Waterford Wedgwood PLCv.Forma-Kutzscher GmbH

Trademark Trial and Appeal Board

Oct 31, 2007

No. 91123735 (T.T.A.B. Oct. 31, 2007)

Mailed:
October 31, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Waterford Wedgwood PLC
v.
Forma-Kutzscher GmbH
_____

Opposition No. 91123735
to application Serial No. 75752866
filed on July 16, 1999
_____

Bassam N. Ibrahim of Buchanan Ingersoll & Rooney PC for
Waterford Wedgwood PLC.

Thaddeus C. Stankowski of Nilles & Nilles, S.C. for Forma-
Kutzscher GmbH.
______

Before Hohein, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Forma-Kutzscher GmbH, a German corporation, filed an
application to register the mark LISA MORI, in standard
character format, for goods ultimately identified as
“crystal and lead crystal glassware, namely, beverage ware,
cups, vases, and bowls, candlesticks, and picture frames,
all made of crystal and lead crystal glassware,” in Class
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91123735
2
21.1 During the prosecution of the application, applicant
stated that LISA MORI does not identify a living individual.
Waterford Wedgwood PLC opposed the registration of LISA
MORI on the ground of priority of use and likelihood of
confusion and dilution. Opposer alleged ownership of the
following four (4) registrations for the mark LISMORE:
Reg.
No.
Goods Reg. Date Status

0890480 Glassware, namely,
tableware, pitchers,
tumblers, goblets,
bowls, wine glasses,
sherbet glasses, and
liqueur glasses, in
Class 21
May 5,
1970
Affidavits under
Sections 8 & 15
accepted and
acknowledged;
second renewal

2186815 Pens, roller balls,
ball-point pens,
fountain pens and
pencils, in Class 16
September
1, 1998
Affidavits under
Sections 8 & 15
accepted and
acknowledged

1 Application Serial No. 75752866, filed July 16, 1999, based on
applicant’s intent to use the mark in commerce pursuant to
Section 1(b) of the Trademark Act of 1946, 15 U.S.C. §1051(b),
and based on a German application for LISA MORI for “glassware,
namely crystal and lead crystal glassware,” filed on May 27,
1999, pursuant to Section 44(d) of the Trademark Act of 1946, 15
U.S.C. §1126(d). On May 1, 2000, applicant filed a certified
copy of German Registration No. 399 11 361, dated July 1, 1999
that issued from its German application.
Opposition No. 91123735
3

Reg.
No.
Goods Reg. Date Status

2373295 Dinnerware; cut
crystal glassware;
glassware, namely,
stemware, tumblers,
iced tea glasses,
hi-ball glasses,
goblets, champagne
glasses, liqueur
glasses, brandy
glasses, carafes,
ice buckets,
decanters, finger
bowls, bowls,
candlesticks,
tableware, namely,
cake servers, salad
bowls, salad serving
spoons and forks;
vases; perfume
bottles and
atomizers sold
empty, in Class 21
August 1,
2000
Affidavits under
Sections 8 & 15
accepted and
acknowledged

2379612 Jewelry, in Class 14 August 22,
2000
Registered2

Opposer has also alleged that the LISMORE mark is famous and
became famous prior to the filing date or any other date of
first use that applicant could claim. Accordingly, opposer
asserts that applicant’s mark LISA MORI, when used in

22 During its testimony period, opposer filed a notice of reliance
on a certified copy of Registration No. 2379612 showing that the
registration is subsisting and owned by opposer. Subsequently,
between August 22, 2005 and August 22, 2006, opposer was required
to file an affidavit or declaration of use pursuant to Section 8
of the Trademark Act of 1946, 15 U.S.C. §1058. Because opposer
has not filed the required document, the registration will
therefore be cancelled in due course. In view thereof, we will
not give this registration any further consideration in our
likelihood of confusion and dilution analysis.
Opposition No. 91123735
4
connection with crystal and lead crystal glassware, so
resembles opposer’s registered LISMORE marks as to be likely
to cause confusion and is likely to cause dilution of the
distinctive quality of opposer’s LISMORE trademark.
Applicant denied the essential allegations of the
notice of opposition. The case has been fully briefed.

