Lange Uhren GmbH

Trademark Trial and Appeal Board

Sep 28, 2001

No. 75766264 (T.T.A.B. Sep. 28, 2001)

9/28/01 Paper No. 9
RLS/JMP

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lange Uhren GmbH
________

Serial No. 75/766,264
_______

Eric P. Schellin of Schellin & Associates for Lange Uhren
GmbH.

Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______

Before Simms, Bottorff and Rogers, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Lange Uhren GmbH (applicant), a corporation of the
Federal Republic of Germany, has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark SAXONIA for chronometric instruments; namely, watches,

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/766,264
2
parts of watches and watchbands.1 The Examining Attorney
has refused registration under Section 2(d) of the Act, 15
U.S.C. § 1052(d), on the basis of three registrations, two
of which are held by the same entity. These registrations
are Registration No. 1,468,975, issued December 15, 1987
(Sections 8 and 15 affidavits accepted and acknowledged,
respectively) for the mark SAXONY for jewelry; Registration
No. 1,603,647, issued June 26, 1990 (Sections 8 and 15
affidavits accepted and acknowledged, respectively;
renewed) covering the mark SAXON for jewelry of precious
metals and gems; and Registration No. 1,605,091, issued
July 3, 1990 (Sections 8 and 15 affidavits accepted and
acknowledged, respectively; renewed) covering the mark
SAXON for custom designing of jewelry for others. The last
two registrations are held by the M.B. Saxon Company.
Applicant and the Examining Attorney have submitted briefs
but no oral hearing was requested.
We affirm.
Briefly, applicant argues that its mark is used on a
worldwide basis in connection with extremely expensive
watches. It is applicant’s position that, while

1 Application Serial No. 75/766,264, filed August 2, 1999, under
Section 44(e) of the Trademark Act, based upon ownership of
German Registration No. 2,084,408, issued September 11, 1994.
The German registration indicates that it expires on September
30, 2004.
Serial No. 75/766,264
3
confusion might arguably be likely if applicant’s mark was
SAXON or SAXONY, here applicant’s mark is SAXONIA, which is
different. Also, applicant notes its goods are watches and
not jewelry.
We agree with the Examining Attorney, however, that
applicant’s mark is so similar to the registered marks
SAXON and SAXONY that, as used on watches, watchbands and
parts of watches, confusion is likely.
The determination of likelihood of confusion is based
on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the 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, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
With respect to the goods, it is not necessary that
the goods be identical or even competitive in nature in
order to support a finding of likelihood of confusion. It
is sufficient that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under circumstances that
would give rise, because of the marks used in connection
Serial No. 75/766,264
4
therewith, to the mistaken belief that the goods originate
from or are in some way associated with the same source.
In re International Telephone and Telegraph Corp., 197 USPQ
910 (TTAB 1978). Further, the identifications of goods in
the application and the cited registration control the
comparison of the goods. See Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987)[“[T]he question of likelihood of confusion must
be determined based on an analysis of the mark as applied
to the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
[the] registration, rather than what the evidence shows the
goods and/or services to be.”]; and In re Elbaum, 211 USPQ
639 (TTAB 1981). Thus, we may not consider applicant’s
watches to be only very expensive ones, as it has argued,
and instead must consider applicant’s goods and the goods
and services in the cited registrations to encompass all
possible price points.
With respect to the marks, applicant’s mark SAXONIA is
very similar in sound, appearance and connotation to the
registered marks SAXON and SAXONY. With regard to the
connotation or meaning of the respective marks, the
Examining Attorney has made of record evidence indicating
Serial No. 75/766,264
5
that “Saxonia” names a region of Germany.2 Indeed, the
Examining Attorney maintains that Saxonia appears to be
synonymous with Saxony, an area or region in Germany.
Suffice it to say that we agree with the Examining Attorney
that the marks SAXONIA and SAXONY and SAXON have the same
or similar overall commercial impressions.
With respect to the goods, the Examining Attorney has
made of record a number of exhibits concerning the
relationship of jewelry, watches and the custom design of
jewelry. These include store catalogs showing that the
same retail stores sell both jewelry and watches. Also,
the record contains numerous third-party registrations
covering both watches on the one hand and jewelry (or the
custom design of jewelry) on the other. The Examining
Attorney even notes that in some of these registrations
watches are considered a type of jewelry (“jewelry,
namely…watches”). The Examining Attorney’s position,
therefore, that registrants’ goods could encompass
applicant’s watches seems well taken. Also, excerpts of
articles from the Nexis database indicate that the same
stores sell both watches and jewelry (and custom design
jewelry). It is clear that the same class of purchasers

2 In her final office action, the Examining Attorney withdrew a
refusal that applicant’s mark was primarily geographically
Serial No. 75/766,264
6
may be exposed to the marks of the registrants as well as
to applicant’s mark. See, for example, In re Leonard S.A.,
2 USPQ2d 1800 (TTAB 1987) and Monocraft, Inc. v. Leading
Jewelers Guild, 173 USPQ 506 (TTAB 1972).
Accordingly, we conclude that purchasers, aware of
SAXON and SAXONY jewelry (as well as SAXON custom design of
jewelry) who then encounter applicant’s SAXONIA watches,
watchbands and parts of watches are likely to believe that
the jewelry, watches, watchbands, etc. and the custom
design services all come from or are sponsored or endorsed
by the same source. This is especially true considering
the recollection of the average purchaser, who may have a
fallible memory and retain only a general, rather than a
specific, impression of a trademark. Of course, if we had
any doubt about the issue, that doubt would have to be
resolved in favor of the prior registrants.
Decision: The refusal of registration with respect to
each of the cited registrations is affirmed.

descriptive under Section 2(e)(2) of the Act, because it refers
to a region in Germany.