Diamonique Corporationv.Diamonair USA, Inc.

Trademark Trial and Appeal Board

Sep 11, 2007

No. 91163668 (T.T.A.B. Sep. 11, 2007)

Hearing: April 18, 2007 Mailed: September 11, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Diamonique Corporation
v.
Diamonair USA, Inc.
_____

Opposition No. 91163668
to application Serial No. 78365990
filed on February 11, 2004
_____

Manny D. Pokotilow of Caesar, Rivese, Bernstein, Cohen &
Pokotilow, Ltd. for Diamonique Corporation.

John D. Cromie of Connell Foley LLP for Diamonair USA, Inc.
______

Before Hohein, Hairston, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Diamonair USA, Inc. filed an intent-to-use application
for the mark DIAMONICE, in standard character form, for
“jewelry with or without precious, semiprecious, simulated
or synthetic stones,” in Class 14, on February 11, 2004
(Serial No. 78365990). Diamonique Corporation opposed the
registration of applicant’s mark on the ground of priority
of use and likelihood of confusion under Section 2(d) of the
Lanham Act, 15 U.S.C. §1052(d). Opposer alleged that
applicant’s mark DIAMONICE for “jewelry with or without
precious, semiprecious, simulated or synthetic stones” so
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91163668
2
resembles opposer’s registered trademarks set forth below as
to be likely to cause confusion:
Registration No. 1,532,950 for the mark DIAMONIQUE, in
typed drawing form, for “jewelry with simulated
gemstones, namely white and colored simulated
gemstones, including simulated diamonds” registered on
April 4, 1989 (Section 8 affidavit accepted and Section
15 affidavit acknowledged); and,

Registration No. 1,538,103 for the mark DIAMONIQUE, in
typed drawing form, for “precious stones, namely,
colored and white simulated diamonds for use in jewelry
other than school class rings, recognition jewelry and
sports award jewelry,” registered on May 9, 1989
(Section 8 affidavit accepted and Section 15 affidavit
acknowledged).

Applicant denied the salient allegations of the notice of
opposition, and pleaded, inter alia, the affirmative defense
of laches and the prior registration (Morehouse) defense.
Both opposer and applicant have filed briefs and an oral
hearing was held. For the reasons set forth below, we
sustain the opposition.

The Record
By operation of the rules, 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. Testimony deposition of Neal Grabow, opposer’s
Executive Vice President, General Counsel, and Secretary,
with attached exhibits;
Opposition No. 91163668
3
2. A notice of reliance on the following items:
a. Certified copies showing that opposer’s
pleaded DIAMONIQUE registrations are
subsisting and owned by opposer;
b. Applicant’s Responses to Opposer’s
Interrogatory Nos. 2-5, 11, 12, 16, and
23(k), (s) and (t); and,
c. Applicant’s Responses to Opposer’s Request
for Admission Nos. 1 and 2.
B. Applicant’s evidence.
1. Testimony deposition of Susan Lanza, applicant’s
Vice President of Operations, with attached exhibits;
2. A notice of reliance on the following items:1
a. A copy of cancelled Registration No.
1,626,466 for the mark DIAMONICE for “jewelry
with our without precious, semiprecious,
simulated or synthetic stones”;
b. A second copy of cancelled Registration No.
1,626,466 from the Trademark Electronic
Search System purportedly to show the status
of the registration;

1 That particular items were filed pursuant to a notice of
reliance does not mean that they have been properly made of
record. In fact, opposer has lodged objections to several of the
listed items. See the discussion infra.
Opposition No. 91163668
4
c. A copy of applicant’s DIAMONICE trademark
application at issue from the Trademark
Electronic Search System;
d. A photograph of DIAMONICE trademark in use;
e. Photocopies of documents showing the
DIAMONICE trademark in use;
f. A copy of Thomson & Thomson Research Report
for trademarks containing the prefix “diam”;
g. A copy of opposer’s Registration No. 2662986
for the mark DIAMONIQUE (stylized) for “home
shopping services in the field of jewelry
through the use of television, telephone and
the Internet” from the Trademark Electronic
Search System;
h. A copy of opposer’s Registration No. 2662984
for the mark DIAMONIQUE for “jewelry” from
the Trademark Electronic Search System; and,
i. Opposer’s Objections and Responses to
Applicant’s First Set of Interrogatories.

