Henne Inc.v.Worldwide JR Wood

Trademark Trial and Appeal Board

Mar 16, 2012

No. 92051437 (T.T.A.B. Mar. 16, 2012)

GCP
Mailed: March 16, 2012

Cancellation No. 92051437

Henne Inc.

v.

Worldwide JR Wood

Before Bucher, Kuhlke, and Taylor,
Administrative Trademark Judges.

By the Board:
Respondent, Worldwide JR Wood, LLC, is the owner of
Registration No. 3170149, issued on November 7, 2006, on the
Principal Register for the mark JEWELRY FOR LIFE in standard
character format for “necklaces, pendants, bracelets, rings,
watches, earrings, pins being jewelry” in International
Class 14.1 The registration claims August 15, 2005, as both
the date of first use anywhere and the date of first use in
commerce.
On November 18, 2008, petitioner, Henne Inc., filed a
federal trademark application for the mark JEWELERS FOR LIFE

1 Respondent’s registration includes a disclaimer of the term
“JEWELRY.”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92051437

2
in standard character format for “retail jewelry stores” in
International Class 35.”2
On September 10, 2009, petitioner filed a petition to
cancel respondent’s registration alleging the following
claims: (1) priority and likelihood of confusion; (2)
abandonment; and (3) an apparent claim of non-use. During
the parties’ discovery conference with Board participation
held on November 12, 2010, the Board advised petitioner that
it had not properly set forth a claim of likelihood of
confusion in its pleading. Moreover, the Board found that
petitioner’s pleading was ambiguous to the extent that it
was unclear whether petitioner was alleging a claim of non-
use or fraud. In view of the identified deficiencies and
ambiguities, the Board allowed petitioner time in which to
file and serve an amended petition to cancel which properly
set forth the claims it sought for cancellation.
On July 13, 2010, petitioner filed an amended petition
to cancel asserting only a claim of priority and likelihood
of confusion.
Respondent, in its answer filed on August 3, 2010,
denied the salient allegations of the amended petition to
cancel.

2 Application Serial No. 77616581, based on use in commerce under
Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), alleging
December 31, 2000, as both the date of first use anywhere and the
date of first use in commerce.
Cancellation No. 92051437

3
This case now comes before the Board for consideration of
petitioner’s renewed motion (filed October 26, 2011) for
summary judgment on its asserted claim of likelihood of
confusion.3 The motion is fully-briefed.
In support of its motion, petitioner maintains that the
dominant portions of the marks at issue are similar in
appearance, sound, connotation and commercial impression.
Specifically, petitioner argues that both marks contain the
dominant words JEWEL and FOR LIFE, and the only difference in
the marks is that petitioner’s mark ends the JEWEL prefix with
“ERS” while respondent’s mark ends the JEWEL prefix with the
letters “RY.” Further, petitioner contends that the dominant
portions of the parties’ respective marks appear in identical
sequence. In view of the similarities of the parties’ marks,
as well as the similarities of their overall commercial
impression, petitioner maintains that there are no genuine
disputes of material fact that the marks are confusingly
similar.
With regard to the parties’ goods and services,
petitioner argues that respondent’s goods, i.e., jewelry
items, and petitioner’s services, i.e., retail jewelry stores,
are related since jewelry is sold in retail jewelry stores.

3 By order dated June 14, 2011, the Board granted petitioner’s
motion for partial summary judgment on the issue of priority as
conceded and entered judgment in favor of petitioner only in
regard to the issue of priority of use.

Cancellation No. 92051437

4
Further, petitioner maintains that numerous third-party
registrations exist which identify both jewelry and retail
jewelry store services and that these registrations illustrate
these goods and services are commonly marketed under the same
marks and that consumers are therefore likely to be confused
by the use of similar marks in connection with jewelry and
retail jewelry stores. Petitioner also argues that there is
no dispute that the parties’ respective goods and services
travel in the same trade channels inasmuch as both parties
offer their goods and services over the internet and through
magazines circulated to the general public.
Finally, in support of its standing, petitioner maintains
that its pleaded pending application for the mark JEWELERS FOR
LIFE was refused registration by the Office on the grounds
that petitioner’s mark is likely to cause confusion with
respondent’s involved registered mark.
As evidence in support of its motion, petitioner has
submitted the declaration of Stanley D. Ferrence III
(“Ferrence Decl.”), counsel for petitioner, which introduces
the following exhibits, among others: (i) copy of the file
history of petitioner’s pleaded pending application; (ii) copy
of the office action issued by the Office refusing
registration of petitioner’s pleaded pending application under
Section 2(d) which includes, as exhibits in support of the
refusal, third-party registrations identifying both jewelry
Cancellation No. 92051437

