American Diamond Importers of St. Clair, Inc.

Trademark Trial and Appeal Board

Jul 28, 2011

No. 77745553 (T.T.A.B. Jul. 28, 2011)

Mailed:
July 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Diamond Importers of St. Clair, Inc.
________

Serial No. 77745553
_______

Molly B. Markley of Young Basile Hanlon & MacFarlane, P.C.
for American Diamond Importers of St. Clair, Inc.

Toby E. Bulloff, Trademark Examining Attorney, Law Office
117 (Brett Golden, Managing Attorney).
_______

Before Seeherman, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

American Diamond Importers of St. Clair, Inc.
(“applicant”) filed an intent-to-use application on the
Principal Register for the mark YELLOW EMERALD, in standard
character form, for “golden beryl gemstones,” in Class 14.1

1 “Beryl” is “a mineral, beryllium aluminum silicate … usually
green, but also blue, rose, white and golden, and both opaque and
transparent, the latter variety including the gems emerald and
aquamarine.” The Random House Dictionary of the English Language
(Unabridged), p. 198 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77745553
2
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. § 1052(e)(1), on the ground that
applicant’s mark is merely descriptive of applicant’s
goods. According to the Examining Attorney, “the
purchasing public has come to know golden-colored beryl
gemstones as ‘yellow emeralds.’”2
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the goods for which registration
is sought and the context in which the term is used, not in
the abstract or on the basis of guesswork. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the question is not whether someone presented
only with the mark could guess the products listed in the
description of goods. Rather, the question is whether
someone who knows what the products are will understand the
mark to convey information about them. In re Tower Tech,

2 The Examining Attorney’s Brief, unnumbered page 2.
Serial No. 77745553
3
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990); In re American Greetings Corp., 226
USPQ 365, 366 (TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc.,
199 USPQ 496, 497 (TTAB 1978); see also, In re Shutts,
217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water
Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
To support the descriptiveness refusal, the Examining
Attorney submitted the following evidence.
1. An article entitled “Minerals and Gemstones” from
geoscience.org.3 The article explains that an “[e]merald is
the blue-green to grass-green gem variety of beryl. The
beryl family also includes aquamarine (blue), morganite
(pink) and golden beryl (yellow).”

3 August 27, 2009 Office Action.
Serial No. 77745553
4
2. What appears to be an advertisement from a
website at cgi.ebay.it but directed to the U.S. market.4
The title of the advertisement is “Antique Nineteenth
Century Handcrafted Genuine Natural Siberian Heliodor
(“Yellow Emerald”) Two-Third Carat Faceted Yellow Beryl
Oval.” The seller provides the following information:
Finally there is a yellow beryl, known
as “yellow emerald” here in Russia, but
to most of the world known as
“heliodor”, derived from the Greek for
“gift of the sun”. … The color of
yellow, or “golden beryl”, is derived
from traces of uranium and/or iron. …
The result is an exquisite and
incredibly brightly colored semi-
precious gemstone with lots of flash
and fire. Though the color might be a
bit like an intensely hued citrine, the
flash is like a yellow sapphire or
yellow diamond.”

3. An excerpt from the flicker.com website
presenting photographs of “The Beryls,” including a “Golden
Beryl (Yellow Emerald).”5
4. An excerpt from what appears to be an online
forum from The Ganoskin Project website (ganoskin.com)
regarding green amethyst.6 In response to an inquiry

4 August 27, 2009 Office Action. See also the “Timeless
Treasures” webpage at the csu-saaa.org website featuring the same
advertisement, attached to the September 21, 2010 Office Action.
5 August 27, 2009 Office Action.
6 Id.
Serial No. 77745553
5
regarding the role of gemology in the sale of gems, the
host provided the following explanation:
Gemstones are divided into Groups
[sic], species and varieties in order
that we know what the heck they ARE.
That’s why we offer morganite (the pink
*variety* of the beryl *species*)
instead of “pink emerald.” Or heliodor
(the orange yellow “variety” of the
beryl *species*) instead of “yellow
emerald”.

5. A page from the YellowEmerald.com website.7 The
webpage displays a YELLOW EMERALD logo as follows:

The “About” webpage includes the following text:
What are Yellow Emeralds?

Yellow Emeralds are in the beryl family
of minerals typically grown as
hexagonal crystals with a Mohs scale of
hardness of 7.5-8.

Beryls can come in such colors as green
(emeralds), blue (aquamarine), yellow
(the more green/yellow varieties are
called heliodor), pink (morganite), red
(bixbite, and white, though most are
colorless (goshenite).

