MCM Industries, LLC

Trademark Trial and Appeal Board

Mar 4, 2021

88380496 (T.T.A.B. Mar. 4, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MCM Industries, LLC
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Serial No. 88380496
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Steven Weigler and Cassidy Merriam of EmergeCounsel, LLC,
for MCM Industries, LLC.
Esther Queen, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
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Before Wellington, Wolfson, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
MCM Industries, LLC (“Applicant”) seeks registration on the Principal Register
of the standard character mark JEWELED LULLABY for “jewelry” in International
Class 14.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied

1 Application Serial No. 88380496 was filed on April 10, 2019, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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to jewelry, so resembles the standard character mark LULLABY LINKS (with a
disclaimer of LINKS) for “precious metal jewelry for babies to wear, namely,
necklaces, bracelets, rings, and earrings made of pure silver and 24k gold” in
International Class 14,2 registered on the Principal Register, as to be likely to cause
confusion, to cause mistake, or to deceive.
Additionally, pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a),
the Examining Attorney refused registration for Applicant’s failure to comply with a
requirement to provide a disclaimer of the term JEWELED.
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, this appeal resumed. The appeal is fully briefed. For the reasons
explained below, we reverse the refusal based on the disclaimer requirement;
however, we affirm the refusal to register based on a likelihood of confusion.
I. Evidentiary Objection
Applicant submitted new evidence with its appeal brief and the Examining
Attorney objected to the submission of such evidence.3 Because the record in an
application should be complete prior to the filing of an appeal, see Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d), and TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) §§ 1203.02(e), 1207.01 (2020), we sustain the Examining

2 Registration No. 5094357, issued December 6, 2016.
3 13 TTABVUE 3. All citations in this opinion to the appeal record are to TTABVUE, the
docket history system for the Trademark Trial and Appeal Board. Citations to the
prosecution history of the application are to pages from the Trademark Status & Document
Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO”).
Serial No. 88380496
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Attorney’s objection and do not further consider the objected-to evidence.4 See In re
Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d per curiam, 777
F. App’x 516 (Fed. Cir. 2019); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109
USPQ2d 1593, 1596 (TTAB 2014).
II. Disclaimer
A requirement under Section 6 of the Trademark Act for a disclaimer of
unregistrable matter in a mark is appropriate when that matter is merely descriptive
or generic of the goods or services at issue. See In re Stereotaxis Inc., 429 F.3d 1039,
77 USPQ2d 1087, 1089 (Fed. Cir. 2005). Merely descriptive or generic terms are
unregistrable under Section 2(e)(1) of the Trademark Act and, therefore, are subject
to a disclaimer requirement if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is a ground for refusal of registration. See In re La.
Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1266 (Fed. Cir. 2015); In re
RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012).
The Examining Attorney required Applicant to disclaim the wording JEWELED
on the ground that the term is merely descriptive of Applicant’s jewelry. In support,
the Examining Attorney relies on definitions for the word, as an adjective, meaning
“adorned, set with, or made from jewels” or “a jeweled object has been decorated with

4 In its reply brief, Applicant “recognizes that certain evidence submitted with Applicant’s
appeal brief that was not previously submitted during prosecution will not be considered by
the Board,” (14 TTABVUE 4), but requests that the Board consider Applicant’s arguments
based on other evidence that was timely and properly submitted by Applicant. To be sure,
the Board has given consideration to all of Applicant’s arguments based on properly and
timely submitted evidence.
Serial No. 88380496
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jewels.”5 The Examining Attorney also submitted marketplace evidence showing the
term used descriptively in connection with jewelry by several third parties.6 For
example:
;7
and
.8

5 Attached to October 10, 2019 Office Action, TSDR pp. 2-3.
6 In total, the Examining Attorney attached printouts showing 10 different examples of the
term “jeweled” in use in connection with jewelry. Id., TSDR pp. 4-13.
7 Id., TSDR p. 4. The example here is “jeweled necklaces.”
8 Id., TSDR p. 5.
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The Examining Attorney also argues:
Further, the wording “JEWELED” is a separable component of the mark.
The mark itself is composed of an adjective (JEWELED) and a noun
(LULLABY) and these terms when used together have no well-recognized
meaning or significance such that consumers would view the mark as being
unitary. Thus, the wording “JEWELED” is a separable element of the mark
that must be disclaimed.

