Bianca Jewelry, Inc.v.Emmi, Inc.

Trademark Trial and Appeal Board

Mar 24, 2004

No. 92032305 (T.T.A.B. Mar. 24, 2004)

Hearing: Mailed: 24 MAR 2004
09 DEC 2003 Paper No. 19
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Bianca Jewelry1, Inc.
v.
Emmi, Inc.
_____
Cancellation No. 92032305
_____
Joseph D. Lewis of Barnes & Thornburg for Bianca Jewelry,
Inc.
Jonathan G. Gabriel, Esq. for Emmi, Inc.
______
Before Chapman, Rogers, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On July 18, 1997, respondent (Emmi, Inc.2) filed
application Serial No. 75326685 to register on the Principal
Register the following mark:
1 The word “jewelry” appearing in petitioner’s name and elsewhere
is spelled at least three different ways in various papers in the
record. Regardless of how the word is spelled in the record, we
will use the spelling “jewelry” for consistency.
2 Respondent also does business under the name Universal Fine
Jewelry.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Cancellation No. 92032305
2
for goods identified as “jewelry consisting of precious
metals and gems” in International Class 14.
On October 20, 1998, respondent’s mark issued as
Registration No. 2,197,738. The registration claims a date
of first use and first use in commerce of April 1, 1997.
Petitioner (Bianca Jewelry, Inc.), on May 24, 2001,
filed a petition to cancel respondent’s registration on the
ground that “Petitioner has used in interstate commerce the
trademark BIANCA since long prior to, but not less than 15
years before, Registrant’s date of first use of the
trademark BIANCA” (Petition at 1). Respondent denied the
salient allegations of the petition to cancel.
The Record
The record consists of the following items: the file
of the involved registration; the trial testimony deposition
of petitioner’s president, Sarkis Danaciyan, with
accompanying exhibits; the trial testimony deposition
of respondent’s principal, Edward A. Zohrabian, with
accompanying exhibits; portions of the discovery deposition
of Edward A. Zohrabian submitted by petitioner and a copy of
that entire deposition submitted by respondent, both under
Cancellation No. 92032305
3
notices of reliance; the discovery deposition of Sarkis
Danaciyan3 submitted by respondent under a notice of
reliance; and copies of respondent’s discovery responses, a
jewelry show directory, and an Office action in another
application submitted by petitioner under a notice of
reliance.
Preliminary Matters
A party petitioning to cancel a federally registered
trademark must plead that it has standing and that there is
a valid ground for the cancellation of the registration.
Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d 1752, 1754
(Fed. Cir. 1998) (“Section 14 has been interpreted
as requiring a cancellation petitioner to show (1) that it
possesses standing to challenge the continued presence on
the register of the subject registration and (2) that there
is a valid ground why the registrant is not entitled
under law to maintain the registration”) (internal quotation
marks omitted).
For standing, petitioner asserts its ownership of
common law rights in the mark BIANCA.
Under the rule of Otto Roth, a party opposing
registration of a trademark due to a likelihood of
confusion with his own unregistered term cannot prevail
unless he shows that his term is distinctive of his
goods, whether inherently or through the acquisition of
secondary meaning or through “whatever other type of
use may have developed a trade identity.” Otto Roth &
3 The depositions of Sarkis Danaciyan were conducted in Turkish
and translated into English.
Cancellation No. 92032305
4
Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981). The Otto Roth rule is applicable
to trademark registration cancellation proceedings as
well.
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
1039, 1041 (Fed. Cir. 1990) (full citation added).
In this case, petitioner claims priority because of its
ownership and rights in the term BIANCA, which petitioner
alleges is confusingly similar to respondent’s registered
mark BIANCA and design. Petitioner has made out a non-
frivolous allegation of confusing similarity,4 and has
therefore established standing.
Before we proceed to the discussion of priority, we
address the likelihood of confusion issue.
Likelihood of Confusion
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors set
out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
4 The petition to cancel contained an allegation that respondent
“cannot establish secondary meaning for its use of the mark
BIANCA, which is descriptive as to its use of the mark ‘BIANCA’
for white platinum jewelry.” Petition at 2. Respondent denied
this allegation and the issue was not briefed by the parties.
“Bianca” is the name of a friend of Mr. Danaciyan’s daughter.
Danaciyan dep. at 8. The evidence of record does not support a
conclusion that the mark BIANCA is merely descriptive for
petitioner’s goods. Therefore, we conclude that petitioner’s
mark is distinctive as applied to petitioner’s goods.
