Sams Watchmaker Jeweller Pty Ltd

Trademark Trial and Appeal BoardSep 7, 2012

No. 77780927 (T.T.A.B. Sep. 7, 2012)

Mailed: September 7, 2012 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Sams Watchmaker Jeweller Pty Ltd ________ Serial No. 77780927 _______ David P. Cooper of Kolisch Hartwell, P.C. for Sams Watchmaker Jeweler Pty Ltd. Bridgett G. Smith, Trademark Examining Attorney, Law Office 115 (Manag- er, John Lincoski). _______ Before Zervas, Bergsman and Lykos, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Applicant seeks registration on the Principal Register of the mark CLASSIQUE and design, shown below, for “watch bands and watches,” in Class 14.1 The application includes the statement that “the English translation of CLASSIQUE in the mark is CLASSIC.” 1 Application Serial No. 77780927 was filed on July 14, 2009, based upon applicant’s allegation of a bona fide intention to use the mark in commerce and on its claim of ownership of Australian Registration No. 396588 pursuant to Section 44(e) of the Trademark Act of 1946, 15 U.S.C. § 1126(e). This Opinion is NOT a Precedent of the TTAB Serial No. 77780927 - 2 - The Trademark Examining Attorney refused to register applicant’s mark on the ground that it is merely descriptive under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1). The Trademark Examining Attorney also refused to register applicant’s mark on the ground that it is like- ly to cause confusion with the registered mark CLASSIC, in standard charac- ter form, registered on the Supplemental Register for “watches,” in Class 14, under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d) .2 After the Trademark Examining Attorney made the refusals final, ap- plicant appealed to this Board. We affirm the refusals to register. Preliminary Issue Applicant in its April 22, 2010, November 17, 2010 and July 11, 2011 responses, as well as in its brief on the case, included a table of “Classic” marks for watches and jewelry with columns for the mark and serial number or registration number, goods and services, and the owner.3 In her January 10, 2011 response, the Trademark Examining Attorney noted the table of ap- plications and registrations and explained to applicant that a list of registra- tions does not make the registrations of record and that copies of the registra- tions must be submitted. Applicant did not submit copies of the registrations 2 Registration No. 3735432 issued January 5, 2010. 3 Third-party applications, as opposed to third-party registrations, have no probative value other than as evidence that the applications were filed. In re Toshiba Medical Systems Corporation, 97 USPQ2d 1266, 1270 n.8 (TTAB 2009). Furthermore, the Board will not take judicial notice of status changes in third-party applications in terms of whether such applications eventually issued to registration. In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009). Serial No. 77780927 - 3 - in any subsequent communications. In her brief, the Trademark Examining Attorney lodged an objection to the table of registrations included in appli- cant’s brief.4 To make a third-party registration of record, either a copy of the paper USPTO registration record, or a copy taken from the electronic registrations of the Office, should be submitted during prosecution of the application. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006). Mere listings of registrations are not sufficient to make the registrations of record. In re Hoef- flin, 97 USPQ2d 1174, 1177 (TTAB 2010). However, if an applicant includes a listing of registrations in a response to an Office action, and the Trademark Examining Attorney does not advise applicant that the listing is insufficient to make the registrations of record at a point when the applicant can correct the error, the Trademark Examining Attorney will be deemed to have waived any objection to consideration of the list itself, for whatever probative value it may have. In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2012). See also TBMP § 1208.02 (3rd ed. rev. 2012) and TMEP § 710.03 (8th ed. 2011). The Trademark Examining Attorney notified applicant that its list of registrations was not the proper way to make the registrations of record. Ap- pilcant had sufficient time to properly make the registrations of record. Ap- plicant failed to submit copies of the registrations. Accordingly, the Trade- mark Examining Attorney’s objection to the table of registrations is sustained 4 The Trademark Examining Attorney did not reference the table of registrations in her May 17, 2010 and August 29, 2011 Office actions. Serial No. 77780927 - 4 - and the table of registrations has not been considered. We hasten to add, however, that the table of registrations submitted by applicant has little pro- bative value because applicant did not include whether the registrations were issued on the Principle or Supplemental Register, whether the registrations were issued under the provisions of Section 2(f) or whether the third-party registrants disclaimed the exclusive right to use the word “Classic.” Merely Descriptive According to the Trademark Examining Attorney, applicant’s mark CLASSIQUE (stylized) is merely descriptive because it “is lauditorily descrip- tive with regard to jewelry and watches. … ‘Classic’ jewelry is a particular type or style of jewelry. … the term CLASSIQUE or CLASSIC (its translated term) describes goods that are ‘of the highest rank or class’ and ‘serve as the established model or standard.’ … classic goods are ‘formal, refined, and re- strained in style.’”5 “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217 1219 (Fed. Cir. 2012), citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely de- scriptive is determined in relation to the goods and services for which regis- tration is sought and the context in which the term is used, not in the abstract 5 Trademark Examining Attorney’s Brief, p. 6 (unnumbered). Serial No. 77780927 - 5 - or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is not whether someone presented only with the mark could guess the services listed in the recitation of services. Rather, the question is whether someone who knows what the services are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trade- mark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Finally, “if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteris- tics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Sys- tems, Inc., 209 USPQ 165, 166 (TTAB 1980). The French word “Classique” is translated into English as “Classic.”6 The word “Classic” is defined, inter alia, as follows: a. Belonging to the highest rank or class. b. Serving as the established model or stand- ard. 6 Dictionary.reverso.net from the COLLINS ENGLISH FRENCH ELECTRONIC DICTIONARY (2005) attached to the October 22, 2009 Office action. Serial No. 77780927 - 6 - c. Having lasting significance or worth, endur- ing. d. Formal, refined, and restrained in style.7 In other words, “Classic” refers to “recognized excellence.”8 The meaning of the word “Classic” as “recognized excellence is support- ed by the use of that term by third parties. We note that some of the evidence uses “Classic” in connection with jewelry as opposed to watches. Neverthe- less, we find that the third-party use of “Classic” in connection with jewelry is probative of how consumers perceive the meaning of that word. 1. October 22, 2009 Office action a. JewelryImpressions.com website advertising “Classic Cos- tume Jewelry.” b. HSN.com website Classic Jewelry A complete jewelry wardrobe starts with the sim- ple, timeless elegance of classic jewelry. For you, for someone special, forever … choose the distinc- tive liens of classic jewelry. 2. January 10, 2011 Office action a. Impressa Classic Jewelry (impressajewelry.com) website b. JOMASHOP.com website advertising Oris Classic Watch- es 7 TheFreeDictionary.com from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000) attached to the August 29, 2011 Office action. 8 TheFreeDictionary.com from the WORLDNET 3.0 THESAURUS attached to the Au- gust 29, 2011 Office action. Serial No. 77780927 - 7 - 3. August 20, 2011 Office action a. Classic Watches website (classicwatchesonline.com) Classic Watches For Women Women’s Classic watches are usually ele- gant, slim, and stylish. These watches are always in demand and will never go out of style. b. Overstock.com Baume & Mercier Women’s Hampton Classic Watch This watch from Baume & Mercier is a clas- sic to fit almost any occasion. An online review in this website described the watch as “classically elegant.” c. Amazon.com advertising Timex Women’s’ T29271 Classic Stainless Steel Bracelet Watch. The website directed cus- tomers to sponsored websites including “Classic Watches – Find exquisitely crafted timepieces at the official Hermes site.” d. TLC.com posted an article online entitled “10 Classic En- gagement Ring Styles.” e. A second excerpt from the Classic Watches website (classicwatchesonline.com) Unique Class Wrist Watches Classic wrist watches are usually for invest- ment or the pure pleasure of ownership. The word classic refers to a year or period of Serial No. 77780927 - 8 - time, a time that most defines the style, which is how we apply the term “classic” to the wristwatch. Individuals have a passion for classic wrist watches from the past. The- se watches are not only of the highest quality but also include unique style that is no long- er easily found. f. Cliff Jones’s Antique & Classic Watches at goodwatch.com. This website advertises “High grade collector watches.” The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself. “[A] word taken from a well-known foreign modern language, which is, itself, descriptive of a product, will be so considered when it is attempted