Chica, Inc.

Trademark Trial and Appeal Board

Aug 14, 2007

No. 76627857 (T.T.A.B. Aug. 14, 2007)

Mailed:
14 August 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chica, Inc.
________

Serial No. 76627857
_______

Colin P. Abrahams, Esq. for Chica, Inc.

Sally Shih, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Hairston, Drost, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 13, 2005, Chica, Inc. (applicant) applied
to register the mark shown below on the Principal Register
for goods ultimately identified as: jewelry, necklaces,
jewelry chains, charms; watches and clocks, watch straps
and bands, watch cases; earrings, rings as jewelry in class
14:

THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 76627857
2

The application contains a translation of the term Corazon
as “Heart” and Chica as “Girl.” It is based on applicant’s
allegation that it first used the mark anywhere and in
commerce on February 14, 2004, and it also claims ownership
of Registration No. 2,951,856 for the mark CHICA.
The examining attorney has refused to register the
mark under Section 2(d) of the Trademark Act because of a
prior registration for the mark shown below for “jewelry”
in Class 14.1 15 U.S.C. § 1052(d).

The registration contains a translation of the word
“Corazon” as “Heart.”
The examining attorney also refused registration on
the ground that “the specimen of use is deemed temporary in
nature because it is not actually in use.” Brief at 7.

1 Registration No. 2,345,775, issued April 25, 2000. Affidavits
under Section 8 and 15 accepted or acknowledged.
Ser. No. 76627857
3
After the examining attorney made the refusals final,
this appeal followed.
We begin by addressing the issue pertaining to the
specimen of use, which is set out below.2

The examining attorney argues that the specimen “is not the
actual jewelry in the market place and it is a mere
representation of the goods that may or may not be in use.”
Brief at 7. Applicant maintains that the “specimen
originally filed comprises a representation of a piece of
jewelry by the Applicant. The specimen was not ‘temporary
in nature’ but a representation of an actual piece of
jewelry.” Request for reconsideration at 8.
The Trademark Act requires that an application that is
based on use must include “such number of specimens or
facsimiles of the mark as used as may be required by the
Director.” 15 U.S.C. § 1051(a)(1). “A trademark specimen

2 While difficult to see in the image above, the top of the
drawing depicts the mark although it is upside down.
Ser. No. 76627857
4
is a label, tag, or container for the goods, or a display
associated with the goods.” 37 CFR § 2.56(b)(1). “A
photocopy or other reproduction of a specimen of the mark
as actually used on or in connection with the goods, or in
the sale or advertising of the services, is acceptable.”
37 CFR § 2.56(c) (emphasis added).
More specifically, “the specimen may not be a
‘picture’ of the mark, such as an artist's drawing or a
printer's proof that merely illustrates what the mark looks
like and is not actually used on or in connection with the
goods in commerce.” TMEP § 904.04 (4th ed. April 2005).
Actual specimens are preferred… However, a photograph,
photocopy or other reproduction of a specimen of the
mark as used on or in connection with the goods, or in
the sale or advertising of the services, is
acceptable… It is permissible to show the complete
article in one photograph and the written matter in
another, so that the written matter will be legible,
or to show different views of an article either in a
single photograph or in separate photographs.

TMEP § 904.08.
While facsimiles may also be submitted as specimens,
these facsimiles would not include a drawing of the mark on
the goods.
Actual specimens are preferred if they are available
and not "bulky." However, a photograph, photocopy or
other reproduction of a specimen of the mark as used
on or in connection with the goods, or in the sale or
advertising of the services, is acceptable. 37 CFR
§2.56(c). The applicant should submit facsimiles if
Ser. No. 76627857
5
actual specimens exceed the size requirements of 37
CFR §2.56(d)(1).

Facsimiles should show the whole article to which the
mark is applied, or enough of the article so that the
nature of the article can be identified. The mark and
all other pertinent written matter on the article
should be clear and legible. It is permissible to
show the complete article in one photograph and the
written matter in another, so that the written matter
will be legible, or to show different views of an
article either in a single photograph or in separate
photographs.