Cancellation No. 92032305
5
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
In this case, both respondent and petitioner use the
mark BIANCA. Respondent’s registration shows the mark
BIANCA in stylized form.
Respondent’s added stylization is not sufficient to
distinguish the marks when the identical word is used in
both marks. See In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997) (Court held that the
addition of “The,” “Cafe” and a diamond-shaped design to
registrant’s DELTA mark still resulted in a likelihood of
confusion as to restaurant services); Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977) (CALIFORNIA CONCEPT and surfer design likely to
be confused with CONCEPT for hair care products). The words
in both marks here would be pronounced the same and have the
identical meaning, and in appearance, they would be very
similar. Therefore, their overall commercial impressions
would be very similar.
Another important consideration in a likelihood of
confusion analysis is the relatedness of the goods of
Cancellation No. 92032305
6
petitioner and respondent. The identification of goods in
respondent’s registration reads “jewelry consisting of
precious metals and gems.” We must consider the goods as
they are identified in the registration. Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973).
Petitioner’s evidence shows that it has been using the
mark in association with jewelry of all types, particularly
bangles. See Danaciyan Ex. 1 at 2737 (gold jewelry) and Ex.
3 (bangles, “all jewelry 14k and 18k gold”). Petitioner’s
catalogs contain the title “Bianca Jewelry Bangle’s [sic]
Specialist”). Petitioner testified that, since about 1982,
it has used the word BIANCA on “bracelet[s], flexible
bracelets, earrings, rings, pendants or necklaces.”
Danaciyan dep. at 9. Respondent also sells a variety of
jewelry items. See Zohrabian Ex. 39 (rings, necklaces,
bangles, earrings, pendants, and bracelets).
Respondent’s jewelry consisting of precious metals and
gems and petitioner’s jewelry of precious metals are very
similar, and therefore, little, if any, distinction can be
made on the basis of the goods. In addition, petitioner’s
and respondent’s evidence shows that the jewelry of both
parties does in fact include bangles consisting of precious
Cancellation No. 92032305
7
metals.5 “When marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines.” Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Because the goods of both parties are jewelry
consisting of precious metals, the purchasers and channels
of trade would overlap at least to some degree. Schieffelin
& Co. v. Molson Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB
1989) (“[M]oreover, since there are no restrictions with
respect to channels of trade in either applicant's
application or opposer's registrations, we must assume that
the respective products travel in all normal channels of
trade for those alcoholic beverages”). While respondent
argues that it sells “through retail stores” and petitioner
uses its mark “solely in the wholesale trade” (Respondent’s
Brief at 11), respondent’s registration does not exclude
sales through the wholesale trade.6
5 Despite respondent’s arguments to the contrary, respondent
admits that the goods are at least in part identical.
Respondent’s Brief at 10 (“Petitioner specializes in gold bangles
and bracelets… Respondent, on the other hand, sells a complete
line of designer jewelry, from earrings, to rings to bracelets to
necklaces to cuff links”) (emphasis added).
6 The difference between the channels of trade appears to be even
less distinct than asserted by respondent. Respondent admits
that it sells through “large retail chains, such as Bailey Banks
& Biddle, Macy’s, JC Penney, Sterling, Mayers and Walmart.”
Respondent’s Brief at 11; Zohrabian dep. at 41. Petitioner
stipulated that it sells only at wholesale. Danaciyan dep. at
43. The difference between the two parties’ marketing appears to
be that petitioner sells to wholesalers who subsequently re-sell
Cancellation No. 92032305
8
Respondent also argues that “[i]nsofar as both
Petitioner and Respondent actually sell to other
wholesalers, there is no likelihood of confusion given the
sophistication of the buyers and their relationship to the
seller. Wholesalers in the jewelry trade are extremely
sophisticated in general… Moreover, Mr. Danaciyan’s
customers are not major retail stores, but are more likely
to be jewelers within the Armenian community.” Respondent’s
Brief at 12. Assuming that jewelers are sophisticated
purchasers, that fact does not mean that there is no
likelihood of confusion. “Human memories even of
discriminating purchasers … are not infallible." In re
Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), quoting, Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970). See also In re Hester Industries, Inc., 231
USPQ 881, 883 (TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”). In this case, the identical word is used on
the jewelry without petitioner’s mark on the goods, while
respondent sells to wholesalers but respondent’s mark is also
promoted to retail customers. Danaciyan dep. at 44; Zohrabian
Exhibits 51-58.
