Rubel & Menasche S.A.

Trademark Trial and Appeal Board

Nov 7, 2007

No. 79012393 (T.T.A.B. Nov. 7, 2007)

Mailed:
7 November 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rubel & Menasche S.A.
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Serial No. 79012393
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H. John Campaign of Graham, Campaign P.C. for Rubel &
Menasche S.A.

William Breckenfeld, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Grendel, Drost, and Cataldo, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 19, 2005, applicant, Rubel & Menasche S.A.,
filed an application to register the mark [XXI
CENTURY CUT and design] on the Principal Register for goods
ultimately identified as:
Precious metals and alloys thereof, namely, silver and
gold; jewellery including rings, brooches, earrings,
chains, bracelets, watches of precious metals, namely,
silver, gold, and non-precious metals and other sorts
of ornaments; bijouterie; precious stones; clocks and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 79012393
2
watches and other chronometric instruments; diamonds
for industrial use in Class 141

Applicant has disclaimed the term “Cut.”
The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of a registration for the mark CENTURY
CUT (typed or standard character drawing) for cut diamonds
and other precious and semi-precious gemstones in Class 14.2
When the refusal was made final, applicant filed a
request for reconsideration and this appeal.
The examining attorney argues that the “goods are
overlapping as precious stones include cut diamonds and
other precious gemstones. Additionally, [the term] cut
diamonds includes cut diamonds for industrial use.” Brief
at unnumbered p. 5. The examining attorney also argues
that “the diamond design elements are so integrated with
the XXI as to make the letters appear to be settings for
the diamonds. The average reader is likely to be first
drawn to the easily-read wording CENTURY CUT.” Brief at
unnumbered p. 9.

1 Serial No. 79012393. The application is an extension of
protection filed under the provision of Section 66(a) of the
Trademark Act. 15 U.S.C. § 1141f(a).

2 Registration No. 2326125 issued March 7, 2000, affidavit under
§ 8 accepted, “Cut” disclaimed.
Ser No. 79012393
3
On the other hand, applicant argues that there is no
likelihood of confusion because its “mark consists of the
predominant term ‘XXI’ with two diamonds placed in the top
part of the two ‘X-es,[’] underlined by the term ‘Century
Cut.’” Brief at 4. In addition, applicant relies on the
“truism that purchasers of diamonds are considering
expensive, luxury goods, and thus they become a
sophisticated buying class, entirely unlikely to be
deceived by XXI CENTURY CUT precious stones or diamonds for
industrial use when they want Registrant’s CENTURY CUT
diamond jewelry.” Brief at 4.
In cases involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Ser No. 79012393
4
We will first consider the relationship between the
goods. In this case, registrant’s goods include cut
diamonds and other precious gemstones. Applicant’s goods
include precious stones and diamonds for industrial use.
We note that the term “precious stone” is defined as “any
of several gems, such as the diamond or the ruby, that have
high economic value because of their rarity or appearance.”3
Therefore, we consider that the goods in this case are
identical in part inasmuch as both applicant’s and
registrant’s goods include cut diamonds and industrial
diamonds. Also, registrant’s precious gemstones are
presumed to overlap with applicant’s precious stones. When
goods are identical, “the degree of similarity necessary to
support a conclusion of likelihood of confusion declines.’”
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (quoting Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992)). Also, because the goods are
in part identical, we must assume that the purchasers and
channels of trade are also the same. Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part