Evidentiary and Procedural Issues
A. Opposer’s Registrations
Opposer pleaded ownership of the two DIAMONIQUE
registrations identified in its notice of opposition.
During the testimony of deposition of Neal Grabow, opposer
Opposition No. 91163668
5
also properly introduced into evidence six (6) additional
DIAMONIQUE registrations, listed below, which include the
term DIAMONIQUE:
1. Registration No. 2490674 for the mark DISCOVER
DIAMONIQUE for “home shopping services in the
field of general merchandise by means of cable
television,” in Class 35, registered on September
18, 2001;
2. Registration No. 2662984 for the mark DIAMONIQUE
(stylized) for “jewelry,” in Class 14, registered
on December 17, 2002;
3. Registration No. 2662986 for the mark DIAMONIQUE
(stylized) for “home shopping services in the
field of jewelry through the use of television,
telephone and the Internet,” in Class 35;
registered on December 17, 2002;
4. Registration No. 2827488 for the mark DIAMONIQUE
RINGS ON THE OTHER HAND for “home shopping
services in the field of jewelry through the use
of television, telephone and the Internet,” in
Class 35, registered on March 30, 2004;
5. Registration No. 2873798 for the mark DIAMONIQUE
DAYS for “home shopping services in the field of
jewelry through the use of television, telephone
Opposition No. 91163668
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and the Internet,” in Class 35, registered on
August 17, 2004; and,
6. Registration No. 2910024 for the mark DIAMONIQUE
WEEK for “home shopping services in the field of
jewelry through the use of television, telephone
and the Internet,” in Class 35, registered on
December 14, 2004.
Opposer did not amend its notice of opposition to
include these additional DIAMONIQUE registrations, and
applicant did not object to their introduction into
evidence. In view of this evidence and applicant’s failure
to object, we deem opposer’s above-noted registrations to be
of record and the issue of likelihood of confusion with
respect to those registrations to have been tried by implied
consent of the parties, and the pleadings are amended
accordingly pursuant to Fed. R. Civ. P. 15(b), made
applicable to this proceeding by Trademark Rule 2.107(a), 37
CFR §2.107(a).
B. Opposer’s objection to applicant’s testimony regarding
sales of DIAMONICE jewelry.

Opposer objected to the testimony of Susan Lanza
regarding the extent of applicant’s sales of DIAMONICE
jewelry between 1994 and 2003 on the ground that the
applicant failed to produce that information during
discovery. During discovery, opposer asked applicant to
identify the annual dollar volume of jewelry sold under the
Opposition No. 91163668
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DIAMONICE trademark from the date of first use until the
present. Applicant stated that it was unable to estimate
the annual dollar volume. Applicant’s response to opposer’s
interrogatory reads as follows, so far as is pertinent:
2. Identify each type of goods sold,
offered for sale, advertised and/or
promoted by Applicant in the United
States that bears the mark DIAMONICE and
for each good:

* * *

(c) state the annual dollar volume of
goods sold under the mark DIAMONICE from
the date of first use to the present.

Response:

* * *

Applicant is unable to estimate either
the annual dollar volume of goods sold
under the “Diamonice” brand from 1990 to
present or the annual dollar volume
expended by Applicant in the United
States in advertising or promoting such
goods during this period.2

There is no question that applicant failed to produce
the information sought. Applicant’s counsel prefaced Ms.
Lanza’s testimony by representing that the information had
not been produced in discovery.
Q. Okay. I show you what’s been
marked as A-4 [a table setting
forth the DIAMONICE sales history
to Sears from 1994 through 2003]
this morning.

2 Ms. Lanza signed the interrogatory responses on behalf of
applicant.
Opposition No. 91163668
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I’ll represent to counsel that this
document had not been produced in
discovery previously.3

Ms. Lanza testified that she had calculated applicant’s
DIAMONICE jewelry sales to Sears by reviewing “the old
financial records that I had and I just segregated the sale
for Sears from the corporate sales.”4 In addition, Ms.
Lanza also testified that she estimated that 10% of
applicant’s total sales were for DIAMONICE jewelry.
Q. In connection with your
responsibilities at
Litton/Diamonair and Diamonair,
Inc., do you have the ability to
estimate the aggregate net sales
figures during the period 1994 to
2003 from all sources?

A. Yes.

Q. And what is that estimated
aggregate figure?

A. I would estimate 8 million a year.

Q. And is that based upon your - - is
that based upon your –- records
available to you?

A. Yes.

Q. And is it based upon your best
recollection, based upon your job
responsibilities?

* * *

A. Yes.

3 Lanza Dep., p. 24.
4 Lanza Dep., p. 60. Sears only purchased DIAMONICE jewelry from
applicant. Id.
Opposition No. 91163668
9
Q. What is your estimate of the total
of the aggregate sales volume
including the “Diamonice” product
line for the period 1994 through
2003?

A. I would estimate it to be about 80
million.

* * *

Q. Can you calculate, to the best of
your ability, on a percentage basis
what percent of the “Diamonice”
sales volume for the period 1994 to
2003, what percent of the aggregate
net sales during the same period
that the “Diamonice” product line
accounted for?
A. I would say, approximately, 10
percent.

Q. Okay. Is that estimate based upon
your personal calculation of the
net sales figure for the
“Diamonice” product line on A-4 and
your aggregate estimate of net
sales volume for the same ten-year
period?

