De Beers UK Limited

Trademark Trial and Appeal Board

Nov 1, 2016

No. 86424404 (T.T.A.B. Nov. 1, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: November 1, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re De Beers UK Limited
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Serial No. 86424404
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Brian R. McGinley and Kate E. Hart of Dentons US LLP,
for Rieker Instrument Company, Inc.

Keri-Marie Cantone, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____
Before Bergsman, Ritchie, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

De Beers UK Limited (“Applicant”) seeks registration on the Principal Register
of the mark MARKET PRICE QUOTE in standard characters for the following
goods and services:
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Precious metals and their alloys and goods in precious metals or
coated therewith, not included in other classes, namely, rings,
bracelets, necklaces, pendants, earrings and cufflinks; jewellery and
imitation jewellery; precious and semi-precious stones; horological and
chronometric instruments in International Class 14;

Retail and wholesale store services including on-line wholesale and
retail store services all in the field of precious metals and their alloys
and goods in precious metals or coated therewith, jewellery and
imitation jewellery, precious and semi-precious stones, horological and
chronometric instruments; information, namely, providing information
in the field of wholesale and retail store services featuring precious
metals and their alloys and goods in precious metals or coated
therewith, jewellery and imitation jewellery, precious and semi-
precious stones, horological and chronometric instruments;
advertising, namely, advertising services featuring precious metals
and their alloys and goods in precious metals or coated therewith,
jewellery and imitation jewellery, precious and semi-precious stones,
horological and chronometric instruments; marketing, namely,
marketing services featuring precious metals and their alloys and
goods in precious metals or coated therewith, jewellery and imitation
jewellery, precious and semi-precious stones, horological and
chronometric instruments; promotional, namely, promotional services
in the nature of promotion of business opportunities featuring precious
metals and their alloys and goods in precious metals or coated
therewith, jewellery and imitation jewellery, precious and semi-
precious stones, horological and chronometric instruments;
consultancy, namely, providing information in the field of retail store
services featuring precious metals and their alloys and goods in
precious metals or coated therewith, jewellery and imitation jewellery,
precious and semi-precious stones, horological and chronometric
instruments; advisory, namely, advisory services relating to business
management and business operations featuring precious metals and
their alloys and goods in precious metals or coated therewith, jewellery
and imitation jewellery, precious and semi-precious stones, horological
and chronometric instruments and auctioneering services including on-
line auctioneering services in the field of precious metals and their
alloys and goods in precious metals or coated therewith, jewellery and
imitation jewellery, precious and semi-precious stones, horological and
chronometric instruments in International Class 35;

Financial services, namely, the appraisal, valuation in the nature of
jewelry appraisal and insurance services in the nature of insurance
brokerage services, all in the field of precious metals and their alloys
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and goods in precious metals or coated therewith, jewellery and
imitation jewellery, precious and semi-precious stones, horological and
chronometric instruments in International Class 36.1

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1), 15 U.S.C. § 1052(e)(1), as merely descriptive of the identified
goods and services. After the Trademark Examining Attorney made the refusal
final, Applicant requested reconsideration and appealed to this Board. The
Examining Attorney denied the request for reconsideration. The appeal resumed
and has been fully briefed. We affirm the refusal to register.
Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods [or services] of the applicant is
merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is merely descriptive
within the meaning of Section 2(e)(1) “if it immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods or services with which it is
used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015).
Descriptiveness must be assessed “in relation to the goods [and services] for
which registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods [and

1 Application Serial No. 86424404 was filed on October 15, 2014, based on intent to use in
commerce under Section 1(b), 15 U.S.C. § 1051(b). Applicant divided out three additional
classes of services during prosecution that are now contained in child application Serial No.
86978658, also the subject of a pending appeal.
Serial No. 86424404
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services] because of the manner of its use or intended use.” Bayer Aktiengesellschaft,
82 USPQ2d at 1831 (citing Abcor Dev. Corp., 200 USPQ at 218). The descriptiveness
analysis concentrates on the identification of goods and services set forth in the
application. See In re Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632, 1636
(Fed. Cir. 2016) (quoting Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918
F.2d 937, 16 USQP2d 1783, 1787 (Fed. Cir. 1990)). If a mark is descriptive of any of
the goods or services in a class for which registration is sought, it is proper to refuse
registration as to the entire class. In re Chamber of Commerce of the United States,
675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (“Moreover, a mark need
not be merely descriptive of all recited goods or services in an application. A
descriptiveness refusal is proper ‘if the mark is descriptive of any of the [services]
for which registration is sought.’”) (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77
USPQ2d 1087, 1089 (Fed. Cir. 2005)); In re Positec Grp. Ltd., 108 USPQ2d 1161,
1171 (TTAB 2013) (“[I]f the mark is descriptive of some identified items -- or even
just one -- the whole class of goods still may be refused by the examiner.”).
“Market price” refers to “the price at which a commodity, security, or service is
selling in the open market.”2 “Quote,” is defined in relevant part as “a statement of
the current price.”3 Applicant’s own website promotes the “Market Price Quote” as