3 The American Heritage Student Dictionary (1998). We take
judicial notice of this definition. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 79012393
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identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
We next examine the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation, and commercial impression. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
Registrant’s mark consists of the two words CENTURY CUT in
typed or standard character form. The registrant’s mark is
identical to part of applicant’s mark that also consists of
the words CENTURY CUT. Because registrant’s mark is in
typed or standard character form, we must presume that
there is no difference in the stylization of these words in
applicant’s and registrant’s marks. Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983)
(“[T]he argument concerning a difference in type style is
not viable where one party asserts rights in no particular
Ser No. 79012393
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display”). However, the marks are dissimilar because
applicant adds the letters XXI and the design of two
diamonds. While the XXI and diamonds design is certainly
larger than the words Century Cut, it is clear that the
words Century Cut are plainly visible. Applicant assumes
that most purchasers will see the mark as 21st Century Cut
and argues that the examining attorney did not take “into
consideration that the 21st Century is unlike any other
Century in the history of the world.” Brief at 6. Even if
it was established that the 21st Century is an unusual
century, we nonetheless believe that the words CENTURY CUT
will be the dominant feature of applicant’s mark. First,
the terms are readily apparent to any purchaser viewing the
mark. The letters XXI, which also can be the Roman
numerals for the number 21, are displayed in a design of
the goods. The design of two diamonds for goods that
include diamonds would hardly be the feature that
purchasers would use to distinguish diamonds. Furthermore,
the letters XX appear as part of the design of the diamonds
inasmuch as they serve as settings for the diamonds. We
add that purchasers would have to separate the XXI from the
diamond design and recognize that one meaning of the
letters is “21st.” Therefore, the “21st” meaning of the mark
is unlikely to be the commercial impression that many
Ser No. 79012393
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purchasers will have of the marks. Purchasers will likely
view the marks as CENTURY CUT and CENTURY CUT and diamonds
and settings design. Furthermore, even among those that do
understand applicant’s mark to be 21st CENTURY CUT, they are
likely to believe that it is simply another refinement of
registrant’s CENTURY CUT cut diamonds and precious
gemstones. When we compare the marks, we conclude that
they are similar in sound, appearance, meaning, and
commercial impression. While there are differences, the
marks are dominated by the identical term CENTURY CUT, and
the Roman numerals and the diamonds design does not result
in marks that are not confusingly similar. In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) (“With respect to JOSE, the Board
correctly observed that the term simply reinforces the
impression that GASPAR is an individual’s name. Thus, in
accord with considerable case law, the JOSE term does not
alter the commercial impression of the mark.” The marks
JOSE GASPAR GOLD and GASPAR’S ALE were determined to be
similar). See also Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and design held likely to be confused
with CONCEPT for hair care products); and In re Hepperle,
175 USPQ 512 (TTAB 1972) (ACAPULCO GOLD for suntan lotion
Ser No. 79012393
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and ACAPULCO for lipstick confusingly similar). We add
that “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of the mark, provided [that] the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant also maintains that the goods are expensive
and that the purchasers are sophisticated. The examining
attorney points out that the “record contains no evidence
as to the cost of either the applicant’s or registrant’s
goods.” Brief at unnumbered p. 6. While we can assume
that some purchasers of diamonds are sophisticated and some
diamonds are very expensive, with the lack of evidence in
the record, we cannot assume that all diamonds are
necessarily very expensive and that the purchasers would be
sophisticated. In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001) (“There is no evidence in the record from which
we might conclude that wine and restaurant services, in
general, are necessarily expensive, or that purchasers
thereof are necessarily sophisticated and careful in making
their purchasing decisions”). To the extent that
purchasers are sophisticated, it is also true that these
purchasers are not necessarily able to avoid confusion when
Ser No. 79012393
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marks as similar as CENTURY CUT and CENTURY CUT and a
diamond design with the Roman numerals XXI are used on
identical goods. In re Total Quality Group Inc., 51 USPQ2d
1474, 1477 (TTAB 1999) (“We recognize applicant's
attorney's point that its software is expensive and that
purchasers of it are likely to be sophisticated. Suffice
it to say that no evidence in support of these assertions
was submitted. In any event, even careful purchasers are
not immune from source confusion”). See also In re Hester
Industries, Inc., 231 USPQ 881, 883 (TTAB 1986) (“While we
do not doubt that these institutional purchasing agents are
for the most part sophisticated buyers, even sophisticated
purchasers are not immune from confusion as to source
where, as here, substantially identical marks are applied
to related products”).
When we consider that the goods of applicant and
registrant overlap and that the marks are dominated by the
identical words CENTURY CUT, we conclude that confusion is
likely.
Decision: The examining attorney’s refusal to
register applicant’s mark for the identified goods on the
ground that it is likely to cause confusion with the cited
registration under Section 2(d) of the Trademark Act is
affirmed.