Citing In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006) and
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) (October 2018)
§§ 1213.05(b)(iv), (g), (g)(i).
In arguing against the requirement for a disclaimer of JEWELED, Applicant
argues that the term is actually a transitive verb9 and that the Examining Attorney
“completely dismisses Applicant’s arguments regarding third-party evidence of
registrations in Class 14 where the term JEWELED was not required to be
disclaimed. Applicant notes that these were not simply examples of some Class 14
registrations where a disclaimer was not required—there are zero examples of past
registrations where the term has required a disclaimer.” (Emphasis in original). In
support, Applicant relies on 4 registrations for marks with the term: JEWELED
OCCASIONS, JEWELED TRIGGER, JEWELED MOMENTS, and BT JEWELED
(stylized with design), all for “jewelry” and none with a disclaimer.10 Applicant

9 Applicant points to the definition, taken from THE AMERICAN HERITAGE DICTIONARY OF THE
ENGLISH LANGUAGE website and submitted by the Examining Attorney, providing the
meaning for “jeweled” as “tr. v. . . . to adorn with jewels . . . to fit with jewels.” June 20, 2019
Office Action, TSDR p. 20.
10 Copies of the registrations were attached to Applicant’s response filed April 1, 2020, TSDR
pp. 8-11. We note Applicant attached additional registrations for marks with the term
JEWELED; however, these registrations did not cover “jewelry” and thus have little, if any,
probative value in connection with the disclaimer requirement for jewelry goods.
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correctly acknowledges that “each case must be decided on its own facts,” but argues
that “wavering from the Office’s prior decisions is generally more helpful when there
are actually underlying facts that support the divergence from prior procedure —
some underlying fact that makes this case different from the others.”11
Whether the word JEWELED is being used as an adjective or a transitive verb, it
is a modifier and may be understood as describing an object that is adorned or fitted
with jewels. We also take judicial notice of a second definition of the term “jeweled,”
as a transitive verb, meaning “to give beauty to as if with jewels: embellish.”12 A
lullaby is “a song used to lull a child to sleep; cradlesong.”13 Thus, a “jeweled lullaby”
may be understood in an incongruous and nonsensical manner to mean a lulling song
for children that is fitted with jewels or, what is more likely, a “jeweled lullaby” may
be understood as connoting an embellished or beautified version of a lullaby. This
latter, more plausible meaning not only creates a unitary expression but also
incongruously employs the word “jeweled” in the mark in a poetic or metaphoric
manner that is not merely descriptive of the jewelry. In other words, Applicant’s use
of the term JEWELED in its mark can be distinguished from much of the third-party
Internet evidence which shows the term combined with other descriptive or generic,

11 14 TTABVUE 10.
12 “Jeweled.” Merriam-Webster.com. 2021. https://www.merriam-webster.com (March 2,
2021). The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests.
LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed.
Cir. 2016).
13 Definition, from website Dictionary.com, attached to Applicant’s September 17, 2019
Response, TSDR p. 5.
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jewelry-related terms, e.g., bracelet, necklace, etc. Thus, there can be no mistake that
the term “jeweled” in those uses is clearly meant to inform the consumer that a
particular piece of jewelry has been fitted with jewels.
With respect to the Examining Attorney’s reliance on the Board’s Brown-Forman
decision, that case involved the mark GALA ROUGE for wine and whether a
disclaimer of “Rouge” (red) was necessary. The Board affirmed the disclaimer
requirement finding the mark “has no obvious, immediate and inherent unitary
significance which would cause purchasers to view ROUGE as modifying GALA
[meaning ‘party’], rather than as describing the wine.” In re Brown-Forman Corp., 81
USPQ2d 1288.14 In the present case, however, the term “jeweled” is being used as an
adjective or transitive verb, modifying LULLABY, and the entire mark conjures an
embellished or beautified lulling song for babies. Thus, unlike GALA ROUGE, the
combination of terms, JEWELED LULLABY, presents a unitary expression with a
meaning that is not merely descriptive of the goods.
Ultimately, we find that JEWELED, when viewed and understood in Applicant’s
entire mark, JEWELED LULLABY, is not merely descriptive of the goods.
Accordingly, the requirement to disclaim this term, under Section 6(a) of the
Trademark Act, is reversed.

