Leslie Dawn Homanv.William L. Rich

Trademark Trial and Appeal Board

Jul 2, 2008

No. 91174098 (T.T.A.B. Jul. 2, 2008)

Mailed:
July 2, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Leslie Dawn Homan
v.
William L. Rich
_____

Opposition No. 91174098
to Application Serial No. 78809143
filed on 2/7/2006
_____

Molly K. Shipp of Nokes & Quinn for Leslie Dawn Homan.

William L. Rich Pro Se.
______

Before Seeherman, Rogers and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Leslie Dawn Homan (Opposer) has opposed the application
by William L. Rich (Applicant) to register the mark Jewels
that Rock in standard characters for goods identified as
“jewelry namely rings, bracelets, cuff links and pendants”
in International Class 14. Applicant filed the application
based on his claim of a bona fide intention to use the mark
in commerce under Trademark Act Section 1(b), 15 U.S.C.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91174098
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§ 1051(b). Applicant has disclaimed the word “JEWELS.” The
application was filed on February 7, 2006.
As ground for the opposition, Opposer asserts priority
and a likelihood of confusion with her mark Sterling Silver
Jewelry That Rocks under Trademark Act Section 2(d), 15
U.S.C. § 1052(d). Opposer asserts use of her Sterling
Silver Jewelry That Rocks mark since 2004 in connection with
jewelry.
In his answer Applicant admits that Opposer has
priority, but denies that the marks are confusingly similar
and denies that the goods are similar.
The record consists of the pleadings, the file of the
opposed application and the testimony of Leslie Dawn Homan
on her own behalf. Opposer also filed a brief. Applicant
did not submit any evidence, nor did Applicant file a brief.
Opposer has both asserted and established her interest
in the proceeding and thereby satisfied the standing
requirement by establishing her use of the mark Sterling
Silver Jewelry That Rocks, as discussed below. Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
As we stated, in his answer Applicant has admitted that
Opposer has priority. Furthermore, through the testimony of
Ms. Homan, Opposer has proven that Opposer used the Sterling
Silver Jewelry That Rocks mark in commerce prior to the
filing date of the opposed application. Specifically, Ms.
Opposition No. 91174098
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Homan states that she used the Sterling Silver Jewelry That
Rocks mark in commerce on “rings, necklaces, charms,
pendants, pins, earrings” in 2004. Homan Testimony at 8-9,
16 and 31. Ms. Homan also provides an example of the use on
a pouch in which the items are sold. Exhibit A to Homan
Testimony. In the absence of any evidence establishing use
by applicant as of an earlier date, we conclude that the
application filing date, February 7, 2006, is both
applicant’s constructive use date and applicant’s priority
date for purposes of this proceeding. See Trademark Act
Section 7(c), 15 U.S.C. § 1057(c). Accordingly, the
evidence of record also establishes opposer’s priority.
Turning to the merits of the likelihood-of-confusion
claim, the opinion in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
the parties. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Opposition No. 91174098
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First, we address the goods of the parties. The goods
of Opposer and Applicant need not be identical to find
likelihood of confusion under Section 2(d). They need only
be related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the goods originate from the same
source. In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978). See also On-Line Careline
Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471
(Fed. Cir. 2000).
Furthermore, in comparing the goods we must consider
the goods as identified in the application. 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.”).
Applicant’s goods are identified as “jewelry namely
rings, bracelets, cuff links and pendants.” As we indicated
above, Opposer has established that she uses her mark on
rings and pendants, among other goods. Accordingly, we
Opposition No. 91174098
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conclude that the goods of the parties are, at least in
part, identical and otherwise related.
Turning to the marks of the parties, we note that, “the
degree of similarity [between the marks] necessary to
support the conclusion of likely confusion declines” when
the goods are identical. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992).
In comparing the marks we must consider the appearance,
sound, connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-by-
side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks.” Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975) (internal citations omitted).
Opposition No. 91174098
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Applicant’s mark is Jewels that Rock; Opposer’s mark is
Sterling Silver Jewelry That Rocks. While there are
specific differences between the marks, the common features
are far more significant. The marks refer to “Jewels that
Rock” and “… Jewelry That Rocks” respectively. The phrases
are highly similar. The slight difference in form is too
subtle to begin to distinguish the marks.
Opposer’s mark also includes the term, “Sterling
Silver,” but this generic term does not change the
commercial impression of the marks or otherwise distinguish
them. See In re Dixie Restaurants, Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997).
Most importantly, both marks convey the same
connotation and commercial impression, that is, that the
jewelry is fashionable, and perhaps, in tune with popular
culture. Accordingly, we conclude that the marks are
similar in appearance, sound, connotation and commercial
impression.
Finally, we conclude that there is a likelihood of
confusion between Applicant’s Jewels that Rock mark, as
applied to “jewelry namely rings, bracelets, cuff links and
pendants,” and Opposer’s Sterling Silver Jewelry That Rocks
mark as applied to jewelry that is, in part, identical and
otherwise related to applicant’s jewelry.
Decision: We sustain the opposition.
Opposition No. 91174098
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