Silmar S.p.A.

Trademark Trial and Appeal Board

Jun 9, 1999

No. 74405242 (T.T.A.B. Jun. 9, 1999)

Paper No. 22
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Silmar S.p.A.
________
Serial No. 74/405,242
_______
Fernanda M. Fiordalisi of Buchman and Archer for Silmar
S.p.A.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Silmar S.p.A. filed an application to register the
mark EMBROIDERED GOLD on the Principal Register. The
goods, as amended, are “necklaces, bracelets and earrings,
made of gold with or without precious stones”.1 Also by
amendment, applicant disclaimed the term GOLD.

1 Application Serial No. 74/405,242, filed June 22, 1993. The
application is based on Section 44(d) and (e) with a priority
filing date of June 4, 1993 from Italian application No.
Ser. No. 74/405242
2
The 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, when applied to its
identified goods, so resembles the previously registered
mark EMBROIDERED ENAMEL for “jewelry, and in particular
bracelets, earrings, pendants, rings and beads”2 as to be
likely to cause confusion, mistake or deception. Following
receipt of a copy of applicant’s Italian registration, the
Examining Attorney made the refusal to register under
Section 2(d) final. Applicant appealed, and timely filed
its brief.
The Examining Attorney filed his brief and a request
that the application be remanded. The Board granted the
request for remand. The Examining Attorney entered a new
refusal to register the mark as merely descriptive under
Section 2(e)(1); and in response, applicant amended its
application to seek registration on the Supplemental
Register. The Examining Attorney accepted this amendment,
thereby obviating the Section 2(e)(1) refusal, and returned
the application file to the Board; whereupon the Board
allowed applicant time to file a supplemental brief or a

VI93C000122 (now Italian Registration No. 676.054 granted on
April 15, 1996).
2 Reg. No. 1,269,754 issued March 13, 1984, Section 8 affidavit
accepted, Section 15 affidavit acknowledged. The term “ENAMEL”
Ser. No. 74/405242
3
reply brief. Applicant filed a reply brief. Applicant did
not request an oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have considered all of the relevant du Pont3
factors.
It is the Examining Attorney’s position that the
involved marks are similar in appearance, meaning and
commercial impression; that applicant has incorporated the
dominant portion of the registered mark and added a generic
term thereto; that the addition of the highly descriptive
terms GOLD or ENAMEL will not be perceived by purchasers as
source indicators; and that the goods are in part identical
(bracelets and earrings) and are otherwise related.
Applicant essentially contends that the Examining
Attorney erred by dissecting the marks and analyzing them
as consisting of the shared word EMBROIDERED and the
generic word GOLD in applicant’s mark and the descriptive
word ENAMEL in the registrant’s mark; that the common
element, EMBROIDERED, is “highly suggestive and therefore
weak” (brief, p. 4); and that when considered in their
entireties the marks are not confusingly similar. In
addition, applicant cites J. Thomas McCarthy, McCarthy on

is disclaimed. The claimed date of first use and first use in
commerce is June 11, 1982.
Ser. No. 74/405242
4
Trademarks and Unfair Competition, §19:37 (4th ed. 1999),
for the proposition that when reviewing conflicts where the
cited registration is on the Supplemental Register, a
different test should apply whereby registration will be
precluded only if the marks are substantially identical and
are used on substantially identical goods or services.
Applicant then contends that this “different test” should
also apply when the cited registration is on the Principal
Register and the applicant seeks registration on the
Supplemental Register.
The only issue we must determine is whether
applicant’s mark is so similar to the cited registered mark
that when seen by purchasers used in connection with the
same or similar goods it will be likely to cause confusion
as to the source or origin of the goods. See Kangol Ltd.
v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945
(Fed. Cir. 1992).
Applicant’s argument regarding the analysis to be used
when either the cited registered mark or the applied-for
mark is on the Supplemental Register is meritless. First,
McCarthy’s proposal of a “different test of likelihood of
confusion” when the cited registration is on the

3 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973).
Ser. No. 74/405242
5
Supplemental Register has been criticized by the Court of
Appeals for the Federal Circuit as unfounded under the
statute and the legislative history of the statute. See
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
1039, footnote 2 (Fed. Cir. 1990). See also, In re Smith &
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Second, McCarthy did
not propose that his “different test” for likelihood of
confusion be applied when the cited registered mark is on
the Principal Register, and applicant seeks a Supplemental
Register registration.
As noted above, applicant’s goods are “necklaces,
bracelets and earrings, made of gold with or without
precious stones,” and the cited registrant’s goods are
“jewelry, and in particular bracelets, earrings, pendants,
rings and beads.” We note that applicant’s goods are
limited to jewelry made of gold. However, the cited
registration is not limited to jewelry made of any
particular material, and therefore applicant’s gold jewelry
is encompassed within the scope of the registrant’s goods.
We hold that the involved goods are essentially identical
and/or closely related products. Applicant did not argue
to the contrary.
Likewise applicant did not argue, and we do not find,
any differences in the channels of trade or purchasers. We
Ser. No. 74/405242
6
must presume, given the identifications, that the goods
travel in the same channels of trade, and are purchased by
the same class of purchasers. See Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Turning then to a consideration of the respective
marks, it is well settled that marks must be considered in
their entireties. However, our primary reviewing court has
held that in articulating reasons for reaching a conclusion
on the question 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
or portion of a mark. That is, one feature of a mark may
have more significance than another. See In re National
Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
In this case, both marks include the word EMBROIDERED,
which modifies the generic term GOLD to form applicant’s
mark, and which modifies the term ENAMEL to form
registrant’s mark. Both marks are presented in the same
format. Moreover, the Lexis/Nexis evidence submitted by
the Examining Attorney with his refusal to register based
on mere descriptiveness (an issue not before us in view of
applicant’s amendment to the Supplemental Register)
Ser. No. 74/405242
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indicates that there may be a type of jewelry which is
“embroidered” (i.e., embellished or detailed). That is,
ENAMEL and GOLD are obviously two different words, but they
each appear to refer to a subset or a type of jewelry
finish. Even assuming registrant’s mark is highly
suggestive, such trademarks are nonetheless entitled to
protection. See Continental Scale Corporation v. Weight
Watchers International, Inc., 517 F.2d 1378, 186 USPQ 321
(CCPA 1975); In re Great Lakes Canning, Inc., 227 USPQ 483
(TTAB 1985); and In re L. R. Brock Ind. Inc., 218 USPQ 1055
(TTAB 1983). See also, The Maytag Co. v. Luskin’s Inc.,
228 USPQ 747 (TTAB 1986).
The commercial impression created by the marks
involved herein is substantially similar. See The Wella
Corporation v. California Concept Corporation, 558 F.2d
1019, 194 USPQ 419 (CCPA 1977); and In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479 (TTAB 1983).
Purchasers may assume that EMBROIDERED GOLD is just a
variant of registrant’s EMBROIDERED ENAMEL mark, used to
identify a new line of jewelry made of gold. That is,
purchasers are likely to assume that applicant’s goods come
from the same source as registrant’s goods or are in some
way sponsored by or associated with registrant. See In re
Imperial Jade Mining, Inc., 193 USPQ 725 (TTAB 1976).
Ser. No. 74/405242
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Ser. No. 74/405242
9
Decision: The refusal under Section 2(d) is affirmed.
E. J. Seeherman
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board