Andrew Fox

Trademark Trial and Appeal Board

Jun 10, 2016

No. 85817985 (T.T.A.B. Jun. 10, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: June 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Fox
_____

Serial No. 85817985
_____

Matthew H. Swyers of The Trademark Company, PLLC,
for Andrew Fox.
Amy E. Thomas, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Quinn, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Andrew Fox (“Applicant”) seeks registration on the Principal Register of the mark
RAINBOW AMETHYST (in standard characters) for “Bracelets; Earrings; Jewelry;
Necklaces; Pendants; Rings” in International Class 14.1
The Trademark Examining Attorney refused registration of Applicant’s mark on
the ground that Applicant’s mark is deceptive under Section 2(a) of the Trademark

1 Application Serial No. 85817985 was filed on January 8, 2013, under Section 1(b) of the
Trademark Act, based upon Applicant’s allegation of a bona fide intention to use the mark in
commerce.
Serial No. 85817985
- 2 -
Act of 1946, 15 U.S.C. § 1052(a), because (i) the goods at issue are not made of
amethyst, (ii) prospective purchasers are likely to believe that the goods are made of
amethyst, and (iii) the goods being made of amethyst is relevant to the purchasing
decision.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
An amethyst is “a purple or violet form of a transparent quartz used as a
gemstone.”3 It has been called “the most-prized quartz variety for centuries.”4
Since purple is considered to be one of the royal colors,
amethyst has a historical importance as an insignia of
power. Fine amethysts are featured in the British Crown
Jewels and they were also a favorite of Catherine the Great
and Egyptian royalty. Amethyst also holds a high place in
the ranks of the Christian church and was referred to as
“the stone of bishops.” … Since amethyst was considered
an antidote against drunkenness, many wine goblets were
carved from amethyst stone. Still to this day, violet-purple
amethyst is a symbol of sobriety.5

2 6 TTABVUE 9.
3 Yahoo!Education (yahoo.com) attached to the April 29, 2013 Office Action; “Amethyst,”
International Colored Gemstone Association website (gemstone.org) attached to the May 28,
2015 Office Action (“this gemstone of all gemstones”); “Amethyst Gemstone Information,”
GemSelect website (gemselect.com) attached to the May 28, 2015 Office Action (“the most
precious and valuable stone belonging to the quartz group of minerals”); Macmillan
Dictionary (macmillandictionary.com) attached to the July 22, 2015 Office Action (“a valuable
purple stone that is used in jewelry”).
4 “Amethyst Quality Factors,” GIA website (gia.edu) attached to the May 28, 2015 Office
Action.
5 “Amethyst Gemstone Information,” GemSelect website (gemselect.com) attached to the
May 28, 2015 Office Action.
Serial No. 85817985
- 3 -
Amethyst is a popular gemstone6 and it is the birthstone for February.7 “[B]ecause
of its availability and affordability, amethyst is used in mass-marketed jewelry as
well as custom designer pieces. This makes amethyst one of the world’s most popular
colored gems and the most commercially important gem-quality quartz variety.”8
Amethyst is ideal for any type of jewelry design because it
is considered both hard and durable. Amethyst stones are
typically worn as pendants, necklaces or rings. Due to
amethyst having a purple-violet color, many believe that
amethyst should be worn by females only. However, purple
is the color of royalty and royalty has no gender preference.
Therefore, it is an excellent choice of stone for men or
women. Amethyst is harder than most other materials, so
it is very resistant to wear and tear. Amethyst is a favorite
for many jewelers because of the large sizes and shapes
available. Amethyst is most popular purple-violet
gemstone on the mark today.9
Applicant’s products do not contain amethyst.10 Applicant explained that his
“goods are made with quart[z] stones with a unique purple coating.”11

