serial No. 77127337 10 clothing field registered to twenty-one different owners.” Knight Textile, 75 USPQ2d at 1316. As in the Knight Textile case, here we have a dictionary definition and copies of third-party registrations which corroborate the highly suggestive meaning and extreme weakness of PRECIOUS in the relevant field. See In re Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d at 1406. Also, in this case each of the marks includes another term which serves to distinguish the source of the goods. Accordingly, even though the goods are legally identical, we find no likelihood of confusion between PRECIOUS PORTRAITS when used on “jewelry” and PRECIOUS PRINTS when used on “jewelry incorporating prints of body parts” principally because PRECIOUS, the common element in the respective marks, is extremely weak. Decision: We reverse the refusal under Trademark Act Section 2(d).