Unlike green emeralds, Yellow Emeralds
have far fewer flaws. Most emeralds
are irradiated and coated with oils to

7 March 14, 2010 Office Action. We note that this website is
associated with applicant because American Diamond Importers is
listed as a co-owner of the website’s copyright. In fact, in its
September 14, 2010 Response, applicant claimed ownership of the
website.
Serial No. 77745553
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bring out the richness in color, but
Coughlin Jewelers’ Yellow Emeralds are
completely untreated and natural.

Some beryl gemstones can lose their
color if exposed to heat and sunlight,
but Yellow Emeralds will always
maintain their beautiful rich color,
guaranteed.

6. An excerpt from the Luckygemstones.com website
providing information regarding “Heliodor Jewelry.”8 The
website provides the following information:
Heliodore [sic] is the name for Yellow
Beryl. Often called Yellow Emerald, it
is the same gemstone (i.e., Beryl) as
the esteemed Emerald, but with
different trace elements providing
color. Usually an intense yellow
color, deeper than a Citrine, though
sometimes with traces of green.
(Emphasis in the original).

7. An advertisement from the Mothersdaygift.net
website offering for sale a “Yellow Emerald and Aquamarine
Fashion Ring.”9 The advertisement reads, in pertinent part,
as follows:
Festive and elegant hand-crafted
fashion ring with a huge, natural
Yellow Emerald of exceptional clarity
and brilliance. Rare Yellow Emerald is
also known as Yellow Beryl or
“Heliodor.”

8 Id.
9 Id.
Serial No. 77745553
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8. An article from The Voice newspaper (June 13,
2010) (voicenews.com) regarding a mudslide affecting access
to a mine containing yellow emeralds.10 The article
references Pat Coughlin of Coughlin Jewelers, which appears
to be applicant or at least to have a business relationship
with applicant (see Item 12 of applicant’s submissions,
infra, an advertisement by Coughlin Jewelers which
applicant has described as its own advertisement).
Coming off record-breaking sales of the
yellow emerald at the St. Clair jewelry
store, Coughlin was notified of
terrible news.

A Brazilian mudslide caused by heavy
rains closed the yellow emerald mine.

* * *

With his own personal production crew
in tow, Coughlin departed May 18 on a
two-day flight to Brazil. The exact
location of the yellow emerald mine
will not be disclosed.

“In order to get to the yellow emerald
mine, it takes four flights, one train,
one bus, and one car.” Coughlin said.

* * *

The yellow emerald premium golden beryl
gemstone is a rare gem which had all
the same physical properties of a green
emerald. The trace element of iron
causes the color to be yellow instead
of green. …

10 September 21, 2010 Office Action.
Serial No. 77745553
8
“For hundreds of years the yellow
emerald was discarded, it’s yellow
because of the iron in the ground, in
their mind it wasn’t valuable,”
Coughlin said. …

* * *

The pressure was mounting to create
something new. Coughlin literally
stumbled upon the yellow emeralds. He
wasn’t clear on how consumers would
react to his new find.

Carol Walters of Richmond is attracted
to emeralds. She was one of the first
to purchase a yellow emerald.

9. An entry regarding “Heliodor Gemstones” in the
HubPages.com website.11
Heliodor – a Beryl Gemstone

Heliodor is a stone belonging to the
Beryl Gemstones family. It is also
referred to as the Golden Beryl or
Yellow Emerald. Heliodor can appear in
a spectrum of colors ranging from
yellow to yellow-green and orange to
brown.

In response to the refusal on the ground that
applicant’s mark is merely descriptive, applicant argued
that the term YELLOW EMERALD is suggestive of the features
and characteristics of golden beryl gemstones because a

11 September 21, 2010 Office Action.
Serial No. 77745553
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“Yellow Emerald” does not exist and, therefore, the term
“Yellow Emerald” is incongruous.12
While Applicant submits the Golden
Beryls are yellow colored and that the
“YELLOW” portion of Applicant’s mark is
descriptive, Applicant disagrees that
the Golden Beryl gemstone is part of
the Emerald family. Emeralds are a
completely different variety of Beryl
gemstone and are classified as such in
numerous industry reference guides.13

In other words, golden beryl gemstones are not emeralds and
emeralds are not yellow, therefore, the term “Yellow
Emeralds” is not merely descriptive. Applicant contends
that it has combined the words “Yellow” and “Emerald” “to
create a unique designation for its Golden Beryl
gemstones.”14
The term “Emerald” is not immediately
descriptive of Applicant’s goods, but
rather suggestive of many
characteristics such as “high quality”,
“rare” and “green”. A purchaser has to
pause and reflect on the significance
of the term “Emerald” to understand