2 Feb. 9, 2015 Office Action at 16 (Dictionary.com entry for “market price,” based on the
Random House Dictionary, 2015); see also Aug. 31, 2015 Office Action at 2
(Oxforddictionaries.com entry for “market price” defining it as “The price of a commodity
when sold in a given market”).
3 Id. at 15 (Dictionary.com entry for “quote,” based on the Random House Dictionary, 2015);
see also Aug. 31, 2015 Office Action at 21-22 (Oxforddictionaries.com entry for “quote”
defining it as “A quotation giving the estimated price of a job or service”).
Serial No. 86424404
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“the basis for an offer made by the retailer to purchase the diamond jewelry from
the customer,” noting that the “Market Price Quote” is “based on market
transaction data for similar pieces.”4 Applicant’s FAQ’s page explains the “Market
Price Quote” as “the highest possible price one could achieve for his/her diamond
jewelry in the secondary, after-sales market. . . .”5 Additionally, an internet jewelry
industry news article from a third-party uses “market price quote” descriptively in
regard to Applicant’s services, stating that retailers with customers who want to
resell diamonds may do “an in-store valuation of the stone and then send[] the info
to the IIDV [Applicant], which responds with a market price quote.”6 The article
goes on to note that a second option is to send the piece to Applicant which will
evaluate it and Applicant’s “lab supplies a market price quote,” “meant to be the
‘highest possible price one could achieve … on the secondary, wholesale market.’”7
Other third parties in the industry also use the entire phrase “market price
quote” descriptively about their own goods and services that consist of or relate to
precious metals such as gold and precious stones such as diamonds. For example:
• A’per Trading Corporation, which deals in “Diamonds[,] Gemstones[, and]
Precious Metals,” states on its website, “Contact us for Current Market
Price Quote,” and “Contact us for current market prices. . . .”8

• The website for GoldParty LLC promotes instructional videos on acquiring
and selling scrap gold, and one screenshot summarizing a video states,
“He talks about the important factors you will need to run against your

4 Aug. 31, 2015 Office Action at 14 (www.iidv.org).
5 Id. at 19.
6 Feb. 9, 2015 Office Action at 17 (www.jckonline.com).
7 Id. (quoting from Applicant’s website).
8 Id. at 19-20 (www.apertrading.com) (emphasis added).
Serial No. 86424404
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own numbers, including, incoming weight, post refined weight, market
price quote and settlement price paid.”9

• An online article entitled “How to Tell How Much Scrap Gold Is Worth”
states “Go online to one of the many websites that track gold prices and
find out today’s gold market price. . . . If you can find only a market price
quote per troy ounce, convert that figure into a price per gram.”10

This evidence shows descriptive use of the term for the retail sale of precious metals
and stones, for those types of goods themselves, and for appraising or valuing such
goods.
The Examining Attorney’s evidence further shows descriptive use of “market
price” and “quote” in the industries for jewelry and precious metals and stones and
related services. For example:
• The website of Hemming Plaza Jewelers states that they buy gold, silver,
platinum, and diamonds, and that they “will test your jewelry and provide
a professional quote based on current market price.”11

• The website of the Diamond Registry offers a “Quote” along with a price
list with “an updated sheet of diamond prices used by wholesalers within
the diamond industry,” noting its usefulness “to estimate the diamond
prices with the original market price indicator.”12

• The website of Findmyrock.com offers a “Diamond Price Calculator”
whereby the user enters information “to generate a projected market
price of the exact diamond.”13

• The website of RapNet The Diamond Market states that “RapNet
members also have full access to graphs showing market price changes
for the cost of diamonds over time.”14

9 Id. at 23, 26 (www.goldpartyllc.com) (emphasis added).
10 Feb. 9, 2015 Office Action at 12-14 (http://finance.zacks.com) (emphasis added).
11 Aug. 31, 2015 Office Action at 20 (http://hemmingplazajewelers.com) (emphasis added).
12 Id. at 5 (www.diamondregistry.com) (emphasis added).
13 Id. at 8 (http://findmyrock.com) (emphasis added).
14 Id. at 11 (http://member.rapnet.com) (emphasis added).
Serial No. 86424404
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• The website of Jewelry Notes states, under the heading “Calculating the
Value of Diamonds,” “Valuing diamonds starts with establishing their
quality level, which will be the basis for determining their retail market
price. . . .” Under the heading “Determining Diamond Market Price,” a
description of “market value” research purports to help the user “calculate
an average price, which will serve as an estimate of your diamond’s
value.”15

