The Miner Group, Ltd.

Trademark Trial and Appeal Board

Aug 22, 2001

No. 75414441 (T.T.A.B. Aug. 22, 2001)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
8/22/01 Paper No. 13
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Miner Group, Limited
________

Serial No. 75/414,441
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Gerald E. Helget and Kevin W. Cyr of Rider Bennett Egan &
Arundel for The Miner Group, Limited.

Andrea Koyner Nadelman, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
The Miner Group, Limited has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark CHERISHED MEMORIES for “scrapbook stickers”1 in
International Class 16.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the mark CHERISHED

1 Application Serial No. 75/414,441 filed on January 6, 1998
based upon an allegation of use in interstate commerce since at
least as early as September 16, 1997.

Serial No. 75/414,441
2
MEMORIES previously registered for “paint for arts and
crafts” in International Class 2, and for “stencils,
stencil adhesive dots and sponges for applying paint,”2 in
International Class 16, that, as used on applicant’s
scrapbook stickers, it is likely to cause confusion, to
cause mistake or to deceive.
The appeal has been fully briefed, but an oral hearing
was not requested. We affirm the refusal of registration.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. 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).
We turn first to a consideration of the respective
marks. The marks are identical as to sound and appearance.
Given the identical connotation of this term as applied to
the respective goods, we conclude that the overall
commercial impression of the term “Cherished Memories” is
exactly the same for both marks.

2 Reg. No. 2,236,192 issued on March 30, 1999.
Serial No. 75/414,441
3
It is well settled that where the marks in question
are identical, it is not necessary for the goods with which
they are used to be closely related in order for confusion
to be found likely. It is sufficient, instead, if the
goods are related in some viable way such that the use of
the same mark in connection therewith would be likely to
lead to the mistaken assumption that a single source is
responsible for both. In re Concordia International
Forwarding Corp., 222 USPQ 355 (TTAB 1983). It is also
true that in resolving the issue of likelihood of
confusion, the Board must consider the goods as identified
in the application and the cited registration,
respectively, without restrictions or limitations not
reflected therein. In re Elbaum, 211 USPQ 639 (TTAB 1981),
and Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340 (TTAB
1983).
When the issue before us in this appeal is considered
in conjunction with these two principles, we conclude that
notwithstanding applicant’s argument to the contrary, the
goods, as they are identified in the application and
registration, are indeed closely related.
Applicant argues that its goods – scrapbook stickers –
will be purchased by a different class of purchasers from
those who would use the “paint for arts and crafts” and
Serial No. 75/414,441
4
“stencils, stencil adhesive dots and sponges for applying
paint” identified in the cited registration:
… Paint for arts and crafts, and stencils, stencil
adhesive dots and sponges for applying paint all
relate to painting and are therefore purchased by
artists and painters. Scrapbook stickers and even
more generally, stickers have nothing to do with
painting and are typically marketed to those who are
less artistically inclined. Paints and stencils are
tools of artistic expression, the image from their use
varying with the imagination of the artists, whereas
stickers are simply a prefabricated means for
decoration. An artist using paints and stencils, even
in the rare instance that the artist may be making a
scrapbook, would typically not use stickers.
Conversely, an individual using stickers to decorate a
scrapbook would be highly unlikely to go to the
trouble of using paints.

(Applicant’s reply brief, p.3).

None of the above distinctions as argued by applicant
with respect to the purchasers or users of applicant’s and
registrant’s goods is reflected in the ways these goods are
identified in the application and the registration. For
example, stencils could be used for a myriad of possible
uses, including making scrapbooks. Several third-party
registrations made part of the record by the Trademark
Examining Attorney list stencils along with stickers as
components or accessories for making scrapbooks, photograph
albums and other paper crafts.3 Accordingly, we must assume

3 For example, Reg. No. 2,350,542, MAKE A MEMORY for
“scrapbook album kits and accessories therefor, namely, borders,
sheet protectors, photograph mounts, stickers, stencils and
insert pages” and Reg. No. 2,296,095, PHOTO PARTY for
Serial No. 75/414,441
5
that registrant’s stencils could be the kind of stencils
that will be used in putting together a scrapbook, and
could be used in conjunction with the scrapbook stickers
identified herein.
Furthermore, although applicant argues that artists
and painters would purchase registrant’s paints, the goods
are identified as “paint for arts and crafts.” Such goods
could be purchased by anyone who wished to engage in arts
and craft projects, not just the artists that applicant
envisions.
Under these circumstances, for one acquainted with
registrant’s CHERISHED MEMORIES paints and stencils, the
use of the identical mark on applicant’s goods would lead a
prospective purchaser to assume, mistakenly, as it would
turn out, that a single source was responsible for both
CHERISHED MEMORIES scrapbook stickers and CHERISHED
MEMORIES paint and stencils.
Applicant’s argument that confusion is not likely
because the CHERISHED MEMORIES mark is weak also fails:
Furthermore, both CHERISHED and MEMORIES are
extensively used throughout international class 16.
CHERISHED was identified in 15 records and MEMORIES
was identified in 181 records in the search of the

“scrapbooks, photograph albums, and accessories for making
customized albums, namely, album pages, photo paper backing
sheets, stickers and stencils.” [emphasis supplied].
Serial No. 75/414,441
6
U.S. Patent and Trademark Office’s online trademark
database.

(Applicant’s reply brief, p. 2).

We note that these alleged third-party registrations
were not properly made of record. In order to make third-
party registrations of record, soft copies of the
registrations or printouts from the U.S. Patent and
Trademark Office electronic database must be submitted.
See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
This was not done. Furthermore, the printouts of the
search results were an exhibit attached to applicant’s
reply brief, and hence were manifestly untimely. The
record must be complete prior to the time of the appeal.
See, 37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994). Accordingly, we have not
considered this evidence in reaching our decision.4
Furthermore, even if the record did establish (which
it does not) that the registered mark is highly suggestive
(as argued by applicant) for components of albums or
“memory books,” even “highly suggestive marks are entitled
to protection against the identical mark for goods used for

4 We hasten to add that even if we were to consider these
lists, it would not change the result herein. Except for
registrant’s cited mark, none of the subsisting third-party
registrations referenced by applicant in its reply brief is for
the words “CHERISHED MEMORIES.”

Serial No. 75/414,441
7
closely related purposes.” In re Textron Inc., 180 USPQ
341 (TTAB 1973).
Accordingly, given that these are identical marks used
on closely related goods purchased by the same class of
purchasers, we find a likelihood of confusion.
Decision: The refusal to register under Section 2(d)
of the Act is affirmed.