Nikki Starkv.Jewelry Design & Repair, Inc.

Trademark Trial and Appeal Board

Jul 22, 2005

No. 91155798 (T.T.A.B. Jul. 22, 2005)

Oral Hearing: March 30, 2005 Mailed: July 22, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nikki Stark
v.
Jewelry Design & Repair, Inc.
_____

Opposition No. 91155798
_____

Seth Natter of Natter & Natter for Nikki Stark.

Erik M. Pelton, Esq. for Jewelry Design & Repair, Inc.
______

Before Seeherman, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Jewelry Design & Repair, Inc., (applicant) has filed an
application to register the mark shown below on the Principal
Register for "retail store services and online retail store
services featuring jewelry and related products; auctioneering
services and online auction services featuring jewelry and
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91155798
2
related products."1

Nikki Stark (opposer) filed an opposition to registration of
the above mark.2 In the notice of opposition, opposer alleges
that since at least as early as January 1998 opposer has used the
mark JEWELBIZ in the form shown below for retail sales of jewelry
and related products, online retail store services featuring
jewelry and related products, and auction sales featuring jewelry
and related products.

Opposer alleges that applicant's mark so resembles opposer's
previously used mark shown above that, when used in connection
with applicant's services, applicant's mark will be likely to
cause confusion, mistake or deception.
Applicant, in its answer, denies the salient allegations in
the opposition. In addition, applicant affirmatively asserts
that the word "JEWELBIZ" in opposer's mark is generic and/or

1 Application Serial No. 76383548 filed on March 19, 2002, based on an
allegation of a bona fide intention to use the mark in commerce.

2 Applicant incorrectly argues in its brief on the case that the
opposition which was due by a granted extension of time on March 10,
2003 was untimely filed on March 11, 2003. The opposition was filed by
a certificate of mailing dated March 6, 2003 and thus was timely.
Opposition No. 91155798
3
descriptive, and as such is entitled to a narrower scope of
protection.
The record includes the pleadings, the file of the
involved application, and opposer's evidence consisting of the
testimony depositions (with exhibits) of Nikki Stark, opposer,
and Susan Rose, one of opposer's customers; and, by stipulation
of the parties, the declarations (with exhibits) of Nikki Stark,
Leslie Segal, a principal of Addison Design Company, and John
Langone, a website designer. Applicant did not take testimony or
introduce any other evidence.
Both parties filed briefs and an oral hearing was held on
March 30, 2005.
Opposer has clearly established use of her pleaded JEWELBIZ
(and design) mark in connection with online retail store services
featuring jewelry and auction sales of jewelry prior to the March
19, 2002 constructive use date of applicant's intent-to-use
application. Applicant has not argued otherwise, and moreover
specifically stated at the oral hearing that applicant does not
dispute opposer's priority. Although applicant asserted in its
answer that opposer's mark is descriptive or generic, it did not
submit any evidence to support that contention. We find that
opposer's mark is suggestive, not descriptive or generic, and
therefore that opposer established trademark rights in the mark
as of the time she began using it.
Opposition No. 91155798
4
Thus, we turn to the question of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis of
all of the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue, including
the similarities of the marks and the similarities of the
services. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
With respect to the services, as noted above, opposer uses
her mark in connection with online retail store services
featuring jewelry and auction sales featuring jewelry. These
services are identical, or legally identical, to applicant's
services which include retail store services and online retail
store services featuring jewelry, and online auction services
featuring jewelry. Moreover, the purchasers and channels of
trade for these services are identical or overlapping. Both
parties offer, or will offer, their retail sales and auction
services over the Internet to the general public.
Thus, we turn to the marks, keeping in mind that when marks
would appear on identical services, as they do here, the degree
of similarity between the marks necessary to support a finding of
likely confusion declines. Century 21 Real Estate v. Century
Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In support of its position that the marks are not similar,
applicant argues that the marks are different in sound, noting
Opposition No. 91155798
5
that applicant's mark ends with a "D" and opposer's mark ends
with a "Z"; that the marks have different meanings and overall
commercial impressions, in that applicant's mark "is of bidding
on jewelry to purchase it at auction, and opposer's mark of a
generic jewelry business" (Brief, p. 5); and that the marks are
different in appearance. In this regard, applicant states:
Opposer's mark is presented in a solid black italicized
font. The letters in Opposer's mark are more rounded
and fanciful than the letters in Applicant's mark. The
"I" in Opposer's mark is dotted with a large gemstone.
Opposer's mark ends [in] the letter "Z" which is
presented with a curved bottom giving it is [sic] very
distinctive appearance.

Applicant's mark is presented in a vertical font with a
shadow effect on the letters. The first letter in
applicant's mark, "J", drops down below the rest of the
mark. The "I" in Applicant's mark is dotted with a
small crown.

