Market America, Inc.

Trademark Trial and Appeal Board

Mar 7, 2012

No. 77949723 (T.T.A.B. Mar. 7, 2012)

Mailed:
March 7, 2012
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Market America, Inc.
________

Serial Nos. 77949723 & 77949717
_______

Ryan S. Luft for Market America, Inc.

Ellen J.G. Perkins, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Bucher, Cataldo and Lykos, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Market America, Inc. seeks registration on the Principal
Register of the mark LOREN and LOREN JEWELS (both in standard
character format) for “jewelry; precious and semi-precious stones”
in International Class 14.1
The Trademark Examining Attorney issued final refusals to
register these designations based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining

1 Application Serial No. 77949723 for the mark LOREN was filed on
March 3, 2010, based upon applicant’s claim of use anywhere and use in
commerce since at least as early as February 3, 2010. Application
Serial No. 77949717 for the mark LOREN JEWELS was also filed on March
3, 2010, based upon applicant’s claim of use anywhere and use in
commerce since at least as early as February 3, 2010. No claim is
made to the exclusive right to use the word “Jewels” apart from the
mark as shown.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 77949723 & 77949717
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Attorney has taken the position that applicant’s marks, when
used in connection with the identified goods, so resemble two
marks owned by registrant, Narragansett Jewelry Co., Inc., for
the service mark LOREN (in typed drawing format)2 and the
following special form service mark:
,3
both registered for the “manufacture of castings for jewelry to
the order and specifications of others” in International Class
40, as to be likely to cause confusion, to cause mistake or to
deceive.
After the Trademark Examining Attorney made the refusals
final, applicant appealed to this Board. Applicant and the
Trademark Examining Attorney have briefed the issues in these
appeals.
We affirm the refusals to register.
In urging registrability, applicant contends that
applicant’s goods and registrant’s services move through

2 Registration No. 2850339 issued on June 8, 2004; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
3 Registration No. 2850340 issued on June 8, 2004; Section 8
affidavit accepted and Section 15 affidavit acknowledged.

Serial Nos. 77949723 & 77949717
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distinct channels of trade, that applicant’s goods and
registrant’s services are marketed to substantially different
classes of purchasers, and that both groups of consumers are
knowledgeable, sophisticated purchasers.
By contrast, the Trademark Examining Attorney argues that
the goods and services at issue are closely related, and that
they may well travel in the same channels of trade to a
population that includes members of the general public who
cannot be held to a high standard of care for purchasing the
involved goods and/or services.
Likelihood of Confusion
We turn then to a consideration of the issue of likelihood
of confusion. Our determination of likelihood of confusion is
based upon our analysis of all of the probative facts in
evidence that are relevant to the factors bearing on this issue.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In any likelihood of confusion analysis, however, two
key, although not exclusive, considerations are the similarities
between the marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Serial Nos. 77949723 & 77949717
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The Similarity of the Marks
As to the first du Pont factor, the Trademark Examining
Attorney points out that applicant’s marks are nearly identical
to registrant’s marks as to appearance, sound and connotation.
Applicant’s addition of the generic term “Jewels” in one of its
marks and registrant’s addition of a suggestive carrier design
in one of its marks do not obviate the similarity of the marks
in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206,
26 USPQ2d 1687, 1688 (Fed. Cir. 1993). In fact, applicant has
essentially conceded the strong similarity of the marks. Hence,
we find that the substantially identical marks will convey the
same commercial impressions in both contexts, and that this
critical du Pont factor favors a finding of likelihood of
confusion.
Relationship of the Goods/Services
We turn next to the du Pont factor focused on the
relationship of the services and goods. We begin our discussion
of this factor by noting that where the respective marks are
substantially identical, as is the case herein, the relationship
between the services and/or goods of registrant and applicant
need not be as close to support a finding of likelihood of
confusion as might apply where differences exist between the
marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001);
Serial Nos. 77949723 & 77949717
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and Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB
1981).
Applicant is engaged in network marketing of a variety of
products. In this application, the only relevant products are
jewelry and gemstones:
4

As recited above, registrant’s marks are both for the
manufacture of castings for jewelry to the order and
specifications of others in International Class 40. The file
contains information about registrant put into the record by
both the Trademark Examining Attorney and by applicant:

4 http://lorenjewels.com/index2.php; applicant’s submission of
its own web page (undated), Attachment C to applicant’s response
of October 25, 2010.
Serial Nos. 77949723 & 77949717
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5

In addition to jewelry castings, this page has links to
“diamonds,” “pendants,” and “earrings.” Registrant claims to
have “over 100,000 jewelry castings” at one’s fingertips.
Registrant does describe itself as offering “business to
business” merchandise, but also makes several references to its
special outreach to “hobbyists.”

