Samantha Thavasa Japan Limited

Trademark Trial and Appeal Board

Jan 24, 2006

No. 78309325 (T.T.A.B. Jan. 24, 2006)

Mailed: January 24, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Samantha Thavasa Japan Limited
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Serial No. 78309325
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David A. Weinstein of David A. Weinstein for Samantha Thavasa Japan
Limited.

Nora Buchanan Will, Trademark Examining Attorney, Law Office 116
(M. L. Hershkowitz, Managing Attorney).
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Before Hohein, Holtzman and Walsh, Administrative Trademark Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Samantha Thavasa Japan Limited, has filed an
application to register the mark shown below

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser Nos. 78309325
2
for the following goods, as amended:1
"Precious metal; nut-crackers of precious metal; pepper
pots of precious metal; sugar bowls of precious metal;
salt shakers of precious metal; egg stands of precious
metal; napkin holders of precious metal; napkin rings
of precious metal; bowls of precious metal--[sic]
toothpick holders of precious metal; sewing boxes of
precious metal; candle extinguishers and candlesticks
of precious metal; jewel cases of precious metal; vases
and flower bowls of precious metal; trophies of
precious metal; commemorative shields of precious
metal; trinkets, namely, necklaces, bracelets, pierced
earrings, earrings, rings; purses and wallets of
precious metal; jewelry and their [sic] imitation; shoe
clips of precious metal; clocks and watches; silver;
pearls; precious metal imitation coated gold and coated
silver" in International Class 14.

"Knitting needles for knitting machines; needles;
eyelets for clothes; ribbons; tassels; braids; knitting
pins; sewing boxers [sic]; dressmakers' tracing
spatulas; sewing thimbles; pin and needle cushions;
non-precious metal needle cases; non-precious metal
emblems for wear; non-precious metal badges for wear;
buckles for clothing; brooches for clothing; non-
precious metal bonnet pins; buttons for clothing;
artificial flowers; false beards; false moustaches;
non-electric hair curlers; non-precious metal shoe
clips; shoe eyelets; shoe laces; metal shoe fasteners"
in International Class 26.

The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Serial No. 78309325, filed October 3, 2003, based on an allegation of a
bona fide intention to use the mark in commerce. The application includes
a claim of ownership of Registration No. 2386456 for the mark SAMANTHA
THAVASA (in standard character form) for various goods in Class 18; and
a statement that "the mark does not identify a particular living
individual." The examining attorney's initial requirement for a
disclaimer of TIARA was withdrawn upon applicant's subsequent deletion of
"crowns" from the identification of goods.

Ser Nos. 78309325
3
applicant's mark, when applied to applicant's goods, so resembles
the registered marks shown below (all in standard character form)
as to be likely to cause confusion. The first two registrations
listed below are owned by the same entity.
Registration No. 862377:2
TIARA
For: "jewelry made of precious metals and costume jewelry-
namely, finger rings, pendants, earrings, bracelets,
necklaces, tie tacks, cuff links, and brooch pins" in
International Class 14.

Registration No. 1577689:3
TIARA

For: "watches; jewelry made of precious metals; costume
jewelry - namely, finger rings; pendants; earrings; bracelets;
necklaces; tie tacks; cuff links and brooch pins" in
International Class 14.

Registration No. 842514:4

TIARA

For: "hair pieces" in International Class 26.

When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
As a preliminary matter, we note that the examining attorney,
in her first Office action, advised applicant that the refusal to

2 Issued on December 24, 1968 to Tiara Corporation; renewed.

3 Issued on January 16, 1990 to Tiara Corporation; renewed.

4 Issued on January 16, 1968 to Kanegafuchi Kagaku Kogyo Kabushiki Kaisha;
renewed.
Ser Nos. 78309325
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register would be withdrawn if applicant amended the application to
delete "false beards" and "false moustaches" from Class 26, and the
following goods from Class 14: "jewel cases of precious metal" and
"trinkets, namely, necklaces, bracelets, pierced earrings,
earrings, rings; purses and wallets of precious metal; jewelry and
their [sic] imitation; shoe clips of precious metal; clocks and
watches; silver; pearls; precious metal imitation coated gold and
coated silver." According to the examining attorney, these are the
only goods which create a conflict with the goods listed in the
cited registrations. Applicant declined to amend the application
as suggested, contending that there is no likelihood of confusion
in this case as to any of the goods identified in the application.
The examining attorney continued to maintain, in subsequent Office
actions, that the refusal could be overcome by deletion of the
specified goods, and ultimately characterized the issue on appeal
as whether the specified goods are likely to cause confusion with
the goods in the three registrations.
It is unclear why the examining attorney restricted the
refusal in this manner.5 Ordinarily, a refusal to register under
Section 2(d) is made on the basis of the entirety of the class of
goods and not merely one or more individual items of goods in the

5 As a result of this restriction, the Board will not consider the
question of likelihood of confusion as it pertains to "brooches for
clothing" which are also listed in applicant's Class 26 goods. However,
it is not understood why these goods were not included in the group of
goods, i.e., jewelry, for which registration has been refused.
Ser Nos. 78309325
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class. That said, as the examining attorney has expressly confined
the refusal only to certain goods in each class, the appeal will be
decided only on the basis of those specified goods.6
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, including the
similarities of the marks and the similarities of the goods. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
The specified goods in Class 14 of the application are, in
significant part, either identical or legally identical to the
goods identified in Registration Nos. 862377 and 1577689. Both the
application and the two registrations include necklaces, bracelets,
earrings and rings. Watches also are listed in both the
application and Registration No. 1577689. In addition, applicant's
broadly described "jewelry and their [sic] imitation" would fully
encompass registrant's "jewelry made of precious metals" as well as
the specific items of jewelry listed in the two registrations such
as "brooch pins" and "pendants."
As to the goods in Class 26, the false beards and false
moustaches listed in the application are closely related to the

