Euphoria Gems and Beads

Trademark Trial and Appeal Board

Apr 8, 2009

No. 78786324 (T.T.A.B. Apr. 8, 2009)

Mailed: April 8, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Euphoria Gems and Beads
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Serial No. 78786324
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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.