Irv Malvin, Inc.

Trademark Trial and Appeal Board

Jul 31, 1998

No. 74573304 (T.T.A.B. Jul. 31, 1998)

Hearing: Paper No. 18
November 6, 1997 GDH/MD
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JULY 31, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Irv Malvin, Inc.
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Serial No. 74/573,304
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Dale Paul DiMaggio of Malin, Haley, DiMaggio & Crosby, P.A. for
Irv Malvin, Inc.
Jill C. Alt, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
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Before Simms, Quinn and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Irv Malvin, Inc. has filed an application to register
the mark "CONTEMPO ELEGANCE" for "jewelry."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "CONTEMPO FASHIONS" and design, which among other things is
registered, as reproduced below,

1 Ser. No. 74/573,304, filed on September 14, 1994, which alleges dates
of first use of August 1994.
Ser. No. 74/573,304
2
for "jewelry--namely, necklaces, earrings, finger rings, anklets,
bracelets, pendants and stick pins all composed of precious
metals,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We affirm the refusal to register.
As a general proposition, our principal reviewing court
has noted that, "[w]hen marks would appear on virtually identical
goods ..., the degree of similarity [of the marks] necessary to
support a conclusion of likely confusion declines." Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034
(1994). Here, as the Examining Attorney notes, applicant’s goods
are identical in part, and are otherwise closely related, to the
jewelry items offered by registrant since registrant’s specific
products are encompassed by the broad term "jewelry," which
constitutes the entirety of the identification of applicant’s
goods. The respective goods, as the Examining Attorney further
points out, would thus be sold to the same classes of purchasers,

2 Reg. No. 1,194,285, issued on April 27, 1982, which sets forth, for
the above goods in International Class 14, dates of first use of
September 22, 1977; combined affidavit §§8 and 15. The word
"Fashions" is disclaimed. Although the registration also lists "hair
combs" in International Class 21, it is plain from the final refusal
that the refusal to register pertains only to the jewelry goods for
which the cited mark is registered in International Class 14.
Ser. No. 74/573,304
3
including ordinary consumers, through the identical channels of
trade, such as jewelry stores, the jewelry counters of department
stores and mail-order catalogs. Applicant, in fact, does not
argue to the contrary. It is plain, therefore, that if items of
jewelry, including those made of precious metals, were to be sold
under the same or similar marks, confusion as to the source or
sponsorship of such goods would be likely to occur.
Applicant contends, however, that when the marks
"CONTEMPO ELEGANCE" and "CONTEMPO FASHIONS" and design are
considered in their entireties, it is apparent that each is a
unitary term and that "the only similarity between the marks
resides in the word ’CONTEMPO,’" given the differences in sound,
meaning and appearance in the words "ELEGANCE" and "FASHIONS"3
and the presence of a "’shining sun’ design" in registrant’s
mark. Such differences in the respective marks, according to
applicant, "are sufficient to render them, in their entireties,
quite distinct from each other." In view thereof, and inasmuch
as jewelry products are assertedly "purchased only after careful
consideration and ... several examinations and/or comparisons,"
applicant insists that confusion is not likely.
The Examining Attorney, on the other hand, maintains
that the respective marks engender essentially the same overall
impression. In particular, the Examining Attorney urges that:

3 In particular, applicant observes in its initial brief that, "[a]s
seen in the definitions cited by the Examining Attorney [from
Webster’s Third New International Dictionary], ’fashions’ is defined
as the latest style or fad in dressing, while ’elegance’ is defined as
having taste or grace. These definitions are clearly different and do
not leave one with the same impression."
Ser. No. 74/573,304
4
[T]he two marks in their entireties
consist of the common, clever, arbitrary term
"CONTEMPO" plus a weak descriptive or highly
suggestive term, i.e. "ELEGANCE" or
"FASHIONS". Clearly the term that will stand
out in the mind of the prospective customer
is "CONTEMPO".
In view thereof, and inasmuch as it is the literal elements of
registrant’s mark, rather than the "shining sun" or sparkle
design therein, which purchasers and prospective customers would
use in calling for and referring to registrant’s items of
jewelry, the Examining Attorney asserts that contemporaneous use
of the marks "CONTEMPO ELEGANCE" and "CONTEMPO FASHIONS" and
design for identical and closely related pieces of jewelry is
likely to cause confusion as to origin or affiliation.
We agree with the Examining Attorney that confusion is
likely. Plainly, the dominant, source-signifying element of
registrant’s "CONTEMPO FASHIONS" and design mark is the term
"CONTEMPO," given the facts that it is the first word in
registrant’s mark, it appears in noticeably larger size type, the
"shining sun" or sparkle design feature is highly suggestive of
the brilliance of a cut gemstone in a jewelry item and the word
"FASHIONS" merely describes various styles of jewelry.
Consequently, and since applicant’s mark "CONTEMPO ELEGANCE"
similarly features the identical term "CONTEMPO" as a prominent
portion thereof, due to its position as the initial word in the
mark and the high degree of suggestiveness inherent in the term
"ELEGANCE" when used in connection with items of jewelry,
purchasers and prospective customers familiar with registrant’s
mark for particular items of jewelry composed of precious metals
Ser. No. 74/573,304
5
could reasonably believe, upon encountering applicant’s mark on
the same or related items of jewelry, that registrant has
introduced a new or second line of, for example, costume or
precious metal jewelry products. Moreover, even if such
consumers, especially in the case of jewelry made from precious
metals, could be described as careful and discriminating
consumers due to the customary expense of such items, the mere
fact of being knowledgeable and sophisticated about buying
jewelry does not mean that they are sophisticated or otherwise
knowledgeable in the field of trademarks or immune from confusion
as to source or sponsorship. See, e.g., Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962); In re
Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); and In re Pellerin
Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
Decision: The refusal under Section 2(d) is affirmed.
R. L. Simms
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board