ASI Imports, Inc.

Trademark Trial and Appeal Board

May 17, 2007

No. 76592079 (T.T.A.B. May. 17, 2007)

Mailed: 5/17/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ASI Imports, Inc.
________

Serial No. 76592079
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Michael I. Kroll, Esq. for ASI Imports, Inc.

Dominic Ferraiuolo, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Quinn, Cataldo and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

ASI Imports, Inc. filed an application to register the
mark CUSTOM MEMORY CHARMS (CHARMS disclaimed) for “jewelry,
namely, bracelets, necklaces, anklets, waist chains, belly
chains, modular Italian style charm bracelets, charms,
pendants and watches” in International Class 14.1
The trademark examining attorney refused registration
on two grounds. Firstly, he refused registration under

1 Application Serial No. 76592079, filed May 13, 2004, based on a
bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76592079
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Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark MEMORY CHARMS
(CHARMS disclaimed) for “metallic ornaments made of non-
precious metal” in International Class 62 as to be likely to
cause confusion. Secondly, the examining attorney refused
registration based on applicant’s failure to comply with
the requirement under Section 6 of the Trademark Act to
disclaim the word “CUSTOM” apart from the mark.
When the refusals to register were made final,
applicant appealed. Applicant and the examining attorney
filed briefs.
Disclaimer
The examining attorney has required a disclaimer of
the term “CUSTOM” (in addition to the already-disclaimed
term “CHARMS”), contending that it is merely descriptive of
jewelry that is custom or made to order. In support of the
disclaimer requirement, the examining attorney submitted a
dictionary definition of “custom.”
Applicant argues that the term “CUSTOM” in its mark
is, at worst, suggestive and, thus, a disclaimer thereof is
not warranted. Although applicant concedes that “custom”
could mean “made to order,” “this term can also mean

2 Registration No. 2842564, issued May 18, 2004.
Ser No. 76592079
3
‘customary,’ so as to suggest something that is
‘traditional’ within, for example, a particular culture.”
(Brief, p. 4). According to applicant, the term has more
than one meaning in the context of applicant’s goods and
that, in any event, there is nothing in the record to
suggest that applicant’s goods are intended as “made to
order.”
The examining attorney may require applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Section 6 of the Trademark Act. Merely
descriptive terms are unregistrable under Section 2(e)(1)
of the Trademark Act, and therefore are subject to
disclaimer if the mark is otherwise registrable. Failure
to comply with a disclaimer requirement is grounds for
refusal of registration. See In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re
Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006).
A term is merely descriptive if it immediately
describes the ingredients, qualities or characteristics of
the goods or if it conveys information regarding a
function, purpose, or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA
1978). We look at the mark in relation to the goods, and
not in the abstract, when we consider whether the mark is
Ser No. 76592079
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descriptive. In re MBNA America Bank N.A., 340 F.3d 1328,
67 USPQ2d 1778, 1783 (Fed. Cir. 2003). It is well settled
that to be “merely descriptive,” a term need only describe
a single significant quality or property of the goods. In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
The term “custom” is defined, in relevant part, as
“made to order.” The American Heritage Dictionary of the
English Language (4th ed. 2000). Applicant’s goods are
jewelry, and the term “custom,” as applied to these goods,
immediately describes, without conjecture or speculation, a
significant quality or characteristic about them, namely
that the jewelry is made to order. That the term “custom”
may have different meanings (e.g., a tradition within a
particular culture), as argued by applicant, is of little
moment given that consumers are unlikely to give this
meaning to the term as it is used in connection with
jewelry.
The examining attorney’s requirement for a disclaimer
of the merely descriptive word “custom” is affirmed.

