Sajen, Inc.

Trademark Trial and Appeal Board

Jun 4, 2009

No. 77257189 (T.T.A.B. Jun. 4, 2009)

Mailed: June 4, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sajen, Inc.
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Serial No. 77257189
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Peter Kunin of Downs Rachlin Martin PLLC for Sajen, Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hairston, Holtzman and Zervas,
Administrative Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On August 16, 2007, Sajen, Inc. filed an intent-to-use
application to register the mark CL in standard character
form for “jewelry, namely, earrings, pendants, rings,
necklaces, brooches and other jewelry” in International
Class 14.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 77257189
2
the marks in the following four registrations as to be
likely, if used on or in connection with the identified
goods, to cause confusion. Each of the registrations is
owned by a different registrant.
(1) Registration No. 1289991, issued August 14, 1984
(renewed), for the mark shown below for “jewelry.”

(2) Registration No. 1525114, issued February 21, 1989
(renewed), for the mark shown below for, in relevant part,
“jewelry.” The registration contains a statement that the
mark consists of “[t]he letters ‘CL’ and design.”

(3) Registration No. 1645951, issued May 28, 1991
(renewed), for the mark shown below for “jewelry, namely,
finger rings, bracelets, pendants and earrings.”

Serial No. 77257189
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(4) Registration No. 3193015, issued January 2, 2007, for
the mark shown below for “on-line retail store services
featuring jewelry, clothing, and handbags.” The
registration contains the statement that the mark consists
of “[t]he letters CL transposed on top of a floral type
design similar to a Fleur-de-lis.”

Applicant responded to the refusal by submitting a
substitute drawing of its mark, as shown below.

Applicant characterized the substitute drawing as a special
form drawing and included a statement that “[t]he mark
consists of CL depicted in all capital letters and standard
typeface.” Applicant argued that confusion is not likely
with the marks cited by the examining attorney because it
will use its mark only in the standard typeface in the
substitute drawing. In addition, applicant argued that
marks which include the letters “CL” for jewelry goods and
services are weak marks and, therefore, entitled to only a
limited scope of protection.
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The examining attorney accepted the substitute
drawing, but was not persuaded by applicant’s arguments on
the issue of likelihood of confusion. The examining
attorney argued that the marks are similar because
“applicant’s mark is CL and the registrants’ marks are CL.
The marks are very similar based on applicant’s CL vs.
registrants’ CL. This is because the letters comprising
the only distinctive matter at issue are identical and in
the same order. The only difference is the registrant
3193015’s mark includes a design element. However, if the
word portions of the marks are identical in appearance,
sound and meaning, then the addition of the design element
does not obviate the similarity of the marks in this case.”
(second Office action, unnumbered p. 2) The refusal to
register under Section 2(d) of the Act was continued and
made final in the second Office action.
Applicant appealed, and applicant and the examining
attorney have filed briefs.
Our determination under Section 2(d) of the Trademark
Act is based upon 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 E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
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Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
We review the relevant du Pont factors as they apply
to this case.
We begin by comparing applicant’s goods with the goods
and services in each of the cited registrations.
Applicant’s goods are identified as “jewelry, namely,
earrings, pendants, rings, necklaces, brooches and other
jewelry.” Registration Nos. 1289991, 1525114 and 1645951
all cover “jewelry.” Thus, in this respect, applicant’s
goods and the goods in these registrations are legally
identical. Applicant does not argue otherwise.
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Furthermore, we find that applicant’s goods are
related to the services identified in Registration No.
3193015. In this regard, it is well settled that confusion
is likely to result from the use of the same or similar
mark for goods, on the one hand, and for services,
involving those goods, on the other hand. See In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir.
1988)[BIGG’S (stylized) for retail grocery store and
general merchandise store services held likely to be
confused with BIGGS and design for furniture]; In re United
Service Distributors, Inc., 229 USPQ 237 (TTAB 1986)[design
for distributorship services in the field of health and
beauty aids held likely to be confused with design for skin
cream]; and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433
(TTAB 1983)[STEELCARE INC. for refinishing of furniture,
office furniture, and machinery held likely to be confused
with STEELCASE for office furniture and accessories]. In
this case, on-line retail store services featuring, inter
alia, jewelry, involve the sale of jewelry. Thus, we find
that applicant’s jewelry is related to registrant’s on-line
retail store services featuring, inter alia, jewelry.
Again, applicant does not argue otherwise.
Insofar as the channels of trade and classes of
purchasers are concerned, in the absence of any limitations
Serial No. 77257189
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in the identification of goods in applicant’s application
and the identifications of goods and services in the cited
registrations, we find that the channels of trade and
purchasers are at the very least overlapping. Thus, if
applicant’s goods and the registrants’ goods and services
were to be offered under the same or similar marks,
confusion would be likely to result.
Accordingly, the du Pont factors of the
similarity/dissimilarity of the goods and/or services,
trade channels and classes of purchasers favor a finding of
likelihood of confusion.
We turn now to a comparison of applicant’s mark and
each of the cited marks in their entireties. The test
under this du Pont factor is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their 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 trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
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In this case, each of the cited marks shown below is
extremely stylized and striking:
Registration No. 1289991

