Ava Goldworks, LLC

Trademark Trial and Appeal Board

Jun 25, 2015

No. 86056849 (T.T.A.B. Jun. 25, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 25, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ava Goldworks, LLC
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Serial No. 86056849
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Annette P. Heller of Heller & Associates,
for Ava Goldworks, LLC.
Alison R. Keeley, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Taylor, Lykos, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Ava Goldworks, LLC seeks registration on the Principal Register of
the mark AVA GOLDWORKS, in standard characters and with GOLDWORKS
disclaimed, for (as amended) “jewelry” in International Class 14.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Specifically,
registration has been refused on the ground that Applicant’s mark, as applied to the

1 Application Serial No. 86056849, filed September 5, 2013, based on Applicant’s claim of
first use anywhere and use in commerce since at least as early as December 2004.
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goods identified in the application, so resembles the marks 2 and AVA
(in standard characters),3 previously registered by the same owner on the Principal
Register for “jewelry” in International Class 14, as to be likely to cause confusion, to
cause mistake, or to deceive.4
After the Examining Attorney made the refusal 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 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); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (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, 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.”).
We first address the second du Pont factor, the similarity of the goods.
Applicant’s identified goods and those in the cited registrations are “jewelry.” The

2 Registration No. 3182360, issued December 12, 2006; combined Section 8 and 15
declaration accepted and acknowledged November 27, 2012.
3 Registration No. 3182361, issued December 12, 2006; combined Section 8 and 15
declaration accepted and acknowledged November 27, 2012.
4 Both registrations state that they identify a living individual whose consent is of record.
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goods thus are identical. Because there are no limitations as to channels of trade or
classes of purchasers in the description of goods in the cited registrations, we
presume that Registrant’s jewelry moves in all channels of trade normal for such
goods and is available to all potential classes of ordinary consumers. See Citigroup
Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006);
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Moreover, because the goods
described in the application and the cited registrations are identical, we must
presume that the channels of trade and classes of purchasers are the same,
considerations under the third and fourth du Pont factors, respectively. See
American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion).
In our likelihood of confusion analysis, these findings under the second, third,
and fourth du Pont factors strongly support a finding that confusion is likely.
We turn next 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.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
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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, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (citation omitted).
Because the similarity or dissimilarity of the marks is determined on the marks
in their entireties, our analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 a
consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013).
When, as here, marks would appear on goods that are identical, “the degree of
similarity necessary to support a conclusion of likely confusion declines.” 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).
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The cited marks are AVA and . Applicant’s mark is AVA GOLDWORKS.
Applicant has disclaimed the exclusive right to use GOLDWORKS, a term highly
descriptive in association with jewelry. 5 It is well-settled that disclaimed,
descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752);
In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997);
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed
matter is often “less significant in creating the mark’s commercial impression”).
Comparing the marks in their entireties, we find that consumers are likely to give
more weight to the distinctive term AVA in Applicant’s mark and view AVA
GOLDWORKS as a variation on the registered marks AVA and , perhaps
designating Registrant’s jewelry made of gold.
Because it is the first and only distinctive word in Applicant’s mark, we find
AVA to be the dominant portion of that mark. Thus, the dominant term in
Applicant’s mark is identical to the entirety of the cited registered marks, in
standard character and stylized form. Likelihood of confusion has been found
where, as here, the entirety of one mark is incorporated within another. See, e.g.,
Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram & Sons, Inc.,

5 “Goldwork” is defined as “the act or art of working in gold” or “work done in gold (as by a
smith).” December 2, 2014 Reconsideration Letter at 2 (from Merriam-Webster.com).
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526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club soda,
quinine water and ginger ale likely to cause confusion with BENGAL for gin); In re
El Torito Rests. Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO COMBOS, with
“combos” disclaimed, likely to cause confusion with MACHO for restaurant entrees);
Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY
DRUM for hairdressing products likely to cause confusion with EBONY for
cosmetics). The fact that AVA is the first term in Applicant’s mark further enhances
its similarity to the cited marks. See, e.g., Century 21, 23 USPQ2d at 1700 (stating
that consumers will first notice the identical lead word on encountering the marks);
Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(stating that “it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”).
In its appeal brief, Applicant compares this case to In re Hearst Corp., 982 F.2d
493, 25 USPQ2d 1238 (Fed. Cir. 1992).6 In Hearst, the U.S. Court of Appeals for the
Federal Circuit reversed a finding of confusing similarity between VARGAS and
VARGA GIRL for calendars, finding that the latter mark derived “significant
contribution from the component ‘girl.’” Id. at 1239. Here, for all the reasons
discussed above, we do not find that Applicant’s mark derives a similar
distinguishing contribution from GOLDWORKS, which is highly descriptive in
connection with Applicant’s goods.

6 See Appeal Brief at 9, 7 TTABVUE 10.
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We find Applicant’s mark, considered in its entirety, to be similar to both of the
cited marks. The first du Pont factor thus supports a finding that confusion is likely.
Finally, Applicant argues that the cited marks are weak and entitled to only a
narrow scope of protection because third parties have used and registered marks
incorporating the term AVA. This argument pertains to the sixth du Pont factor, the
number and nature of similar marks in use on similar goods. Applicant submitted
printouts from the Trademark Electronic Search System (TESS) of the following
use-based registrations, each registered to a different third party, all for jewelry:
• AVA RENEE (Registration No. 3848654);
• AVA NADRI (Registration No. 4397488);
• AVA & GRACE (Registration No. 3955726);
• ANNA & AVA (Registration No. 3235224); and
• AVA ROSE (Registration No. 3998399).7
Applicant also made of record undated Internet screenshots indicating on their face
use of the marks AVA NADRI, AVA GRACE, ANNA & AVA, and AVA ROSE in
association with jewelry.8
All of the five marks referenced by Applicant are less similar to the cited
registered marks than the mark before us. This is because each combines AVA with
another given name or surname, that is, another distinctive term. In contrast,
Applicant’s mark combines AVA and GOLDWORKS, a highly descriptive word that
assists consumers less in distinguishing the source of Applicant’s jewelry from
Registrant’s jewelry.

7 May 11, 2014 Response to Office Action, Exhibit A at 7-13, 16-19. Applicant also
submitted a printout of a pending application, but applications are evidence only that they
were filed. Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8, 1201 (TTAB 2007).
8 Id., Exhibit B at 20-35.
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It has been stated many times that we must decide each case on its own facts.
See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics similar to [Applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010)
(noting that third-party registrations “cannot justify the registration of another
confusingly similar mark”) (citations omitted). Even were we to accept Applicant’s
argument that these third-party marks dilute and limit the scope of protection
afforded to the cited registrations, marks considered “weak” are nonetheless
entitled to protection from registration by a subsequent user of a confusingly
similar mark for identical goods. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
We have considered all of the arguments and evidence of record as they pertain
to the du Pont likelihood of confusion factors. To the extent that any other du Pont
factors for which no evidence was presented by Applicant or the Trademark
Examining Attorney may nonetheless be applicable, we treat them as neutral.
In view of our findings that the marks in their entireties are similar and the
goods are identical, moving in the same channels of trade to the same customers, we
find that Applicant’s mark is likely to cause confusion with the marks in cited
Registration Nos. 3182360 and 3182361 when used in association with jewelry.
Decision: The refusal to register Applicant’s mark is affirmed.