Jennifer H. Messina

Trademark Trial and Appeal Board

Feb 6, 2009

No. 78707738 (T.T.A.B. Feb. 6, 2009)

Mailed: February 6, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jennifer H. Messina
________

Serial No. 78707738
_______

Carl M. Durham, Jr. of WiseMen Legal PC for Jennifer H.
Messina.

Heather Biddulph, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Grendel, Rogers and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Jennifer H. Messina to
register the mark shown below on the Principal Register for
“Ankle bracelets; Bracelets; Costume jewelry; Earrings;
Jewelry; Jewelry chains; Necklaces”

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78707738
2
in International Class 14.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used on or in connection with its
goods, so resembles the mark shown below, previously
registered on the Principal Register for “Jewelry, namely,
diamonds”

in International Class 14,2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.

1 Application Serial No. 78707738 was filed on September 7, 2005
based upon applicant’s assertion of December 1, 2004 as a date of
first use of the mark in commerce in connection with the goods.
The applicant claims color as a feature of the mark, namely,
pink, yellow, black, and white.
The mark consists of the word “Atomic” with a black & white
radiation symbol representing the letter “O” in Atomic; “Atomic”
in white script with uppercase “A,” white letters with black
outline; the word “Rox” with a stylized nugget & orbiting rings
representing the letter “O” in Rox; lowercase “R” & “X” in yellow
with white outline; stylized nugget and orbiting rings in shades
of yellow & pink, band of pink on left of Atomic Rox oval, band
of yellow on right of Atomic Rox oval; “Atomic Rox” against black
oval.
2 Registration No. 3087598 issued on May 2, 2006.

Ser No. 78707738
3
Evidentiary Objection
With its brief, applicant submitted a list of twenty
Internet print-outs, two of which were not made of record
during examination of its involved application. We agree
with the examining attorney that these two print-outs (from
urbandictionary.com and atomicdesign.com) submitted for the
first time with applicant’s brief, are untimely. See
Trademark Rule 2.142(d). See also TBMP §1207 and
authorities cited therein. Accordingly, they have not been
considered in our determination herein.3
Likelihood of Confusion
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

3 We hasten to add that even if we had considered this evidence,
the result would be the same.
Ser No. 78707738
4
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Goods
We first compare applicant’s goods with the goods of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved applications and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”)
In this case, applicant’s goods, identified as “Ankle
bracelets; Bracelets; Costume jewelry; Earrings; Jewelry;
Jewelry chains; Necklaces,” are related on their face to
Ser No. 78707738
5
registrant’s “Jewelry, namely, diamonds,” in that both
identify items of jewelry that are commonly purchased and
worn together. Further, applicant’s broadly worded
“Jewelry” is presumed to encompass registrant’s more
narrowly identified “Jewelry, namely, diamonds.” In
addition, the examining attorney has submitted evidence
from commercial Internet web sites suggesting that both
applicant’s and registrant’s types of goods may emanate
from a common source. The following samples are
illustrative:
Diamonds, bracelets, earrings, necklaces, jewelry
sets, chains
(www.jewelrytelevision.com);

Diamonds, bracelets, earrings, necklaces &
pendants
(www.macys.com);

Diamonds, charm bracelets, jewelry, necklaces,
(www.bluenile.com); and

Diamonds, bracelets, earrings, jewelry
collections
(www.baileybanksandbiddle.com).

In addition, the examining attorney has provided
evidence in the form of use-based third-party registrations
which show that various entities have adopted a single mark
for goods of the type that are identified in applicant’s
applications and the cited registration. See, for example:
Registration No. 2591669 for, inter alia, costume
jewelry, bracelets, necklaces, diamonds;
Ser No. 78707738
6

Registration No. 2768143 for, inter alia,
jewelry, diamonds, bracelets, earrings, costume
jewelry; and

Registration No. 2838465 for, inter alia,
jewelry, necklaces, earrings, anklet, bracelets,
costume jewelry, jewelry, namely, diamonds.

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 and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
The foregoing evidence suggests that goods of the type
offered by applicant as well as registrant are offered by
the same entities and are identified by the same marks. In
light of the foregoing, applicant’s goods clearly are
related to those of registrant, and this du Pont factor
favors a finding of likelihood of confusion.
Channels of Trade
As noted above, we must look to the identification of
goods in the involved application and cited registration to
determine whether any recited limitations in trade or
marketing channels suggest that such goods will be
encountered by different consumers. See Octocom Systems,
Inc., supra; and Paula Payne Products, supra. In this
Ser No. 78707738
7
case, neither applicant’s identification of goods nor that
of registrant contains any limitations regarding the
channels of trade therefor or the consumers to whom the
goods are marketed. Accordingly, applicant’s goods as well
as registrant’s goods are presumed to be suitable for any
use that is normal therefor, and also to move in all normal
channels of trade and be available to all classes of
potential consumers. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Thus, applicant’s arguments regarding the
asserted differences in the marketing channels of
applicant’s and registrant’s goods are misplaced. As a
result, this du Pont factor also favors a finding of
likelihood of confusion.
The Marks
We turn then to the first du Pont factor, i.e.,
whether applicant’s mark and registrant’s mark are similar
or dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). We note initially that the test
under the first 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
Ser No. 78707738
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similar in terms of their overall commercial impression
that confusion as to the source of the goods or services
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 this case, applicant’s mark

