Diamond Girl Corporation

Trademark Trial and Appeal Board

Dec 23, 2005

No. 78194018 (T.T.A.B. Dec. 23, 2005)

Date: 12/23/2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Diamond Girl Corporation
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Serial No. 78194018
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Jay F. Moldovanyi and Sandra M. Koenig of Fay, Sharpe,
Fagan, Minnich & McKee for applicant.

Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Quinn and Grendel, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Diamond Girl Corporation
to register the mark DIAMOND GIRL (“GIRL” disclaimed) for
“skin lotions and creams; body soaps sold in specialty
stores featuring personal care products, namely, beauty
shops, beauty supply stores and cosmetic and toiletry
stores.”1

1 Application Serial No. 78194018, filed December 12, 2002,
based, under Section 1(b) of the Trademark Act, on an allegation
of a bona fide intention to use the mark in commerce, and, under
Section 44(d) of the Trademark Act, on a claim of priority based
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78194018
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark DIAMOND GIRL for
“footwear and clothing; namely, sweatshirts, T-shirts,
shirts, blouses, body suits, underwear, pajamas, robes,
pants, skirts, dresses, jackets, coats, suspenders, belts,
gloves, hats, sun visors and head bands”2 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
The examining attorney highlights the fact that the
involved marks are identical, and argues that the marks
convey identical commercial impressions. According to the
examining attorney, the goods are also related. In this
connection, the examining attorney relies upon third-party
registrations to show that cosmetics and clothing often
emanate from the same source under the same mark and are
offered in the same channels of trade. The examining
attorney, while acknowledging the limitation in applicant’s

upon a foreign application (later maturing into Canadian
Registration No. TMA607239).
2 Registration No. 1893486, issued May 9, 1995; renewed.
Ser No. 78194018
3
identification of goods, notes that registrant’s
identification of goods does not include any limitations:
“Since the identification of the registrant’s goods is very
broad, it is also presumed that the registration
encompasses all goods of the type described, including
those in the applicant’s more specific identification, that
they move in all normal channels of trade and that they are
available to all potential customers including those who
visit beauty shops, beauty supply stores and cosmetic and
toiletry stores.” (Brief, unnumbered p. 4). Lastly, the
examining attorney asserts that any doubt must be resolved
in registrant’s favor.
Applicant contends that it has narrowed the
identification of goods in the involved application to very
specific trade channels, and that beauty shops, beauty
supply stores, and cosmetic and toiletry stores are not
outlets where clothing and footwear are sold, thereby
avoiding likelihood of confusion with registrant’s mark.
In addressing the examining attorney’s third-party
registration evidence, applicant states that it is not
seeking a registration for retail store services. Further,
applicant argues, although department stores and the like
sell both clothing and skin and hand care products,
applicant’s identification of goods excludes trade channels
Ser No. 78194018
4
that correspond to clothing and footwear. Applicant
asserts, in any event, that the goods are neither related
nor complementary, pointing out that “one does not purchase
special creams, lotions or bath soaps to go with a
particular pair of shoes or a particular item of clothing.”
(Brief, p. 7). With respect to the marks, applicant states
that both “DIAMOND” and “GIRL” are weak terms, and, in this
connection, applicant relies upon many registrations of
DIAMOND-formative marks registered for clothing in Class 25
and for cosmetics in Class 3. Applicant also argues that
the marks convey different meanings and commercial
impressions; applicant’s mark “gives the impression of
pampering, such as where a girl deserves the best,” whereas
registrant’s mark “gives the impression of sparkled
material.” Id.
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 Company, 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 and/or
Ser No. 78194018
5
services. See 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).
The marks are identical. They sound the same and they
look the same. Contrary to applicant’s contentions, we
find that the marks have similar meanings when applied to
the respective goods of applicant and registrant. Despite
the fact that the marks are used with different goods, they
still convey the same meaning and engender the same overall
commercial impression.3 Cf. In re British Bulldog, Ltd.,
224 USPQ 854 (TTAB 1984)[PLAYERS, when applied to shoes and
men’s underwear, has different connotations].
Although we have considered the third-party
registrations of DIAMOND-formative marks, this evidence is
of limited probative value. The registrations are not
evidence of use of the marks shown therein and they are not
proof that consumers are familiar with such marks so as to
be accustomed to the existence of similar marks in the
marketplace. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476