6 We point out, however, that although the examining attorney's refusal
pertains to only certain items of goods in the application, our decision
will be determinative as to all of the identified goods.
Ser Nos. 78309325
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hair pieces identified in Registration No. 842514 in the sense that
they may be used for the same purpose, that is, they all may be
worn as complementary parts of a costume or facial disguise.
Because there are no restrictions as to the channels of trade
or classes of purchasers in either the application or the cited
registrations, the respective identical and closely related goods
must be deemed to be sold in the same channels of trade, and
directed to the same purchasers. Genesco Inc. v. Martz, 66 USPQ2d
1260 (TTAB 2003).
We turn then to a consideration of the marks. Applicant
contends that the examining attorney dissected its mark in
concluding that the marks are similar instead of considering the
overall combination of components that applicant seeks to register.
In particular, applicant argues that the registered marks consist
of a single word in typed form whereas applicant's mark consists of
at least five separate elements including a design; that the shared
word TIARA appears as the second part of a two-word portion of the
mark; that in view of its position in the mark and as just one of a
number of other components, its significance is completely
different than the registered marks; that the marks are dissimilar
in sound in that the focus in sound would be on the word SAMANTHA
because that word appears twice in the mark and is the first word
of each two-word group; that the marks are different in appearance
in that as a multi-component mark, the word TIARA would not in the
Ser Nos. 78309325
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normal course of trade be alone singled out as the means of
identifying the source of the goods; and that the marks are
different in meaning in that the only meaning associated with TIARA
in registrants' marks is "crown" whereas TIARA in applicant's mark
might also be viewed as the name of a person or the name of two or
more persons having the same given name SAMANTHA.
We find that applicant's mark SAMANTHA TIARA SAMANTHA THAVASA
ST and design and registrants' marks TIARA convey similar meanings
and create similar commercial impressions. We recognize that there
are a number of components other than the word TIARA in applicant's
mark. However, the word TIARA is registrants' entire mark. There
are no other portions in registrants' marks to distinguish them
from the mark in the application.
While marks must be compared in their entireties, one feature
of a mark may have more significance than another, and there is
nothing improper in giving greater weight to the more significant
feature. See In re National Data Corp., 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985); and Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000) ("the Board was
justified in examining each component of the mark ... and the
effect of that component on the issue of likelihood of confusion as
between the respective marks in their entireties.").
One of the strongest impressions of applicant's composite mark
is conveyed by the term SAMANTHA TIARA. That wording is displayed
Ser Nos. 78309325
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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
SAMANTHA THAVASA which appears, spatially separated from SAMANTHA
TIARA, and in very small lettering below it. It is by far the most
visually prominent wording in the mark, and is likely to make a
greater impression on purchasers and to be remembered by them. The
design element and the stylized letters ST, to the extent they are
even recognizable as particular letters, are less important than
this wording in creating an impression because it is the wording
that would be used by purchasers to request the goods. See In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). See also
In re Electrolyte Laboratories 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.").
The additional wording and design elements in applicant's mark
do not significantly affect the meaning or the commercial
impression created by TIARA alone. The word "tiara" means "crown,"
as applicant points out, and therefore suggests jewelry as well as
an accessory for a costume or disguise. While it is possible that
purchasers of applicant's goods may think of TIARA in the context
of SAMANTHA TIARA as a surname, there is no evidence that TIARA is
in fact a surname. It is far more likely that purchasers would
think of the dictionary meaning of the word in relation to jewelry
and costume accessories and therefore perceive the meaning of TIARA
Ser Nos. 78309325
9
in both applicant's and registrants' marks as being the same. The
crown design in applicant's mark strengthens the perception of
TIARA as an ordinary dictionary word and further detracts from any
possible perception of SAMANTHA TIARA as a person's name when
viewed in connection with applicant's goods.
We also note that while TIARA may be suggestive of the
identified goods, there is no evidence that word is highly
suggestive or weak in relation to those goods or entitled to
anything less than a normal scope of protection.7 The examining
attorney points out that there are no other registered marks
containing the term TIARA in either the jewelry or costume field.
Purchasers who are familiar with applicant's composite mark
that includes the word TIARA for jewelry or costume disguises, upon
seeing TIARA, alone, used on the identical and closely related
goods, would assume a common source for the goods. They may assume
the mark TIARA identifies another line of applicant's goods 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...").

7 Applicant's argument, to the extent we can understand it, that the
restriction of the refusal to only certain goods in the application
somehow limits the scope of protection accorded the registered marks, is
not well taken.

Ser Nos. 78309325
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Furthermore, purchasers of costume disguises and jewelry, or
at least the costume items of jewelry, are ordinary members of the
general public who, especially considering the inexpensive nature
of these goods, would not be expected to exercise a high degree of
care and thus would be more prone to confusion.
In view of the foregoing, we find that a likelihood of
confusion exists between applicant's mark SAMANTHA TIARA SAMANTHA
THAVASA ST and design and registrants' marks TIARA for identical
and closely related goods.
To the extent that there is any doubt on the issue of
likelihood of confusion with respect to the cited registrations, it
is settled that such doubt must be resolved in favor of the prior
registrants. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687
(Fed. Cir. 1993).
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.