6 Excerpts from news articles published in the LexisNexis database attached to the April 29,
2013 and July 22, 2015 Office Actions.
7 “Unique gifts for your Valentine abound downtown,” Dayton Daily News (January 24, 2007)
attached to the April 29, 2013 Office Action; “Amethyst,” International Colored Gemstone
Association website (gemstone.org) attached to the May 28, 2015 Office Action (“A more apt
stone for the month of February, particularly if there is to be plenty going on in the way of
carnival celebrations, could hardly be wished for.”); “Amethyst Gemstone Information,”
GemSelect website (gemselect.com) attached to the May 28, 2015 Office Action.
8 “Amethyst Quality Factors,” GIA website (gia.edu) attached to the May 28, 2015 Office
Action.
9 “Amethyst Gemstone Information,” GemSelect website (gemselect.com) attached to the May
28, 2015 Office Action.
10 April 28, 2015 Response.
11 October 29, 2013 Response.
Serial No. 85817985
- 4 -
We have a gemstone with a unique coating. The gemstone
is quartz with a purple iridescent coating. We are calling
this gemstone Rainbow Amethyst.12
* * *
Our mark RAINBOW AMETHYST is used exclusively in
connection with a line of jewelry. Specifically our
RAINBOW AMETYST mark is used with a collection of
women’s jewelry including rings, earrings, bracelets, and
necklaces all featuring a gemstone known as rainbow
amethyst which is a quartz with a purple iridescent
cloating [sic].13
Our goods are marketed exclusively to those seeking our
uniquely colored gemstone.14
A mark is deceptive and may be refused registration under Section 2(a) of the
Trademark Act if it meets the following criteria:
(1) Is the term misdescriptive of the character, quality, function, composition
or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription
actually describes the goods?
(3) If so, is the misdescription likely to affect a significant portion of the
relevant consumers’ decision to purchase?
In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009); In re Budge
Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790
(TTAB 1987).

12 May 21, 2014 Response.
13 Affidavit of Andrew Fox, ¶2 attached to the May 21, 2014 Response.
14 Affidavit of Andrew Fox, ¶3 attached to the May 21, 2014 Response.
Serial No. 85817985
- 5 -
Applicant’s mark RAINBOW AMETHYST is misdescriptive because Applicant’s
jewelry is not made of amethyst. Applicant’s customers mistakenly will believe that
Applicant’s jewelry is made of amethyst because the mark informs that it is an
amethyst, albeit a rainbow colored amethyst. In fact, Applicant applies a purple
coating to quartz stones to make his jewelry look as though it were made of amethyst.
The evidence about amethysts submitted by the Trademark Examining Attorney
proves that Applicant’s misdescriptive use of the word “amethyst” as part of its mark
makes Applicant’s products more appealing and desirable to prospective purchasers
who mistakenly will believe that the products are made of amethyst. Accordingly, we
find that Applicant’s mark RAINBOW AMETHYST is deceptive when used in
connection with jewelry.
Applicant argues “that by adding the term RAINBOW to the term AMETHYST
Applicant has created an entirely new mark akin to SILKY or GOLDEN and, as such,
the first prong of the deceptive refusal necessarily cannot be satisfied.”15 However,
the mark RAINBOW AMETHYST engenders the commercial impression of a
multicolored amethyst. In this regard we note the following evidence:
1. In the “summary of the goods provided under the trademark,” Applicant
described his goods as exhibiting “a varied rainbow coloration that is different
than regular purple amethyst.”16; and

15 4 TTABVUE 8.
16 April 28, 2015 Response.
Serial No. 85817985
- 6 -
2. As noted above, Applicant states that his jewelry features “a gemstone known
as rainbow amethyst which is quartz with a purple iridescent [coating].”17
Applicant’s mark RAINBOW AMETHYST does not use the word “amethyst” in a
unique or incongruous way so as to create a meaning other than the recognized
amethyst gemstone.
Also, Applicant contends that “there is simply not enough evidence of record to
establish how Applicant’s use of the terms RAINBOW AMETHYST in Applicant’s
trademark would be material to prospective consumer’s [sic] decision to purchase.”18
We disagree. The evidence shows that amethyst is the birthstone for February, that
it is a popular gemstone used in both mass-marketed and designer jewelry, and, that
Applicant coats his quartz stones to make them look like amethyst. Thus, we find
that the use of the word “Amethyst” in Applicant’s mark is a material factor in a
consumer’s purchasing decision.
Decision: The refusal to register Applicant’s mark is affirmed.

17 Affidavit of Andrew Fox, ¶2 attached to the May 21, 2014 Response.
18 4 TTABVUE 10-11.