A. Yes.5

On cross-examination, Ms. Lanza denied having testified
regarding providing an estimate of applicant’s total
DIAMONICE sales during the ten-year period between 1994 and
2003.
Q. In the response shown on Page 3 in
the second paragraph [interrogatory
No. 2], it says, “Applicant is
unable to estimate either the
annual dollar volume of goods sold
under the ‘Diamonice’ brand from
1990 to present or annual dollar
volume expended by applicant in

5 Lanza Dep., pp. 29-30
Opposition No. 91163668
10
advertising,” and so on. Isn’t
that correct?”

* * *

A. Yes.

I believe at the time the question
was, you know, did you segregate
sales by the name “Diamonice” and
in response to that the answer was
no.

Q. But you testified today you were
able to estimate those sales?

A. I was able to estimate the Sears
sales. There is (sic) more sales
involved with “Diamonice” that I
was not able to estimate.

Q. But you did provide an estimate
today of the total sales, did you
not?

A. The sales for Sears, I did.

Q. Well, no, you actually went beyond
just Sears, did you not?

A. No, those numbers were for Sears.

Q. I think you went beyond what’s
shown in Exhibit A-4.

A. I’m sorry. These numbers here?

Q. That’s correct.

A. These are our sales to Sears.

Q. That’s correct, but you also
provided an estimate of total sales
of “Diamonice,” did you not?

A. No, I did not. I estimated sales
for Sears only.6

6 Lanza Dep., pp. 53-55.
Opposition No. 91163668
11
On redirect examination, Ms. Lanza testified that she
was confused by opposer’s questions regarding applicant’s
total sales of DIAMONICE jewelry.7 However, applicant never
clarified what Ms. Lanza was referring to when she estimated
that ten percent of applicant’s total sales were for
DIAMONICE products. More importantly, applicant never
addressed or clarified why it did not provide the Sears
sales data or Ms. Lanza’s ten percent estimate when it
responded to opposer’s Interrogatory No. 2. In addition,
Ms. Lanza admitted that the information upon which she
relied in compiling applicant’s DIAMONICE sales figures was
available to her since the commencement of the opposition.8
A party may not properly introduce documents or
testimony in its behalf after having refused to make such
information available to an adverse party seeking discovery
of such information. Shoe Factory Supplies Co. v. Thermal
Engineering Co., 207 USPQ 517, 519 n.1 (TTAB 1980). See
also Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718,
1720 (TTAB 1987) (“It is unfair for a party to withhold
documents or refuse to answer interrogatories posed by its
adversary or, as appears to be the case here, fail to make a
complete investigation to locate the information”); Era

7 Lanza Dep., pp. 61-62.
8 Lanza Dep., p. 63. Applicant did not request an opportunity to
review the transcript and make any changes in form or substance
pursuant to Fed. R. Civ. P. 30(e).
Opposition No. 91163668
12
Corp. v. Electronic Realty Associates, Inc., 211 USPQ 734,
737 (TTAB 1981) (“a party . . . is obligated to comply with
an adversary’s discovery request for the production of
documents and cannot . . . introduce as evidence in its
behalf documents embraced within the request but which had
not been furnished to the requesting party”). To hold
otherwise would frustrate the discovery process.
In the case sub judice, applicant had the information
and the ability to respond to opposer’s interrogatory
regarding the sale of DIAMONICE jewelry. Applicant did not
explain why it did not, or could not, substantively respond
to Interrogatory No. 2. Simply put, it appears that
applicant did not fully comply with its discovery
obligations. Accordingly, applicant’s failure to properly
respond to opposer’s interrogatory precludes applicant from
relying at trial on the information it improperly withheld
during discovery.
Nonetheless, despite the fact that information
regarding the sales of DIAMONICE jewelry was available to it
during discovery, applicant argues that Ms. Lanza’ testimony
should not be stricken because opposer was not prejudiced.
Applicant argues that opposer had an opportunity to cross-
examine Ms. Lanza and that it had time to respond to the
evidence. Applicant relies on Sports Authority Michigan Inc
v. PC Authority Inc., 63 USPQ2d 1782, 1789 (TTAB 2002).
Opposition No. 91163668
13
However, applicant’s reliance on Sports Authority Michigan
Inc. is misplaced because in that case the underlying
information had been properly made of record, albeit in a
different format. Moreover, we do not agree that opposer
was not prejudiced. By surprising opposer at trial with
applicant’s sales information, opposer clearly lacked
adequate time to prepare a more effective cross-examination
and did not have an opportunity to conduct any follow-up
discovery regarding those sales figures.
In view of the foregoing, opposer’s objection to Ms.
Lanza’s testimony regarding applicant’s sales of DIAMONICE
jewelry between 1994 and 2003 is granted, and that testimony
will be given no consideration.
C. Opposer’s objections to Exhibit 5 of applicant’s notice
of reliance.9