The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
following testimony and evidence:
A. Opposer’s evidence.
1. Opposer’s notice of reliance on the following
items:
a. Certified copies showing that opposer’s
pleaded LISMORE registrations are subsisting
and owned by opposer;
b. Articles from printed publications for the
purpose of showing the asserted fame and
strength of the LISMORE mark; and,
c. Applicant’s answers to opposer’s
interrogatories and requests for admission;
Opposition No. 91123735
5
2. Testimony deposition of Richard C. Babick, the
owner of Design Research, LLC, a market research firm, with
attached exhibits;
3. Testimony deposition of Moira Gavin, Senior Vice
President for Sales for Waterford and Vice President for
Wedgwood USA, with attached exhibits; and,
4. Testimony deposition of Robert Cockrum, District
Manager of Waterford Wedgwood USA, with attached exhibits.
B. Applicant’s evidence.
1. Applicant’s notice of reliance on opposer’s
answers to applicant’s interrogatories and requests for
admission; and,
2. The testimony deposition on written questions of
Gerhard Steinberger, applicant’s General Manager, with
attached exhibits.

Evidentiary Issues
A. Crystal stemware marketing reports in the Richard
Babick deposition.

During his deposition, Richard Babick identified and
discussed three of his company’s marketing research reports
in the field of crystal stemware.3 Applicant objected to
the introduction of the marketing research reports and
testimony related thereto on the ground that because opposer

3 Babick Dep., pp. 9-15; Exhibits 1-3.
Opposition No. 91123735
6
did not provide the underlying documents, the reports were
an improper summary. In its brief, applicant did not renew
this objection. Instead, applicant moved to strike the
marketing research reports and related testimony on the
ground that the reports were not restricted to sales in the
United States.4 While Mr. Babick did not identify the
geographic scope of his company’s marketing research reports
in his direct testimony or upon cross-examination, sections
of the marketing research reports indicate that they are
limited to sales in the United States. For example, the
reports provide data regarding “Rolling Twelve Month
National Market Share Trends,” “National Market Share Trends
– Shares By Product Line,” and “National Share of Inventory
Trends – Quarterly Share Comparisons.” The use of the word
“National” implies that the reports are referencing sales in
the United States. Thus, we conclude that the marketing
research reports are limited to sales of crystal stemware in
the United States.
Moreover, had applicant raised its objection to the
relevancy of the marketing research because they were not
restricted to sales in the United States at the deposition,
opposer might have been able to obviate or remove the
objection by eliciting explanatory testimony. Fed. R. Civ.
P. 32(d)(3)(A) provides the following:

4 Applicant’s Brief, p. 6.
Opposition No. 91123735
7
Objections to the competency of a
witness or to the competency, relevancy,
or materiality of testimony are not
waived by failure to make them before or
during the taking of the deposition,
unless the ground of the objection is
one which might have been obviated or
removed if presented at that time.

See also TMBP §707.03(c)(2nd ed. rev. March 12, 2004) (“When
an objection of this type [i.e., relevancy] could not have
been obviated or removed if presented at the deposition, the
Board will consider it even if the objection is raised for
the first time in or with a party’s brief on the case”). In
this instance, applicant waived its objection to the
relevancy of the marketing research reports by not asserting
it during the deposition.
In view thereof, applicant’s motion to strike the
marketing reports and testimony related thereto is denied.
B. Sales reports in the Moira Gavin deposition.
Moira Gavin, Senior Vice President for Sales of
Waterford and Vice President for Wedgwood USA, is
responsible for the sales of LISMORE products in the United
States.5 During her deposition, Ms. Gavin authenticated a
combined sales report for fiscal years 2003 and 2004 for
Waterford products, including the LISMORE line of products,
and a summary of sales revenues and advertising expenditures
for the years 1991 through 2002 for LISMORE products.6

