Euphoria Gems and BeadsDownload PDFTrademark Trial and Appeal BoardApr 8, 2009No. 78786324 (T.T.A.B. Apr. 8, 2009) Copy Citation Mailed: April 8, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Euphoria Gems and Beads ________ Serial No. 78786324 _______ Euphoria Gems and Beads, Pro Se. Myriah A. Habeeb, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Holtzman, Cataldo and Mermelstein, Administrative Trademark Judges. Opinion by Holtzman, Administrative Trademark Judge: Applicant, Euphoria Gems and Beads, has filed an application to register the mark shown below, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser Nos. 78786324 2 for goods ultimately identified as follows:1 Jewelry, gemstone jewelry, namely, necklaces, bracelets, rings, earrings, gemstones, precious gemstones, semi-precious gemstones, jewelry components, namely, bends used in the manufacture of jewelry, jewelry findings, jewelry care, namely, jewelry boxes and jewelry organizers, in Class 14. The trademark examining attorney has 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 registered mark EUPHORIA, in standard characters, for "jewelry," in Class 14, as to be likely to cause confusion.2 When the refusal was made final, applicant appealed. Briefs have been filed. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, however, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods 1 Serial No. 78786324, filed January 6, 2006, based on an allegation of first use and first use in commerce on December 30, 2005. The wording "GEM AND BEADS" is disclaimed. "Color is not claimed as a feature of the mark." 2 Registration No. 3139850, issued September 5, 2006. Ser Nos. 78786324 3 and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). The goods in the application are in significant part either identical or legally identical to the goods identified in the cited registration. The application and registration both identify "jewelry," and registrant's "jewelry" would encompass the specific items of jewelry listed in the application such as "necklaces" and "bracelets." Because there are no restrictions in either the application or the cited registration, we must assume that these identical goods are sold in the same channels of trade, and directed to the same purchasers. Genesco Inc. v. Martz, 66 USPQ2d 1260 (TTAB 2003). Furthermore, the purchasers of jewelry are ordinary members of the general public who, especially considering the relatively inexpensive nature of, for example, costume jewelry which would be encompassed by the term "jewelry," would not be expected to exercise a high degree of care and thus would be more prone to confusion. See Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985). We turn next to a consideration of the marks, keeping in mind that when marks would appear on identical goods, the degree of similarity between the marks necessary to support a finding of likelihood of confusion declines. Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). Ser Nos. 78786324 4 In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See du Pont, supra. See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test under this du Pont factor is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impressions that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general, rather than a specific, impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In addition, while marks must be compared in their entireties, one feature of a mark may have more significance than another, and in such a case there is nothing improper in giving greater weight to the more significant feature. "Indeed, this type of analysis appears to be unavoidable." In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The word EUPHORIA is registrant's entire mark. One of the strongest impressions of applicant's composite mark is conveyed by the identical word EUPHORIA. The disclaimed term GEMS AND BEADS in applicant's mark, while not ignored in the analysis, is at least highly descriptive of jewelry components, and it is therefore less Ser Nos. 78786324 5 significant in creating the mark's commercial impression. See National Data, supra. Moreover, the word EUPHORIA is the first word purchasers will see or hear when encountering applicant's mark and it is therefore more likely to have a greater impact on purchasers and be remembered by them when they encounter the two marks at separate times. See Palm Bay, 73 USPQ2d at 1692-93 (The term VEUVE in the mark VEUVE CLICQUOT is a "'prominent feature' as the first word in the mark"); Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ("it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered"). Applicant's mark also includes the phrase FOR THE LOVE OF THE STONES. However, EUPHORIA GEMS AND BEADS is the most prominent and eye-catching wording in the mark. It is displayed in the center of the mark, actually as the focal point of the mark, in lettering that is much larger and bolder than the lettering of the other phrase. Furthermore, the design element in applicant's mark and the highly stylized letters EGB, to the extent they are even recognizable as particular letters, are less important than this wording in creating an impression. It is generally held that as between words and a design, the words are normally accorded greater weight because they would be used by purchasers to request the goods or services. See In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also In re Electrolyte Laboratories Ser Nos. 78786324 6 Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) ("A design is viewed, not spoken, and a stylized letter design can not be treated simply as a word mark."). Neither the additional wording nor the design element in applicant's mark significantly affects the meaning or the commercial impression created by the word EUPHORIA, alone. The word suggests the same feeling or emotion associated with applicant's jewelry as it suggests in connection with registrant's jewelry.3 There are clearly differences between the marks. However, because the identical term EUPHORIA is registrant's entire mark and forms a significant part of applicant's mark, we find that the marks as a whole are similar in sound, appearance, connotation and commercial impression, and that the overall similarities between the marks outweigh their differences. Applicant argues that registrant's mark is entitled to a limited scope of protection, contending for the first time in its brief, that there are numerous third-party registrations which consist of or include the word EUPHORIA. As