Aurum Brothers B.V.

Trademark Trial and Appeal Board

Dec 19, 2017

No. 87211100 (T.T.A.B. Dec. 19, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 19, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Aurum Brothers B.V.
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Serial No. 87211100
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Eric J. Perrott of Gerben Law Firm PLLC,
for Aurum Brothers B.V.
Raul Cordova, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Zervas, Bergsman and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Aurum Brothers B.V. (“Applicant”) seeks registration on the Principal Register of
the mark AURUM BROTHERS (in standard characters) for the goods and services
listed below:
Jewelry; Bracelets, in Class 14; and
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On-line retail store services featuring jewelry, bracelets,
clothing, belts, leather accessories, traveling bags, wallets,
in Class 35.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark for the identified goods and services so resembles the registered
mark AURUM for “jewelry made of precious metals with or without precious or semi-
precious stones,” in Class 14, as to be likely to cause confusion.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have

1 Application Serial No. 87211100 was filed on October 21, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.

The word “Aurum” is defined as “gold.” Dictionary.com based on the Random House
Dictionary (2017). The Board may take judicial notice of dictionary definitions, including
online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227,
1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV
Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).

2 Registration No. 1894046, registered May 16, 1995; second renewal. The registration
includes the following translation statement: “‘AURUM’ is the Latin word for ‘gold’.”
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considered each du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity and nature of the goods and services.
The goods are identical inasmuch as Applicant’s jewelry and bracelets are broad
enough to encompass Registrant’s “jewelry made of precious metals with or without
precious or semi-precious stones.” Because the goods are identical, we must presume
that the channels of trade and classes of purchasers are the same. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods
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are presumed to travel in same channels of trade to same class of purchasers); In re
Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there
are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039,
1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
To show that Applicant’s “on-line retail store services featuring jewelry, bracelets,
clothing, belts, leather accessories, traveling bags, wallets” are related to Registrant’s
“jewelry made of precious metals with or without precious or semi-precious stones,”
the Trademark Examining Attorney submitted ten use-based, third-party
registrations for goods and services listed in both the application and the cited
registration. Third-party registrations based on use in commerce that individually
cover a number of different goods and services may have probative value to the extent
that they serve to suggest that the listed goods and services are of a type that may
emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988). The registrations, with relevant portions of the identifications, are
listed below:
Mark Reg. No. Goods and services

JONDIE 5113935 Jewelry; retail store services featuring jewelry

MY HAIR TIE
BRACELETS
5188290 Jewelry; on-line wholesale and retail store
services featuring jewelry

Serial No. 87211100
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Mark Reg. No. Goods and services

LIBERTI USA 5192906 Jewelry; online wholesale and retail store
services featuring jewelry

CHICO’S 5150760 Jewelry; online retail store services featuring
jewelry

#LOVEKNOTLIKE 5155490 Jewelry; online retail store and mail order
services featuring jewelry

COMMITMENT IS
COURAGEOUS
5160509 Jewelry; online retail store services in the field
of jewelry

DOGEARED 5181353 Jewelry, namely, necklaces, bracelets, rings,
earrings; online retail store services featuring
jewelry

JH JEN HENSEN 5190470 Jewelry; online retail store services featuring
jewelry

BREELAYNE 5186437 Jewelry; online retail store services in the field
of jewelry

REBEKAH
BROOKS
5190972 Jewelry; online retail store services featuring
jewelry

The use of similar marks on or in connection with both products and retail store
services that sell those products have been held likely to cause confusion. See In re
Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (jewelry and for retail-jewelry and
mineral-store services); In re Best Prods. Co., Inc., 231 USPQ 988, 989 (TTAB 1986)
(“There is no question that jewelry store services and jewelry are highly related goods
and services from the standpoint of the likelihood of confusion issue.”); Fortunoff
Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863, 866 (TTAB 1985) (“there is
little question that jewelry store services and jewelry are highly related goods and
services from the standpoint of the likelihood of confusion issue.”); In re Jewelmasters,
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Inc., 221 USPQ 90, 91 (TTAB 1983) (retail jewelry store services and jewelry, namely,
rings are “highly related”).
With respect to the channels of trade, it is logical that jewelry is sold in traditional
retail jewelry stores, as well as through online retail sales. See In re Thomas, 79
USPQ2d at 1023 (because jewelry and retail jewelry store services are closely related,
“they must be deemed to be promoted in the same channels of trade and directed to
the same purchasers.”); In re Best Prods. Co., Inc., 231 USPQ at 989 (“it cannot
seriously be denied that watch bracelets are commonly sold in jewelry stores.”).
We find that the goods and services are related and they are offered in the same
channels of trade.
B. The inherent strength of Registrant’s AURUM mark.
Applicant states that the registered mark AURUM is “highly descriptive and
inherently weak.”3 The registration of AURUM on the Principal Register is “prima
facie evidence of the validity of the registered mark and of the registration of the
mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use
the registered mark in commerce on or in connection with the goods or services
specified in the certificate.” Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b).
Despite the fact that the word “Aurum” is defined as “gold” and “gold” is a precious
mineral used in jewelry and, thus, a characteristic of the jewelry, the registered mark
must be considered to be at least a suggestive mark.