5
and retail jewelry stores; (iii) a copy of petitioner’s
amended petition to cancel; (iv) various advertising exemplars
displaying petitioner’s JEWELERS FOR LIFE mark used in
connection with the promotion of petitioner’s jewelry stores;
(v) copies of the home page of petitioner’s website, as well
as the pull down menu on petitioner’s website; (vi) exemplars
of respondent’s advertisements in various magazines displaying
respondent’s registered mark; (vii) copy of the home page of
respondent’s website, including pull down menu.
In response, respondent objects to petitioner’s claim
that the marks at issue are virtually identical. Similarly,
respondent objects to petitioner’s assertion that petitioner’s
services and respondent’s goods are related. Specifically,
respondent maintains that petitioner’s services appear to be
the repair and retail reselling of jewelry not manufactured by
petitioner while respondent’s goods are the direct response
sale of personalized jewelry manufactured directly by
respondent at the commission of its clients. Furthermore,
respondent argues that the parties’ respective trade channels
differ inasmuch as petitioner’s services are only provided
through a physical retail store located in Pittsburgh,
Pennsylvania, and that its website does not provide a manner
in which customers may order its jewelry items directly
through the internet. In contrast, respondent maintains that
it sells its jewelry directly through its websites and over
Cancellation No. 92051437

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the telephone to clients all over the world. Moreover,
respondent argues that the overwhelming fame of respondent’s
involved mark avoids a finding of likelihood of confusion.
Finally, respondent contends that petitioner has failed to
provide any evidence of actual confusion or the nature and
extent of potential confusion.
In support of its argument, respondent has submitted
screenprints of pages from respondent’s and petitioner’s
websites as exhibits, without a declaration or affidavit.
Although the websites include a URL they do not include a date
of publication or the date they were accessed and printed, as
such, they are not “self-authenticating” as contemplated by
Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB
2010). In view thereof, petitioner’s objection to this
evidence is sustained. We hasten to add that consideration of
this evidence would not change the result herein inasmuch as
we must consider all ordinary trade channels for these goods
and services in view of the absence of such restrictions in
the identifications in the application and registration.
In reply, petitioner contends that respondent has failed
to produce any evidence, testimony, declaration, or affidavit
that creates a factual dispute as to whether summary judgment
should be granted on likelihood of confusion between the
marks. Specifically, petitioner maintains that, with regard
to the issue of the similarity of the marks, respondent has
Cancellation No. 92051437

7
merely objected to petitioner’s contention that the marks are
similar without offering any argument or testimony or evidence
to counter petitioner’s contention. Further, with regard to
the relatedness of the parties’ respective goods and services,
petitioner argues that respondent fails to understand that the
analysis is limited to the goods and services as identified in
petitioner’s pleaded application and respondent’s involved
registration. Moreover, petitioner contends inasmuch as
respondent has not produced any evidence concerning actual
confusion between the parties’ respective marks, respondent
has failed to raise a genuine dispute of material fact that
would defeat petitioner’s motion for summary judgment.
Finally, petitioner argues that because it has already
established priority of use, the fame of respondent’s mark, as
a junior user, is not relevant to a likelihood of confusion
analysis.
Decision
Summary judgment is only appropriate when there is no
genuine dispute as to any material fact and the moving party
is entitled to judgment as a matter of law. See Fed. R. Civ.
P. 56(a). The Board may not resolve issues of material fact;
it may only ascertain whether a genuine dispute regarding a
material fact exists. See Lloyd’s Food Products, Inc. v.
Eli’s, Inc., 987 F.2d 766, 766, 25 USPQ2d 2027, 2029 (Fed.
Cancellation No. 92051437

8
Cir. 1993); Old Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d
200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
When the moving party has supported its motion with
sufficient evidence which, if unopposed, indicates there is no
genuine dispute of material fact, the burden then shifts to
the non-moving party to demonstrate the existence of a genuine
dispute of material fact to be resolved at trial. Embridge,
Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540 (TTAB
2009). All evidence must be viewed in a light favorable to
the nonmovant, and all justifiable inferences are to be drawn
in the nonmovant's favor.
Standing
Before we consider the merits of petitioner’s motion
for summary judgment, we must first entertain the question
of whether petitioner has standing to bring this
cancellation proceeding. Petitioner must demonstrate “that
it has a reasonable belief that it would be damaged” by the
continued registration of respondent's mark. Syngenta Crop
Protection, Inv. v. Bio-Check, LLC, 90 USPQ2d 1112, 1118
(TTAB 2009). In this case, there is no genuine dispute of
material fact regarding petitioner's standing. Indeed,
petitioner has established its standing by submitting
evidence of use of its pleaded JEWELERS FOR LIFE mark for
jewelry retail store services and alleging likelihood of
confusion, and by establishing that its application to
Cancellation No. 92051437

