Select Jewelry Inc.

Trademark Trial and Appeal BoardSep 12, 2012

No. 77900718 (T.T.A.B. Sep. 12, 2012)

Mailed: September 12, 2012 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Select Jewelry Inc. ________ Serial No. 77900718 _______ Max Moskowitz and Sean P. McMahon of Ostrolenk Faber LLP for Applicant. Steven Fine, Trademark Examining Attorney, Law Office 110 (Chris A. F. Pedersen, Managing Attorney). _______ Before Quinn, Kuczma and Greenbaum, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Applicant seeks registration on the Principal Register of the mark shown below (in standard character format): for the following goods identified in the application, as amended: jewelry, namely, wedding bands, rings, bracelets, pen- dants, earrings, necklaces, brooches and pins composed of, in whole or in part, diamonds, in International Class 14.1 1 Application Serial No. 77900718 was filed on December 24, 2009, based upon appli- cant’s allegation of a bona fide intention to use the mark in commerce under § 1(b) of the Trademark Act, 15 U.S.C. § 1(b). Applicant claims ownership of Registration No. 3226327 for the mark DIAMOND FASCINATION for “jewelry, namely, necklaces, earrings, pendants, bracelets,” issued April 10, 2007; the word DIAMOND is dis- claimed in Registration No. 3226327. This Opinion is NOT a Precedent of the TTAB Serial No. 77900718 - 2 - The word DIAMOND has been disclaimed. The Trademark Examining Attorney issued a final refusal to register the mark pursuant to § 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), citing Registration No. 3720343 as a bar to registration.2 Registration No. 3720343, issued on the Supplemental Register, is for the mark RADIANCE (in standard character format) for the following goods: Beads for use in the manufacture of jewelry; Body jewelry; Bracelets; Broaches; Bronze jewelry; Brooches; Charms; Costume jewelry; Cut diamonds; Diamond jewelry; Dia- monds; Gemstone jewelry; Gemstones; Gold; Gold and its alloys; Gold, unworked or semi-worked; Identification bracelets; Jewelry; Jewelry and imitation jewelry; Jewelry chains; Jewelry findings; Jewelry for the head; Jewelry watches; Jewelry, namely, amulets; Jewelry, namely, an- klets; Jewelry, namely, crosses; Jewelry, namely, stone pendants; Palladium and its alloys; Pet jewelry; Platinum; Platinum and its alloys; Precious gemstones; Precious metals and their alloys, namely, gold, silver, platinum, palladium, titanium, tungsten, and argentium; Precious metals, namely, gold, silver, platinum, palladium, titani- um, tungsten, and argentium; Rings; Rings being jewelry; Semi-precious gemstones; Silver; Sintered diamonds; Stainless steel jewelry bracelets; Synthetic diamonds; Watches and jewelry; Watches, clocks, jewelry and imita- tion jewelry in Class 14. After the Trademark Examining Attorney made the refusal final, appli- cant appealed to this Board. We affirm the refusal to register. 2 Registration No. 3720343 issued on the Supplemental Register on December 1, 2009. Serial No. 77900718 - 3 - Likelihood of Confusion Our determination of likelihood of confusion under § 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the fac- tors bearing on the 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 Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, other factors, including the weakness of the mark and the sophistication of consumers, were also argued and consid- ered. A. The similarity or dissimilarity and nature of the goods, channels of trade and classes of consumers It is well-settled that the issue of likelihood of confusion between ap- plied-for and registered marks must be determined on the basis of the goods as they are identified in the involved application and registration. Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). We must also keep in mind that a likelihood of confusion may be found with respect to a particular class based on any product within the identification of goods for that class. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Serial No. 77900718 - 4 - The jewelry products set forth in the subject application include some of the same jewelry items identified in the cited registration namely, diamond jewelry, rings, bracelets, and brooches. Because applicant’s and registrant’s goods overlap, they are legally identical, and we can presume that they are provided in the same channels of trade and to the same classes of purchasers at least with respect to the overlapping goods. 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). 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). In view of the foregoing, the du Pont factors of the similarity of the goods, trade channels and customers favor a finding of likelihood of confusion. B. Conditions under which and buyers to whom sales are made The fourth du Pont factor is the conditions under which and buyers to whom sales are made, i.e., “impulse versus careful, sophisticated purchas- ing.” Applicant argues “[I]t is well settled that jewelry items are generally not purchased on impulse, but rather are the type of goods that are pur- chased by relatively sophisticated and discriminating purchasers who can be expected to exercise reasonable care in purchasing these goods [.]” citing to In re Leonard S.A., 2 USPQ2d 1800, 1802 (TTAB 1987) and Fortunoff Silver Serial No. 77900718 - 5 - Sales, Inc. v. Norman Press, Inc., 225 USPQ 863, 869-70 (TTAB 1985).3 However, as recognized in Leonard, the discriminating purchasers of jewelry can be expected to exercise some care but are not immune from confusion. 