• The website of Doctor Jeweler notes, under the heading “Get Pricing on
Jewelry Mounting in NYC” that “We will need to see the jewelry and talk
to you about the various services and options before giving you a quote.
The quote is free.”16

The evidence in the record shows “market price” and “quote” used to describe
retailing precious metals and stones, for those types of goods themselves, and for
appraising or valuing such goods. When a mark combines two descriptive terms, the
descriptiveness analysis turns on whether the combination of terms evokes a new
and unique commercial impression. We find no such new and unique commercial
impression from the combination of MARKET PRICE and QUOTE in this case. “In
considering a mark as a whole, the Board may weigh the individual components of
the mark to determine the overall impression or the descriptiveness of the mark
and its various components.” Oppedahl & Larson, 71 USPQ2d at 1372. If the
combination retains the descriptive significance of the individual parts, the mark as
a whole must be considered merely descriptive. In re Petroglyph Games Inc., 91
USPQ2d 1332, 1337 (TTAB 2009) (BATTLECAM merely descriptive for computer
game software); see also In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB

15 March 29, 2016 Denial of Reconsideration Office Action at 31-32 (www.jewelrynotes.com)
(emphasis added).
16 Id. at 30 (www.jewelryrepairnewyork.com) (emphasis added).
Serial No. 86424404
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2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and
UV curing systems composed primarily of light-emitting diodes for industrial and
commercial applications). While Applicant makes a conclusory argument that its
mark is unitary and combines these terms “in a somewhat unexpected manner,”17
we find that Applicant’s mark lacks the type of unitary expression or incongruous
meaning that could avoid mere descriptiveness. See generally In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (“unusual association or
arrangement in the applicant’s mark [SUGAR & SPICE] results in a unique and
catchy expression which does not, without some analysis and rearrangement of its
components suggest the contents of applicant’s goods”). Rather, the combination of
“market price” and “quote” retains the descriptive significance of these terms and
creates no new commercial impression. This is particularly apparent, given the
examples of descriptive use by others of the term as a whole.
Applicant argues that its mark is suggestive because consumers encountering
the mark would not know the “precise nature of Applicant’s products and
services,”18 although Applicant concedes that the mark conveys “that Applicant’s
goods and services relate generally to pricing or quote services. . . .”19 Contrary to
Applicant’s contention, we do not consider the mark in the abstract, but rather
inquire whether someone familiar with the identified goods and services will
understand the mark to convey information about them. DuoProSS Meditech Corp.

17 13 TTABVUE 7 (Applicant’s Reply Brief).
18 10 TTABVUE 9 (Applicant’s Brief).
19 Id.
Serial No. 86424404
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v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012);
In re Abcor Dev., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66
USPQ2d 1222, 1224 (TTAB 2002). Thus, given that consumers would be familiar
with the nature of Applicant’s goods and services relating to jewelry and precious
metals and stones, consumers would immediately understand that the “pricing or
quote services” Applicant refers to are in the context of such goods and services. Its
“market price quotes” involve jewelry and precious metals and stones, as well as
related retail and appraisal services for those goods. The evidence shows that
consumers are accustomed to encountering “market price quote,” “market price,”
and “quote” as descriptive terms for the price and retailing of jewelry, precious
metals and stones, as well as the appraisal thereof.
Applicant next contends that its mark is not descriptive because even within the
relevant industry, the terms in the mark could have numerous meanings, thereby
necessitating “mental gymnastics and extrapolation to arrive at the nature of
Applicant’s goods and services.”20 For example, Applicant maintains that the
reference could be “to a stock exchange,” “quotation services, the goods for which
quotation services are offered, or stock market advice.”21 Similarly, Applicant
asserts that “there are numerous ‘market prices’ which may apply, including retail
v. wholesale, gold v. silver, custom v. resale jewelry, etc.”22 Again, however, because
we consider MARKET PRICE QUOTE in the context of the identified goods and

20 10 TTABVUE 10 (Applicant’s Brief).
21 Id. at 9.
22 Id.
Serial No. 86424404
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services, DuoProSS Meditech Corp., 103 USPQ2d at 1757, we find that consumers
would not think of references to stock exchanges or stock market advice. Rather, as
reflected by the evidence of record, consumers would think of estimates of the
current sales amounts for the relevant goods.
Thus, consumers would immediately understand MARKET PRICE QUOTE,
when used in connection with Applicant’s identified goods and services, to describe
a key feature of them.
Decision: The refusal to register Applicant’s mark as merely descriptive is
affirmed.