3 Applicant’s Brief (9 TTABVUE 7 and 9-10).
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C. The number and nature of similar marks in use on similar goods and services.
Applicant argues that because of the numerous third-party users of AURUM in
connection with jewelry, AURUM is a weak mark entitled to a narrow scope of
protection or exclusivity of use and, thus, consumers can differentiate between
AURUM and AURUM BROTHERS.4 To support this argument, Applicant submitted
excerpts from the following websites:5
• Rhinestone Biz website (Rhinestonebiz.com) advertising the “SWAROVKSI®
ELEMENTS 2058 Flat Back Rhinestones 9ss Crystal Aurum.” “Crystal Aurum” is
identified as the color of the rhinestones;6
• Aurum Studios, Ltd. website (aurumstudios.com) advertising “custom jewelry
and local art in Athens and Lake Oconee, GA”;7
• Aurum Jewelers website (aurumelmwood.com) advertising that “Paul Michaels
and the staff at Aurum have delivered fine quality jewelry and unmatched service
but budgets large and small”;8

4 Applicant’s Brief (9 TTABVUE 10-11).
5 We did not consider Aurum.is (4 TTABVUE 24) because it is an Icelandic website, the
Aurumdesign.co.uk website (4 TTABVUE 30) because it is a United Kingdom website, the
Aurum Custom Goldsmithing website (love100milehouse.com) because it is a Canadian
website (4 TTABVUE 32), the Aurumholdings.co.uk website (4 TTABVUE 33) because it is a
United Kingdome website, and Aurumjewels.com.au website (4 TTABVUE 35) because it is
an Australian website, and there is no evidence that U.S. consumers frequent these sites or
that the website owners sell to consumers in the United States.
6 Applicant’s May 5, 2017 Request for Reconsideration (4 TTABVUE 22).
7 Id. at 4 TTABVUE 23.
8 Id. at 4 TTABVUE 25.
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• Aurum Jewelry Studio website (aurumjewelrystudio.com) advertising itself as
“the ONLY jewelry store on the emerald coast where your creativity can be expressed
in Gold, Platinum, and on an exquisite selection of gemstones!”;9
• Aurum Jewelry advertisement (sedonaverdevalley.natgeotourism.com)
advertising its jewelry and gifts made by in-house and local artists in Jerome,
Arizona;10
• Alexandra Aurum website (alexandraaurum.com);11
• Ex Aurum website jewelers (eaurum.com);12
• Aurum Jewelers & Goldsmiths website (twitter.com/aurumjewelers);13
• Aurum Jewelry Design website (aurumjewels.com);14 and
• 23 excerpts from different Aurum formative webpages posted on Etsy.com.15
The websites and webpages show that AURUM has been extensively adopted and
used as a service mark for jewelry store services and, therefore, AURUM has a
significance in the jewelry industry. Coupled with the definition of the word “Aurum,”
we find that AURUM suggests gold jewelry. As a result, a mark comprising, in whole