5 http://www.loren.com/loren_casting_introduction.asp, as accessed
by the Trademark Examining Attorney on December 30, 2010.
Serial Nos. 77949723 & 77949717
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6
Are you interested in making jewelry as a hobby … ? Our partners at
Gesswein have put together a jewelry making start up kit offered at an
introductory price for Loren customers…
and
HOW TO BUY FROM LOREN CASTINGS
You must complete and fax to us either of the following forms, which we
must then approve: …
• A Loren Credit Card Authorization
(using Visa and MasterCard) or
• A Loren Credit Terms Application
(Minimum order size $250) 7

8

6 Id.
Serial Nos. 77949723 & 77949717
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Applicant introduced additional web pages submitted by
registrant dating from May and June 2010:
9 10

Both applicant and the Trademark Examining Attorney have
placed into the record dueling screen prints from third-party
websites. Applicant correctly notes that some of the
advertisements placed into the record by the Trademark Examining
Attorney use the designation “jewelry casting” as a noun – a
“thing” not unlike a “jewelry settings.”

7 Id.
8 http://www.loren.com/merchroom_display.asp?action=loadlist&id=116, as accessed
by the Trademark Examining Attorney on December 30, 2010.
9 http://www.loren.com/default.asp: Attachment A to response of
October 25, 2010, as captured by Registrant on June 4, 2010.
10 http://www.loren.com/about.asp; Attachment B to response of
October 25, 2010, captured by Registrant on June 7, 2010.
Serial Nos. 77949723 & 77949717
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11
Large selection of jewelry settings and castings:
snaptite earring and snaptite pendant castings; pre-
notched ring settings, cinch mounts, chains, and
more! If you like to make your own jewelry, you’ve
come to the right place! More items are being added
almost daily, so check back often! 12

Similarly, the record shows that
websites like JTV.com and “jewelry
television” offer jewelry items as well as setting, mounts and
“castings” for all kinds of gemstones:

Find the perfect setting to fit your favorite gemstones. JTV.com and jewelry
television wants to offer you the perfect setting for all of your precious
gemstones. Shop beautiful semi-mounts, settings and castings to get your
completed look. From semi-mount engagement rings to earrings castings
and semi-mounts, bracelets castings and semi-mounts, pendants castings
and semi-mounts, we are certain you will find something you love! Shop all
of our gold, silver, and silver and gold castings and semi-mounts to create
your dream piece! 13

11 http://www.sashasgemstonejewelry.com/, as accessed by the
Trademark Examining Attorney on December 30, 2010.
12 Additional text from Sasha’s Gemstone Jewelry home page.
13 http://www.jtv.com/.
Serial Nos. 77949723 & 77949717
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14

14 http://www.jtv.com/on/demandware.store/Sites-jtv-
Site/default/Page-Show?N=101, as accessed by the Trademark Examining
Attorney on December 30, 2010.
Serial Nos. 77949723 & 77949717
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15

15 http://www.jtv.com/on/demandware.store/Sites-jtv-
Site/default/Page-Show?N=103%2b1228, as accessed by the Trademark
Examining Attorney on December 30, 2010.
Serial Nos. 77949723 & 77949717
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By contrast, advertisements placed into the record by
applicant tend to use the term “casting” as a verb, in the
service mark connotation of the manufacture of jewelry castings,
as recited by registrant. Inasmuch as International Class 40
involves materials treatment services for the benefit of others,
these industrial services (e.g., including pictures of molten
precious metals) directed to independent jewelers would seem to
be closer to the way one should read the cited recitation of
services:
16

About Platina Casting
Platina Casting is a state-of-the-art precious metals
foundry in the heart of New York's Diamond District. It
is fully staffed by highly experienced casting craftsmen,
who handle every order with great care.

16 http://acecastings.com/, applicant’s Exhibit B-1 (undated),
Request for Reconsideration, March 9, 2011.
Serial Nos. 77949723 & 77949717
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Platina Casting pioneered same-day platinum casting,
and recently added same-day gold casting to its list of
services. In by 10, out by 5 - guaranteed!
Special new-customer offer: cast your first order at
the cost of the metal, up to 5 pennyweights!
We invite you to see our superb quality and fast
service for yourself. Why not register now? 17

18
At least one reference the Trademark Examining Attorney
found to “custom casting” suggests a service not unlike that of
registrant.
19

17 http://platina.com/about/index.htm, applicant’s Exhibit B-3
(undated), Request for Reconsideration, March 9, 2011.
18 http://www.auenterprises.com/, applicant’s Exhibit B-2
(undated), Request for Reconsideration, March 9, 2011.
Serial Nos. 77949723 & 77949717
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In the case of this particular merchant/manufacturer, the
Trademark Examining Attorney is correct in noting that in
addition to custom casting, Hoover & Strong is a vendor of loose
diamonds:
20
On yet the other hand, we note that consistent with
applicant’s arguments, Hoover & Strong mandates that their
customers must have a “jewelry business license” to do business
with them:
21
In addition to the website evidence, the Trademark
Examining Attorney points to third-party registrations entered
into the record. She argues that these registrations have
probative value to the extent that they serve to suggest that

19 http://hooverandstrong.com/category/Custom+Casting/, as accessed
by the Trademark Examining Attorney on December 30, 2010.
20 http://www.hooverandstrong.com/, as accessed by the Trademark
Examining Attorney on December 30, 2010.
21 http://www.hooverandstrong.com/, as accessed by the Trademark
Examining Attorney on December 30, 2010.
Serial Nos. 77949723 & 77949717
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the relevant goods and services listed therein are of a kind
that may emanate from a single source. See In re Infinity
Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at
n.6 (TTAB 1988):
GelinAbaci for “jewelry; rings and ring bands
of precious metal; earrings and
pendants” in International Class
14;
“retail jewelry store services” in
International Class 35;
“custom manufacture of jewelry;
jewelry casting” in Int. Class 40;22
THE JEWELRY EXPERTS for, inter alia, “jewelry, namely,
designer, estate, manufactured,
diamonds and gemstones” in
International Class 14;
“jewelry casting, namely, custom
design and manufacture of jewelry”
in International Class 40;23
REINSTEIN/ROSS for, inter alia, “jewelry and fine
gemstones, precious and semi-
precious metals, precious and semi-
precious stones, natural and
cultured pearls” in International
Class 14;
“jewelry casting and the custom
manufacture of jewelry” in
International Class 40;24
CRYSTALARIUM for, inter alia, “jewelry and
precious stones” in International
Class 14;
“custom manufacture of jewelry” in
International Class 40;25

22 Registration No. 3062807 issued on February 28, 2006.
23 Registration No. 2420343 issued on January 9, 2001; renewed. No
claim is made to the exclusive right to use the word “Jewelry” apart
from the mark as shown.
24 Registration No. 2543782 issued on March 5, 2002; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
Serial Nos. 77949723 & 77949717
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NOVELL for “fine jewelry” in International
Class 14;
“custom manufacture of fine
jewelry” in International Class 40;
“design of fine jewelry for others”
in International Class 42;26
for “jewelry” in International
Class 14;
“custom manufacture of jewelry” in
International Class 40;27
PENNY PREVILLE for “jewelry, namely, earrings,
pendants, bracelets” in
International Class 14;
“custom manufacture of jewelry” in
International Class 40;28
OSCAR HEYMAN for “jewelry of precious metals and
gems, bracelets, brooches, pins,
rings, necklaces, earrings,
cufflinks, ear studs, shirt studs,
belt buckles of precious metals,
watches, scarf clips, and lapel
pins” in International Class 14;
“manufacture of jewelry to the
order and specification of others”
in International Class 40;
“jewelry design” in International
Class 42;29

25 Registration No. 2623437 issued on September 24, 2002; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
26 Registration No. 2711191 issued on April 29, 2003; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
27 Registration No. 2944424 issued on April 26, 2005; Section 8
affidavit accepted and Section 15 affidavit acknowledged.
28 Registration No. 3691371 issued on October 6, 2009.
29 Registration No. 3241787 issued on May 15, 2007.