2 USPQ2d at 1802. But for the existence of a consent agreement between the applicant and the owner of the cited registration, the Board in Leonard ex- pressly stated it was inclined to affirm the refusal of registration of the ap- plicant’s stylized “Leonard Swiss” mark for watches in view of the previously registered “Leonard” mark for jewelry, despite the sophistication of the cus- tomers and their care in making purchasing decisions. 2 USPQ2d at 1802. The Fortunoff and Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992), cases cited by applicant also offer little support for applicant’s position. In Fortunoff, the applicant’s customers were retailers engaged in the highly competitive retail jewelry business who depended “upon careful price-conscious purchas- ing practices” and the opposer’s evidence showed that its customers were “highly discriminating purchasers.” 225 USPQ at 870. In Electronic Design, the record confirmed that the parties’ goods and services are usually pur- chased after careful consideration by persons who are highly knowledgeable about the goods or services and their source. 21 USPQ2d at 1392. Here, the record is silent regarding the price of applicant’s and registrant’s products, 3 Applicant’s Appeal Brief pp. 13-14. Serial No. 77900718 - 6 - the sophistication of their customers, and the care exercised by their custom- ers when purchasing their products. The overlapping products in the subject application and cited registra- tion include diamond jewelry and we recognize that diamond jewelry is not typically purchased on impulse. However, given the lack of evidence as to the sophistication of the purchasers, the care exerted in their purchasing de- cision, or even the cost of the jewelry items which could be reflective of the level of sophistication and care exerted in purchasing such items, we can on- ly conclude that the diamond jewelry products are not purchased on impulse. C. The similarity or dissimilarity of the marks as to appearance/sound/connotation and commercial impression We next consider the du Pont factor focusing on the similarity or dissimi- larity of the marks in their entireties as to appearance, sound, connotation and commercial impression. du Pont, 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) and In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). To the extent that applicant’s RADIANCE BY DIAMOND FASCINATION mark begins with the same word that comprises registrant’s RADIANCE mark, and both marks are used on identical and related jewelry items, they are similar overall in sound, appearance and connotation. Serial No. 77900718 - 7 - Although the issue of likelihood of confusion must be judged on the basis of the facts and context of each case presented to the Board, likelihood of con- fusion has frequently been found where the entirety of one mark is incorpo- rated within another. See In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985) (addition of house mark in LE CACHET De DIOR does not avoid likelihood of confusion with registered CACHET mark) and In re C.F. Hatha- way Co., 190 USPQ 343, 345 (TTAB 1976) (HATHAWAY GOLF CLASSIC for knitted sport shirts likely to cause confusion with registered GOLF CLASSIC mark for men’s hats); and La Maur, Inc. v. Matney, 167 USPQ 559 (TTAB 1970) (applicant’s “ITALIAN STYLE” mark similar to registered “STYLE” mark). See also In re Champion International Corp., 196 USPQ 48, 49 (TTAB 1977) (resemblance between applicant’s CHECK MATE and registrant’s HAMMERMILL MICR CHECK-MATE marks for closely related products likely to cause confusion). Applicant contends that the inclusion of its registered DIAMOND FASCINATION house mark in the subject mark is sufficient to distinguish its mark from the cited mark so as to avoid any likelihood of confusion. Specifi- cally, applicant argues that DIAMOND FASCINATION is a strong house mark entitled to the broadest scope of protection because it has been the sub- ject of “countless accolades in the press” and that applicant has “expended large sums of money in advertising goods marketed and sold” under the Serial No. 77900718 - 8 - DIAMOND FASCINATION mark.4 Without any evidentiary support in the record, such statements, like fake diamonds, have little value. Contrary to applicant’s argument, it has long been held that the addition of a trade name or house mark to a registered mark does not generally avoid confusion. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1364 (TTAB 2007) cit- ing Menendez v. Holt, 128 U.S. 514, 521 (1888). As explained in Christian Dior, where applicant’s “Le Cachet De Dior” mark was found confusingly simi- lar to the registered mark “Cachet”: [S]uch addition may actually be an aggravation of the like- lihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion. . . . On the other hand, where there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or merely descriptive or play upon commonly used or registered terms, the addition of a housemark and/or other material to the assertedly conflicting product mark has been determined sufficient to render the marks as a whole sufficiently distinguishable. 