to be registered as a trade-mark in the Unit- ed States for the same product.” In re N. Paper Mills, 64 F.2d 998, 1002, 17 USPQ 492, 493 (C.C.P.A. 1933). See In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008) (AYUMI and its Japanese-character equivalent held mere- ly descriptive for footwear where the evidence, including applicant's own ad- missions, indicated that the primary meaning of applicant's mark is “walk- ing”); In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) (Chinese characters that mean ORIENTAL DAILY NEWS held merely descriptive of newspapers); In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985) (SAPORITO, an Italian word meaning “tasty,” held merely descriptive be- cause it describes a desirable characteristic of applicant’s dry sausage). Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely Serial No. 77780927 - 9 - a guideline. The doctrine should be applied only when it is likely that the or- dinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). “The "ordinary American purchaser" in this context refers to the ordinary American purchaser who is knowledgeable in the foreign lan- guage.…[defining “ordinary American purchaser” as the “average American buyer”] would write the doctrine out of existence.” In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006). In this case, however, the French word “Classique” is so similar to its English translation “Classic” that the “ordinary American purchaser” does not have to be knowledgeable in French to know the meaning of the word. The ordinary consumer immediately will recognize the word “Classique” as a version of the word “Classic.” In this regard, applicant argues that its mark is suggestive when con- sidered in connection with watches and watch bands because “CLASSIQUE has imagery associated with the French spelling of that word. That imagery includes a certain level of elegance and class that Americans associate with French words.”9 The fact that applicant is trying to engender the commercial impression of French elegance and class, does not make the word “Classique” any less descriptive especially when, as here, the French word is so similar to its English translation. Moreover, the imagery that applicant is attempting to 9 Applicant’s Brief, p. 8. Serial No. 77780927 - 10 - achieve is that of recognized excellence, the same meaning as the word “Clas- sic.” The commercial use of the word “Classic” in connection with jewelry and watches supports the finding that the word “Classic” means “recognized excellence.” Accordingly, we find that consumers will immediately recognize that the word “Classique” when it is used in connection with watches and watch bands is the French word for “Classic” and it is used to signify excel- lence. This conclusion will be reached without the need for any reasoning, cogitation, or application of logic. In view of the foregoing, we find that the mark CLASSIQUE for watches and watch bands is merely descriptive. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distil- ling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similar- ities between the marks and the similarities between the services. See Feder- ated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumu- lative effect of differences in the essential characteristics of the goods and dif- Serial No. 77780927 - 11 - ferences in the marks”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. B. The similarity or dissimilarity and nature of the products/services de- scribed in the application and registration, likely-to-continue trade channels and classes of consumers. Applicant is seeking to register the mark CLASSIQUE (stylized) for watch bands and watches and the mark in the cited registration is for watch- es. Thus, the good are in part identical. Because the goods described in the application and cited registration are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); 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.”). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). B. The similarity or dissimilarity of the marks in their entireties as to ap- pearance, sound, connotation and commercial impression. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appear- ance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a partic- Serial No. 77780927 - 12 - ular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In compar- ing the marks, we are mindful that where, as here, the goods are in part iden- tical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Cen- tury 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Furthermore, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Compo- nents Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Applicant argues that the marks are not likely to cause confusion be- cause the mark in the cited registration is entitled to only a narrow scope of protection or exclusivity of use as