3 We take judicial notice of the dictionary listing of “diamond.”
The word means, among other things, “something that resembles a
diamond (as in value, rarity, or brilliance).” Webster’s Third
New International Dictionary (unabridged ed. 1993). Both marks
convey a classy and upscale image.
Ser No. 78194018
6
F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks,
Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982).
Any value that these registrations have to the
likelihood of confusion analysis is limited to their
showing, as in the case of a dictionary listing, the sense
in which the term “Diamond” is employed in the language.
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1285-86 (Fed. Cir. 1984). In
this case, the registrations show that the term “DIAMOND”
has in the past appealed to others in the clothing and
cosmetics field as an appropriate designation for a mark or
part of a mark to convey an upscale image. Red Carpet
Corp. v. Johnstown American Enterprises, Inc., 7 USPQ2d
1404, 1406 (TTAB 1988).
The justification of consideration of third-party
registrations is that the presence in marks of common
elements extensively adopted by others, unrelated as to
source, may cause purchasers to not rely upon such elements
as source indicators but to look to other elements as a
means of distinguishing the source of the goods. The
overriding problem with applicant’s position is that the
present case involves identical marks, and therefore there
is no additional element in either mark which might serve
to distinguish them. The record is devoid of any third-
Ser No. 78194018
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party registrations of the mark DIAMOND GIRL; the only
registration is the one cited by the examining attorney.
Inasmuch as there is only one registration of the mark
DIAMOND GIRL, and the record does not include any third-
party uses of the mark, we find the cited mark to be
arbitrary and strong for clothing and footwear. This
finding, coupled with the identity between the marks,
weighs heavily in favor of affirmance of the likelihood of
confusion refusal.
With respect to the goods, as pointed out by the
examining attorney, where identical marks are involved, as
is the case here, the degree of similarity between
applicant’s and registrant’s goods that is required to
support a finding of likelihood of confusion is less. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89
(Fed. Cir. 1993); and In re Opus One Inc., 60 USPQ2d 1812
(TTAB 2001).
Turning to the goods, we must base our comparison on
the identifications in the application and the cited
registration. In re Shell Oil Co., supra at 1690, n. 4.
It is not necessary that the respective goods be similar or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods are related in some
Ser No. 78194018
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manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
We note, at the outset of comparing the goods, that
“while confusion has been held likely in a number of
cases....involving cosmetic or toiletry products on the one
hand and various items of clothing on the other, there is
of course no per se rule that there is a likelihood of
confusion when the same or similar mark is applied to these
respective goods.” In re Jacques Bernier Inc., 1 USPQ2d
1924, 1925 (TTAB 1987).
The examining attorney has made of record a number of
third-party registrations that show entities have
registered a single mark for clothing and cosmetics. See,
e.g., Registration No. 2567211 (NATURE’S HEALING PRODUCTS
for skin care products and clothing); Registration No.
2814691 (ZINKA for non-medicated skin care preparations and
clothing); Registration No. 2413643 (JOBH for creams and
lotions and clothing); and Registration No. 2515615 (PUA
for cosmetics and skin care products and clothing).
Ser No. 78194018
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Third-party registrations that individually cover
different items and that are based on use in commerce serve
to suggest that the listed goods and/or services are of a
type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988).
In view of the third-party registrations, it is
reasonable to conclude that clothing and cosmetics are
commercially related. Further, the evidence suggests that
consumers have been exposed to cosmetics and clothing
emanating from the same source under the same mark.
The crux of the refusal herein centers on whether or
not the limitation pertaining to trade channels as
reflected in applicant’s identification of goods (“sold in
specialty stores featuring personal care products, namely,
beauty shops, beauty supply stores and cosmetic and
toiletry stores”) is sufficient to avoid a likelihood of
confusion with registrant’s identical mark for clothing.
Although the limitation makes this a closer case, we find
that the record establishes a likelihood of confusion.
Given the limitation in applicant’s identification of
goods, we agree with applicant that its cosmetics are sold
in different trade channels than are registrant’s clothing
Ser No. 78194018
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and footwear. We are not persuaded by the examining
attorney’s argument that, because registrant’s
identification of goods is not limited as to trade
channels, the clothing and footwear could be sold in the
same channels of trade as applicant’s cosmetics. Without
evidence in support of this contention, we simply cannot
accept the examining attorney’s statement that clothing is
presumed to be sold in beauty shops, beauty supply stores
and cosmetic and toiletry stores. While the examining
attorney has relied on third-party registrations of marks
for retail store services featuring, among other things,
clothing and cosmetics, there is no evidence to suggest
that the types of retail stores referred to in these
registrations are the types of personal care specialty
stores in which applicant’s products, as identified in the
application, could be sold.4 There simply is no evidence to
show this to be true. The difference in trade channels
weighs in favor of applicant’s position.
The fact that applicant’s cosmetics may be sold only
in personal care specialty stores, however, is insufficient

