Advance Watch Co., Ltd.

Trademark Trial and Appeal Board

Aug 9, 2000

No. 75352880 (T.T.A.B. Aug. 9, 2000)

Paper No. 11
ejs
8/9/00LE
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Advance Watch Co., Ltd.
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Serial No. 75/352,880
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Mark A. Cantor and Maria Franek Angileri of Brooks &
Kushman P.C. for Advance Watch Co., Ltd.
Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney)
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Before Simms, Seeherman and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Advance Watch Co., Ltd. has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark shown below for “watches and clocks” and the
“manufacture of watches to order and specification of
others.”1

1 Application Serial No. 75/352,880, filed September 8, 1997,
based on an asserted bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/352,880
2
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the stylized mark I.D., shown
below, and registered for watches,2 that, if used in
connection with applicant’s identified goods or services,
it would be likely to cause confusion or mistake or to
deceive.
Applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
We affirm the refusal of registration.
Before turning to the substantive issue in this
appeal, we must address an objection raised by the
Examining Attorney. Applicant has referred to a
registration it owns for the word mark IDENTITY for
“manufacture of watches to order and specification of

2 Registration No. 1,510,884, issued November 1, 1988; Section 8
affidavit accepted; Section 15 affidavit received.
Ser. No. 75/352,880
3
others.”3 The Examining Attorney has objected to our
consideration of this registration, stating that applicant
has not properly made it of record. In general, if an
applicant indicates reliance on a registration, whether its
own or a third party’s, during the course of prosecution,
the Examining Attorney must raise a timely objection
thereto, i.e., at a point where the applicant has an
opportunity to cure the objection, or the objection will be
deemed to be waived. In this case, not only did applicant
claim ownership of the registration during the course of
prosecution, but the Examining Attorney himself submitted a
copy of the registration with the first Office action in
connection with his query as to whether applicant was the
owner of the registration. Accordingly, the Examining
Attorney’s objection is overruled.
This brings us to a consideration of the issue of
likelihood of confusion. Our determination is based on an
analysis of all of 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). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Food, Inc.

3 Registration No. 1,819,232.
Ser. No. 75/352,880
4
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
With respect to the goods and services, the goods are
in part identical, in that the identifications in both the
cited registration and the application include watches.
Moreover, applicant’s other identified goods and services,
clocks and the manufacture of watches to the order and
specification of others, are closely related to the
registrant’s identified watches. In this connection, the
Examining Attorney has submitted excerpts from the “Thomas
Register of American Manufacturers,” (1997), listing
individual companies’ advertisements for both watches,
clocks and timepieces with personalized messages.
Moreover, applicant has not disputed the fact that its
goods and services and the registrant’s goods are legally
identical or related, its brief being devoid of any
discussion of this factor.4

4 In its response to the first Office action applicant asserted
that its watches were not sold to the same customers as the
registrant’s because its watches were directed to consumers
seeking specific engraved or engraveable products, while
registrant’s watches would be purchased by impulse buyers of
fashion watches. The Examining Attorney correctly pointed out in
his final Office action that the identifications of goods and
services in the respective application and registration did not
contain any restriction on the channels or trade or classes of
purchases, and therefore they must be deemed to be sold in all
appropriate channels of trade to all of the usual classes of
purchasers for such goods or services.
Ser. No. 75/352,880
5
When goods would appear on virtually identical goods
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). With this principle in
mind, we turn to a consideration of the marks.
Although applicant asserts that its mark is the word
IDENTITY, because of the manner in which it is depicted, it
is the letters ID which create the dominant visual
impression. They are shown in very thick, dark type, and
are substantially larger than the letters “ENTITY.”
Moreover, because these two portions of the mark are in
different fonts and sizes, with the letters “ENTITY”
totally encompassed within the lower horizontal bar of the
letter “D,” the connotation of the mark is of two words, ID
and ENTITY, rather than of the single word IDENTITY.
Further, because of the relative sizes of the words, it is
the word ID which is more likely to be noted and remembered
by purchasers.
As applicant points out, marks must be considered in
their entireties. However, it is well established that
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
Ser. No. 75/352,880
6
feature of a mark. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985).
Therefore, when we compare the marks in their
entireties, we find that both applicant’s stylized mark and
the cited mark, I.D., convey similar commercial
impressions, that of the letters or abbreviation ID.
Although there are certain differences in the marks, they
do not serve to distinguish applicant’s mark from the
registrant’s. Instead, to the extent that these
differences are noted, applicant’s mark would be regarded
as merely a variation of the registered mark. Accordingly,
consumers aware of registrant’s mark I.D. for watches are
likely to believe, upon encountering applicant’s stylized
mark for the identical goods, watches, or for such closely
related goods and services as clocks and the custom
manufacture of watches, that the marks identify goods and
services emanating from the same source.
Finally, we have considered, but are not persuaded by,
applicant’s arguments that consumers will associate its
applied-for mark, the stylized ID ENTITY, with its mark
IDENTITY which has been registered in typed form, and that
the coexistence of the cited mark and applicant’s
registered IDENTITY mark on the Register indicates that
there is no likelihood of confusion between its stylized
Ser. No. 75/352,880
7
mark and the cited mark. As we stated previously, the
commercial impression of the applied-for mark is not that
of the word IDENTITY, but of the separate elements ID and
ENTITY, with the primary emphasis on the abbreviation ID.
Decision: The refusal of registration is affirmed.
R. L. Simms
E. J. Seeherman
D. E. Bucher
Administrative Trademark Judges
Trademark Trial and Appeal Board