Likelihood of Confusion
In refusing registration under Section 2(d), the
examining attorney maintains that the marks CUSTOM MEMORY
CHARMS and MEMORY CHARMS are similar, and that applicant’s
Ser No. 76592079
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jewelry items are related to applicant’s metallic ornaments
made of non-precious metal. In support of the refusal, the
examining attorney introduced excerpts of third-party
websites showing that the same on-line retailers sell both
jewelry and ornaments.
Applicant argues that the presence of the word
“CUSTOM” in its mark serves to sufficiently distinguish the
mark from registrant’s mark, and that the involved marks
are, in any event, relatively weak. Further, applicant
contends, the specific nature of registrant’s goods is
unclear. In addition to the different classifications of
the goods, applicant asserts: “The goods of the applied
[sic] registration might – or might not be? – Christmas
tree ornaments or automobile ornaments, though such
ornaments are made of ‘non-precious’ metals, which would
tend to distinguish them from jewelry goods, which are
often purchased precisely because they are, or are made
from, precious metals, such as gold or silver.” (Brief, p.
7). Applicant also points to the purported price
difference between applicant’s and registrant’s goods;
applicant posits that jewelry can be expensive and requires
a careful purchasing decision whereas non-precious metal
goods are likely to be less expensive and purchased with
less care.
Ser No. 76592079
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Our determination of the issue of likelihood of
confusion 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). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first turn to compare applicant’s mark CUSTOM
MEMORY CHARMS with registrant’s mark MEMORY CHARMS. In
determining the similarity or dissimilarity of the marks,
we must compare the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). Nevertheless, it is well settled that one feature
of a mark may be more significant than another, and it is
not improper to give more weight to this dominant feature
in determining the commercial impression created by the
Ser No. 76592079
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mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985) [“There is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.”] For example, “that a particular feature
is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark...” Id. at 751.
When considering applicant’s mark, the generic word
“CHARMS” has been disclaimed, and we have determined, as
discussed above, that the merely descriptive term “CUSTOM”
must be disclaimed as well. In registrant’s mark, the term
“CHARMS” has been disclaimed. The disclaimed terms in the
respective marks CUSTOM MEMORY CHARMS and MEMORY CHARMS are
subordinate to the remaining feature in each of the marks,
namely “MEMORY.” This dominant, distinctive feature of
each mark, the term “MEMORY,” is identical. This term is
the one term in each of the marks that is most likely to be
remembered by consumers.
In terms of appearance and sound, the marks look and
sound similar. The only difference between the marks is
the addition of the merely descriptive term “CUSTOM” in
Ser No. 76592079
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applicant’s mark. In other words, applicant has
appropriated the entirety of registrant’s mark and merely
added the descriptive term “CUSTOM” to it. See In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ 1944
(Fed. Cir. 2004); and In re The U.S. Shoe Corp., 229 USPQ
707 (TTAB 1985). The addition of the descriptive term
“CUSTOM” simply is insufficient to distinguish the marks.
Although the addition of the term “CUSTOM” gives a
more specific meaning to the “MEMORY CHARMS” portion of
applicant’s mark, this minor difference is insufficient to
distinguish the marks in any meaningful manner. Even if
the marks are viewed as suggestive, they convey similar
suggestions.3 Consumers would be likely to believe that the
mark CUSTOM MEMORY CHARMS identifies a custom or made-to-
order product extension of the MEMORY CHARMS line.
In sum, the marks CUSTOM MEMORY CHARMS and MEMORY
CHARMS are similar in sound, appearance, meaning and
overall commercial impression that, if similar goods were
marketed under such marks, confusion is likely to occur
among consumers. The similarity of the marks weighs in
favor of a finding of likelihood of confusion.

3 Although applicant contends that the marks are weak, there is
no evidence (e.g., third-party uses or registrations of the same
or similar marks) to support this contention.
Ser No. 76592079
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We next turn to a consideration of the goods. It is
not necessary that the respective goods be competitive, or
even that they move in the same channels of trade to
support a holding of likelihood of confusion. It is
sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
Although the goods are specifically different, we find
that they are sufficiently similar for purposes of the
likelihood of confusion analysis. The term “ornament”
means “something that lends grace or beauty.” Webster’s
Third New International Dictionary (unabridged ed. 1993).4
Thus, “ornament” is a relatively broad term that may
include jewelry (as an item that lends grace or beauty), as
well as items such as Christmas ornaments. In either case,

4 We take judicial notice of this dictionary definition.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser No. 76592079
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consumers are likely to be confused when such goods are
sold under substantially similar marks. Further, as shown
by the website excerpts submitted by the examining
attorney, ornaments and jewelry may be sold by the same
entities through the same trade channels. The same classes
of purchasers would purchase these goods. These factors
pertaining to the similarities between the goods weigh in
favor of affirming the refusal.
The identifications of goods do not include any
limitation as to price, so we must assume that the goods
may include inexpensive jewelry and ornaments that would be
bought by ordinary consumers. However, even assuming
arguendo that purchases of applicant’s goods would involve
a careful decision, this does not mean that the purchasers
are immune from confusion as to the origin of the
respective goods and services, especially when, as we view
the present case, the substantial similarity of the marks
and the similarity between the goods clearly outweigh any
sophisticated purchasing decision. See HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) [similarities of
goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods]. See also In re
Ser No. 76592079
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Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970) [“Human memories even of discriminating
purchasers...are not infallible.”].
Applicant’s argument based on the different
classification of the goods is ill founded. The
classification has no bearing on the likelihood of
confusion determination. Jean Patou Inc. v. Theon Inc., 9
F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993); and National
Football League v. Jasper Alliance Corp., 16 USPQ2d 1212,
1216 n.5 (TTAB 1990).
We conclude that consumers familiar with registrant’s
metallic ornaments made of non-precious metal sold under
the mark MEMORY CHARMS would be likely to believe, upon
encountering applicant’s mark CUSTOM MEMORY CHARMS for
jewelry, that the goods originate from or are associated
with or sponsored by the same source.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusals to register are affirmed.