Cancellation No. 92032305
9
virtually identical goods. Even the most careful purchasers
would normally be confused under these circumstances.
Respondent’s evidence does not demonstrate that this would
not be the case here.
Respondent also makes the additional arguments that (1)
there is another similar mark registered to a third party
and (2) there has been no actual confusion among
petitioner’s and respondent’s customers. As to the first
argument, even if there is another mark similar to
petitioner’s on the register that fact does not justify the
continued registration of respondent’s mark if petitioner
establishes that it is the prior user of essentially the
same mark for the same goods. While third-party
registrations may be used to demonstrate that a portion of a
mark is suggestive or descriptive, they cannot be used to
“justify the registration of another confusingly similar
mark.” In re J.M. Originals, 6 USPQ2d 1393, 1394 (TTAB
1988), citing, Plus Products v. Star-Kist Foods, Inc., 220
USPQ 541, 544 (TTAB 1983). As for the second argument, the
test here is likelihood of confusion not actual confusion.
Even if there has been no actual confusion, that fact would
not demonstrate that there is no likelihood of confusion.
Majestic Distilling, 65 USPQ2d at 1205 (“The lack of
evidence of actual confusion carries little weight”). See
also Giant Food, Inc. v. Nation's Foodservice, Inc., 710
Cancellation No. 92032305
10
F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1892 (Fed. Cir. 1991). The lack of actual confusion
is likely attributable to petitioner’s small size and
limited advertising. Danaciyan disc. dep. at 31.
In this case, when we consider all the likelihood of
confusion factors, we conclude that confusion is likely.
Both respondent and petitioner use the same word BIANCA on
jewelry made of precious metals. The design in respondent’s
mark would not overcome the likelihood of confusion when the
same word is used on virtually identical goods.
Priority
We now approach the central issue in this case,
priority of use of the mark BIANCA. We start by noting that
“a presumption of validity attaches to a service mark
registration, and the party seeking cancellation must rebut
this presumption by a preponderance of the evidence.” West
Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122,
31 USPQ 1660, 1662 (Fed. Cir. 1994). See also Cerveceria
Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) ("[I]n a
[trademark registration] cancellation for abandonment, as
for any other ground, the petitioner bears the burden of
proof. Moreover, the petitioner's burden is to establish
the case for cancellation by a preponderance of the
Cancellation No. 92032305
11
evidence"); Martahus v. Video Duplication Services Inc., 3
F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).
The application that matured into respondent’s
registration was filed on July 18, 1997. That date is
significant because respondent can rely on this date for its
priority, and in order to prevail on priority, petitioner
would have to establish an earlier date. 15 U.S.C.
§ 1057(c). See Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154, 156
n. 5 (TTAB 1985) (“The earliest date of first use upon which
Intelsat can rely in the absence of testimony or evidence is
the filing date of its application”).7
Regarding petitioner’s use of the mark, there are two
questions: (1) when did petitioner or its predecessor begin
using the mark and (2) can petitioner rely on this use of
the mark?
The evidence establishes that an entity known as
“Bianca Jewelry” existed long prior to the date of the
filing date of the application that eventually matured into
respondent’s registration (July 18, 1997). Petitioner has
submitted evidence of shipping receipts from 1992-96 from an
7 Respondent’s application asserts a date of first use and first
use in commerce of April 1, 1997. In this proceeding, respondent
does not attempt to establish a date of first use that is
significantly earlier than its filing date. Respondent’s Brief
at 6 (“Shortly prior to filing its application for registration
in 1997, Respondent decided to create a ‘designer collection’ of
platinum jewelry”).
Cancellation No. 92032305
12
entity identified on the receipts as “Bianca” or “Bianca
Jewelry.” Danaciyan Ex. 1. In addition, this exhibit
included receipts issued by an entity identified as “Bianca
Jewelry – Manufacturers of Fine Jewelry Wholesale and
Special Orders.” These receipts include: #2737 dated June
16, 1987 for “14 kt. Gold Jewelry”; #2746 dated July 28,
1987 for “14 kt. Gold Jewelry”; and #4021 dated in 1987 for
“Assorted Jewelry.” Petitioner has submitted tags, labels,
and a catalog evidencing use of the word BIANCA in
association with jewelry prior to 1997. See Danaciyan dep.
15-20; Exhibits 2, 3, and 4. Petitioner’s exhibits also
include evidence that it did business with respondent prior
to respondent’s adoption of its BIANCA mark on jewelry.