9
register JEWELERS FOR LIFE has been refused based on
respondent's involved registration. See Ferrence Decl. ¶¶
6, 11-16; Exhibits 2-6; Syngenta, 90 USPQ2d at 1118; Tri-
Star Marketing, LLC v. Nino Franco Supmanti S.R.L., 84
UPSQ2d 1912, 1914 (TTAB 2007) (“petitioner has standing to
bring the petition for cancellation based on the fact that
its application to register [its mark] was refused
registration by the office under Section 2(d) based on a
likelihood of confusion with respondent's previously
registered mark”). Respondent does not specifically contend
otherwise, much less introduce contradictory evidence.
Turning to the merits of petitioner’s motion for
summary judgment, having considered the evidence and
arguments submitted by the parties, and viewing the evidence
in the light most favorable to respondent, we find that
petitioner has satisfied its burden of setting forth a
prima facie showing that there are no genuine issues of
material fact remaining for trial and that it is entitled to
judgment as a matter of law as to its claim of priority and
likelihood of confusion.
Priority
As noted in footnote 3, by order dated June 14, 2011, the
Board granted petitioner’s previously-filed motion for partial
summary judgment on the issue of priority as conceded. In
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10
view thereof, there is no genuine dispute of material fact
regarding petitioner’s priority of use.
Likelihood of Confusion
With regard to the likelihood of confusion claim under
Trademark Section 2(d), 15 U.S.C. § 1052(d), our analysis is
based on the consideration of all of the probative facts in
evidence that are relevant to the factors set forth in In re
E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also In re Majestic Drilling Co., Inc. 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
With respect to the similarity of the marks, we look to
the marks in their entireties as to appearance, sound,
connotation and commercial impression. The focus is on the
perception and recollection of the average purchaser, who
normally retains a general rather than specific impression of
trademarks. See Chemetron Corp. v. Morris Coupling & Clamp
Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975).
Cancellation No. 92051437

11
There is no genuine dispute that the marks JEWELERS FOR
LIFE and JEWELRY FOR LIFE are similar. 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 National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). In this instance, both
marks end with the identical distinctive wording “FOR LIFE.”
Moreover, the first word in both marks begins with the root
word JEWEL. Further, the first term in petitioner’s mark,
namely, JEWELERS, as well as the first term in respondent’s
mark, i.e., JEWELRY, have been disclaimed and, therefore, are
afforded less weight. While it is a basic principle that
“marks must be compared in their entireties … [t]hat a
particular feature is descriptive or generic with respect to
the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark.” In
re National Data Corp., 224 USPQ at 751. Even if we were to
give equal weight to the terms JEWELERS and JEWELRY, when we
consider the marks as a whole, the similarities of the
parties’ marks outweigh their differences. We further find
that respondent, by merely objecting to petitioner’s
contention that the marks are similar without providing any
arguments to the contrary or submitting any evidence to
contradict petitioner’s contention, has not raised a genuine
Cancellation No. 92051437