Registration No. 1525114

Registration No. 1645951

Indeed, the degree of stylization of the letters which
form each of the above marks is so high that “[they are]
therefore in the gray region between pure design marks
which cannot be vocalized and word marks which are clearly
intended to be.” Georgia-Pacific Corp. v. Great Plains Bag
Co., 614 F.2d 757, 204 USPQ 697, 699 (CCPA 1980).
In contrast, applicant’s CL mark is depicted in
capital letters and standard font, as shown below:
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Because the stylization of each of the above cited
marks is so extreme and striking, they are entirely
different in appearance from applicant’s mark and they
create different commercial impressions than applicant’s
mark. These differences outweigh any similarities in sound
between the cited marks and applicant’s mark, assuming the
cited marks would be pronounced at all. When viewed in
their entireties, the stylization of the cited marks
renders the letters “CL” therein virtually unrecognizable
or so subordinate to the overall commercial impressions as
to make it unlikely that purchasers would associate
applicant’s mark with any of these marks.
We also find that applicant’s mark differs in
appearance and commercial impression from the mark in
Registration No. 3193015, shown below.

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The design element in this cited mark and the way in which
such element and the letters “CL” are integrated, create a
visual impression that is quite different from the
appearance of the applicant’s mark. Again, applicant’s
mark is merely the letters “CL” in capital letters and a
standard font. The cited mark, however, is more than
merely a stylized presentation of the letters “CL;” it
includes a prominent and integral floral type design. Such
differences outweigh any similarities in sound between the
cited mark and applicant’s mark. We find, therefore, that
when the cited mark and applicant’s mark are considered in
their entireties, they are quite different in appearance
and commercial impression, notwithstanding that they share
the letters “CL.”
Accordingly, the du Pont factor of the similarity/
dissimilarity of the marks favors applicant with respect to
each of the cited marks.
In reaching our determination that applicant’s mark is
dissimilar from each of the cited marks, we have not relied
on applicant’s argument that marks which consist of or
include the letters “CL” for jewelry goods and services are
weak marks and, therefore, entitled to only a limited scope
of protection. In support of its position in this regard
applicant points to the co-existence of the four cited
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registrations. While third-party registrations may be used
in a manner analogous to a dictionary to show that a mark
or portion thereof is descriptive or suggestive, it is not
clear what the descriptive or suggestive significance of
the letters “CL” are in relation to jewelry.
Rather, as previously discussed, the marks in each of
the cited registrations are more than merely presentations
of the letters “CL.” Three of the marks are extensively
stylized and striking; the other mark includes a prominent
design element which is integrated with the letters “CL.”
As a result, each of the cited marks differs in appearance
and creates a different commercial impression from
applicant’s CL mark.
In view of the foregoing, we conclude that
notwithstanding the identity/relatedness of the involved
goods and services and the overlap in trade channels and
classes of purchasers, confusion is not likely to result in
this case.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed as to each of the cited
registrations.