5 Gavin Dep., pp. 4-5.
6 Gavin Dep., pp. 10-13; Exhibits 1 and 2.
Opposition No. 91123735
8
During the deposition, applicant objected to the summary of
sales revenues and advertising expenditures on the ground
that it was not produced during discovery. Applicant did
not object to the 2003 and 2004 sales report. In its brief,
applicant did not renew its objection on the ground that the
sales summary was not produced during discovery. Rather,
applicant objected to both exhibits on the ground that they
were not restricted to sales and advertising in the United
States. Because Ms. Gavin is responsible for the sales of
LISMORE products in the United States, we conclude that the
sales reports she authenticated relate to the area for which
she is responsible (i.e., the United States). We have no
reason to believe that she produced, or that she even had
access to sales data, outside of her area of responsibility.
Moreover, as discussed above, had applicant raised its
objection during the deposition, opposer might have been
able to obviate or remove the objection. Fed. R. Civ. P.
32(d)(3)(A).
In view thereof, applicant’s objection to Gavin
Exhibits 1 and 2 is overruled.

Facts
“Opposer is a designer, manufacturer and distributor of
crystal, fine bone china, fine porcelain, fine earthenware
products, premium cookware and kitchenware. Opposer also
Opposition No. 91123735
9
licenses its name and trademarks for use in connection with
products such as jewelry, silverware, and table and bed
linen.”7 Opposer’s LISMORE product line includes, inter
alia, stemware, vases, bowls, tableware, platters, china,
lighting, and chandeliers.8 Opposer has continuously used
the LISMORE mark in connection with these products in the
United States since 1952.9
Opposer’s core customers are collectors and newly
engaged couples who register for wedding gifts.10 LISMORE
products are sold through jewelry stores, department stores,
specialty stores, gift shops, and the Internet.11
Opposer has sold over $250 million of LISMORE branded
products between 1991 and 2004, including sales of
$14,444,000 and $11,087,000 for LISMORE stemware in 2003 and
2004, respectively. This comprises in excess of six million
units of LISMORE branded products, including approximately
4.5 million units of stemware products.12 Richard Babick,
the principal of Design Research LLC, a market research
company that tracks stemware sales, testified that “Lismore
has been a perennial best seller, probably a top five
pattern, for as long as I’ve been involved in the industry

7 Opposer’s Response to Applicant’s Interrogatory No. 1.
8 Cockrum Dep., p. 9.
9 Opposer’s Responses to Applicant’s Interrogatory Nos. 4-6.
10 Cockrum Dep., pp. 13 and 56.
11 Cockrum Dep., pp. 18-19; Gavin Dep., p. 16
12 Gavin Dep., pp. 10-13; Exhibits 1 and 2.
Opposition No. 91123735
10
[over 22 years].”13 According to the market reports
compiled by Design Research LLC, LISMORE was the best
selling stemware in the United States in 2000, 2001, 2003,
and 2004, with approximately an 8% market share.14
Between 1991 and 2002, opposer spent in excess of
$3,500,000 advertising and promoting LISMORE products.15
LISMORE products are advertised in newspapers and magazines,
including bridal magazines, House and Garden, Bon Apetit,
New Yorker, and Southern Living.16 Opposer exhibits its
LISMORE products at national and regional gift and home
furnishing trade shows, including bridal shows at major
department stores.17
LISMORE products have also received media attention
extolling the virtues of the products. Representative
samples of media reports include the following articles:
Although Lismore, Waterford’s most
enduring and popular crystal pattern,
was designed before Waterford became a
big brand name, it can arguably be
called the pattern that put the company
on the map . . . Lismore is a pattern
that defines tradition. It is the most
popular crystal pattern at Replacements,
a retailer that specializes in old and
new china, crystal and silver patterns

13 Babick Dep., p. 9. Mr. Babick also testified that when he
started working for Lenox Incorporated in 1982, one of opposer’s
competitors “Lismore was the number one pattern in stemware.”
(Babick Dep., pp. 5 and 7).
14 Babick Dep., pp. 11-15; Exhibits 1-3. The market share was
calculated by adding LISMORE and LISMORE TALL sales.
15 Gavin Dep., p. 13; Exhibit 2.
16 Cockrum Dep., pp. 9-11.
17 Opposer’s Response to Applicant’s Interrogatory No. 24.
Opposition No. 91123735
11
. . . The two names - - Waterford and
Lismore - - are synonymous with quality.

HFN The Weekly Newspaper for the Home
Furnishing Network (May 27, 2002).

