Reidl Uhren-grosshandels GmbH

Trademark Trial and Appeal Board

Jul 30, 1999

No. 91098504 (T.T.A.B. Jul. 30, 1999)

Paper No. 38
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 30, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Reidl Uhrengrosshandels-Gesellschaft m.b.H.
v.
Viva Time Corp.
_____
Opposition No. 98,504
to application Serial No. 74/542,908
filed on June 27, 1994
_____
Mark D. Engelmann of Fross Zelnick Lehrman & Zissu, P.C. for
Reidl Uhrengrosshandels-Gesellschaft m.b.H.
Ezra Sutton of Ezra Sutton, P.A. for Viva Time Corp.
______
Before Hairston, Wendel and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An intent-to-use application has been filed by Viva
Time Corp. to register the mark JACQUES LAURENT for watches,
key chains made of precious metals, and jewelry in class 14;
and attaché cases, handbags, purses, wallets, and leather
key cases and accessories in class 18.1

1 Application Serial No. 74/542,908 filed June 27, 1994. The
application contains the following statement: “The name shown in
Opposition No. 98,504
2
Registration has been opposed by Reidl
Uhrengrosshandels-Gesellschaft m.b.H. under Section 2(d) of
the Trademark Act on the ground of likelihood of confusion
between applicant’s mark and opposer’s mark JACQUES LEMANS
for watches and alarm clocks. Opposer alleges that it is
the owner of application Serial No. 74/434,169, filed
September 9, 1993, for said mark and goods.2
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
We turn first to an evidentiary matter. On August 24,
1998, applicant submitted its brief on the case which
included a list of third-party registrations for marks which
include the name “Jacques.” On the same date, applicant
filed a motion to reopen its testimony period to submit
certified copies of these third-party registrations.
Applicant stated that opposer would not be prejudiced by the
granting of the motion because applicant had advised opposer
of the third-party registrations during discovery. Further,
applicant stated that it had requested certified copies of
the registrations from the PTO, but that they had not yet