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dispute of material fact regarding the similarities of the
marks at issue. See Barmag Barmer Maschinenfabrik AG v.
Murata Mach., Ltd., 731 F.2d 831, 836, 221 USPQ 561, 564 (Fed.
Cir. 1984) (“The party opposing the motion must point to an
evidentiary conflict created on the record at least by a
counter statement of a fact or facts set forth in detail in an
affidavit by a knowledgeable affiant. Mere denials or
conclusory statements are insufficient.”). In view of the
foregoing, while there are differences in the marks, we find
that they are insufficient to raise a genuine dispute of
material fact as to the similarity of the marks.
We turn next to the du Pont factor of the relatedness
of the goods and services at issue, which must be determined
based on the services identified in petitioner’s pleaded
pending application, as well as in common law, i.e., retail
jewelry store services, and the goods recited in
respondent’s involved registration, namely, various jewelry
items. See Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed.
Cir. 1987). We find that there are no genuine disputes of
material fact regarding the relatedness of the parties’
respective goods and services for the following reasons.
First, petitioner has submitted four use-based, third-party
registrations showing that various entities have adopted a
single mark for both jewelry and retail jewelry store
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services. Ferrence Decl. ¶ 6, Exhibit 2. Although these
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
nonetheless have probative value to the extent that they
serve to suggest that the goods and services identified
therein are of a type which may emanate from the same
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993). We also note that the Board has
previously found that jewelry and retail jewelry store
services are related. See In re Thomas, 79 USPQ2d 1021,
1023 (TTAB 2006)(retail jewelry store services and jewelry
are competitive, inherently related goods and services);
Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ
863, 866 (TTAB 1985) (“there is little question that jewelry
store services and jewelry are highly related goods and
services.”). See also J. Thomas McCarthy, Trademarks and
Unfair Competition § 24:25 (4th ed. database updated
February 2012) (“[w]here the services consist of retail
sales services, likelihood of confusion is found when
another mark is used on goods which are commonly sold
through such a retail outlet.”).
In view of this evidence and case law, we find that
petitioner’s retail jewelry store services and respondent’s
jewelry are related. Venture Out Properties LLC v. Wynn
Resorts Holdings, LLC, 81 USPQ2d 1887 (TTAB 2007). In view of
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the foregoing, and because petitioner has established a
connection between its identified services and the goods
identified in respondent’s involved registration, we find that
there is no genuine dispute of material fact that the parties’
respective goods and services are related. Thus, the du Pont
factor of the relatedness of the parties’ respective goods and
services favors a finding of likelihood of confusion.
In regard to the trade channels for the parties' goods,
the identifications in petitioner’s pleaded application and
respondent’s involved registration include no limitation with
respect to channels of trade or classes of purchasers. Thus,
we must presume that the parties’ goods and services move in
all normal channels of trade for such goods and services and
that they are available to all potential customers. See
Hewlitt-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1005 (Fed. Cir. 2002) (“absent restrictions in
the application and registration, goods and services are
presumed to travel in the same channels of trade to the same
class of purchasers”). Further, as to petitioner’s
established common law use in a retail store, again because
there is no restriction in respondent’s registration and
retail stores are an ordinary channel of trade for jewelry,
the parties’ trade channels overlap. The class of purchasers
for retail jewelry store services featuring jewelry, as well
Cancellation No. 92051437

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as for jewelry items, include the general public and thus, at
a minimum, overlap.
In view of the foregoing, there is no genuine dispute
of material fact that petitioner’s retail jewelry store
services and respondent’s jewelry goods travel in
overlapping channels of trade and may be used by overlapping
consumers. Consequently, the du Pont factor of the
similarity of the channels of trade favors a finding of
likelihood of confusion.
As noted above, respondent argues that the fame of its
involved mark precludes a finding of likelihood of
confusion. Respondent’s reliance on the fame of its
involved mark, however, is both without merit and is not
relevant to the du Pont factor of fame, since that factor
refers to “the fame of the prior [i.e., petitioner’s] mark.”
In this case, petitioner’s priority is established and even
if respondent had proven fame, which it has not, as the
junior party its “fame cannot excuse likelihood of confusion
created by its use of a mark similar to one already in use.”
General Mills Inc. v. Fage Dairy Processing Industry SA,
100 USPQ2d 1584, 1602 (TTAB 2011).
Finally, the absence of evidence of actual confusion
does not raise a genuine issue of material fact. “The test
is likelihood of confusion not actual confusion … It is
Cancellation No. 92051437

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unnecessary to show actual confusion in establishing
likelihood of confusion.” Weiss Associates v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43
(Fed. Cir. 1990). If lack of evidence of actual confusion
were enough to generally raise a genuine issue, summary
judgment could almost never be granted in favor of a
plaintiff on a ground of likelihood of confusion, and that
is not the case. See Apple Computer v. TVNET.ent, Inc.,
90 USPQ2d 1393, 1397 (TTAB 2007)(“applicant’s arguments
regarding the lack of actual confusion and its good faith
adoption of its VTUNES.NET mark do not raise genuine issues
of material fact that preclude entry of summary judgment”).
Therefore, the lack of actual confusion does not create a
genuine issue of material fact.
In summary, we find that there are no genuine issues of
material fact that petitioner has standing to bring this
cancellation proceeding; that petitioner has priority in
regard to respondent’s mark; that the marks are similar;
that petitioner’s retail jewelry store services are related
to respondent’s jewelry goods; and that the parties’ trade
channels and classes of purchasers overlap. In view
thereof, petitioner has met its burden of demonstrating, on
motion for summary judgment, that it is entitled to judgment
on its pleaded ground of priority and likelihood of
confusion. Conversely, respondent has failed to show that a
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genuine dispute of material of fact exists for trial on
petitioner’s claim of priority and likelihood of confusion.
Conclusion
Because we find, based on the record herein and
applicable law, that there are no genuine disputes of
material fact and that petitioner has established its
standing, as well as its claim of priority and likelihood of
confusion, as a matter of law, petitioner’s renewed motion
for summary judgment is hereby GRANTED. Accordingly,
judgment is hereby entered against respondent, the petition
to cancel is granted, and Registration No. 3170149 will be
cancelled in due course.
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