To celebrate the 50th anniversary of
Lismore, its most popular stemware
pattern on both sides of the Atlantic,
Waterford has introduced a series of
Lismore centerpiece bowls of Irish
crystal.

Contra Costa Times (July 14, 2001).

Among Richmond families, Lismore by
Waterford is the best-selling crystal
pattern. It’s also been Waterford’s
most popular design for three
generations of brides. “It’s our
hottest bridal registry pattern,” Holder
said. “It’s the traditional look. The
shape is traditional. The cut is
traditional. And there are so many
ranges of sizes and shapes” in Lismore,
named for a town in Waterford County,
Ireland.

“Lismore is the pattern everybody has
had – your grandmother had it, your
mother had it, everybody recognizes it
and it’s a comfort zone,” Moburn said.
With 27 different glasses, it’s also
Waterford’s most expansive pattern.

Richmond Times Dispatch (January 16,
2001).

For example, Waterford’s Lismore,
Cristal d’Arques’ Longchamps and
Waterford’s Marquis’ Vintage take up the
top three positions in both the stemware
and barware rankings.

HFN The Weekly Newspaper for the Home
Furnishing Network (August 26, 2002).
“The majority of the collection is based
upon our Waterford traditional cut
Opposition No. 91123735
12
crystal patterns,” said Leute. “Some
carry names of the most popular
Waterford stemware pattern, an
interesting aspect of the line, such as
Lismore,” the firm’s top-selling
pattern. “It’s important to make the
tie-in with our Waterford name,” Leute
noted.

HFN The Weekly Newspaper for the Home
Furnishing Network (December 30, 1996).

Lismore is Waterford’s number-one
selling crystal pattern.

HFN The Weekly Newspaper for the Home
Furnishing Network (September 25, 1995).

Crystal Clarity: Waterford’s Lismore
cut exerts magical attraction that’s
lasted since 1952.

Few products designed in 1952 have
survived the comings and goings of home
trends, but Waterford Crystal’s Lismore
pattern has sparkled its way around the
world for decades – especially on
holiday tabletops. As its 50th
anniversary approaches, it remains the
renowned company’s most popular design.

* * *

Why the almost universal appeal of this
design? Like fine art that never looks
dated, Lismore has a timeless quality.
It holds its own next to pizza and Pier
1 plates just as it does with smoked
salmon and fine china. (Wedgwood, in
fact, makes a Lismore china pattern as
well).

Chicago Sun Times (December 28, 2001).

Opposition No. 91123735
13
Although applicant has not yet sold any LISA MORI
products in the United States, its MEDEA styled stemware is
virtually identical to the LISMORE style stemware.18

Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).

Priority

Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).

Likelihood Of Confusion

Our determination of likelihood of confusion under
Section 2(d) of the Lanham Act is based on an analysis of
all the facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E. I.

18 Steinberger Dep., Exhibit 2 (Document A075); Gavin Dep.,
Exhibits 5 and 7.
Opposition No. 91123735
14
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). The relevant du Pont factors are discussed
below.
A. Fame
We turn first to the factor of fame, because this
factor plays a dominant role in cases featuring a famous or
strong mark. Kenner Parker Toys Inc. v. Rose Arts
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992). Famous marks are accorded more protection
precisely because they are more likely to be remembered and
associated in the public mind than a weaker mark. Id.
Indeed, “[a] strong mark . . . casts a long shadow which
competitors must avoid.” Id. A famous mark is one “with
extensive public recognition and renown.” Id. See also
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed.
Cir. 2005).
In determining whether a mark is famous, we may
consider sales, advertising expenditures, and the length of
time the mark has been used. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.
Cir. 2002); Blue Man Productions Inc. v. Tarmann, 75 USPQ2d
1811, 1817 (TTAB 2005). This information, however, must be
placed in context (e.g., a comparison of advertising figures
with competitive products, market share, reputation of the
Opposition No. 91123735
15
product, etc.). Bose Corp. v. QSC Audio Products Inc.,
supra.
The evidence supporting the fame of opposer’s LISMORE
trademark includes its use since 1952, the extensive sales
of LISMORE products, its 8% market share making it the
leading pattern of crystal stemware, and the general renown
of the LISMORE crystal stemware pattern as evidenced by the
news and magazine articles. On the other hand,
substantially every reference to the LISMORE products in the
sample advertising introduced by opposer also includes the
WATERFORD house mark (although not necessarily in tandem
with the LISMORE product mark).19 All of the news and
magazine articles also reference the WATERFORD house mark.
In fact, in one article, Jeffrey Leute, “market manager,
general giftware, Waterford,” is quoted as saying the
following:
Some [Waterford traditional cut crystal
patterns] carry names of the most
popular Waterford stemware pattern, an
interesting aspect of the line, such as
Lismore . . . It’s important to make the
tie-in with our Waterford name.20