Exhibit 5 of applicant’s notice of reliance is a
photocopy of advertising and promotional materials
displaying the DIAMONICE trademark. Opposer objected to
Exhibit 5 on the ground that the exhibits are not proper
subject matter for a notice of reliance. See Trademark Rule
2.122, 37 CFR §2.122. However, opposer introduced those
documents into evidence and introduced them as Opposer’s

9 Opposer also made substantive objections to Exhibits 4 and 6 of
applicant’s notice of reliance. However, applicant withdrew its
reliance on those documents.
Opposition No. 91163668
14
Exhibit 37 in the Susan Lanza deposition. Accordingly,
opposer’s objection is moot.
D. Applicant’s prior registration.
Exhibit 1 and Exhibit 2 of applicant’s notice of
reliance are a photocopy of applicant’s prior cancelled
Registration No. 1,626,466 for the mark DIAMONICE (Exhibit
1) and a copy of that same registration from the Trademark
Electronic Search System (Exhibit 2). Applicant submitted
these documents to show that “the DIAMONICE mark was
initially registered on December 4, 1990 and its first use
in commerce was August 10, 1990” and to show “the status of
the original DIAMONICE mark, registered in 1990.”10
A cancelled registration of a party may be made of
record in the same manner as a party’s active registration.
TBMP §704.03(b)(1) (2d ed. rev. March 12, 2004). “A
registration owned by any party to a proceeding may be made
of record in that proceeding by that party by appropriate
identification and introduction during the taking of
testimony or by filing a notice of reliance, which shall be
accompanied by a copy (original or photocopy) of the
registration prepared and issued by the Patent and Trademark
Office showing both the current status and current title to
the registration.” Trademark Rule 2.122(d)(2), 37 CFR
§2.122(d)(1). Plain copies of the registration and the

10 Applicant’s Brief, p. 3.
Opposition No. 91163668
15
electronic equivalent thereof are not sufficient. Hewlett-
Packard Co. v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710,
1713 (Fed. Cir. 1991) (photocopy of registration without
status and title information is insufficient to make the
registration of record). Although this rule is simple and
clear, applicant did not follow it. Accordingly,
applicant’s copies of its prior cancelled registration have
been given no consideration. Evidence not in compliance
with the rules will not be considered. Plantronics Inc. v.
Starcom Inc., 213 USPQ 699, 700 (TTAB 1982).

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).

Opposition No. 91163668
16
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.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). The relevant du Pont factors are discussed
below.
Likelihood of Confusion

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
Opposition No. 91163668
17
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 USPQ2s
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
product, etc.). Bose Corp. v. QSC Audio Products Inc.,
supra.
Opposer is a wholly-owned subsidiary of QVC, Inc.11
QVC sells consumer products through a variety of media,
including televised shopping programs, the Internet, mail
order services, and retail stores.12 QVC television
programming reaches approximately 87 million U.S.
households, or essentially every household that has cable or
satellite television.13 QVC also maintains retail outlets,
including a store at the Mall of America in Minnesota.14
Opposer, through its predecessor in interest MSB
Industries, has been marketing DIAMONIQUE jewelry since
1970.15 QVC purchased MSB Industries in 1987 because
DIAMONIQUE jewelry was QVC’s best selling product accounting
for approximately $18 million in annual sales.16 Opposer,

11 Grabell Dep., p. 7.
12 Grabell Dep., p. 8.
13 Grabell Dep., pp. 8-9.
14 Grabell Dep., pp. 11-12.
15 Opposer’s Response to Applicant’s Interrogatory No. 8.
16 Grabell Dep., pp. 25-27; Exhibit 10.
Opposition No. 91163668
18
through QVC, now sells over $200 million dollars of
DIAMONIQUE jewelry annually.17 It is the most popular
proprietary brand sold at QVC.18
DIAMONIQUE jewelry is sold through all of the QVC
marketing media (i.e., television programming, the website,
mail order services, and retail outlets). It is also sold
through Target department stores.19 With respect to the
televised programming, QVC is a televised shopping service.
It features DIAMONIQUE jewelry in a number of ways: hour
long programs dedicated to DIAMONIQUE products; entire days
dedicated to DIAMONIQUE products; DIAMONIQUE weeks in which
DIAMONIQUE products are featured as special products; and,
through the sale of isolated DIAMONIQUE products along with
other related products. During the on-air presentations,
the DIAMONIQUE mark is used prominently in several places on
the television screen. The host or hostess repeatedly
mentions the trademark as he/she displays jewelry
products.20