TMEP § 904.08 (parenthetical omitted).
A facsimile is defined as an “exact copy, as of a
book, painting, or manuscript.” The Random House
Dictionary of the English Language (unabridged) (2d ed.
1987).3 Applicant’s artist rendition is not a facsimile of
its mark because it does not show the mark as “actually
used on or in connection with the goods.” TMEP § 904.04.
We point out that to the extent that the examining
attorney has referred to the specimens as being
“temporary,” this is not the characteristic of the
specimens that is fatal to registration. Indeed, in
“connection with labels whose appearance suggests that they
are only for temporary use, the examining attorney may
consider it necessary to make further inquiry under 37

3 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 76627857
6
C.F.R. § 2.61(b) in order to properly examine the
application.” TMEP § 904.04(a) (emphasis added). Nothing
prohibits the registration of a mark in an application that
contains only “temporary” specimens provided that the
specimens were actually used in commerce. However, the
examining attorney has also argued that the specimen is not
acceptable because “it is not actually in use.” Brief at
7. Applicant’s specimen appears to be a mere drawing of
the goods with an illustration of how the mark may be
displayed and not an actual specimen that applicant used in
commerce. Indeed, applicant describes the specimen as “a
representation of an actual piece of jewelry.” Inasmuch as
applicant has not explained how this drawing was itself
actually used, we affirm the examining attorney’s
requirement for an acceptable specimen.
Next, we consider the issue of whether applicant’s
mark is confusingly similar to the mark in the cited
registration. The examining attorney argues that
applicant’s and registrant’s marks “share the significant
common term CORAZON” and that “an average consumer would
immediately be drawn to the term CORAZON when encountering”
applicant’s mark. Brief at 4. The examining attorney also
points out that the goods are identical and highly related.
Applicant, on the other hand, highlights the numerous
Ser. No. 76627857
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differences between the marks themselves including the
“additional distinctive word ‘CHICA’” in applicant’s mark
and the difference in script and design between the marks.
Also, applicant points to the registration of a third-party
mark as evidence that there is no likelihood of confusion
in the instant case.
When there is an issue of likelihood of confusion, we
consider the evidence in light of the relevant factors set
out in 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); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We point out that both the cited registration’s and
the application’s identifications of goods include the
identical goods: “jewelry.” “When marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
Ser. No. 76627857
8
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992). “Jewelry” is the only good in the cited
registration and it is closely related to the other goods
in the pending application including jewelry bracelets,
jewelry chains, and rings as jewelry. This factor strongly
favors a conclusion of likelihood of confusion.
Also, inasmuch as the goods are identical and closely
related and there are no restrictions on the goods, we must
assume that the goods move in the same channels of trade to
the same customers. Schieffelin & Co. v. Molson Companies
Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989) (“[S]ince 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”).
Second, we compare the marks of applicant and
registrant:

Ser. No. 76627857
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Both marks contain the identical word CORAZON, which is
translated as “Heart.” It is the only word in registrant’s
mark and it is the first word in applicant’s mark. The
only other words in applicant’s mark are the phrase “BY
CHICA.” These words are translated as “By Girl.”
Applicant’s corporate name is Chica, Inc. As such, to many
consumers, applicant’s mark for the identical word
“Corazon” followed by the phrase “BY CHICA” will simply be
viewed as the identification of the previously anonymous
source of the goods sold under the mark CORAZON. In a
similar case, the board held that: “those familiar with
only applicant's mark [SPARKS BY SASSAFRAS and design]
would, upon encountering the registered mark [SPARKS] on
related goods, assume that all “SPARKS” products come from
a single source, and that that source was in some instances
further identified with the words ‘by sassafras.’” In re
Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986). See
also In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD
PETTY'S ACCUTUNE (and design) for automotive service
Ser. No. 76627857
10
centers confusingly similar to ACCUTUNE for automotive
testing equipment); In re Champion International
Corporation, 196 USPQ 48 (TTAB 1977) (HAMMERMILL MICR
CHECK-MATE for paper for writing, printing, duplicating and
office use confusingly similar to CHECK MATE for
envelopes); and In re C.F. Hathaway Co., 190 USPQ 343 (TTAB
1976) (HATHAWAY GOLF CLASSIC for knitted sports shirts
confusingly similar to GOLF CLASSIC for men's hats).
We add that the other differences between the marks do
not overcome the fact that the marks are both dominated by
the word “Corazon.” The stars in registrant’s mark are
relatively minor and the heart design in applicant’s mark
simply reinforces the dominant word “Corazon,” which is
translated as “Heart.” These “minor design features do not
necessarily obviate likelihood of confusion arising from
consideration of the marks in their entireties. Moreover,
in a composite mark comprising a design and words, the
verbal portion of the mark is the one most likely to
indicate the origin of the goods to which it is affixed.”
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983).
Because they are both dominated by the word
“Corazon,” the marks’ similarities in appearance, sound,
meaning, and connotation overcome their differences. Palm
Ser. No. 76627857
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Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005). See also Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1845 (Fed. Cir. 2000) (“[B]ecause both
marks begin with ‘laser,’ they have consequent similarities
in appearance and pronunciation”) (quotation marks in
original omitted); and In re Dixie Restaurants, Inc., 105
F.3d 1405, 41 USPQ 1531, 1534 (Fed. Cir. 1997) (more weight
given to common dominant word DELTA).
Applicant makes one additional argument. It points
out that there is another registration for the following
mark owned by a third party.4

