Orion Diamond Inc.

Trademark Trial and Appeal Board

Sep 9, 2002

No. 75824874 (T.T.A.B. Sep. 9, 2002)

Paper No. 18
JQ
Mailed: September 9, 2002
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Orion Diamond Inc.
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Serial No. 75/824,874
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Ezra Sutton for applicant.
Michael L. Engel, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Quinn and Hohein, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Orion Diamond Inc. to
register the mark PRINCESSA for “princess-cut diamond
rings, pendants and earrings.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Act on the ground
that applicant’s mark, when applied to applicant’s goods,
1 Application Serial No. 75/824,874, filed October 18, 1999,
alleging first use anywhere and first use in commerce at least as
early as March 1998.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/824,874
2
so resembles the previously registered mark shown below
for “finger rings”2 as to be likely to cause confusion.3
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant argues, in urging that the refusal be
reversed, that the cited mark is weak and that it creates a
different commercial impression from the one engendered by
applicant’s mark. In this connection, applicant submitted
evidence of third-party registrations. Applicant also
points to its ownership of a registration of the mark
PERFECT PRINCESS for jewelry. Applicant does not dispute
the similarity between the goods.
2 Registration No. 44,936, issued August 1, 1905; fourth renewal.
3 Registration also was refused under Section 2(d) on the basis
of Registration No. 1,929,254, issued October 24, 1995. A check
of Office records shows that this registration was canceled
pursuant to Section 8 on July 27, 2002. Accordingly, insofar as
the appeal was based on the refusal to register in view of
Registration No. 1,929,254, the appeal is dismissed as involving
a moot question.
Ser No. 75/824,874
3
The Examining Attorney maintains that the marks
PRINCESS (stylized) and PRINCESSA look and sound alike, and
that the addition of a final letter “A” in applicant’s mark
does not create a significantly different commercial
impression from registrant’s mark. The Examining Attorney
also points to the identity, at least in part, between the
goods.
Before turning to the merits of the appeal, we focus
our attention on the Examining Attorney’s objection to the
third-party registration evidence. During the prosecution
of the application, applicant submitted a computer printout
from a private database listing fourteen third-party
registrations of marks which include the term “PRINCESS”
for jewelry. The Examining Attorney, in response, made no
objection to the listing, but rather considered this
evidence. Applicant then submitted, with its appeal brief,
a printout retrieved from the same private database showing
seventeen third-party registrations and six third-party
pending applications for marks comprising, in part, the
term “PRINCESS” for jewelry. In his appeal brief, the
Examining Attorney objected to the evidence attached to
applicant’s appeal brief, asserting that the evidence was
improperly introduced inasmuch as the printout was not
generated by the Office’s automated records.
Ser No. 75/824,874
4
By considering the earlier printout, the Examining
Attorney waived his right to object to the fourteen third-
party registrations which were listed in that printout,
nine of which appear again in the printout attached to the
appeal brief. The objection is sustained, however, as to
the additional third-party applications and registrations
that were sought to be introduced for the first time by the
printout attached to the appeal brief. Firstly, as a
general rule, evidence submitted with an appeal brief is
untimely. Trademark Rule 2.142(d). Secondly, in order to
properly introduce third-party registrations and/or
applications, soft copies of the registrations or the
electronic equivalents thereof generated by the Office’s
automated search system must be submitted.
We now turn our attention to the Section 2(d) refusal.
Our determination under Section 2(d) is based on an
analysis of all of 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 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser No. 75/824,874
5
The goods in the application and the cited
registration are legally identical, at least in part,
insofar as the application lists “princess-cut diamond
rings” and the registration lists “finger rings.” The term
“finger rings” is presumed to encompass rings of all such
types, including diamond rings. Further, the jewelry items
“diamond pendants” and “diamond earrings” in the
application are otherwise closely related to registrant’s
“finger rings.” It also is presumed that the goods move in
the same channels of trade and are purchased by the same
classes of purchasers. In re Elbaum, 211 USPQ 639 (TTAB
1981).
Accordingly, we turn to the question of whether the
respective marks are sufficiently similar such that their
use in connection with the legally identical jewelry item,
rings, and otherwise closely related jewelry items,
pendants and earrings, would be likely to cause confusion.
In this connection, we note that if the goods are
identical, as they are here, at least in part, “the degree
of similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
Ser No. 75/824,874
6
Applicant’s mark PRINCESSA and registrant’s mark
PRINCESS (stylized) are substantially similar in sound and
appearance, differing by only the final letter “A” in
applicant’s mark and the slight stylization of registrant’s
mark. As to connotation, applicant has offered no meaning
for its mark, and it is quite likely, given the
similarities in sound and appearance, that prospective
purchasers will view the marks as having similar, if not
identical meanings. In this connection, we take judicial
notice of the dictionary listing showing that the Spanish
word “princesa” means “princess” in English. Cassell’s
Spanish-English, English-Spanish Dictionary (1959).
Although applicant’s mark differs from the Spanish word by
an additional letter “s,” it is likely that prospective
customers familiar with the Spanish language will view the
word as meaning “princess” in English. And, even if the
term “princess” is viewed as suggestive when applied to
rings, the marks convey the same suggestion.
The evidence of third-party registrations is entitled
to little weight in evaluating whether there is a
likelihood of confusion. See, e.g., AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973); and In re Hub Distributing, Inc., 218 USPQ
284, 285-86 (TTAB 1983). We particularly note that all of
Ser No. 75/824,874
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the existing registered marks include additional words, and
none of the marks is as similar to registrant’s mark as is
the mark sought to be registered herein. For the same
reasons, applicant’s ownership of the registered mark
PERFECT PRINCESS does not compel a different result. In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
We also have considered the fact that certain diamond
rings may be quite expensive and involve a discriminating
purchase. However, in view of the substantial similarity
between the marks, even careful purchasers are likely to be
confused when encountering the marks on rings and closely
related jewelry items.
We conclude that consumers familiar with registrant’s
finger rings sold under the mark PRINCESS (stylized) would
be likely to believe, upon encountering applicant’s mark
PRINCESSA for diamond rings, pendants and earrings, that
the jewelry items originated with or were somehow
associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.