17 Grabell Dep., pp. 27 and 66. Precise sales figures were
provided under seal. (Grabell Dep., pp. 74-75; Exhibit 28).
18 Grabell Dep., p. 64.
19 Grabell Dep., pp. 28-29.
20 Grabell Dep., pp. 30-32; Exhibit 12. As part of opposer’s
confidential testimony, Mr. Grabell testified as to the value of
television air time during which products are sold (i.e., the
value of what it would cost to acquire the air time on other
television channels to reach the same number of viewers).
(Grabell Dep., pp. 76-77; Exhibit 29). Since the testimony was
confidential, we cannot discuss the exact figures, but we can say
the value of the air time dedicated to DIAMONIQUE jewelry was
significant.
Opposition No. 91163668
19
Well-known designers and celebrities, such as Judith
Ripka, Nolan Miller, Joan Rivers, Morgan Fairchild, and
Carol Channing have worked with opposer to create and sell
DIAMONIQUE designer jewelry.21
DIAMONIQUE jewelry is advertised on QVC programming, in
TV GUIDE magazine, in QVC program guides that are inserted
in each package of QVC products that are shipped to
customers, and in television spots appearing on other
television networks.22 In 2004, QVC shipped over 100
million packages. DIAMONIQUE advertisements, therefore,
appeared in 100 million program guides shipped with the
packages.23
DIAMONIQUE jewelry has been mentioned in the following
news articles about QVC:24
1. USA Today (July 14, 1998), Money
Section, “Who’s Who Among Dealmakers,
Breakers.”

What home shoppers buy: Jewelry is the
best-selling product line for home
shopping channels. On Diamonique Day
last year, QVC sold 7,304 Marquise fake-
diamond rings in 13 minutes. Total sales
were $1.1 million or $84,615 per minute.
Diamoniques (sic) are QVC’s answer to
Home Shopping Network’s cubic zirconia
(sic).25

21 Grabell Dep., pp. 36-37; Exhibits 19 and 20.
22 Grabell Dep., pp. 43-44.
23 Grabell Dep., p. 45.
24 Grabell, Dep., pp. 56-68; Exhibits 21-27.
25 Grabell Dep. Exhibit 21.
Opposition No. 91163668
20
2. Contra Cost Times (February 19,
1996), Time Out Section, “When It Comes
To High Fashion, Faux Is The Way To Go.”

QVC’s Diamonique line of cubic zirconia
(sic) jewelry has been “a huge money
maker” for the home shopping network,
says spokeswomen Ellen Rubin.26

3. Omaha World Herald (February 26,
1998), Fashion Section, “Faux Sparklers
Sub For Diamonds.”

Unlike previous look-alikes, cubic
zirconia (commonly known by the brand
name Diamonique) has maintained its
position as an affordable alternative.
And its popularity keeps growing.
* * *

It was QVC, in fact, that gave CZ [cubic
zirconium] its first big push into the
jewelry boxes of the American public.27

4. New York Times (September 6, 2002),
Section F, “Journeys; For Sleep-Deprived
Shoppers, A Pilgrimage To QVC.”

As at Disneyland, the final stop was the
gift shop. It was filled with products
that I could identify from my TV memory:
Quacker Factory appliquéd sweaters,
Diamonique tennis bracelets, Nick Chavez
Perfect Plus shampoo, Cook’s Essentials
deep fryers.28

Based on our review of the evidence, we find that the
mark DIAMONIQUE has achieved a degree of recognition as a
mark for jewelry, such that it would be viewed as a strong
and distinctive mark. However, we cannot find on this
record that U.S. consumers have been so exposed to the mark,

26 Grabell Dep. Exhibit 22.
27 Grabell Dep. Exhibit 23.
28 Grabell Dep. Exhibit 26.
Opposition No. 91163668
21
or that they are so aware of it, that it can be considered a
famous mark as contemplated by the case law.
In view of the extreme deference that a famous mark is
accorded, and the dominant role fame plays in the likelihood
of confusion analysis, a plaintiff asserting that its mark
is famous has a duty to clearly prove fame. Blue Man
Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1819 (TTAB
2005). In the case sub judice, opposer’s evidence falls
short of proving that its mark is famous, in part, because
opposer failed to put its sales and advertising figures in
context with those of competitors or provide information
regarding its market share for jewelry products. In
addition, we are not sure whether consumers recognize QVC,
rather than DIAMONIQUE.
In reaching this conclusion, we are mindful of our
decision in Dominique Corporation v. Wieck Family, Ltd.,
(Opposition No. 91123296, unpublished, April 21, 2004)
wherein we found that the mark DOMINQUE is a well-known mark
for jewelry (a finding of fact which is not inconsistent
with our finding in this proceeding). In the prior case,
opposer submitted an expert report based upon a mall
intercept survey to corroborate the degree of consumer
recognition.
Opposition No. 91163668
22
In view of the foregoing, we find that the strength of
opposer’s mark is a factor that favors opposer, but not to
the extent that it would if the mark were truly famous.
B. The similarity or dissimilarity and nature of the
goods.29

Opposer registered the mark DIAMONIQUE for the
following goods:
“Jewelry with simulated gemstones, namely white and
colored simulated gemstones, including simulated
diamonds” (Registration No. 1,532,950);

“Precious stones, namely, colored and white simulated
diamonds for use in jewelry other than school class
rings, recognition jewelry and sports award jewelry”
(Registration No. 1,538,103); and,

“Jewelry” (Registration No. 2662984).