Danaciyan dep. at 29-34; Exhibits 5 and 5a.8
A related question affecting our determination on
priority is whether the use of the mark BIANCA was by
petitioner. Respondent argues that “Petitioner has no prior
rights to ‘Bianca’ because Petitioner admits that it did not
8 This evidence of petitioner’s sale of jewelry to respondent is
evidence that petitioner was using the mark BIANCA JEWELRY on
invoices prior to respondent (see, e.g. Danaciyan Ex. 5A (Receipt
#6951)). We do not find that the sale of this jewelry
establishes that respondent committed fraud in obtaining its
registration when it failed to identify petitioner as person or
firm that had a right to use the mark BIANCA as petitioner
maintains. A fraud claim must be proved “to the hilt.” Stocker
v. General Conference Corp. of Seventh-Day Adventists, 39 USPQ2d
1385, 1391 (TTAB 1989). Inasmuch as the sales of jewelry were
relatively small, respondent’s actions in sending a cease and
desist letter to petitioner (Danaciyan Ex. 51) is more indicative
of respondent’s lack of memory rather than a willful withholding
Cancellation No. 92032305
13
exist at the time that Respondent applied for registration
of the mark.” Respondent’s Brief at 9. However,
petitioner’s president testified that he was doing business
as Bianca Jewelry by 1982. Danaciyan dep. at 6.
Mr. Danaciyan operated Bianca Jewelry as a sole
proprietorship starting by 1982. Danaciyan dep. at 7. The
witness testified that Bianca Jewelry, Inc. began operating
in February 1998 and before that the Bianca Jewelry sole
proprietorship was doing the same type of business.
Danaciyan dep. at 6. Mr. Danaciyan is the president of
Bianca Jewelry, Inc. Danaciyan dep. at 5. Both the sole
proprietorship, Bianca Jewelry, and the corporation, Bianca
Jewelry, Inc., operated from the same address from 1982 to
2002 (610 South Broadway, Los Angeles, California).
Danaciyan dep. at 7. Mr. Danaciyan has testified that he
has used the mark BIANCA in a substantially continuous
fashion since 1982.9 We find that that Bianca Jewelry, Inc.
can rely on the use of Mr. Danaciyan’s sole proprietorship,
Bianca Jewelry’s, use of the mark BIANCA.
Indeed, the pertinent inquiry in this case is simply
whether a potential customer would have believed that
someone was proclaiming to be engaged in restaurant
services under the name "FAST EDDIE'S" at the time of
the advertisements. That is undoubtedly what a
potential customer would have believed in this case.
of material information from the Office. Petitioner’s fraud
claim, therefore, fails.
9 There is testimony that Mr. Danaciyan transferred the business
for approximately one year in the early 1990’s when he had
surgery. Danaciyan dep. at 69.
Cancellation No. 92032305
14
Moreover, to the extent that the TTAB's decision
suggests that West may be attempting to claim prior use
for use that it cannot truthfully credit to itself,
such a suggestion is nothing more than an unjustifiable
refusal to recognize the connection between West
Florida Seafood (the corporate name), "FAST EDDIE'S
PLACE" (the trade name), and Edwin or E. Porter (the
company's president). The TTAB erred in ignoring the
rather obvious connection between these corporate,
business, and personal "alter egos" operating as "FAST
EDDIE'S."
West Florida Seafood, 31 USPQ2d at 1664. See also
Gaylord Bros., Inc. v. Strobel Products Co., 140 USPQ2d 72,
74 (TTAB 1963) (“When he ceased doing business under one
name and continued that same business under another name,
previously used, title of the mark remained with him, as it
was always with him. There is uncontradicted testimony that
this person’s individual business under the name Strobel
Products Co. was taken over and continued by the Strobel
Products Company, Incorporated”).
Here, the evidence supports a finding that
Mr. Danaciyan’s sole proprietorship was using the mark
BIANCA to identify its jewelry since long prior to 1997.
Petitioner, a successor corporation established by
Mr. Danaciyan, has continued this use of the mark on
jewelry. Thus, we find that petitioner has established
priority of use of the mark by a preponderance of the
evidence. Therefore, because we have already determined
that confusion is likely and now have found that petitioner
Cancellation No. 92032305
15
has priority, petitioner is entitled to prevail on that
issue.
Decision: The petition to cancel is granted, and
Registration No. 2,197,738 will be cancelled in due course.