9 Id. at 4 TTABVUE 26.
10 Id. at 4 TTABVUE 27.
11 Id. at 4 TTABVUE 28. The excerpt from this website is illegible and has no probative value.
Applicant is responsible for ensuring that the documents it files are legible. See In re
Loggerhead Tools, LLC, 119 USPQ2d 1429, 1433 n.5 (TTAB 2016) (filers are responsible for
ensuring that all submissions are legible).
12 Id. at 4 TTABVUE 29. The excerpt is barely legible.
13 Id. at 4 TTABVUE 31. The excerpt is barely legible.
14 Id. at 4 TTABVUE 34. The excerpt is barely legible.
15 Id at 4 TTABVUE 36-58. These excerpts have no probative value because the excerpts are
barely legible, and we cannot determine if any of the excerpts are duplicates or overlap with
the previously noted websites.
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or in part, the word “Aurum” in connection with jewelry or jewelry store services
should be given a restricted scope of protection. See Anthony’s Pizza & Pasta Int’l Inc.
v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1278 (TTAB 2009), aff'd, 415 Fed.
Appx. 222 (Fed. Cir. 2010); Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983).
In other words, AURUM is not entitled to such a broad scope of protection that it is a
bar to the registration of every mark comprising, in whole or in part, the word
“Aurum”; it will only bar the registration of marks “as to which the resemblance to
[Registrant’s mark] is striking enough to cause one seeing it to assume that there is
some connection, association or sponsorship between the two.” Id. Compare In re
Broadway Chicken, Inc., 38 USPQ2d at 1566 (wide-spread third-party use supported
the finding that the marks were not likely to cause confusion because “at least half,
if not more, of the third-party telephone directory listings of enterprises whose trade
name names/marks contain the term BROADWAY have listed addresses on a street,
road, avenue, etc., named ‘BROADWAY.’ To purchasers familiar with these
enterprises, the term BROADWAY will have geographic significance”).
D. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014). In comparing the marks, we are mindful that
where, as here, the goods are identical and the goods and services are closely related,
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the degree of similarity necessary to find likelihood of confusion need not be as great
as where there is a recognizable disparity between the goods and services. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1905 (TTAB 2007); see also San Fernando Elec. Mfg. Co. v. JFD Elec. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.
Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Because the goods are jewelry without any restrictions as to
price point or quality and the services are online retail store services featuring, inter
Serial No. 87211100
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alia, jewelry and bracelets without any restrictions as to price point or quality, the
average customer is an ordinary consumer.
The marks are similar in appearance, sound, connotation and commercial
impression because they share the word “Aurum,” which means “gold” and engenders
the commercial impression of gold jewelry. The marks differ in that Applicant has
added the word “Brothers” to its mark. However, the word “Brothers” has little
trademark significance because it is a commonly used as part of a trademark.16 In
this regard, the word “Aurum” is the most prominent part of Applicant’s mark
because it appears first. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label); Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers will first notice the identical lead word);
Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”).

16 See Applicant’s May 25, 2017 Request for Reconsideration (4 TTABVUE 60-140) comprising
numerous third-party registrations incorporating the word “Brothers,” including
Registration No. 4205115 for the mark SUBERI BROTHERS for “diamond jewelry,”
Registration No. 4094297 for the mark ZELL BROTHERS for “retail jewelry store services,”
Registration No. 3029206 for the mark BROOKS BROTHERS for, inter alia, jewelry. See also
April 28, 2017 Office Action (TSDR 6-32), where the Trademark Examining Attorney
submitted the third-party registrations as examples of “Brothers” used as a familial entity
designation including Registration No. 1903187 for the mark SOLOMON BROTHERS for
“jewelry retail store and wholesale store services.”
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Moreover, consumers are likely to shorten AURUM BROTHERS to AURUM.
“[U]sers of language have a universal habit of shortening full names – from haste or
laziness or just economy of words. Examples are: automobile to auto; telephone to
phone; necktie to tie; gasoline service station to gas station.” In re Abcor Development
Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring).
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to Sears
alone), Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdales.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
See also Big M Inc. v. The United States Shoe Co., 228 USPQ 614, 616 (TTAB 1985)
(“we cannot ignore the propensity of consumers to often shorten trademarks and, in
the present case, this would be accomplished by dropping the ‘T.H.’ in referring to
registrant's stores [T.H. MANDY].”).
To support its contention that the marks are not similar, Applicant cites In re
Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992) (VARGA GIRL for
calendars is not similar to VARGAS for calendars) arguing that by inappropriately
stressing the importance of the word “Aurum” and diminishing the importance of the
word “Brothers,” the Trademark Examining Attorney has changed the mark.17 We
disagree because as, discussed above, the word “Brothers” is a commonly used term
in trademarks and it is often used as a familial entity designation and, therefore, the

17 Applicant’s Brief (9 TTABVUE 7-8).
Serial No. 87211100
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word “Brothers” does not serve to distinguish the mark AURUM BROTHERS from
AURUM when used in connection with identical goods and closely related services.
In view of the foregoing, we find that the marks are similar in their entireties as
to their appearance, sound, connotation and commercial impression.
E. Analyzing the factors.
Despite the fact that the word “Aurum” in Applicant’s mark AURUM BROTHERS
is suggestive and entitled to only a narrow scope of protection, because the marks
AURUM and AURUM BROTHERS are similar, the goods are identical and are
presumed to be offered in the same channels of trade, and the goods and services are
related and are offered in the same channels of trade, we find that Applicant’s mark
AURUM BROTHERS for “jewelry; bracelets” and “on-line retail store services
featuring jewelry, bracelets, clothing, belts, leather accessories, traveling bags,
wallets” is likely to cause confusion with the registered mark AURUM for “jewelry
made of precious metals with or without precious or semi-precious stones.”
Decision: The refusal to register Applicant’s mark AURUM BROTHERS is
affirmed.