Serial Nos. 77949723 & 77949717
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for “gold, platinum, silver jewelry
often set with precious and semi-
precious stones” in Int. Class 14;
“custom manufacture to the order
and specification of others of one-
of-a-kind and limited edition
pieces of jewelry” in Int. Cl. 40.30

Of these nine use-based registrations owned by third-
parties, all have goods (e.g., items of jewelry) in
International Class 14 and services (e.g., custom manufacturing
of jewelry) in International Class 40. We do note that only the
first three listed above have “ jewelry casting” in
International Class 40, and only in THE JEWELRY EXPERTS
registration does a recital conflate “jewelry casting” with
custom design and manufacture of jewelry by using a “namely”
(e.g., “jewelry casting, namely, custom design and manufacture
of jewelry”).
After carefully reviewing the Trademark Examining
Attorney’s evidence, we find that it establishes a prima facie
relationship between registrant’s services and applicant’s
goods. Nine third-party registrations owned by nine different
entities are sufficient in number to suggest that some number of
custom manufacturers of jewelry also serve as merchants for
items of jewelry, including diamonds and other gemstones. We
assume there are a limited number of manufacturers of castings

30 Registration No. 2991790 issued on September 6, 2005; Section 8
affidavit accepted.

Serial Nos. 77949723 & 77949717
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for jewelry to the order and specifications of others. See In
re Binion, 93 USPQ2d 1531, 1535 (TTAB 2009) (ten third-party
registrations submitted by Trademark Examining Attorney).
The web pages in the record corroborate the conclusion that
some manufacturers in the field of jewelry who do metal casting
also market diamonds and other items of jewelry. In fact, it is
clear from evidence in the record that registrant manufactures
and sells jewelry. Both the website evidence and the third-
party registrations show that firms involved in the custom
manufacture of jewelry are also merchants of specific items of
jewelry. In sum, we find persuasive the Trademark Examining
Attorney’s evidence of a commercial relationship between
applicant’s goods and registrant’s services.
CHANNELS OF TRADE / DIFFERENT PURCHASERS:
Applicant argues that inasmuch as registrant conducts
business as a wholesaler, applicant’s retail consumers are not
likely to encounter registrant or registrant's marks in the
retail marketplace. It is true that the above copies of
registrant’s web pages (placed into the record by applicant and
by the Trademark Examining Attorney) reflect a “business to
business” posture by registrant. On the other hand, registrant
encourages the hobbyist to make an online purchase of an
especially low priced “jewelry making start up kit” with a
MasterCard or Visa credit card. Also, as pointed out by the
Serial Nos. 77949723 & 77949717
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Trademark Examining Attorney, registrant’s recitation of
services is not limited to the wholesale trade. Accordingly,
applicant’s offer explicitly to limit its channels of trade
within its identification of goods would not obviate a
likelihood of confusion inasmuch as we have determined that
registrant might well be selling through online retail channels.
Applicant points to online businesses that provide jewelry
casting services and do not sell gem stones (e.g., ACE Casting,
AU Enterprises, Platina Casting, etc.). Some simply fail to
show a market for stones and items of jewelry, while others
explicitly state that they have no in-house line of jewelry. On
the other hand, we also note that registrant’s website has
thousands of merchandise listings.
If the channels of trade were found to be totally
exclusive, this would be a powerful argument for applicant’s
position. Applicant cites correctly to examples where the
differences in trade channels and types of customers are found
to be determinative. See In re HerbalScience Group LLC,
96 USPQ2d 1321 (TTAB 2010) (because of the differences in trade
channels and customers, MINDPOWER for botanical and chemical
extracts for use in manufacture of pharmaceuticals,
nutraceuticals, and other products is not likely to cause
confusion with registered MIND POWER RX for dietary and
nutritional supplements); and The United States Jaycees v.
Serial Nos. 77949723 & 77949717
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Commodities Magazine Inc., 661 F.Supp 1360, 2 USPQ2d 1119, 1122
(N.D. Iowa 1987) (because the publication of the United States
Jaycees is distributed to members of the Jaycees while the
commodities magazine is distributed mostly to paid subscribers,
there is not a likelihood of confusion given these substantially
different marketing methods).
However, we find in the case at bar that these respective
channels of trade are not mutually exclusive. Registrant
specifically offers its services to hobbyists, who would also be
candidates for the retail purchase of applicant’s goods. While
we presume from this record that the majority of the customers
of a caster of metals for jewelry are businesses (e.g.,
independent jewelers), the evidence suggests this is not
exclusively the market. Hence, consistent with the evidence
above from the third-party registrations and websites, we must
acknowledge the likelihood of some overlap of customers. This
du Pont factor also supports a finding of likelihood of
confusion herein.
STRENGTH OF MARK
In support of registration, applicant points out that the
cited registration issued despite then-existing Registration No.
2419959. However, in addition to the fact that this “prior
determination” involves LAUREN (spelled differently), we have
no reason on this record to doubt the strength of the cited
Serial Nos. 77949723 & 77949717
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mark. Contra Coherent Inc. v. Coherent Technologies Inc.,
935 F.2d 1122, 19 USPQ2d 1146 (10th Cir. 1991) (the term
“coherent” “is commonly used descriptively in the scientific
community” in field of lasers), a case cited by applicant. At
best for applicant, this proves to be a neutral factor.
EXPENSIVE GOODS & SERVICES / SOPHISTICATED PURCHASERS:
Applicant stresses the du Pont factor focusing on the
conditions under which and buyers to whom sales are made.
Applicant cites correctly to the fact that expensive purchases
change the presumed level of care. As a corollary, our primary
reviewing Court has held that sophistication militates against
the finding of likelihood of confusion. Certainly, when
experienced, knowledgeable, specialized and highly-skilled
persons are involved in lengthy study, evaluation and
negotiation prior to the purchased of expensive items, it is
generally less likely that confusion will be found. See
Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992).
Applicant also cites to Astra Pharmaceutical Products, Inc.
v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 791
(1st Cir. 1983). In Astra, for example, the Beckman analyzer was
a highly technical instrument costing between $35,000 and
$60,000. However, there are also significant facts
distinguishing this case from the case at bar. For example,
Serial Nos. 77949723 & 77949717
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that case was an infringement case, where Astra functioned as
Astra Pharmaceutical’s house mark, but Beckman’s product mark
was always used closely with the BECKMAN house mark. This type
of reasoning may be relevant to a likelihood of confusion
decision in an infringement case, but cannot be considered in a
registration determination. Finally, there were also found to
be distinct channels of trade, inasmuch as one set of goods went
to the hospital’s pharmacy while the other went to the
hospital’s chemistry labs.
Applicant also cites to a pair of decisions from the Tenth
Circuit. In Coherent Inc., 19 USPQ2d at 1148, the Court found
no likelihood of confusion inasmuch as the parties marketed
expensive products to sophisticated persons through quite
different trade channels. Of course, unlike the case at bar,
the Court also found that the involved term, “coherent” “is
commonly used descriptively in the scientific community” in the
field of lasers. Id. at 1147. Another cited case similarly
finds that consumers will exercise a high degree of care given
the expense of defendant’s unique services. See Heartsprings
Inc. v. Heartspring Inc., 143 F.3d 550, 46 USPQ2d 1481 (10th Cir.
1998). Of course, that was not the only “du Pont factor”31 at
play under the facts of this case, inasmuch as the Court found

31 In the Tenth Circuit, these might well be referred to as the
“Beer Nut factors.” See Beer Nuts, Inc. v. Clover Club Foods Co.
(Beer Nuts II), 805 F.2d 920, 231 USPQ 913, 915-16 (10th Cir. 1986).