Thus, the extent of the public recognition and renown of the
LISMORE mark separate and apart from the WATERFORD house
mark is not clear. See Bose Corp. v. QSC Audio Products

19 Gavin Dep., Exhibits 3 and 5-7; Cockrum Dep., Exhibits 1-7.
20 Opposer’s notice of reliance, HFN The Weekly Newspaper for the
Home Furnishing Network (December 30, 1996).
Opposition No. 91123735
16
Inc., 63 USPQ2d at 1308 (“we think those who claim fame for
product marks that are used in tandem with a famous house
mark can properly be put to tests to assure their
entitlement to the benefits of fame for the product marks”).
“In view of the extreme deference that is accorded to a
famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, we think that it is
the duty of a plaintiff asserting that its mark is famous to
clearly prove it.” Blue Man Productions Inc. v. Tarmann,
supra at 1819. Although opposer has shown that its mark has
achieved a high degree of recognition, the evidence is
insufficient to support a finding that the mark is famous.
Thus, although we find that LISMORE is a strong mark,
entitled to broad scope of protection or exclusivity of use,
it is not a famous mark entitled the extensive breadth of
protection accorded a truly famous mark.21

21 Applicant’s argument that the term “Lismore” is geographically
descriptive does not dissuade us from finding that LISMORE is a
strong mark. (Applicant’s Brief, p. 9). First, to the extent
that applicant is making a collateral attack on the validity of
opposer’s pleaded registrations, we will not entertain such a
claim without a counterclaim to cancel opposer’s pleaded
registrations. We note that because three of the pleaded
registrations are more than five years old, applicant is time
barred from seeking to cancel opposer’s pleaded registrations.
Second, the only evidence that the term “Lismore” has geographic
significance is the Cockrum Dep. Exhibit 7 (“Lismore takes its
name from an ancient village that dates back to the early 7th
century”) and two articles in opposer’s notice of reliance: (i)
Heart of Glass in Ireland of the Welcomes magazine (July-August
2002) (“The pattern was called Lismore after the Waterford town,
chosen by Henry II’s son John, then Lord of Ireland, for his
Opposition No. 91123735
17
B. The similarity or dissimilarity and nature of the goods
as described in the application and opposer’s
registrations.

It is well settled that likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and in the pleaded registrations.
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002). The description of
goods in the LISA MORI application is “crystal and lead
crystal glassware, namely, beverage ware, cups, vases, and
bowls, candlesticks, and picture frames, all made of crystal
and lead crystal glassware.” Opposer’s LISMORE marks are
registered for, inter alia, crystal glassware, glassware,
namely, vases, bowls, candlesticks, tumblers and glasses.
In addition, as noted above, applicant’s MEDEA styled
stemware is virtually identical to the LISMORE styled
stemware.22 Thus, at least some of the goods of the parties
are identical.
Despite the identity in part of the goods as
identified, applicant argues that “[t]he cost of the
parties’ goods differentiates them in the market place. The

castle in 1185”); and (ii) Crash Course In Choosing Crystal:
Selecting Patterns, Sets Can Be Daunting, Richmond Times Dispatch
(January 16, 2001) (“And there are so many ranges of sizes and
shapes in Lismore, named for a town in Waterford County,
Ireland”). There is no evidence that Lismore is noted for its
crystal industry or that consumers in the United States are
generally aware that Lismore is a geographic location.
22 Steinberger Dep., Exhibit 2 (Document A075); Gavin Dep.,
Exhibits 5 and 7.
Opposition No. 91123735
18
price of a LISMORE item is approximately $60.00. (Citation
omitted). Whereas the average selling price for Applicant’s
products is $5.45. (Citation omitted).”23 However, we
cannot resort to such extrinsic evidence to restrict the
prices of applicant’s or registrant’s goods. See In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)
(evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or
registration). We must presume that both applicant’s and
registrant’s crystal glassware would be sold at all the
usual prices for such goods, which based on this record, can
range from $5.45 to $60.
C. The similarity or dissimilarity of established, likely-
to-continue trade channels and buyers to whom sales are
made.