12 Applicant’s Brief, p. 6. Applicant attached previously
submitted exhibits to its brief. Some applicants are under the
impression that attaching previously-filed evidence to a brief is
a courtesy or convenience to the Board. It is neither. When
considering a case for final disposition, the entire record is
readily available to the panel. Because we must determine
whether such attachments are properly of record, citation to the
attachment requires examination of the attachment and then an
attempt to locate the same evidence in the record developed
during the prosecution of the application, requiring more time
and effort than would have been necessary if citations were
directly to the record developed during prosecution.
13 Applicant’s Brief, p. 2.
14 Applicant’s Brief, pp. 3-4.
Serial No. 77745553
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that it suggests Applicant’s goods are
high quality, rare and have a green hue
to their yellow stones.15

Applicant submitted the evidence listed below to
support its argument that YELLOW EMERALD is not merely
descriptive. The evidence purportedly shows that the gem
industry does not refer to golden beryl as “yellow
emerald.”
1. An excerpt from the American Gem Trade
Association (agta.org) referring to beryl.16
Like people, gems come in closely
related families. One of the most
important gem families is beryl. With
a trace of chromium to bestow a
fabulous green, beryl becomes emerald,
the rare and valuable green gem. If
instead, nature includes a trace of
iron in one valence state, beryl is
aquamarine. If the iron in beryl has a
different valence state, it isn’t pale
blue: it turns a rich golden yellow.
Golden beryl is as brilliant as
aquamarine, with a warm sunny color.

2. An excerpt from what appears to be a manual, the
GEM IDENTIFICATION Separation Supplement (1993),
distributed by the Gem Institute of America, listing the
varieties of beryls, including, inter alia, emerald,
aquamarine, and golden.17

15 Applicant’s Brief, p. 5.
16 March 1, 2010 Response.
17 Id. See also the GEM REFERENCE GUIDE, distributed by the Gem
Institute of America, noting that an emerald should not be
Serial No. 77745553
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3. An excerpt from the International Colored
Gemstone Association website (gemstone.org) discussing
beryls.18
Aquamarine, emerald and morganite are
all beryls – just like golden beryls,
yellowish-green heliodor, colourless
goshenite and the rare red beryl.
Whether blue, green, yellow, colourless
or pink, their chemical and physical
properties essentially correspond; it
is only in their colours that they
differ from one another so much.

* * *

The emerald is closely related to the
aquamarine. This most valuable of all
the beryls is given the most beautiful,
intense and glowing green imaginable,
namely emerald green, by chrome and/or
vanadium. …

* * *

Golden beryl holds a fascination with
its fine spectrum of yellow hues, from
a weak lemon yellow to a warm golden
color.

4. An excerpt from The Gem Guide (2009) explaining
how to analyze the quality of colored gems.19 The
categories of colored gems include, inter alia, “Beryl-
Aquamarine,” “Beryl-Emerald,” and Beryl-Golden.” The

referred to as a “green beryl” and that “red emerald” is an
incorrect name for a red beryl. (March 1, 2010 Response).
18 Id.
19 Id.
Serial No. 77745553
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Beryl-Golden has a “greenish yellow, yellow, or orangey
yellow color.”
5. An excerpt from the Color Encyclopedia of
Gemstones (2nd ed.) defining “beryl.”20
Colors: Colorless, white, light green,
olive green, blue-green to blue
(aquamarine), deep green (emerald),
pink or peachy pink (morganite),
greenish yellow, yellow (heliodor),
pinkish orange, red (bixbite).

Beryl is one of the most familiar
minerals because of the many famous gem
varieties it offers. These specific
gem types are named according to color
and chemistry. … Heliodor or golden
beryl derives its color from ferric
iron, and the color ranges from pale
yellow to deep yellowish orange. …
Emerald is the best known color
variety, the color of which, a fine,
intense green, is due to a trace of
chromium replacing aluminum in the
beryl structure. Emerald is, by
definition, the green beryl colored by
chromium. Other green beryls of
various shades exist, which are simply
termed green beryl, … (Emphasis in the
original).

6. A partial table of contents from the Consumer
Guide to Colored Gemstones.21 The partial table of contents
list, inter alia, two types of aquamarine, two types of
emeralds, morganite, but no “yellow emerald.”