4 Given the range of goods featured in some of the retail store
services (see, e.g., Registration No. 2710538 that lists retail
store services featuring not only clothing and cosmetics, but
also leather bags, eyewear, and jewelry), it is reasonable to say
that these retail stores are not beauty shops, beauty supply
stores, or cosmetic and toiletry stores.
Ser No. 78194018
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to distinguish source when the goods are sold under
identical marks. See In re Peebles Inc., 23 USPQ2d 1795
(TTAB 1992)[likelihood of confusion found between
MOUNTAINHIGH 1 for coats sold in applicant’s store and
MOUNTAIN HIGH for retail outlet services for camping and
mountain climbing equipment]. Purchasers who shop in
personal care specialty stores also shop in retail outlets
where clothing is sold. A consumer who is familiar with
DIAMOND GIRL brand clothing that she buys at a retail
apparel store at the mall, and who then goes into a
cosmetics specialty store and encounters DIAMOND GIRL brand
skin lotions, creams and body soaps, likely will believe
that the goods originate from the same source. In the
past, the Board has found likelihood of confusion when the
identical mark is applied to items of clothing and
cosmetics. See In re Barbizon International, Inc., 217
USPQ 735 (TTAB 1983)[BARBIZON--“[T]he fact that goods are
not sold together or through the same outlets does not
matter, especially where identical marks are involved, if
they are shown to be related in some manner and could be
encountered by the same persons under conditions that might
suggest a common origin.”]; and In re Cosmetically Yours,
Inc., 171 USPQ 563 (TTAB 1971)[DATE MATES] and cases cited
therein.
Ser No. 78194018
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Insofar as the classes of purchasers are concerned,
there is an overlap. It is clear that both clothing and
cosmetics are bought by the same purchasers, namely,
ordinary consumers. Although the record is silent on the
cost of the respective goods, we must assume that the
clothing and cosmetics may be at any price point. In the
case of relatively inexpensive clothing and cosmetics,
consumers may be expected to exercise nothing more than
ordinary care in their purchasing decisions.
We conclude that consumers familiar with registrant’s
clothing and footwear sold under its mark DIAMOND GIRL
would be likely to believe, upon encountering applicant’s
mark DIAMOND GIRL for skin lotions and creams, and body
soaps sold in specialty stores featuring personal care
products, namely, beauty shops, beauty supply stores and
cosmetic and toiletry stores, that the goods originate with
or are somehow associated with or sponsored by the same
entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., supra; and
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Ser No. 78194018
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Decision: The refusal to register is affirmed.