Because there is no limitation or restriction in the
description of goods in the application or opposer’s
registrations, the goods are presumed to travel in the same
channels of trade to the same class of purchasers. Id. at
62 USPQ2d at 1005. See also Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Moreover, applicant conceded that the
products listed in both applicant’s and opposer’s

23 Applicant’s Brief, p. 14.
Opposition No. 91123735
19
description of goods may be promoted in the same channels of
trade and to the same class of consumers.24
Nevertheless, as noted above, because opposer’s crystal
and glassware is expensive, applicant argues that consumers
exercise a high degree of care in purchasing these
products.25 However, we are restricted to deciding the
issue of likelihood of confusion based on the goods as
identified in the application and registrations. Absent any
restrictions in the description of goods, applicant’s
products and registrant’s products are identical at least
for some of the products. In re Bercut-Vandervoort & Co.,
supra.
In view of the foregoing, our consideration of the
goods must include expensive and inexpensive products sold
to discriminating and sophisticated purchasers and to
ordinary consumers. Id. Even assuming, arguendo, that
customers for opposer’s products exercise a high degree of
care, applicant does not provide any evidence regarding the
decision process used by these careful and sophisticated
purchasers, the role trademarks play in their decision
making process, or how observant and discriminating they are
in practice. On the other hand, applicant also fails to
present evidence regarding how applicant’s presumably

24 Applicant’s Responses to Opposer’s Requests for Admission Nos.
44 and 45.
25 Applicant’s Brief, pp. 14-16.
Opposition No. 91123735
20
ordinary consumers will react to the LISA MORI mark used in
connection with crystal glassware, especially in light of
the strength of the LISMORE mark. Accordingly, the problem
with applicant’s “degree of consumer care” argument is that
there is no corroborating evidence and it is inconsistent
with the description of goods in the application and
registrations (i.e., not all crystal glassware is expensive
and not all of the potential consumers for crystal glassware
are sophisticated consumers).
In view thereof, the channels of trade and classes of
consumers are factors that favor a finding of likelihood of
confusion.
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. In re E. I. du Pont De Nemours & Co., supra.
Where, as in this case, the marks appear on identical goods,
the degree of similarity between the marks that is necessary
to support a finding of likelihood of confusion declines.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In this case, we find that the marks are similar in
appearance. LISMORE and LISA MORI both begin with the
Opposition No. 91123735
21
letters “L-I-S” and are followed by the letters “M-O-R.”
While there are differences in the appearance of the marks,
we find the similarities in the appearance are greater than
the differences.
We find that there are phonetic differences between the
marks. LISMORE likely would be pronounced as LĬS MŌR or LĬZ
MŌR and LISA MORI likely would be pronounced LĒ SĂ MŌR Ē or
LĒ SĂ MŌ RĒ. On the other hand, there is not necessarily
one, correct pronunciation for a mark or way of gauging how
a mark will sound. In re Lamson Oil Co., 6 USPQ2d 1041,
1042 n.3 (TTAB 1988). Robert Cockrum testified that he has
heard “all sorts of variations,” including “Lizemore,”
“Lizmore,” and “Leezmore.”26 Thus, the marks may be
susceptible to similar pronunciations. While there are some
phonetic similarities, we conclude that the differences in
the sound of the marks slightly outweighs the similarities.
Both LISMORE and LISA MORI are arbitrary terms as
applied to crystal glassware. While LISA MORI would be
perceived as a personal name, it is not clear what meaning
LISMORE would convey other than, perhaps, a surname. In
analyzing the marks, however, we must keep in mind that a
side-by-side comparison is not the test. Rather, it is
whether the marks are sufficiently similar in terms of their