225 USPQ at 534. However, whether a mark is or is not a house mark is not conclusive in determining whether there is a likelihood of confusion. Compare Fiesta Palms, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS MVP confusingly simi- lar to MVP; MVP not shown to be highly suggestive term) with Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (no likelihood of confusion between NORTON McNAUGHTON ESSENTIALS and ESSENTIALS where the evidence demonstrated that “Essentials” was a high- 4 Applicant’s Appeal Brief p. 10. Serial No. 77900718 - 9 - ly suggestive term). We must consider the entire marks, including the pres- ence of the house mark in applicant’s mark, in light of the evidence of record. When the common part of the marks is identical, as is the term RADIANCE in this case, purchasers familiar with the registrant’s mark are likely to assume that the house mark simply identifies what had previously been an anonymous source. See In re Hill-Behan Lumber Company, 201 USPQ 246 (TTAB 1978) (addition of applicant’s house mark “Hill-Behan’s” in- sufficient to distinguish “Hill-Behan’s Lumber Jack” mark from registrant’s “Lumberjack” mark.). However, if the common part of the marks is a highly suggestive or descriptive term, the addition of a house mark can create signif- icant differences in the marks’ appearance, pronunciation, meaning and com- mercial impression so as to avoid a likelihood of confusion. Knight Textile, 75 USPQ2d at 1316-17. Pointing to the status of the cited registration on the Supplemental Reg- ister and the alleged use and registration of numerous “Radiance” marks by third parties, applicant argues that the term RADIANCE is a descriptive and weak term, entitled to only a narrow scope of protection.5 If applicant’s evi- dence shows that “Radiance” is a weak mark, this weighs against a finding of likelihood of confusion. The fact that the cited RADIANCE mark was registered on the Supple- mental Register is prima facie evidence that, at least at the time of registra- 5 Applicant’s Appeal Brief pp. 11-12 Serial No. 77900718 - 10 - tion, the registered mark was merely descriptive. See In re Central Soya Co., Inc., 220 USPQ 914, 917 (TTAB 1984). “This is significant because it is well established that the scope of protection afforded a merely descriptive or a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally catego- rized as ‘weak’ marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subse- quent use and registration thereof for substantially similar goods.” Central Soya, 220 USPQ at 917 citing In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975). To counter any descriptiveness of the term “Radiance” attributable to the cited registration’s existence on the Supplemental Register, the examining at- torney submitted evidence of cancelled Registration No. 2423755 issued on the Principal Register for the mark RADIANCE for gold jewelry, namely brace- lets, necklaces, earrings, pins and pendants.6 On balance, any suggestion of descriptiveness resulting from the cited mark’s registration on the Supple- mental Register is offset by the issuance of the now expired registration for RADIANCE on the Principal Register such that we draw no conclusion from 6 See Office Action of February 16, 2011. Registration No. 2423755 was cancelled on October 27, 2007, for failure to file an acceptable declaration under § 8 of the Trade- mark Act, 15 U.S.C. § 1058. Inasmuch as the examining attorney did not provide any evidentiary support for his observation that the cited mark is the only registered mark in Class 14 that contains the term “Radiance,” this observation does not factor into our decision. Serial No. 77900718 - 11 - the issuance of a single Supplemental Registration, and a single registration on the Principal Register, for the identical RADIANCE mark for jewelry items. In a further attempt to show the weakness of the term “Radiance,” appli- cant submitted copies of summary reports from TESS searches identifying 464 applications filed for marks that include the term “Radiance” whether as a free-standing term or incorporated into a mark; of those applications, approx- imately 230 proceeded to registration with 150 being currently valid and sub- sisting registrations.7 Based on the summary TESS reports listing active reg- istrations for “Radiance” marks, applicant contends that many entities are us- ing “Radiance” as a trademark and consumers are therefore conditioned to recognize many users and can distinguish between the various uses of “Radi- ance.” In order to make the applications and registrations identified in the summary TESS reports of record, applicant should have submitted soft copies of the registrations or the electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems, including TESS). However, be- cause the examining attorney failed to object to such evidence or to advise ap- plicant of the insufficiency of the TESS summary charts, we consider this evi- dence for whatever probative value it has. See In re 1st USA Realty Profes- 7 See Exhibits A-C to June 9, 2010 Response to Office Action. Serial No. 77900718 - 12 - sionals Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) and TBMP § 1208.02 (3rd edition, 1st revision June 2012). The summary TESS report listing applications for marks containing the term “Radiance” is of little probative value. Applications are evidence only that the applications were filed on a certain date, not evidence of use or that the marks, in fact, co-existed. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003); In re Juleigh Jeans Sports- wear, Inc., 24 USPQ2d 1694, 1699 (TTAB 1992). Similarly, third-party registrations are of little probative value in deter- mining likelihood of confusion because they are not evidence that the marks depicted therein are in use or that the public is aware of them. However, they may be submitted to demonstrate the meaning of a word which comprises a mark, or a portion thereof, in the same way dictionary definitions are used to illustrate how a term is perceived in the trade or industry. See In re Box Solu- tions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Opus One Inc., 60 USPQ2d 1812, 1814 (TTAB 2001) citing Olde Tyme Foods Inc. v. Roundy’s Inc. 