Glaze, Inc.

Trademark Trial and Appeal Board

Aug 17, 2004

No. 76440933 (T.T.A.B. Aug. 17, 2004)

Mailed: August 17, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Glaze, Inc.
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Serial No. 76440933
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Myron Amer of Myron Amer, P.C. for Glaze, Inc.
Gene V.J. Maciol II, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Simms, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:

Glaze, Inc. (“applicant”), a New Jersey corporation,
has appealed from the final refusal of the Trademark
Examining Attorney to register the mark VALENCIA for
wristwatches.1 The Examining Attorney has refused
registration under Section 2(d) of the Act, 15 USC
§1052(d), on the basis of two registrations held by
different entities: Registration No. 1,308,894, issued

1 Serial No. 76440933, filed August 8, 2002, based upon
allegations of use since July 18, 2002.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76440933
2
December 11, 1984, Section 8 affidavit accepted, for the
mark VALENCIA for “pearl necklaces and other jewelry,”
issued to The Napier Co.; and Registration No. 2,456,359,
issued May 29, 2001, to Midwest Diamond Distributors Inc.,
for the mark VALENZIA COLLECTION for “diamond and gold
jewelry, namely, tennis bracelets, earrings, necklaces
ring, charm slides and pendants.”2
Applicant and the Examining Attorney have submitted
briefs but no oral hearing was requested.
Briefly, the Examining Attorney argues that
applicant’s mark and the mark in the ’894 registration are
identical, while applicant’s mark and the mark in the ’359
registration are similar in sound, appearance and
commercial impression because the word “VALENZIA” is the
dominant portion of the VALENZIA COLLECTION mark, inasmuch
as the word “COLLECTION” is generic or descriptive and has
been disclaimed. The Examining Attorney, pointing to
evidence of record from the Nexis database, the Internet,
magazine advertisements and third-party registrations,
argues that applicant’s wristwatches and the registrants’
pearl necklaces and other jewelry as well as diamond and
gold jewelry such as tennis bracelets, earrings and

2 While it is not clear, it appears that the term “necklaces ring”
in this registration should read “necklaces, rings.”
Serial No. 76440933
3
pendants are all closely related goods which may be sold
side-by-side in jewelry stores.
Applicant, on the other hand, maintains that the mark
VALENCIA is “in common use in the trade for various
categories of merchandise.” Brief, p. 2. In this regard,
applicant points to a number of registrations which the
Examining Attorney had previously cited against applicant,
for such goods as clothing, cigars, hollowware and flatware
made of precious metal, and candy.3 Applicant also argues
that the fact that different entities own the two cited
registrations demonstrates that the buying public will not
perceive that applicant’s wristwatches originate from the
source as these jewelry products. Applicant’s attorney
does admit, however, Response, p. 2, filed September 29,
2003, that there is evidence which shows that wristwatches
and jewelry may be sold by the same retailer
establishments. However, applicant maintains that the
evidence of record showing that the same source may produce
both wristwatches and jewelry is limited.

3 The Examining Attorney originally refused registration on the
basis of these other registrations because, as the Examining
Attorney later explained in his brief, applicant’s original
description of goods broadly stated “wristwatches and other gift
items.” When applicant subsequently amended its identification
of goods to simply “wristwatches,” the Examining Attorney
withdrew the refusal on the basis of these registrations.
Serial No. 76440933
4
Our determination of likelihood of confusion under
Section 2(d) of the Act is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Two key considerations are the marks and the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The means of
distribution and sale, although certainly relevant, are
areas of peripheral inquiry. The fundamental inquiry
mandated by [Section] 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Upon careful consideration of this record and the
arguments of the attorneys, we believe that the use and
registration of applicant’s mark VALENCIA for wristwatches
is likely to cause confusion with both registered marks
VALENCIA and VALENZIA COLLECTION for the respective jewelry
items.
First, with respect to the marks, one of the
registered marks is identical to applicant’s mark. The
other registered mark--VALENZIA COLLECTION--is
Serial No. 76440933
5
substantially similar in sound, appearance and commercial
impression, especially when one gives less weight to the
descriptive and disclaimed word “COLLECTION” in that
registered mark. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985)(“On the other
hand, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.”)
With respect to the goods in the application and the two
cited registrations, as the Examining Attorney has argued,
it is not necessary that the goods of the parties be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion (although, in this case, there is evidence that
the goods do travel in the same channels of trade and are
sold in some of the same retail stores). It is sufficient
that the respective goods are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
Serial No. 76440933
6
the mistaken belief that they originate from the same
producer. In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978). Moreover, the greater the
degree of similarity between the applicant’s mark and the
cited registered marks, the lesser the degree of similarity
between the applicant’s goods and the registrant’s (or
registrants’) goods that is required to support a finding
of likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001).
Here, Nexis and other evidence show that the same
company has made both watches and various jewelry items.
Those companies include Omega, Clio Blue, Piaget and Mont
Blanc. Other evidence shows that jewelry stores sell both
watches and jewelry, that various facilities repair both
wristwatches and jewelry, that wristwatches and jewelry are
offered for sale at the same Web sites on the Internet, and
that magazine advertisements of retailers promote both
wristwatches and jewelry, often on the same page. There is
also evidence that there is a watch and jewelry trade show.
Finally, numerous third-party registrations show that
various entities make or sell wristwatches and various
items of jewelry under the same marks. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
Serial No. 76440933
7
serve to suggest that the listed goods are of a type which
may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993). This evidence
adequately demonstrates that applicant’s VALENCIA
wristwatches and registrant’s VALENCIA pearl necklaces and
other jewelry are so commercially related that the average
purchaser, aware of the registered mark for pearl necklaces
and other jewelry who then encounters applicant’s VALENCIA
wristwatches is likely to believe that these goods come
from the same source or are sponsored or licensed by the
same entity. Likewise, we find that applicant’s mark for
wristwatches so resembles the registered mark VALENZIA
COLLECTION for various items of diamond and gold jewelry
that confusion is likely with respect to this registered
mark as well. If we had any doubt about these conclusions,
in accordance with precedent that doubt must be resolved in
favor of the registrants. See, e.g., In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988)
Decision: The refusal of registration on the basis of
both of the cited registrations is affirmed.