Timestar, Inc.

Trademark Trial and Appeal Board

Jan 7, 2000

No. 75269719 (T.T.A.B. Jan. 7, 2000)

Paper No. 10
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 7, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Timestar, Inc.
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Serial No. 75/269,719
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Neill A. Levy, Esq. for Timestar, Inc.
George M. Lorenzo, Trademark Examining Attorney, Law Office
109 (Ronald Sussman, Managing Attorney)
_______
Before Simms, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Timestar, Inc. has filed an application to register
the mark GIOVANNI for “watches.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used on its identified

1 Application Serial No. 75/269,719, filed April 7, 1997, based
on applicant’s alleged bona fide intent to use the mark in
commerce.
Ser. No. 75/269719
2
goods, so resembles the registered mark GIOVANNI for
“costume jewelry and findings,”2 as to be likely to cause
confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
The involved marks are identical. This fact “weighs
heavily against applicant.” In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984). Indeed, the fact that an applicant has selected the
identical mark of a registrant “weighs [so] heavily against
the applicant that applicant’s proposed use of the mark on
“goods...[which] are not competitive or intrinsically
related [to registrant’s goods]...can [still] lead to the
assumption that there is a common source.” In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir.
1993). “The greater the similarity in the marks, the

2 Registration No. 702,559, issued August 9, 1960, Section 8
affidavit accepted, renewed. [“Findings” are components of
finished jewelry products, e.g., catches, clasps or wires.]
Ser. No. 75/269719
3
lesser the similarity required in the goods or services of
the parties to support a finding of likelihood of
confusion.” 3 J. McCarthy, McCarthy on Trademarks and
Unfair Competition, §23:20.1 (4th ed. 1999).
We turn to a consideration of the cited registrant’s
goods and applicant’s goods. Applicant’s position is that
its “watches” and the cited registrant’s “costume jewelry
and findings” are not related goods or even complementary
goods; rather, they are sold through different channels of
trade to different purchasers.
As evidence thereof, applicant submitted the
declaration of applicant’s president, Moshe Ben Nissan, in
which he avers, inter alia, that he has 13 years experience
in the wholesale watch business; that applicant is a
manufacturer and wholesaler of watches; that watches cannot
be classified as jewelry (including findings); that he
disputes the Examining Attorney’s contention that watches
and jewelry are related goods; that in his observation of
the retail market, watches and jewelry historically were
sold together in jewelry stores “but those times have
passed” and watches are not associated with ‘real’ jewelry
or costume jewelry; and that “watches and jewelry have
drifted so far apart in the mind of the consuming public
that they are no longer associated with each other.”
Ser. No. 75/269719
4
The Examining Attorney argues that the parties’ goods
are closely related and travel in the same channels of
trade; and that applicant did not submit any substantive
evidence to support the otherwise unsubstantiated
statements of applicant’s president.
In support of his position as to the relatedness of
the respective goods, the Examining Attorney submitted
several third-party registrations, each of which issued on
the basis of use in commerce, to demonstrate the close
relationship between watches and costume jewelry, by
showing that a single entity has adopted a single mark for
both of those goods.
While third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
public is familiar with them, nonetheless, third-party
registrations which individually cover a number of
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
Moreover, it is well settled that goods need not be
identical or even competitive in order to support a finding
Ser. No. 75/269719
5
of likelihood of confusion. Rather, it is sufficient that
the goods are related in some manner or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of the
goods or services. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
We are not persuaded by applicant’s president’s
declaration that, based on his observation of the retail
market for several years, watches and costume jewelry are
not associated or related goods in the minds of the
consuming public.3 To the contrary, the record before us
establishes that the respective goods of the parties are
related. See In re Leonard S.A., 2 USPQ2d 1800 (TTAB 1987)
(watches and jewelry found to be related, but the refusal
was reversed based on the consent agreement between the
applicant and the cited registrant); Monocraft, Inc. v.
Leading Jewelers Guild, 173 USPQ 506 (TTAB 1972) (watches

3 Applicant’s declaration is self-serving, consisting of only his
otherwise unsubstantiated statement.
Ser. No. 75/269719
6
and costume jewelry are closely related); Gruen Industries,
Inc. v. Ray Curran & Co., 152 USPQ 778 (TTAB 1967) (men’s
jewelry and watches closely related); and Clinton Diamond
Corporation v. General Time Corporation, 135 USPQ 272 (TTAB
1962) (clocks and watches closely related to finger rings).
Applicant has included no restriction to trade
channels or purchasers in its identification of goods.
Thus, the Board must consider that the parties’ respective
goods could be offered and sold to the same classes of
purchasers through all normal channels of trade. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
Moreover, even applicant concedes that “watches and costume
jewelry may be sold in the same store.” (Applicant’s
brief, page 6.)
Even assuming that the purchasers and users of the
goods in question in the instant case are somewhat
discriminating purchasers, this does not mean that such
purchasers and users are immune from confusion as to the
origin of the respective goods, especially when sold under
the identical mark. See Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
Ser. No. 75/269719
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1990); Aries Systems Corp. v. World Book Inc., 23 USPQ2d
1742, footnote 17 (TTAB 1992); In re Pellerin Milnor
Corporation, 221 USPQ 558 (TTAB 1984); and Aerojet-General
Corporation v. American Standard, Inc., 171 USPQ 439 (TTAB
1971).
Based on the identity of the marks, the relatedness of
the parties’ respective goods, and the similarity of the
trade channels and purchasers, we find that there is far
more than a mere possibility of confusion; there is a
likelihood that the purchasing public would be confused if
and when applicant uses GIOVANNI as a mark for watches.
Decision: The refusal to register under Section 2(d)
is affirmed.
R. L. Simms
B. A. Chapman
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial and
Appeal Board