is similar to registrant’s mark

in that the first and most prominent word of applicant’s
mark, ATOMIC, is identical to the word portion of
registrant’s mark in sound and meaning. See 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 in the mind of a
purchaser and remembered”). See also Palm Bay Imports,
supra, 396 F.3d 1369, 73 USPQ2d at 1692 [”Veuve” is the
Ser No. 78707738
9
most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to
appear on the label].
We further note that the word portion of applicant’s
mark incorporates the entirety of the word portion of
registrant’s mark, and the orbiting ring design in
registrant’s mark is also incorporated, albeit in slightly
different stylization, in applicant’s mark. Likelihood of
confusion is often found where the entirety of one mark is
incorporated within another. See In re Denisi, 225 USPQ
624, 626 (TTAB 1985)(PERRY’S PIZZA for restaurant services
specializing in pizza and PERRY’S for restaurant and bar
services); Johnson Publishing Co. v. International
Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for
cosmetics and EBONY DRUM for hairdressing and conditioner);
and In re South Bend Toy Manufacturing Company, Inc., 218
USPQ 479, 480 (TTAB 1983)(LIL’ LADY BUGGY for toy doll
carriages and LITTLE LADY for doll clothing).
Viewing the marks as a whole, we find that applicant’s
mark essentially incorporates that of registrant. As a
result, applicant’s ATOMIC ROX and design mark is highly
similar in appearance, sound and meaning to registrant’s
ATOMIC and design mark and thus highly similar in overall
commercial impression. Further, the addition of the
Ser No. 78707738
10
relatively minor background color to applicant’s mark is
not sufficient in this case to obviate likely confusion.
Consumers familiar with registrant’s mark may simply
conclude that applicant’s mark is a modernized version of
the registrant’s mark, perhaps adopted in conjunction with
an expanded product line. When viewed as a whole, the
marks are sufficiently alike that when used on closely
related goods they would be likely to cause confusion.
In view of the above, the factor of the similarity of
the marks weighs in favor of likelihood of confusion.
Sophistication of Purchasers
Applicant contends that purchasers of the involved
goods are sophisticated. However, the evidence of record
simply does not support a finding that applicant’s or
registrant’s goods are available only to sophisticated
purchasers or are otherwise restricted solely to expensive,
“high end” jewelry items that are likely to be purchased by
discriminating buyers. Further, even assuming arguendo
that purchases of applicant’s and registrant’s goods would
involve a deliberate decision-making process, this does not
mean that the purchasers are immune from confusion. As we
view the present case, the high degree of similarity of the
marks and the similarity between the goods outweigh any
sophisticated purchasing decision. See HRL Associates,
Ser No. 78707738
11
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) [similarities of
goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods]. See also In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970) [“Human memories even of discriminating
purchasers...are not infallible.”]. As a result, we find
this du Pont factor to be, at best, neutral.
Actual Confusion
The final du Pont factor discussed by applicant and
the examining attorney is that of the lack of instances of
actual confusion. Applicant asserts that the absence of
actual confusion with third-party Registration No. 0434274
for ATOMIC for various jewelry items suggests no likelihood
of confusion between registrant’s mark and applicant’s
involved mark. However, this registration expired in 1988,
many years prior to the asserted dates of first use in the
cited registration and long prior to the issuance of the
cited registration. Thus, the third-party registration is
evidence of nothing except that it issued and later
expired. See TBMP §704.03(b) (2d ed. rev. 2004) and cases
Ser No. 78707738
12
cited therein. See also Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650 (TTAB 2002).
Further, it is not necessary to show actual confusion
with applicant’s mark or a third-party mark in order to
establish likelihood of confusion. See Weiss Associates
Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025
(Fed. Cir. 1990). Particularly in an ex parte proceeding,
applicant’s assertion of the absence of actual confusion is
of little probative value in our determination on the issue
of likelihood of confusion because the Board cannot readily
determine whether there has been a significant opportunity
for actual confusion to have occurred, such that the
absence of confusion is meaningful. See In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003) (“uncorroborated statements of no known instances of
actual confusion are of little evidentiary value.”). See
also, for example, In re Opus One Inc., 60 USPQ2d 1812,
1817 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025
(TTAB 1984); and In re Jeep Corp., 222 USPQ 333 (TTAB
1984).
Summary
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
Ser No. 78707738
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encountering applicant’s goods rendered under its mark that
the goods originated with or are associated with or
sponsored by the same entity.
Decision: The refusal of registration to the involved
application is affirmed.