the mark does not identify a living individual. It is a fanciful
and arbitrary name.”
2 Although the application was initially filed under Section 1(b)
of the Trademark Act (intent-to-use), it was subsequently amended
to assert Section 44(e) as the basis therefor. The application
contains the following statement: “Jacques Lemans is not known
to be the name of any particular living individual.” We note
that Office records show that this application issued as
Registration No. 2,218,014 on January 19, 1999.
Opposition No. 98,504
3
been received by applicant. Attached to the motion was a
copy of applicant’s request dated January 23, 1998.
Opposer, in its reply brief filed September 9, 1998,
has opposed the motion to reopen and also argues that no
consideration should be given to the list of registrations
in applicant’s brief. The Board, in an order mailed January
13, 1999, deferred action on applicant’s motion to reopen
until final hearing.
The showing that must be made to reopen a prescribed
period under the Federal Rules of Civil Procedure is set
forth at Rule (6)(b), made applicable to Board proceedings
by Trademark Rule 2.116(a). Rule 6(b) provides for an
enlargement of time after the expiration of the specified
time period, “where the failure to act was the result of
excusable neglect.”
As clarified by the Supreme Court in Pioneer Investment
Services Company v. Brunswick Associates Limited
Partnership, 507 U.S. 380 (1993), and followed by the Board
in Pumpkin, Ltd. v. The Seeds Corps, 43 USPQ2d 1582 (TTAB
1997), the inquiry as to whether a party’s neglect is
excusable is:
at bottom an equitable one, taking into account
all relevant circumstances surrounding the
party’s omission. These include …(1) the
danger of prejudice to the [nonmovant],
(2) the length of the delay and its potential
impact on judicial proceedings, (3) the reason
Opposition No. 98,504
4
for the delay, including whether it was
within the reasonable control of the nonmovant,
and (4) whether the movant acted in good faith.
Pioneer, 507 U.S. at 395. In subsequent applications of
this test, several courts have stated that the third Pioneer
factor, namely the reason for the delay and whether it was
in the reasonable control of the movant, might be considered
the most important factor in a particular case. See Pumpkin
Ltd. at 1586, footnote 7 and the cases cited therein.
Initially, we consider the third Pioneer factor, and we
find that applicant’s failure to make copies of the third-
party registrations of record during its testimony period
was due to circumstances wholly within its control. First,
we must point out that it was not necessary that copies of
the third-party registrations be certified or show current
status and title. Plain copies of the registrations
themselves, or the electronic equivalent thereof, that is,
printouts of the registrations from the electronic records
of the PTO’s trademark automated search system would have
been sufficient. See TBMP §703.02 and cases cited therein.
More importantly, applicant has offered no explanation for
its failure to timely move to extend its testimony period
when it realized it would be unable to submit copies of the
registrations during its testimony period. Applicant had an
obligation to file, prior to the close of its testimony
period, a motion to extend said period.
Opposition No. 98,504
5
As regards the remaining Pioneer factors, while we find
no evidence of a bad faith attempt by applicant to delay
this case, opposer would be prejudiced by the introduction
of new evidence at this stage of the proceeding. Further,
the delay in applicant’s defense of this case is detrimental
to the orderly administration of the opposition process.
In view of the foregoing, applicant’s motion to reopen
its testimony period is denied. Also, opposer’s objection
to the list of third-party registrations in applicant’s
brief is well-taken. A party may not make third-party
registrations of record simply by introducing a list of such
registrations. See TBMP §703.02(b) and cases therein.
Also, evidentiary materials attached to a party’s brief can
be given no consideration unless they were properly made of
record during the party’s testimony period. See TMBP
§§705.02 and 801.01. Further, factual statements made in a
party’s brief can be given no consideration unless they are
supported by evidence properly made of record. See
TBMP §706.02. Thus, we have given no consideration to the
list of third-party registrations in applicant’s brief, or
applicant’s arguments in connection therewith, in reaching
our decision herein.
The record consists of the pleadings; the file of the
involved application; and the file of opposer’s application
and applicant’s responses to opposer’s interrogatories, made
Opposition No. 98,504
6
of record by way of opposer’s notice of reliance. Applicant
neither took testimony nor introduced any other evidence.
Both parties submitted briefs on the case.
Because of the sparse record in this case, little is
known about the parties. Applicant, in response to
opposer’s interrogatories, indicated that it selected the
mark JACQUES LAURENT because it had a French connotation.
Also, applicant indicated that the wholesale price of its
watches will be between $20.00 and $30.00 and that it
intends to sell its watches through retail and department
stores.
We turn to the merits of this opposition proceeding.
Insofar as priority is concerned, opposer filed its
application on September 9, 1993 which is prior to June 27,
1994, the filing date of applicant’s application. Thus, in
the present case, priority rests with opposer. See Section
7(c) of the Trademark Act.
With respect to the issue of likelihood of confusion,
two key considerations are the similarities between the
marks and the similarities between the goods. In this case,
the goods are identical, i.e., watches. The goods are
assumed to move in the same channels of trade to the same
classes of purchasers. Moreover, we assume that the
purchasers of the parties’ products are ordinary consumers.
Opposition No. 98,504
7
We focus our attention then on the involved marks. It
is opposer’s position that the marks are nearly identical in
overall commercial impression because each mark has a French
connotation and consists of the given name JACQUES and a
surname which begins with the letter “L.”
Notwithstanding opposer’s argument, we believe that in
this case, it is appropriate to give greater weight to the
surname portions of the marks. In this regard, the Board
has recognized the practice of identifying or referring to
individuals (and their names used as trademarks) by surnames
alone. Seligman & Latz, Inc. v Merit Mercantile Corp., 222
USPQ 720, 722 (TTAB 1984). See also Nina Ricci, S.A.R.L. v
Haymaker Sports, Inc., 134 USPQ 26, 28 (TTAB 1962) and Polo
Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 512 (TTAB
1984) [It is common in the fashion industry to refer to
designers by their surnames alone]. The surnames LAURENT
and LEMANS are obviously different in sound, appearance and
connotation and, thus, when we consider the marks in their
entireties, giving appropriate weight to the surnames, we
find that JACQUES LAURENT and JACQUES LEMANS create
different commercial impressions.
We note opposer’s reliance on Ceccato v. Manifattura
Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB
1984) wherein the Board held that applicant’s mark DUCA
D’AREZZO (stylized) for clothing was likely to cause
Opposition No. 98,504
8
confusion with opposer’s mark DUCA D’ AOSTA for identical
goods. That case is distinguishable, however, because each
of the marks therein consisted of a title and place name,
not a given name and surname.
In sum, notwithstanding the identity of the goods, we
find that the marks JACQUES LAURENT and JACQUES LEMANS are
sufficiently different that confusion is not likely.
Decision: The opposition is dismissed.
P. T. Hairston
H. R. Wendel
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board