Applicant is seeking to register DIAMONICE for the
following goods:
“Jewelry with or without precious, semiprecious,
simulated or synthetic stones.”

The goods are virtually identical, and applicant does
not argue otherwise. Accordingly, this du Pont factor
favors finding that there is a likelihood of confusion.
C. The similarity or dissimilarity of established, likely-
to-continue trade channels and buyers to whom sales are
made.

It is well settled that likelihood of confusion is
determined on the basis of the goods as they are identified

29 Because we have essentially identical goods in the three (3)
DIAMONIQUE registrations listed below, we do not need to consider
the registrations for opposer’s services in connection with the
similarity or dissimilarity and nature of the goods and services.
Opposition No. 91163668
23
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). Because there is no
limitation or restriction in the description of goods in the
application and 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).
Applicant’s arguments regarding the actual channels of
trade for its jewelry products cannot limit the broad
description of goods in the application. In view thereof,
the channels of trade and classes of consumers are factors
that favor a finding of likelihood of confusion.
D. The number and nature of similar marks in use on
similar goods.

Applicant introduced four (4) active third-party
registrations and two (2) cancelled third-party
registrations with marks featuring a “diamon” or “diamond”
prefix for jewelry30 to show that the “diamon” and “diamond”

30 Lanza Dep., Exhibit A-5. Applicant also introduced one of
opposer’s pleaded registrations (Registration No. 1532950), one
cancelled registration owned by opposer’s predecessor MSB
Industries, Inc. (Registration No. 1463424), and one registration
owned by applicant’s predecessor Litton Systems, Inc.
(Registration No. 1787467). (Lanza Dep., pp. 8 and 12). In
addition, applicant introduced six pending applications and
fifteen (15) abandoned applications filed by third parties, and
one (1) pending application filed by applicant and two (2)
pending applications filed by opposer. Finally, there was one
(1) pending third-party application for airline transportation
Opposition No. 91163668
24
prefix are descriptive and, therefore, weak when used in
connection with jewelry.31 In addition, Ms. Lanza testified
that applicant has been using the marks DIAMONAIR, DIAMONEE,
and DIAMONICE in connection with jewelry,32 and that
applicant has competitors called Diamond Essence, Diamonte,
and Diamonelle.33 Accordingly, applicant argues that “[t]he
presence of similar marks in use on similar goods
significantly undermines Opponent’s (sic) argument that the
DIAMONICE mark is likely to cause confusion as to source
with the DIAMONIQUE mark.”
Even if we were to accept applicant’s position that the
six third-party registrations with marks featuring “diamon"
or “diamond” prefixes are evidence that such prefixes are
descriptive, opposer’s evidence regarding the marketing of
its DIAMONIQUE jewelry has established that the mark
DIAMONIQUE is a strong and distinctive mark.
Applicant’s evidence of its use of the marks DIAMONAIR
and DIAMONEE and its competitors’ use of Diamond Essence,
Diamonte, and Diamonelle falls short of persuading us that
the use of those marks and/or trade names is so pervasive as
to affect the strength of opposer’s mark. Simply put, there
is no evidence regarding the extent of either the sales or

services. Applications are evidence only of the fact that the
applications had been filed.
31 Applicant’s Brief, pp. 11-12.
32 Lanza Dep., pp. 31-32.
33 Lanza Dep., p. 32.
Opposition No. 91163668
25
advertising of the third-party marks in connection with
jewelry and, thus, there is no evidence as to their market
strength.
In view of the foregoing, this du Pont factor favors a
finding of likelihood of confusion.
E. 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).
The marks each consist of a single, three-syllable word
of similar length (DIAMONIQUE is ten letters and DIAMONICE
is nine letters) in which the first two syllables are
identical. The third syllable in both marks starts with the
letter “i” and ends with the letter “e.” The only
difference are the letters “qu” in DIAMONIQUE and the letter
“c” in DIAMONICE. Accordingly, the marks are similar in
appearance.
Opposition No. 91163668
26
As to sound, both marks begin with the same prefix
“diamon" but the final syllables are different: “ique” (ēk)
versus “ice” (īs). In view of the identity of the “diamon"
prefix, however, the marks are somewhat similar in sound.
Both marks are coined words without readily understood
meanings. Neither party submitted any evidence as to the
meanings of their marks. The “ique” suffix and the “ice”
suffix do not create a meaning for the marks that one could
easily derive or verbalize. On the other hand, with respect
to the commercial impression engendered by the marks, the
“diamon" prefix for marks used in connection with jewelry
suggests diamond. The “ique” suffix in opposer’s DIAMONIQUE
mark calls to mind the word “unique.” The relevant meaning
of “unique” is “being without like or equal: single in kind
or excellence.”34 Thus, the commercial impression
engendered by the mark DIAMONIQUE is that of a unique
diamond.
The “ice” suffix in applicant’s mark DIAMONICE when
used in connection with jewelry is a slang term meaning
“diamonds.”35 Thus, the commercial impression engendered by
applicant’s mark DIAMONICE is diamonds. We find, therefore,