26 Cockrum Dep., p. 15. Richard Babick testified that people
routinely mispronounce the names of new crystal offerings,
especially the French names. (Babick Dep., p. 20).
Opposition No. 91123735
22
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The “focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of the trademarks.” Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848
(TTAB 2004). See also, Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d unpublished,
No. 92-1086 (Fed. Cir. June 5, 1992). Accordingly, given
the market strength and arbitrary nature of opposer’s mark,
the identity of the goods, and the fact that both marks have
the same general appearance, the marks engender a similar
commercial impression.
In view of the foregoing, we find that the marks, while
obviously not identical, are similar, and that the
similarities outweigh their differences. In re Lamson Oil
Co., supra at 1042 n.4 (“the rule is that taking into
account all of the relevant facts of a particular case,
similarity as to one factor (sight, sound or meaning) alone
“may be sufficient to support a holding that marks are
confusingly similar”) (emphasis in the original). See also
In re White Swan Ltd., 8 UPSQ2d 1534, 1535 (TTAB 1988).

Opposition No. 91123735
23
E. Balancing the factors.
In weighing all of the likelihood of confusion factors
present in this case, we find that opposer’s LISMORE mark is
a strong mark, that the goods at issue are identical in
part, that the goods move in the same channels of trade and
are sold to the same consumers, and that the marks are
similar. Accordingly, applicant’s mark, LISA MORI, when
used in connection with “crystal and lead crystal glassware,
namely, beverage ware, cups, vases, and bowls, candlesticks,
and picture frames, all made of crystal and lead crystal
glassware,” so resembles opposer’s mark, LISMORE, used in
connection with crystal glassware, glassware, namely, vases,
bowls, candlesticks, tumblers and glasses, as to be likely
to cause confusion.
While this conclusion is not without doubt, this is a
case where the junior party was well aware of the LISMORE
mark and its prominence in the field of crystal stemware.27
Under such circumstances, applicant is under a duty to
select a mark sufficiently different from that of opposer to
avoid any likelihood of confusion, and having failed to do
so, any doubt must be resolved in favor of the prior user.
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPA 1281, 1285 (Fed. Cir. 1984), quoting,

27 Applicant’s Responses to Opposer’s Requests for Admission Nos.
20-23, 34, 50, 51; Applicant’s Response to Interrogatory No. 15;
Steinberger Dep., p. 11.
Opposition No. 91123735
24
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983); Carlisle Chemical
Works v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 11,
112 (CCPA 1970). See also, Steelcase Inc. v. Steelcare
Inc., 219 USPQ 433, 437 (TTAB 1983).

Dilution
In addition to its Section 2(d) claim, opposer has
asserted a dilution claim. The Lanham Act provides for a
cause of action for the dilution of famous marks. Sections
13 and 43(c) of the Lanham Act, 15 U.S.C. §§1063 and
1125(c).
The Lanham Act provides as follows (emphasis added):28
Subject to the principles of equity, the
owner of a famous mark that is
distinctive, inherently or through
acquired distinctiveness, shall be
entitled to an injunction against
another person who, at any time after
the owner's mark has become famous,
commences use of a mark or trade name in
commerce that is likely to cause
dilution by blurring or dilution by
tarnishment of the famous mark,
regardless of the presence or absence of
actual or likely confusion, of
competition, or of actual economic
injury.

Since we have already determined that opposer’s mark is
not famous for purposes of likelihood of confusion, and

28 Section 43(c) as it pertains to dilution has been amended
effective October 6, 2006.
Opposition No. 91123735
25
because the requirements for proving fame for dilution are
more stringent than the requirements for proving “fame” for
likelihood of confusion, opposer’s dilution claim must fail.
Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001);
NASDAQ Stock Market Inc. v. Antarctica S.r.l., 69 USPQ2d
1718, 1736-1737 (TTAB 1998). Therefore, based on the record
before us, opposer has not demonstrated the fame element
necessary to establish a claim of dilution.
Decision: The opposition is dismissed as to opposer’s
dilution claim.
The opposition is sustained as to opposer’s claim of
priority of use and likelihood of confusion, and therefore
registration to applicant is refused.