Capital Performance Group, N.V.

Trademark Trial and Appeal Board

Jan 22, 2007

No. 79008446 (T.T.A.B. Jan. 22, 2007)

Mailed: January 22, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Capital Performance Group, naamloze vennootshap
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Serial No. 79008446
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Milena S. Dakova-Micheva of Graham, Campaign P.C. for
Capital Performance Group, naamloze vennootshap.

Maureen L. Dall, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Hairston, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Capital Performance Group, naamloze vennootshap seeks
registration on the Principal Register of the mark

for goods ultimately identified as “diamonds and jewelry
bearing diamonds” in International Class 14.1 The word
DIAMONDS is disclaimed.

1 Application Serial No. 79008446, filed September 17, 2004,
under Trademark Act Section 66(a). 15 U.S.C. §1141(f).
THIS IS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79008446
2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the registered marks FREEDOM (in typed form) for
“jewelry” in International Class 142, and FREEDOM (in typed
form) for “watches and parts thereof” in International
Class 143, as to be likely to cause confusion, mistake or
deception.
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods. See

2 Registration No. 2639452, issued October 22, 2002, owned by
Nafco Gems, Ltd.

3 Registration No. 1406675, issued August 26, 1986, owned by
North American Watch Corporation. The electronic Office records
do not reflect that a renewal has been filed; however, the
registration status is still listed as active.
Serial No. 79008446
3
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to a consideration of the goods
identified in the application and the cited registrations.
It is well settled that goods and services need not be
similar or competitive in nature to support a finding of
likelihood of confusion. The question is not whether
purchasers can differentiate the goods and services
themselves, but rather whether purchasers are likely to
confuse the source of the goods and services. See Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989). Further, we must consider the cited
registrants’ goods as they are described in the
registrations and we cannot read limitations into those
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the cited
registrations describe the goods broadly, and there is no
limitation as to the nature, type, channels of trade or
class of purchasers, it is presumed that the registrations
encompass all goods of the type described, that they move
Serial No. 79008446
4
in all channels of trade normal for these goods, and that
they are available to all classes of purchasers for the
described goods. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992).
With regard to Registration No. 2639452 the identified
goods, jewelry, encompass applicant’s identified goods,
jewelry bearing diamonds. In addition, the examining
attorney submitted evidence in the form of third-party use-
based registrations that support her argument that
applicant’s diamonds and jewelry bearing diamonds are
related to registrant’s jewelry in Registration No. 2639452
and registrant’s watches in Registration No. 1406675. See
e.g., Reg. No. 2977652 (Heart and Maple leaf design for
diamonds, jewelry and watches); Reg. No. 2994042 (VENUS CUT
for diamonds, diamond rings and diamond jewelry); Reg. No.
2573796 (NADRI for inter alia jewelry, namely diamonds,
emeralds, pearls, bracelets, brooches, earrings, necklaces,
watches); Reg. No. 2591669 (SANDBERG for inter alia
precious metal jewelry, costume jewelry, diamond jewelry,
watches); Reg. No. 2902192 (NALEDI JEWELRY COLLECTION for
precious gemstones, namely, diamonds and diamond jewelry);
Reg. No. 2838465 (LIANG DESIGNS for inter alia jewelry,
precious gem stones, diamonds, watches); Reg. No. 2874280
(LAKHI GROUP for diamonds, precious gemstones, semi-
Serial No. 79008446
5
precious gemstones and jewelry); Reg. No. 2817204 (GEM
STONE KING for inter alia gold jewelry, diamonds, watches);
Reg. No. 2810758 (TIANA for jewelry and diamonds); Reg. No.
2961116 (NORTHERN FIRE for jewelry, diamonds, watches);
Reg. No. 2929816 (RAPTURE for diamonds and jewelry); Reg.
No. 2950354 (WHEN WORDS ARE NOT ENOUGH... for inter alia
jewelry, diamonds and watches); Reg. No. 2863739 (ADRIENNE
VITTADINI for jewelry and watches); Reg. No. 2931788
(AWESOME KIDS for inter alia jewelry and watches); and Reg.
No. 2951453 (PENDLETON for jewelry and watches). Third-
party registrations which individually cover a number of
different items, and which are based on use in commerce,
serve to suggest that the listed goods are of a type which
may emanate from a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). We find the
examining attorney’s evidence persuasive on this point.
Considering the channels of trade, with regard, at
least, to the jewelry items, inasmuch as there are no
limitations in either the registration or the subject
application, we must presume that applicant’s and
registrant’s goods will be sold in the same channels of
trade and will be bought by the same classes of purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Serial No. 79008446
6
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In addition, the
examining attorney submitted evidence in the form of
excerpted websites and search results from the Google
search engine showing jewelry and/or diamonds and watches
sold on the same website in close proximity and advertised
together. Applicant presented no evidence or argument to
rebut the examining attorney’s position on the relationship
of the goods or channels of trade.
In view of the above, the du Pont factors of the
similarity of the goods and the channels of trade favor a
finding of likelihood of confusion as to the mark in the
cited registration.
As to the class of purchasers, applicant argues that
its consumers are sophisticated and take a high level of
care in making their purchase. Applicant contends that the
identification of its goods in the application “contains
sufficient specificity to clearly distinguish the goods
identified in the application from the goods in the cited
registration[s] in the minds of customers for diamonds,
jewelry bearing diamonds, jewelry and watches.” Applicant
continues arguing that “[t]hese buyers are sophisticated
consumers who can easily discern the difference between the