34 Webster’s Third New International Dictionary of the English
Language Unabridged, p. 2500 (1993). The Board may take judicial
notice of dictionary definitions. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed Cir. 1983).
35 Webster’s Third New International Dictionary of the English
Language Unabridged, p. 1119 (1993).
Opposition No. 91163668
27
that the commercial impressions engendered by the marks is
also somewhat similar.
Ultimately, we must consider the marks in their
entireties, keeping in mind that a side-by-side comparison
is not the test. 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). Considering the marks in this context, we
conclude that they are more similar than dissimilar. In
view thereof, this du Pont factor weighs in favor of a
finding that there is a likelihood of confusion.
F. Actual confusion.
Susan Lanza testified that applicant, and its
predecessor in interest, have used the mark DIAMONICE in
connection with cubic zirconium jewelry continuously since
1990 in direct marketing applications and in Sears and other
department stores.36 In addition, applicant has an Internet
site through which it is selling DIAMONICE jewelry.37
During her twenty years working for applicant and its
predecessor, Ms. Lanza testified that she is unaware of any
reported instances of confusion resulting from the
simultaneous use of the marks DIAMONIQUE and DIAMONICE.38

36 Lanza Dep., pp. 13-16.
37 Lanza Dep., p. 31.
38 Lanza Dep., pp. 37-39.
Opposition No. 91163668
28
Likewise, opposer is unaware of any reported instances of
confusion resulting from the concurrent use of the parties’
marks.39 Applicant contends that “[g]iven the length of the
presence of both marks on the market, and the substantial
period of concurrent use, there has been ample time for
Opposer to be able to show actual confusion, if it were to
exist.”40
The absence of reported instances of actual confusion
is relevant when the record indicates appreciable and
continuous use of applicant’s mark for a significant period
of time in the same markets as those served by opposer.
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). See also Jockey International Inc. v. Mallory
& Church Corp., 25 USPQ2d 1233, 1237 (TTAB 1992). In other
words, there must have been an opportunity for confusion to
have occurred. While there is some overlap in the channels
of trade because both parties sell their products through
department stores, there is no evidence regarding the extent
of applicant’s sales or advertising from which we can draw
any inferences from the lack of any reported instances of
actual confusion. Accordingly, the lack of any reported
instances of actual confusion is a neutral factor.

39 Opposer’s Response to Applicant’s Interrogatory No. 16.
40 Applicant’s Brief, p. 13.
Opposition No. 91163668
29
G. Balancing the factors.
Upon considering and balancing all of the relevant du
Pont factors (e.g., the similarity of the marks, the
strength of opposer’s mark, the identity of the goods,
channels of trade, and classes of consumers), we find that
there is a likelihood of confusion between the marks at
issue.

Affirmative Defenses
A. Prior registration defense.
Applicant contends that the because it is the owner of
a registration for the mark DIAMONAIR (script style) for
jewelry,41 opposer cannot be damaged by the registration of
DIAMONICE for jewelry, citing Morehouse Mfg. Corp. v. J.
Strickland & Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969).
The prior registration or Morehouse defense provides that an
opposer cannot be damaged by the registration of a mark for
particular goods or services if the applicant owns an
existing registration for the same or substantially
identical mark for the same or substantially identical
goods. Morehouse Mfg. Corp. v. J. Strickland & Co., supra
at 160 USPQ at 717. The court explained the principle of
the defense as follows (emphasis added):

41 Registration No. 2930801, issued March 8, 2005. Pursuant to
the Board’s Order dated March 16, 2006, applicant’s testimony
period closed on June 18, 2006.
Opposition No. 91163668
30
[A]s a matter of law, the opposer cannot
be damaged, within the meaning of
section 13 of the statute, by the
issuance to the applicant of a second
registration where applicant already has
an existing registration of the same
mark for the same goods. Implicit in
this are the corollaries that if opposer
cannot procure the cancellation of the
existing registration it cannot prevent
the granting of the second registration;
that there is no added damage from the
second registration of the same mark if
the goods named in it are in fact the
same; and if there is not added damage,
there is no ground for sustaining the
opposition.