It is well settled that marks must be compared in their
entireties, not dissected into component parts and the minute
details of each part compared with other parts. Genesco Inc. v.
Martz, 66 USPQ2d 1260 (TTAB 2003). When marks are closely
examined on a side-by-side basis, differences in the marks, no
matter how insignificant, are easy to discern. However, a side-
by-side comparison is not the test. In the normal marketing
environment, purchasers would not usually have an opportunity to
examine marks in minute detail. Furthermore, the average
purchaser is not infallible in his recollection of trademarks and
Opposition No. 91155798
6
often retains only a general overall impression of marks that he
may previously have seen in the marketplace. In re Mucky Duck
Mustard Co., 6 USPQ2d 1467 (TTAB 1988). Thus, it is the overall
impression of the marks derived from viewing the marks in their
entireties that is controlling. See Dan Robbins & Associates,
Inc. v. Questor Corporation, 599 F.2d 1009, 202 USPQ 100 (CCPA
1979). See also E.I. Du Pont de Nemours & Co. v. Yoshida Int'l,
Inc., 393 F.Supp. 502, 185 USPQ 597, 603 (EDNY 1975) (overly
analytical approach with close attention to specific differences
is less important than the overall impression of general
similarity.)
When opposer's mark JEWELBIZ (and design) and applicant's
mark JEWELBID (and design) are considered in their entireties and
as they would be encountered in the marketplace, we find that
the overall similarities in the marks far outweigh the
differences.
The terms JEWELBID and JEWELBIZ are similar in sound. In
fact, the sound is identical up to the last letter of the last
syllable in these three-syllable marks. Moreover, the letters
"D" and "Z" sound similar when the marks are spoken, and if they
are not clearly and distinctly pronounced, the difference may not
be noticed at all.
It has been held that similarity in sound alone may be
sufficient to support a finding of likelihood of confusion. See
Opposition No. 91155798
7
Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526
(CCPA 1968). Nevertheless, these marks are also similar in
appearance. The marks are constructed the same way. JEWEL is
the first word in each mark. That word is combined with "BIZ" or
a visually similar term "BID" to form a single term. The design
formats are also similar. Both marks have modestly stylized
lettering with the first letter "J" appearing in upper case form
and the remaining letters in lower case form. Neither mark is so
dramatically stylized that it stands out from the other in any
memorable way. The most noticeable difference is the design
component. In applicant's mark that design is a relatively small
size crown and in opposer's mark a relatively large size
gemstone. But when these designs are viewed in the context of
the marks as a whole, the differences become less significant.
The designs appear in the same place in each mark, above the
second word "BIZ" in opposer's mark and the second word "BID" in
applicant's mark, and they are both used in place of a dot over
the "I" in those words. It is this overall visual image that is
likely to be remembered by purchasers when seeing the marks at
different times in connection with identical services, not the
specific differences in the designs.
As to meaning, the words "bid" and "biz" have related
connotations, particularly in relation to the parties' auction
services. The word "biz" is defined as a slang or shortened term
Opposition No. 91155798
8
for "business" which in turn is broadly defined as "commercial
activity involving the exchange of money for goods or services."3
The term "bid" refers to a specific type of commercial activity,
that is, the "offer of a particular amount of money for something
at an auction."4 Thus, JEWELBIZ and JEWELBID would be perceived
as conceptually similar terms in relation to these identical
services and the crown and gemstone designs, both suggestive of
"jewels," would reinforce that concept.
The marks convey similar overall commercial impressions, and
if the specific differences in applicant's mark are noted or
remembered at all, they are likely to suggest a different version
of opposer's mark rather than a different source for the
services.
Opposer has not demonstrated that her mark JEWELBIZ (and
design) is strong or well known. Opposer argues that the mark
has been in use for at least five years. However, evidence of
use alone, particularly use for the relatively short period of
five years, is insufficient to show public recognition of the
mark.
On the other hand, applicant has not submitted any evidence
of third-party uses of similar marks, or any other evidence to

3 We take judicial notice of the definitions of "biz" and "business"
appearing in the Microsoft Encarta College Dictionary (2001) at pages
143 and 190.

4 Id. at page 135.
Opposition No. 91155798
9
show that the mark is weak in the relevant market or entitled to
only a narrow scope of protection.5
We recognize that opposer's mark JEWELBIZ (and design) is
suggestive of opposer's services, and therefore not entitled to
the broadest scope of protection. However, the mark is at least
entitled to protection from registration of applicant's very
similar mark for identical services. See, e.g., King Candy Co.
v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974) (likelihood of confusion is to be avoided as much
between weak marks as between strong marks).
Applicant argues that because jewelry is expensive,
purchasers of these goods are likely to be sophisticated and
exercise a great degree of care in their purchasing decisions.
We note Ms. Stark's testimony that most, if not all, of the

5 Applicant submitted for the first time with its brief copies of a
number of third-party registrations for marks that include "biz" and
"bid." Applicant argues that this evidence "demonstrate[s] that marks
which contain a common element and are for similar goods and services
can co-exist on the trademark register if one mark contains -BID and
the other contains -BIZ." (Brief, p. 6.) Opposer has properly
objected to this evidence as untimely and we sustain the objection.
Furthermore, even if these registrations were of record they would not
be probative on the question of whether the marks herein are likely to
cause confusion. Third-party registrations are not evidence of the use
of the marks therein, or that the marks co-exist without confusion in
the marketplace. See Conde Nast Publications Inc. v. Miss Quality
Inc., 507 F.2d 1404, 184 USPQ 422 (CCPA 1975); and AMF Inc. v. American
Leisure Products Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973). We
also note that none of the marks in these third-party registrations is
similar to the marks herein, and some are not even constructed the same
way. Moreover, for the most part, the "pairs" of "biz" and "bid" marks
in these registrations are not even for goods and services that are
similar to each other, let alone the same.

Opposition No. 91155798
10
jewelry items she sells cost more than $100, and that about half
of the items sell for more than $500.
There are two problems with applicant's argument. One is
that its identification is not restricted to sales of expensive
jewelry. "Jewelry" includes costume items which may be priced
very inexpensively, and therefore might well be purchased on
impulse. Second, applicant seeks to register its mark for retail
and online retail store services and auction services, not for
jewelry per se. Even if consumers deliberate in making their
jewelry purchases, they may not exercise the same degree of care
when it comes to the store or website where they shop or bid. In
any event, even careful purchasers of expensive goods can be
confused as to source where, as here, the marks are very similar
and the services are identical. See In re Research Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of
discriminating purchasers...are not infallible.").
In view of the similarity of the marks, and because the
services as well as the trade channels and purchasers for the
services are identical, we find that confusion is likely.
Decision: The opposition is sustained and registration to
applicant is refused.