20 March 1, 2010 Response. See also Gemstones.
21 Id.
Serial No. 77745553
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7. The Wikipedia entry for “Beryl.”22 The entry
identifies aquamarine, bixbite, emerald, golden beryl and
heliodor, goshenite, and morganite as varieties of beryl.
With respect to emerald, the entry provides that “[e]merald
refers to green beryl,” red beryl is also known as bixbite,
red or scarlet emerald, and morganite is also known as pink
beryl, rose beryl, or pink emerald.23
8. The mindat.org website defines “heliodor” as “[a]
golden yellow gem variety of Beryl.”24
9. The GemologyOnline.com website provides that when
a beryl is green, it is an emerald and when it is yellow,
it is a heliodor.25
10. The MineralsZone.com website explains that in
“the gemworld,” a heliodor is also known as a “golden
beryl.”
11. An excerpt from the mapsoftheworld.com website
regarding “Precious Metals and Stones” refers to the four
main classes of beryl groups as classics, emerald,
aquamarine and morganite.26

22 Id.
23 But see the Gem Reference Guide entry at n. 17 stating the
emerald should not be referred to as a green beryl.
24 Id.
25 Id.
26 Id.
Serial No. 77745553
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12. An advertisement by applicant purportedly to
demonstrate that yellow beryl gemstones are not emeralds.

The evidence of record shows that the beryl family
includes emeralds, golden beryl, aquamarine and morganite.
The different beryl gemstones have the same qualities and
characteristics but with different trace elements providing
the color.27 Thus, a green beryl is an emerald, a blue
beryl is an aquamarine, a pink beryl is morganite and a
yellow beryl is a golden beryl. The “Emerald is the best
known color variety.”28 It is specifically mentioned as a
type of beryl in the dictionary definition of beryl. One
vendor wrote that “[t]he true emerald remains one of the

27 Luckygemstones.com, The Voice (voicenews.com), agta.com,
gemstone.com, gemologyOnline.com, and Color Encyclopedia of
Gemstones.
28 Color Encyclopedia of Gemstones. See also cgi.ebay.it and csu-
saaa.org (“The most widely recognized varieties of beryl are
aquamarine and emerald”).
Serial No. 77745553
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most treasured of all gemstones.”29 Because emeralds are
perceived as a well-known and valuable beryl gemstone,
vendors try to associate yellow beryl gemstones with the
valuable and well-known emerald by calling golden beryl
gemstones yellow emeralds.
Applicant’s own advertisement (No. 12 above) uses the
term “Yellow Emeralds” to describe the gemstones, not their
source: “Yellow Emeralds Rarer than Diamonds.” Consumers
exposed to this advertisement will consider “Yellow
Emeralds” to be the name of the goods. This is not a
single inadvertent instance of improper trademark use by
applicant. In applicant’s yellowemerald.com website,
applicant identified “Yellow Emeralds” as a member of the
beryl family.
What are Yellow Emeralds?
Yellow Emeralds are in the beryl family
of minerals typically grown as
hexagonal crystals with a Mohs scale of
hardness of 7.5-8.

Applicant did not identify Yellow Emeralds as its
proprietary name (i.e., a trademark used to identify
applicant’s golden beryl gemstones). Rather, applicant
identified Yellow Emeralds as a member of the beryl family

29 “Minerals and Gemstones” at geoscience.org. See also
gemstone.org (“This most valuable of all the beryls”).
Serial No. 77745553
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of minerals. Applicant is using the term “Yellow Emeralds”
in a generic fashion. There is nothing in the text of its
website that would cause readers to understand that the
term “Yellow Emerald” is supposed to be a proprietary term
that is the exclusive property of applicant.
We find that the evidence submitted by the examining
attorney, recounted above, is sufficient to show that
consumers perceive the term “Yellow Emerald” as describing
golden beryl gemstones. While applicant argues that it is
not technically correct to refer to a golden beryl as a
yellow emerald, the evidence of record demonstrates that
there are people and publications in the industry that use
the term “yellow emerald” for such gems, including
applicant.
Thus, we are not persuaded by applicant’s argument
that because there are no yellow emeralds, the term YELLOW
EMERALD is not descriptive.
Emerald is a type of Beryl gemstone and
that one type of Beryl may be golden or
yellow colored. However, to call a
Golden Beryl a Yellow Emerald does not
immediately describe the Golden Beryl
gemstone because a yellow colored Beryl
gem is not an Emerald. The term
“Emerald” is not interchangeable with
the term “Beryl.”30

30 Applicant’s Brief, p. 3.
Serial No. 77745553
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The evidence shows that the type of beryl depends upon the
color (e.g., an emerald is green, an aquamarine is blue,
and a golden beryl is yellow) and that consumers understand
the term yellow emeralds to refer to golden beryl. Because
of this perception, the term yellow emerald has lost
whatever incongruity it may have had. Accordingly, when a
consumer sees the mark YELLOW EMERALD used in connection
with a golden beryl gemstone, the consumer immediately
knows that the product is a golden beryl gemstone or a
yellow emerald gemstone. In view of the foregoing, we find
that applicant’s mark YELLOW EMERALD is merely descriptive
of golden beryl gemstones.
Decision: The refusal to register is affirmed.