14 It is also notable that “rouge,” as the French equivalent of the word “red,” carries particular
significance in describing a type of wine. Its position as the last word in the mark emphasizes
that highly descriptive significance. No similar attribute of “jeweled” is under consideration
here.
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III. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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 (CCPA 1973)
(“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019). When analyzing these factors, the overriding concern is not only
to prevent buyer confusion as to the source of the goods, but also to protect the
registrant from adverse commercial impact due to use of a similar mark by a
newcomer. In re Country Oven, 2019 USPQ2d 443903 at *2-3 (citing In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993)).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”).
A. Relatedness of the Goods; Their Trade Channels & Classes of
Consumers
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods,” and the third DuPont factor concerns “[t]he similarity or dissimilarity of
established, likely-to-continue trade channels.” Stone Lion Capital Partners, LP v.
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Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159 (Fed. Cir. 2014) (quoting
DuPont, 177 USPQ at 567). We make our determination under these factors based on
the goods as they are identified in the application and the cited registration. In re Ox
Paperboard, 2020 USPQ2d 10878, *5 (TTAB 2020) (citing In re Detroit Athletic Co.,
903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018); Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Sys., Inc. v. Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990)).
Here, the goods are legally identical given Applicant’s “jewelry” encompasses
Registrant’s more tailored identification of “precious metal jewelry for babies to wear,
namely, necklaces, bracelets, rings, and earrings made of pure silver and 24k gold.”
In addition, because the involved goods are legally identical, we presume that they
travel through the same channels of trade to the same classes of purchasers,
considerations under the third DuPont factor. See American Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011)
(where the services were legally identical, “the marketing channels of trade and
targeted classes of consumers and donors are the same”); see also In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to
rely on this legal presumption in determining likelihood of confusion).
In view of the identity of goods and trade channels, the second and third DuPont
factors weigh strongly in favor of a finding that confusion is likely.
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B. The Similarity of the Marks
We turn now to the first DuPont factor, involving a comparison of the marks in
appearance, sound, and connotation, and commercial impression. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” Inn at St. John’s, 126 USPQ2d at
1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We
assess not whether the marks can be distinguished in a side-by-side comparison, but
rather whether their overall commercial impressions are so similar that confusion as
to the source of the goods offered under the respective marks is likely to result. Cai
v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018)
(citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713 (Fed. Cir. 2012)).
In comparing the marks, we are mindful that where, as here, the goods are legally
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prods. Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Serial No. 88380496
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Here, we find the marks JEWELED LULLABY and LULLABY LINKS are very
similar based on the presence in both marks of the word LULLABY. The shared term
helps make the marks look and sound alike.
Viewing the marks in their entireties, as we must, we find the overall commercial
impressions created by them are extremely similar. That is, as discussed supra,
Applicant’s mark, will likely be understood by consumers as conveying an expression
of a fanciful lullaby. Similarly, the commercial impression derived from Registrant’s
mark is also dominated by a lullaby connotation because not only does the mark begin
with the term LULLABY, but the latter term, LINKS, is merely descriptive of jewelry
and was disclaimed by the Registrant.15 Disclaimed matter that is descriptive of or
generic for a party’s goods or services is typically less significant or less dominant
when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
In weighing the importance of both marks sharing the term LULLABY, we note
that this word has no demonstrated meaning in connection with jewelry and thus it
is considered arbitrary and strong in the context of the involved goods. At best, it may
be slightly suggestive of Registrant’s jewelry that is “to be worn by babies.” However,
that same suggestive meaning may be conveyed by Applicant’s JEWELED LULLABY

15 As the Examining Attorney notes in her brief (13 TTABVUE 8), there is “third party
evidence of record [that] clearly shows that the goods in the registration, such as necklaces,
contain links,” citing evidence attached to June 20, 2019 Office Action, TSDR pp. 4-5, 8, 19
and October 10, 2019 Office Action, TSDR pp. 4, 7- 9, and 11-12.
Serial No. 88380496
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given Applicant’s goods may also include jewelry to be worn by babies. We further
note that there is no evidence of any third-party use of the term LULLABY or that it
is otherwise weak in connection with jewelry. Indeed, in this regard, the Examining
Attorney submitted evidence showing that Applicant and Registrant are the only
entities seeking to register marks with this term.16
In sum, we find the marks, JEWELED LULLABY and LULLABY LINKS are
overall similar in appearance, sound, and connotation, and commercial impression,
and this DuPont factor also weighs in favor of a finding a likelihood of confusion.
C. Conclusion on Likelihood of Confusion
Because the goods are legally identical and travel in the same trade channels, we
conclude that consumers are likely to be confused as to their source when these goods
are sold under the overall similar marks, JEWELED LULLABY and LULLABY
LINKS.
Decision:
The refusal to register Applicant’s mark based on the disclaimer requirement
under Section 6(a) of the Trademark Act is reversed. However, we affirm the refusal
to register under Section 2(d) of the Trademark Act based on a likelihood of confusion.

16 In the May 21, 2020 Office Action, at TSDR p. 1, the Examining Attorney states that a
“search of record dated 5/21/20 from the USPTO’s X-Search database show[s] that only three
records exist for jewelry,” and included a copy of an application (Ser. No. 88776954) owned
by Applicant. The search results from the USPTO’s X-Search database were placed in the
Application file on the same date.