Sharon Bossert

Trademark Trial and Appeal Board

Dec 12, 2001

No. 75364899 (T.T.A.B. Dec. 12, 2001)

12/12/01
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
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In re Sharon Bossert
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Serial No. 75/364,899
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Denise C. Mazour for Sharon Bossert.

Marc J. Leipzig, Trademark Examining Attorney, Law Office
115 (Thomas B. Vlcek, Managing Attorney).
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Before Seeherman, Hanak and Rogers, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge.

Sharon Bossert (applicant) seeks to register
CHERISHED BEADS in typed drawing form for “personalized
bracelets” in Class 14 and for “rosaries” in Class 16.
The multiple class application was filed on September 29,
1997 with a claimed first use date of May 2, 1997 as to
personalized bracelets and May 7, 1997 as to rosaries.
The Examining Attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the
basis that applicant’s mark, as applied to applicant’s
goods, is likely to cause confusion with the mark
CHERISHED, previously registered in typed drawing form
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
for “ladies’ diamond finger rings.” Registration No.
818,647.
When the refusal to register was made final,
applicant
Ser. No. 75/364,899

appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant requested and later
waived an oral hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the marks and the similarities of the
goods. 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.”)
Considering first the marks, applicant has adopted
the registered mark in its entirety, and merely added to
it the descriptive word BEADS. In this regard, we note
that the plural form of the word “bead” is defined as
meaning the following: “a) string of beads, necklace; b)
a rosary.” Webster’s New World Dictionary (2d ed. 1975).
Moreover, in the first Office Action, the Examining
Attorney stated that “the applicant must disclaim the
descriptive wording BEADS apart from the mark as shown.”
Applicant then complied with this disclaimer requirement.
While marks must be compared in their entireties,
there
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Ser. No. 75/364,899

is nothing improper in giving more weight to the dominant
portion of a composite mark. With regard to applicant’s
mark CHERISHED BEADS, the arbitrary word CHERISHED is the
dominant portion of the mark, given the fact that the
word BEADS in applicant’s mark is, at a minimum, highly
descriptive as applied to personalized bracelets and
rosaries. 3 J. McCarthy, McCarthy on Trademarks and
Unfair Competition Section 23:45 at page 23-99 (4th ed.
2001). Given the clear dominance of the CHERISHED
portion of applicant’s mark, we find that applicant’s
mark, in its entirety, is extremely similar to the
registered mark CHERISHED.
Turning to a consideration of the goods, because
this is a multiple class application, we must first make
a comparison of the relationship between ladies’ diamond
finger rings and personalized bracelets, and then make a
separate comparison of the relationship between ladies’
diamond finger rings and rosaries.
At the outset, we note that applicant has conceded
at page 5 of her brief that “personalized bracelets and
diamond rings are both jewelry.” Moreover, the Examining
Attorney has made of record third-party advertisements
appearing on
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Ser. No. 75/364,899

the web in which the third parties advertise and offer
for sale both ladies’ diamond finger rings and bracelets.
Some of these third parties specifically note that they
offer personalized jewelry. For example, an
advertisement by DaYo Designs states that it “makes
custom jewelry, much of it personalized.” The
advertisement then goes on to give examples of the
various types of personalized jewelry offered, including
rings and necklaces. While bracelets are not
specifically mentioned in this advertisement, we make the
reasonable assumption that any firm that could make a
personalized necklace could likewise make a personalized
bracelet.
Another advertisement made of record by the
Examining Attorney was placed by Trio Jewelry, Inc. It
emphasizes that all of Trio’s jewelry is handmade. This
advertisement then pictures specimens of rings and
bracelets which have been personalized with various
feminine names.
Applicant has made of record no countervailing
evidence, such as affidavits, even suggesting that the
same firms do not offer to the purchasing public both
personalized bracelets and ladies’ diamond finger rings,
which include personalized ladies’ diamond finger rings.
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Ser. No. 75/364,899

Instead, without offering any evidence, applicant merely
argues at page 6 of her brief that registrant’s diamond
rings “are expensive, typically costing thousands of
dollars,” whereas “personalized bracelets, on the other
hand, are relatively inexpensive.” In contrast, the
Examining Attorney has made of record evidence
demonstrating that ladies’ diamond rings can sell for as
little as $110, and that bracelets can range in price
from $30 to $385. In short, the Examining Attorney has
proven that ladies’ diamond finger rings and bracelets
(including personalized bracelets) are offered by the
same firms to the same individuals, and that both types
of goods can be in the same price range.
Given the fact that applicant’s mark CHERISHED BEADS
is extremely similar to the registered mark CHERISHED,
and the additional fact that there is a close
relationship between ladies’ diamond finger rings and
personalized bracelets, we find that there exists a
likelihood of confusion, and accordingly affirm the
refusal as to applicant’s Class 14 goods (personalized
bracelets).
Turning to a comparison of ladies’ diamond finger
rings
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Ser. No. 75/364,899

and rosaries, we are somewhat perplexed by the actions of
the Examining Attorney. The Examining Attorney has made
of
record absolutely no evidence showing any relationship
between ladies’ diamond finger rings and rosaries.
Moreover, in his Office Actions and appeal brief, the
Examining Attorney has never even argued that there is
any relationship between ladies’ diamond finger rings and
rosaries. Unlike a diamond ring, a rosary is not a piece
of jewelry but rather is “a string of beads used to keep
count in saying certain prayers.” Webster’s New World
Dictionary (2d ed. 1975). Given this total failure on
the part of the Examining Attorney to articulate much
less prove a relationship between diamond rings and
rosaries, we find that there exists no likelihood of
confusion resulting from the contemporaneous use of
applicant’s mark CHERISHED BEADS on rosaries and
registrant’s mark CHERISHED on ladies’ diamond finger
rings. Accordingly, the refusal to register as to
applicant’s Class 16 goods (rosaries) is reversed.
Decision: The refusal to register as to applicant’s
Class 14 goods (personalized bracelets) is affirmed. The
refusal to register as to applicant’s Class 16 goods
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(rosaries) is reversed.

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