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) and In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“Said third party registrations are of use only if they tend to demonstrate that a mark or a portion thereof is suggestive or descrip- tive of certain goods and hence is entitled to a narrow scope of protection. Serial No. 77900718 - 13 - Used in this proper, limited manner, ‘third party registrations are similar to dictionaries showing how language is generally used.’”) (Internal citation omitted.). “Such third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descrip- tive significance as applied to certain goods or services.” The Institut National des Appellations D'Origine v. Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). Because applicant’s summary TESS report of existing registrations for “Radiance” marks omits critical information such as the nature of the goods identified in the listed registrations, it is impossible to assess any descriptive significance of “Radiance” for jewelry. Accordingly, the summary TESS re- ports are not probative evidence of the weakness of the term “Radiance” for jewelry items. Applicant also submitted dictionary definitions for the words “radiance” and “radiant” arguing that based on their definitions, the words “radiance” and “radiant” are descriptive of jewelry as they immediately convey a quality or characteristic of jewelry.8 Specifically, applicant notes that “radiant” is de- 8 See Applicant’s Appeal Brief p. 12. Applicant submitted definitions from the “Mer- riam-Webster Online Dictionary” as Exhibits A and B to its Appeal Brief. The Board may take judicial notice of online dictionary definitions submitted with an appeal brief including online dictionaries that exist in printed format or have regular fixed editions. See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) and In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). While the copies of the dictionary definitions provided by applicant did not identify the date on which they were printed Serial No. 77900718 - 14 - fined as being vividly bright and shining, glowing or being marked by or ex- pressive of love, confidence or happiness. Applicant offers no explanation of how the characteristics of “radiant” are descriptive of jewelry. While various precious metals may be treated in a manner that renders them “shiny,” there is no evidence that jewelry is referred to as “vividly bright and shining” or “glowing.” Nor does applicant offer an explanation of how jewelry is marked by or expressive of love, confidence or happiness. To the extent that jewelry is sometimes given as an expression of love or happiness, and the recipient of the jewelry given under such circumstances could be perceived by others as being radiant, the words “radiant” and “radiance” appear to be at most sug- gestive of jewelry items. Applicant makes the illogical argument that consumers will perceive the word RADIANCE in its mark as suggestive of the look and feel of jewelry sold under the mark RADIANCE BY DIAMOND FASCINATION while perceiving the cited RADIANCE mark for the same products as a descriptive term with- out source identifying significance.9 That “Radiance” is suggestive rather than descriptive of jewelry is consistent with the fact that applicant has not disclaimed the term “Radiance” in its mark nor has the examining attorney required applicant to do so. or the URL identifying their location on the internet, the examining attorney did not object to the definitions in his Appeal Brief, so we have considered the definitions. 9 Applicant’s Appeal Brief pp. 10-11. Serial No. 77900718 - 15 - Even if the term “Radiance” is deemed to be descriptive of jewelry, the evidence does not show that it is sufficiently weak so as to permit registration of applicant’s mark which incorporates the entirety of registrant’s mark for goods that are, in part, identical. As long as the cited Supplemental Registra- tion subsists, we believe this Office is obliged to refuse registration to an ap- plicant seeking registration of a confusingly similar mark for substantially identical goods. In re Central Soya Co., Inc., 220 USPQ 914, 917 (TTAB 1984) citing In re The Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) (ERASE for laundry soil and stain remover held confusingly similar to STAIN ERASER, registered on the Supplemental Register, for a stain remover). For the reasons set forth above, when considering the marks in their en- tireties, we find that the similarities outweigh any differences between the marks and that the marks are similar in sound, appearance, meaning and commercial impression. D. Balancing the Factors Where the goods of the applicant and cited registrant are similar and/or closely related as they are in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004). Accordingly, in spite of the fact that applicant’s goods, and some of the goods in the cited registration, are not Serial No. 77900718 - 16 - typically purchased on impulse, the strong overall similarity of the marks in their entireties in sound, appearance, meaning and commercial impression, and the overlap in the channels of trade and classes of customers, cause us to find that applicant’s RADIANCE BY DIAMOND FASCINATION mark for “jewelry, namely, wedding bands, rings, bracelets, pendants, earrings, neck- laces, brooches and pins composed of, in whole or in part, diamonds,” is likely to cause confusion with the RADIANCE mark in Registration No. 3720343. Decision: The refusal to register is affirmed.