mark” and confusion is “far less likely among more
sophisticated consumers.” Br. p. 10. We agree that the
Serial No. 79008446
7
goods specified in applicant’s identification, diamonds and
jewelry bearing diamonds, would, by their nature, be
expensive. However, potential purchasers of applicant’s
and registrants’ goods are from the general public and it
is also the case that jewelry and watches, with or without
diamonds, include a wide range of products and pricing.
Thus, the class of purchasers overlap. While it may be
that consumers would exercise some higher level of care
with regard to applicant’s jewelry and diamonds, given that
these goods are general consumer items and potential
purchasers would not necessarily know the price range of
the products of the parties, they are not likely to assume
different sources for the goods based on a perceived price
difference. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988);
In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
Most importantly, as discussed below, because of the strong
similarities in the marks, ordinary consumers, even if they
exercise some care in their purchasing decisions, are not
likely to distinguish between the sources of these legally
identical and closely related goods. Therefore, we do not
find the level of care or the sophistication of the
potential purchasers to offset the other du Pont factors in
this case.
Serial No. 79008446
8
We turn now to the first du Pont factor, i.e., whether
applicant’s mark FREEDOM DIAMONDS and design and
registrants’ marks FREEDOM are similar or dissimilar when
compared in their entireties in terms of appearance, sound,
connotation and commercial impression. The analysis is not
whether the marks can be distinguished when compared side-
by-side. Rather, we must determine whether the marks are
sufficiently similar that there is a likelihood of
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
who normally retains a general, rather than specific,
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
The word FREEDOM is the dominant element in opposer’s
mark FREEDOM DIAMONDS and design inasmuch as it is by the
words that consumers will call for or refer to the goods.
In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554
(TTAB 1987). Further, in view of the prominent visual
appearance of FREEDOM in comparison to the additional word
DIAMONDS, as well as the descriptive nature of this
additional word, which is disclaimed, it is likely that
consumers will use the word FREEDOM to call for the goods.
“That a particular feature is descriptive [or otherwise
lacking in distinctiveness] ... with respect to the
Serial No. 79008446
9
involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark...”
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). The registrants’ marks consist only of
the word FREEDOM. In view of the similarity of the
dominant element in applicant’s mark to the entirety of
registrants’ marks, the marks as a whole are similar in
sound and connotation, and even though there are some
differences in appearance due to the design components,
which are suggestive of diamonds, and the additional
descriptive word in applicant’s mark, these differences are
not sufficient to distinguish applicant’s mark from
registrants’ marks; overall they convey similar commercial
impressions. Thus, the factor of the similarity of the
marks weighs in favor of likelihood of confusion.
Applicant argues that “nearly identical marks for
similar or identical goods in International Class 014
coexist on the Principal Register. Applicant’s evidence
below supporting this contention consists of a USPTO online
trademark database showing about 50(fifty) trademark
registrations and applications comprised of or containing
the term FREEDOM for use in connection with goods in
International Class 014.” Br. p. 12. A review of this
listing reveals only four, not including the two cited
Serial No. 79008446
10
registrations, that are active registrations.4 The
remaining are either pending applications or dead records,
both of which have no probative value for this point. More
importantly, there is nothing in the record to indicate
that these marks, other than the cited registrations, are
in use on similar goods to those in issue in this case.
Third-party registrations are not evidence of use and,
thus, are of little probative value in an analysis of the
strength of the marks. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
Third-party registrations may be “useful to demonstrate the
sense in which a term is used in ordinary parlance and they
can show that a particular term has been adopted by those
engaged in a certain field or industry and that said term
has less than arbitrary significance with respect to
certain goods or services.” In re Dayco Products-
Eaglemotive, Inc., 9 USPQ2d 1910, 1912 (TTAB 1988)
(IMPERIAL adopted by others in the vehicular field to refer
to that term’s ordinary significance as a laudatory

4 Applicant attached this listing to its request for
reconsideration. The listing itself is not proper evidence of
third-party registrations; to make registrations of record a copy
of the registration or electronic equivalent must be submitted.
Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). Applicant
attached printouts from the USPTO’s TARR database with its brief.
While these printouts were untimely, inasmuch as the
corresponding listing was timely submitted and the examining
Serial No. 79008446
11
designation). We do not find these four registrations
sufficient evidence upon which to make a determination that
the term FREEDOM has a particular significance in the field
of jewelry, diamonds and watches and is, thus, deserving of
a limited scope of protection. As to the cited
registrations, the existence on the register of other
potentially confusingly similar marks does not justify
registration of yet another confusingly similar mark. AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177
USPQ 268 (CCPA 1973); In re Sunmarks Inc., 32 USPQ2d 1470
(TTAB 1994).
In conclusion, we find that because the marks are
similar, the goods are legally identical and otherwise
related, and the channels of trade and purchasers overlap,
confusion is likely between applicant’s mark and the marks
in the cited registrations.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed as to both
registrations.

attorney has not objected to these printouts we have considered
them.