Applicant argues that the “fact that CORAZON COEUR and logo
was registered must be considered undisputed evidence that
the styles and logos of the CORAZON COEUR logo and the
cited registration are different enough from each other and
each sufficiently distinctive to allow both to be

4 Registration No. 2,442,599 issued April 10, 2001.
Ser. No. 76627857
12
registered without the likelihood of confusion.” Brief at
5.
We do not find the existence of this registration to
be significant for several reasons. First, an applicant
does not overcome a likelihood of confusion refusal by
pointing to other registrations and arguing that they are
as similar to the cited registration as applicant’s mark.
While third-party registrations may be used to demonstrate
that a portion of a mark is suggestive or descriptive, they
“cannot justify the registration of another confusingly
similar mark.” In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987), quoting Plus Products v. Star-Kist Foods,
Inc., 220 USPQ 541, 544 (TTAB 1983).
Second, we note that the words CORAZON COEUR are
translated as “Heart Heart” in Registration No. 2,442,599.
In addition, the mark is described as consisting of “two
stylized snakes forming a heart shape.” Finally, the
registration contains a disclaimer of the terms “Corazon
Coeur.” The fact that an applicant has disclaimed a term
may result in the term having less weight in a likelihood
of confusion analysis. “When comparing the similarity of
marks, a disclaimed term, here ‘COMMUNICATIONS,’ may be
given little weight, but it may not be ignored. M2
Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78
Ser. No. 76627857
13
USPQ2d 1944, 1948-49 (Fed. Cir. 2006). Disclaimed matter
is often “less significant in creating the mark’s
commercial impression.” In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001). Therefore, the fact that
another mark has registered with a disclaimer of the term
CORAZON does not establish that there is no likelihood of
confusion in this case.
When we consider the record, we conclude that there is
a likelihood of confusion here. The goods of applicant and
registrant are identical or closely related. The marks are
both dominated by the same word CORAZON. As discussed
previously, the design features of the marks are relatively
minor, and the additional wording in applicant’s mark
simply appears to identify what would have previously been
an anonymous source of the goods. We add that even if the
word CORAZON, and its English translation, was considered
to be highly suggestive of jewelry, it nonetheless is
entitled to protection from the use of a very similar mark
on jewelry products. “[E]ven weak marks are entitled to
protection against registration of similar marks,
especially identical ones, for related goods and services.”
In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982); In re
The Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978)
(ERASE for a laundry soil and stain remover held
Ser. No. 76627857
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confusingly similar to STAIN ERASER, registered on the
Supplemental Register, for a stain remover).
Therefore, we conclude that there is a likelihood of
confusion. Even if we had any doubts about whether there
is a likelihood of confusion, we must resolve any doubts in
favor of the prior registrant and against the newcomer. In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025,
1026 (Fed. Cir. 1988) and In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729, 729-30 (CCPA 1973).
Decision: The refusals to register are affirmed.