evidenced by the fact that it is registered on Serial No. 77780927 - 13 - the Supplemental Register. With respect to marks registered on the Supple- mental Register, the Board stated the following in In re Hunke & Jochheim: [R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark pos- sessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that ac- corded an arbitrary or coined mark. That is, terms falling within the former category have been gener- ally categorized as “weak” marks, and the scope of protection extended to these marks has been lim- ited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods. Thus, unlike in the case of an arbitrary or unique designation, the ad- dition of other matter to a highly suggestive or de- scriptive designation, whether such matter be equally suggestive or even descriptive, or possibly nothing more than a variant of the term, may be sufficient to distinguish between them so as to avoid confusion in trade. 185 USPQ 188, 189 (TTAB 1975) (citation omitted) (HIG-DURABLE for sta- tionery articles not likely to cause confusion with DURABL, on the Supple- mental Register, for record books). Therefore, unlike a situation involving an arbitrary or fanciful mark, It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protec- tion afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights. The essence of all we have said is that in the former case there is not the possibility of confusion that ex- ists in the latter case. Serial No. 77780927 - 14 - Sure-Fit Products Company v. Saltzson Drapery Company, 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958) (RITE-FIT PRODUCT for draperies is not likely to cause confusion with SURE FIT for slip covers). Nevertheless, even marks that are registered on the Supplemental Register may be cited under §2(d). In re Clorox Co., 578 F.2d 305, 308-09, 198 USPQ 337, 341 (C.C.P.A. 1978) (ERASE for a laundry soap and stain remover likely to cause confusion with STAIN ERASER for a stain remover). See also In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed. Cir. 1986) (ROPELOK for safety fall protection equipment attached to workers operating at elevated heights is likely to cause confusion with ROPELOCK, on Supplemental Register, for re- leasable locking buckles for rope); In re Central Soya, 220 USPQ 914 (TTAB 1984) (POSADA for frozen enchiladas not likely to cause confusion with LA POSADA, on the Supplemental Register, for lodging and restaurant services); In re Texas Instruments Incorporated, 193 USPQ 678 (TTAB 1976) (COPPER CLAD and design for composite metal wire for use in electrical conductors is not likely to cause confusion with COPPERCLAD, on the Supplemental Regis- ter, for copper coated carbon electrodes for use in electric arc cutting and gouging). As discussed above, applicant’s mark CLASSIQUE is the French word for “Classic,” the mark in the cited registration, and the French word “Classique” is so similar to the English word “Classic” that consumers will not have to stop and translate CLASSIQUE to understand that it means “Clas- Serial No. 77780927 - 15 - sic.” Accordingly, we find that the marks have identical meanings and engen- der the same commercial impression. With respect to the appearance of the marks, the stylization of appli- cant’s mark is not so distinctive that it serves as a basis to distinguish the marks especially when the marks appear on in part identical goods. The word CLASSIQUE is the dominant portion of applicant’s mark because consumers would refer to applicant’s watches and watch bands by that term. See In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). There is nothing improper in stating that, for ra- tional reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Furthermore, because the mark in cited registration is in standard character form, the rights associated with the registered mark re- side in the wording and not in any particular display. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Thus, the registered mark could appear Serial No. 77780927 - 16 - in a format similar to applicant’s mark. Accordingly, we find that the marks are similar in appearance. We also find that CLASSIC (klas´ik) and CLASSIQUE (klas´ēk) sound alike. Taking into consideration the inherent weakness of the mark in the cit- ed registration, as well as the similarities of the marks at issue, we find that the marks CLASSIQUE and CLASSIC are similar in terms of appearance, sound, meaning and commercial impression. C. Balancing the factors. Because the marks are similar and used on in part identical products, as well as the presumption that the products move in the same channels of trade and are encountered by the same classes of consumers, we find that ap- plicant’s mark CLASSIQUE (stylized) for watches and watch bands is likely to cause confusion with the mark CLASSIC for watches. Decision: The refusals to register are affirmed.