Serial Nos. 77949723 & 77949717
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that the parties offer distinctly different products and
services and conduct different marketing strategies, aimed at
different portions of the public.
In the case at bar, there is no evidence that either
registrant’s services or applicant’s goods are expensive, or
proof that all the involved consumers are sophisticated. In
fact, we have seen that registrant targets “hobbyists” online
who want to purchase merchandise with a personal credit card.
Hence, as contended by the Trademark Examining Attorney, we find
that applicant’s and registrant’s relevant customers will
include consumers who are not necessarily knowledgeable or
sophisticated. See Alfacell Corp. v. Anticancer Inc., 71 USPQ2d
1301, 1306 (TTAB 2004) citing Checkpoint Sys., Inc. v. Check
Point Software Techs., Inc., 269 F.3d 270, 60 USPQ2d 1609
(3d Cir. 2001), “[w]here both professionals and the general
public are relevant consumers, ‘the standard of care to be
exercised … will be equal to that of the least sophisticated
consumer in the class.’”
Applicant cites to additional cases stating general
principles as to expense, sophistication, channels of trade,
etc., but a cursory review points to important distinguishing
facts where some of the other du Pont factors are more
important.
For example, several cases really turned mostly on du Pont
factor #1 -- the similarity or dissimilarity of the marks. See
Serial Nos. 77949723 & 77949717
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National Rural Electric Cooperative Ass'n v. Suzlon Wind Energy
Corp., 78 USPQ2d 1881 (TTAB 2006):
versus

In this case, the Board noted the obvious differences in the
marks (i.e., respondent’s mark contains an arbitrary word
(“SUZLON”) and that the wavy designs were clearly not the same).
See also In re Software Design, Inc., 220 USPQ 662 (TTAB 1983):
DOX versus

These marks were found to be substantially different as to
appearance, meaning and commercial impression. Then, the Board
concluded the opinion by saying that “ … Moreover, while we
believe, as indicated above, that the services of applicant and
registrant are related, they are nevertheless specifically
different in nature; they are highly sophisticated, technical,
and relatively expensive services, which are likely to be
purchased only with care and deliberation after investigation to
determine their suitability for specific needs.”
Several cases cited by applicant, while mentioning
expensive goods and knowledgeable purchasers, turned mostly on
du Pont factor #2 – the relationship of the goods or services.
Serial Nos. 77949723 & 77949717
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See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In Albert Trostel, considering the differences between finished
handbags and leather sold in bulk, ultimate purchasers of
finished goods would be unlikely to encounter both marks. In
General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690
(TTAB 1977), opposer failed to show any linkage of its products
or services to those of applicant. In Harvey Hubbell Inc. v.
Tokyo Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975), the goods of
the parties did not have common users, there was no relationship
between the functions and uses of the goods, and the parties did
not promote their goods to the same classes of purchasers. In
Paco Sport Ltd. v. Paco Rabanne Parfums, 86 F.Supp2d 305,
54 USPQ2d 1205 (S.D.N.Y. 2000), the Court found significant
competitive distance between Paco Rabanne’s upscale fragrances
and Paco Sport’s casual clothing. In National Rural Electric
Cooperative Ass'n v. Suzlon Wind Energy Corp., 78 USPQ2d 1881
(TTAB 2006), in addition to the differences in the marks
discussed above, the Board also found that wind turbines are
barely related to association services promoting the interests
of rural electric cooperatives.
Finally, one oft-cited case referred to by applicant
actually turned mostly on du Pont factor #10 -- the market
interface between applicant and the owner of a prior mark.
Where the record demonstrated the equivalent of a consent to
register, the Board was certainly not inclined “to second-guess
Serial Nos. 77949723 & 77949717
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the conclusions of those most familiar with the marketplace” on
the issue of likelihood of confusion. See In re Four Seasons
Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993).
In conclusion, we find the marks to be very similar as to
appearance, sound, connotations and commercial impressions; we
find the services and goods are commercially related; we find
that there is some overlap in the channels of trade; we find
that neither registrant’s services nor applicant’s goods can be
presumed to be purchased with care; and hence, we find there
will be a likelihood of confusion if applicant’s proposed mark
should be used in connection with jewelry and precious and semi-
precious stones.
Finally, to the extent that the likelihood of confusion
issue is close, we are obligated to resolve doubts in favor of
the registrant and prior user. In re Hyper Shoppes, 837 F.2d
463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The refusals to register these marks under
Section 2(d) of the Trademark Act are hereby affirmed.