160 USPQ at 717.
The prior registration defense fails because applicant
did not introduce the DIAMONAIR registration and because
DIAMONAIR is not the same, or substantially the same, mark
as DIAMONICE. In our discussion on page 14, we explained
how a party may introduce a registration it owns into
evidence. During the testimony deposition of Susan Lanza on
June 8, 2006, applicant introduced a number of applications,
including applicant’s DIAMONAIR application.42 Applicant
did not even introduce a hard copy of the DIAMONAIR
registration, let alone a copy showing current status and
title.
Aside therefrom, the mark DIAMONAIR and DIAMONICE are
neither the same, nor substantially the same marks. Thus,

42 Lanza Dep., Exhibit A-5.
Opposition No. 91163668
31
the DIAMONAIR registration carries no presumption that
further damage cannot flow from its registration.
B. Classic laches.
A prima facie defense of laches requires a showing of
(1) unreasonable delay in asserting one’s rights against
another, and (2) material prejudice to the latter as a
result of the delay. Aquion Partners L.P. v. Envirogard
Products ltd., 43 UPSQ2d 1371, 1373 (TTAB 1997). The
unreasonable delay by opposer in asserting rights may be
based on opposer’s failure to object to an applicant’s
earlier registration of substantially the same mark for
substantially the same goods. Id.
[W]e do not see any inequity in allowing
applicant to assert, and attempt to
prove, the defense of laches. The mark
applicant now seeks to register was,
according to applicant’s pleading and
summary judgment evidence, the subject
of a prior registration which existed
from 1971 until 1991, when it expired
due to applicant’s inadvertent failure
to renew it. The important point is
that the mark applicant now seeks to
register was published for opposition in
1971 and thereafter was registered for
20 years without objections from
opposer.

Id. See also National Cable Television Association, Inc. v.
American Cinema Editors, Inc., 937 F.2d 1572, 19 UPSQ2d
1424, 1432 (Fed. Cir. 1991) (laches runs from the time
action could be taken against the trademark rights of
another). Because applicant failed to properly introduce
Opposition No. 91163668
32
its prior cancelled registration, there is no prior
registration from which applicant may prove opposer’s
unreasonable delay in asserting its rights,43 and therefore
the laches defense must fail.
Even assuming that applicant had properly introduced
its prior cancelled registration and had proven that
opposer’s delay in asserting its rights was unreasonable,
the laches defense would still fail because applicant failed
to show that it has been prejudiced by opposer’s delay.
Prejudice may be as simple as the development of goodwill
built around a mark during petitioner’s delay.
Prejudice is generally shown by the fact
that in reliance on petitioner’s
silence, respondent built up a valuable
business and goodwill around the mark
during the time petitioner never
objected. [Citation omitted].

Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1307
(TTAB 2004). See also Johanna Farms, Inc. v. Citrus Bowl,
Inc., 199 USPQ 16, 28 (E.D.N.Y. 1978) (equity aids the
innocent user from a claimant who unreasonably delayed in
asserting its rights while the innocent user exploited and
strengthened its mark). In the case sub judice, applicant’s
evidence regarding its use of the mark DIAMONICE has been
stricken because of applicant’s failure to provide that
information during discovery. Accordingly, there is no
evidence regarding the extent of applicant’s use to support

43 See the discussion on pages 13-14.
Opposition No. 91163668
33
its claim that it has been prejudiced by opposer’s purported
unreasonable delay in asserting its rights. With respect to
its laches claim, applicant has the burden of proof. Aquion
Partners L.P. v. Envirogard Products Ltd., supra. Without
evidence regarding the extent of its use of the mark
DIAMONICE, applicant has failed to prove that it relied on
opposer’s delay to its detriment. Aquion Partners L.P. v.
Envirogard Products Ltd., supra at 1374 (declaration of
president furnishing declining sales figures fails to create
a genuine issue of material fact regarding whether applicant
has been materially prejudiced by opposer’s delay).
In view of the foregoing, the equitable defense of
laches does not apply in this case.

C. Inevitability of confusion.
Although we have determined that laches does not apply
in this case, we shall turn our attention, for the sake of
completeness, to the matter of whether confusion between the
parties’ marks is inevitable. If confusion is inevitable,
then the defense of laches is not applicable under any
circumstances. Ultra-White Co., Inc. v. Johns Chemical
Industries, Inc., 465 F.2d 891, 175 UPSQ 166 (CCPA 1972);
Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131
(TTAB 1990) (“It is not necessary to discuss this theory
because it is well established that equitable defenses such
Opposition No. 91163668
34
as laches and estoppel will not be considered and applied
where, as here, the marks of the parties are identical and
the goods are the same or essentially the same”). This is
so because any injury to applicant caused by opposer’s delay
is outweighed by the public’s interest in preventing
confusion. Turner v. Hops Grill & Bar, Inc., 52 USPQ2d
1310, 1313 (TTAB 1999), citing Coach House Restaurant Inc.
v. Coach and Six Restaurants, Inc., 934 F.2d 1551, 19 USPQ2d
1401, 1409 (11th Cir. 1991).
Although there is a likelihood of confusion between
opposer’s DIAMONIQUE mark for jewelry and applicant’s
DIAMONICE mark for jewelry, we find that the evidence of
record does not establish that confusion is inevitable.
While we have found the marks to be sufficiently similar to
be likely to cause confusion, they are not identical. Thus,
we do not view confusion between the parties’ marks to be
inevitable.
Decision: Applicant’s laches defense is denied. The
opposition is sustained and registration to applicant is
refused.