the examining attorney points out, however, applicant's reference to these registrations is untimely under Trademark Rule 2.142(d), and moreover unsupported by copies of the registrations. See In re Carolina Apparel, 48 Ser Nos. 78786324 7 USPQ2d 1542, 1542 n.2 (TTAB 1998) ("The Board does not take judicial notice of third-party registrations, and the mere listing of them is insufficient to make them of record"). Thus, we give this evidence no consideration. Applicant argues that merely because the two marks share a common term does not necessarily render the marks confusingly similar. However, it is generally held that the addition of other matter to one of two otherwise confusingly similar marks will not serve to avoid a likelihood of confusion. See, generally, First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988); In re Champion Oil Company, 1 USPQ2d 1920 (TTAB 1986); In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985); and In re C. F. Hathaway Company, 190 USPQ 343 (TTAB 1976). As applicant acknowledges, there are exceptions to this general principle. The additional matter has been found sufficient to distinguish the marks under circumstances where: (i) there are recognizable differences in the shared term, for example, in Rockwood Chocolate Co., Inc. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA, 1967), ROCKWOOD BAG-O-GOLD for candy was found not confusingly similar to CUP-O-GOLD for candy; or (ii) the appropriated matter is highly suggestive or merely descriptive or 3 The dictionary listing submitted by the examining defines "euphoria" as meaning "extreme happiness: a feeling of great joy, excitement, or well- being." encarta.msn.com. Ser Nos. 78786324 8 has been frequently used or registered by others in the field for the same or related goods or services, for example, in In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974), MEN'S WEAR for a semi-monthly magazine was found not confusingly similar to MMI MENSWEAR for fashion consulting for men because "MENSWEAR" is merely descriptive of such services; or (iii) the marks in their entireties convey significantly different meanings or commercial impressions, for example, in Lever Brothers Company v. The Barcolene Company, 463 F.2d 1107, 174 USPQ 392 (CCPA 1972), "ALL CLEAR!," a play on an expression popularized in connection with air raid drills, was found not confusingly similar to ALL, both for household cleaning products; or (iv) the incorporated matter has been so merged with the other matter that it "loses its individual identity," for example, in Castle & Cooke, Inc. v. Oulevay, S. A., 370 F.2d 359, 152 USPQ 115, 115 (CCPA 1967), FARENDOLE was found not confusingly similar to DOLE for related food products, noting that DOLE "is so merged into" FARANDOLE "that it loses its individual identity therein." None of the exceptions applies here. In this case, there are no differences in the common portions of the marks. They are identical. While EUPHORIA may be suggestive of jewelry, there is no evidence that the term is highly suggestive of such goods or that it has been commonly used or registered by others for similar goods. The commercial impressions created by the two marks are not Ser Nos. 78786324 9 distinctly different, as we noted above. Nor is EUPHORIA indivisible from or so merged with the remaining matter that it loses its identity. It remains a separately recognizable portion of applicant's mark. We recognize that EUPHORIA, as a suggestive mark, is not entitled to the broadest scope of protection. However, the mark is at least entitled to protection against the registration of a similar mark for identical goods. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks as between strong marks). Purchasers who are familiar with applicant's composite mark that consists in large part of the word EUPHORIA for jewelry, upon seeing EUPHORIA, alone, used on the identical goods, would assume a common source for the goods. They may assume the mark EUPHORIA identifies a particular line of applicant's jewelry, or they may perceive the term as merely a shortened version of applicant's full mark. See Big M. Inc. v. The United States Shoe Corp., 228 USPQ 614, 616 (TTAB 1985) ("we cannot ignore the propensity of consumers to often shorten trademarks..."). Applicant's argument that its use in commerce and trade name registration for EUPHORIA GEMS AND BEADS in the State of Colorado predate the filing date for registrant's underlying registration is irrelevant. As the examining attorney points out, priority of use Ser Nos. 78786324 10 is not an issue in an ex parte Section 2(d) case. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) (applicant's argument that its use antedated a registered mark was effectively an improper collateral attack on the validity of the registration, which should have been made in formal cancellation proceedings). Section 2(d) precludes the registration of a mark which so resembles a mark registered by another as to be likely when applied to applicant's goods, to cause confusion. In view of the express language of the statute, the question of priority of use is not germane to applicant's right to register. As a final matter, we note that applicant has attached a copy of a proposed, unexecuted consent agreement to its appeal brief. Applicant states that it has been unable to reach registrant's counsel "in order to facilitate the completion of this document," but that applicant "has no reason to believe that [registrant] has objections to signing the agreement." Applicant requests that the Board suspend the appeal and remand the case to the examining attorney for consideration of the consent agreement. The Board will grant a request to suspend and remand for consideration of a consent agreement at any time prior to the rendering of the Board's final decision on the appeal, if the request is accompanied by the consent agreement. See TBMP §1207.02 (2d ed. rev. 2004). The problem here is that we do not have a consent agreement. Although applicant may intend to seek a consent Ser Nos. 78786324 11 from registrant, no such agreement has been reached and no such agreement is of record. Thus, applicant has not shown good cause for its request to suspend and remand, and the request is accordingly denied. In view of the foregoing, and because similar marks are used in connection with identical goods that are sold in the same channels of trade to the same ordinary consumers, likelihood of confusion exists. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation