Disney Enterprises, Inc.

Trademark Trial and Appeal Board

Aug 12, 2009

No. 77235868 (T.T.A.B. Aug. 12, 2009)

Mailed: August 12, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Disney Enterprises, Inc.
________

Serial No. 77235868
_______

David M. Kelly and Lynn M. Jordan of Finnegan Henderson
Farabow Garret & Dunner, LLP for Disney Enterprises, Inc.

Stephen Aquila, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hairston, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Disney Enterprises, Inc. has filed an application to
register the mark TIANA (standard character form) for the
following goods: “athletic shoes; bandanas; baseball caps;
beach cover-ups; beachwear; belts; bikinis; blazers; boots;
bow ties; bras; caps; chaps; cloth bibs for babies; coats;
dresses; ear muffs; footwear; gloves; golf shirts;
Halloween costumes; hats; head bands; head wear; hosiery;
infant wear; jackets; jeans; jerseys; kerchiefs; leotards;
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 77235868
2
leg warmers; mittens; necklaces; night shirts; night gowns;
overalls; pajamas; pants; panty hose; polo shirts; ponchos;
rainwear; robes; sandals; scarves; shirts; shoes; skirts;
shorts; slacks; slippers; sleepwear; socks; stockings;
sweaters; sweat pants; sweat shirts; swimsuits; tank tops;
tights; t-shirts; underwear; vests; wrist bands” in
International Class 25.1
Registration has been finally refused pursuant to
Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on applicant’s goods, so
resembles the previously registered mark TIANA for
“jewelry, diamonds” in International Class 14,2 as to be
likely to cause confusion. Applicant has appealed.
Applicant and the examining attorney have filed briefs. We
affirm the refusal.
Our determination under Trademark Act §2(d) is based
upon an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also

1 Application Serial No. 77235868 was filed on July 23, 2007,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.
2 Registration No. 2810758 issued on February 3, 2004.
Serial No. 77235868
3
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 554 F.2d 1098, 192 USPQ 24 (CCPA
1976).
We turn first to the du Pont factor of the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
We find that applicant’s mark TIANA (in standard character
form) and the cited mark TIANA (also in standard character
form) are identical in every respect, and applicant does
not argue to the contrary. Use of identical marks is a
fact which “weighs heavily against applicant.” See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ
1289 page cite (Fed. Cir. 1984); and In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
We turn next to a consideration of the du Pont factor
of the similarity or dissimilarity of the goods. We note
that if the marks are the same, as in this case, it is only
necessary that there be a viable relationship between the
Serial No. 77235868
4
goods in order to support a finding of likelihood of
confusion. See In re Concordia International Forwarding
Corp., 222 USPQ 355 (TTAB 1983).
Furthermore, it is not necessary that applicant’s
goods and the registrant’s goods be identical or even
competitive in order to support a finding of likelihood of
confusion. It is sufficient if the respective goods are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used in
connection therewith, give rise to the mistaken belief that
they emanate from or are associated with a single source.
See In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978).
Although applicant is correct that there is no per se
rule that clothing, on the one hand, and jewelry/diamonds,
on the other hand, are related goods, we find that at the
very least, applicant’s women’s “dresses,” “shirts,”
“skirts,” and “sweaters” are sufficiently related to
registrant’s “jewelry” that confusion is likely to result
from the use thereon of the identical marks involved in
this case. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) [A
Serial No. 77235868
5
Section 2(d) refusal is proper if there is a likelihood of
confusion involving any of the goods listed in the
application and the cited registration.].
In support of their opposing arguments regarding the
similarity of the goods, the examining attorney and
applicant have introduced competing third-party
registration evidence. The examining attorney submitted
twenty-four use-based registrations for marks which include
in their respective identifications of goods both clothing,
including women’s dresses, shirts, skirts, and/or sweaters,
on the one hand, and jewelry, on the other hand.
Applicant introduced eight instances (sixteen
registrations) when registrations issued to different
entities for similar marks, one covering clothing or shoes,
and the other covering jewelry and/or diamonds.
“Third-party registrations which cover a number of
differing goods and/or services, and which are based on use
in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, may nevertheless have some probative
value to the extent that they may serve to suggest that
such goods or services are of a type which may emanate from
a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988), aff’d 864 F.2d 149 (Fed. Cir.
Serial No. 77235868
6
1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993).
The third-party registration evidence overwhelmingly
favors the examining attorney’s position with respect to
the relatedness of women’s dresses, shirts, skirts and
sweaters, on the one hand, and jewelry, on the other hand.
As for applicant’s evidence, two of the eight sets of
registrations relied upon by applicant cover shoes and
jewelry/diamonds; two sets cover hosiery and diamonds; and
two sets cover clothing and diamonds. Only two sets cover
women’s clothing and jewelry, in particular. In any event,
as often noted by the Board, each case must be decided on
its own merits. We are not privy to the records in the
files of such registrations and, moreover, the
determination of registrability of particular marks by the
trademark examining attorneys cannot control the result in
another case involving a different mark. See In re Nett
Designs, Inc., 57 USPQ2d 1564 (Fed. Cir. 2001). In sum, we
find that the third-party registration evidence submitted
by the examining attorney demonstrates the existence of a
viable relationship between, at the very least, women’s’
dresses, shirts, skirts and sweaters, on the one hand, and
jewelry, on the other hand. In addition, we find that
jewelry such as necklaces and earrings are complementary
Serial No. 77235868
7
to, and would be purchased and worn together with, women’s
dresses and sweaters, for example. See In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) [women’s shoes are
complementary to women’s pants, blouses, shorts and jackets
because they may be part of a coordinated outfit]. The du
Pont factor of the similarity between the goods favors a
finding of likelihood of confusion.
With respect to the du Pont factor of trade channels
and classes of purchasers, because neither applicant’s
identification of goods nor the identification of goods in
the cited registration includes any restrictions, we
presume that the respective goods would be marketed in all
normal channels of trade for such goods and to all normal
classes of purchasers of such goods. In re Elbaum, 211
USPQ 639 (TTAB 1981). Applicant’s women’s dresses, shirts,
skirts and sweaters could be offered and sold to the same
classes of purchasers in the same trade channels (e.g.
department stores and mass merchandisers). This factor
favors a finding of likelihood of confusion.
Under the du Pont factor of conditions under which
sales are made, applicant argues that the purchasers of
jewelry are sophisticated. However, there are no
limitations in registrant’s identification of goods.
Therefore, the identification is broad enough to encompass
Serial No. 77235868
8
costume jewelry which may be sold to ordinary consumers.
Considering that this type of jewelry is relatively
inexpensive, it is likely therefore to be purchased
casually and on impulse, thereby increasing the possibility
of confusion. Thus, the conditions under which sales are
made is a factor that weighs in favor of a finding of
likelihood of confusion.
Finally, applicant argues that registrant’s TIANA mark
is a weak mark entitled to only a narrow scope of
protection. Specifically, applicant contends that
registrant’s mark is weak because “Tiana” is both a
personal name and a foreign term that is suggestive of the
cut of registrant’s diamonds.
In support of its position that personal names such as
“Tiana” are weak, applicant points to the Board’s statement
in Aileen, Inc. v. Eileen Togs, Corp., 188 USPQ2d 698, 700
(TTAB 1975), that “surnames and given names, per se,
because of their proliferation of use, are generally
considered to fall within the designation of ‘weak’
marks ….”
With respect to the weakness of registrant’s TIANA
mark because it is suggestive, applicant has submitted
evidence showing that the name “Tiana” means “princess” in
Greek (Exhibit A-“www.yeahbaby.com/meaning-name”); that
Serial No. 77235868
9
registrant uses the mark TIANA to denote a “square modified
cushion cut” diamond (Exhibit B-“Proprietary/Patented
Diamond Cuts”); that a “square cut” diamond is also known
as a “princess cut” (Exhibit J-“Wikipedia”); and that a
person identified as Fred Knobloch of registrant Brite Star
Diamond stated in a magazine article that the TIANA cut was
“developed to underscore the virtues of a princess cut,”
and the mark TIANA was selected because “the word means
princess.” (Exhibit K-“Professional Jeweler Magazine”).
Applicant’s arguments do not persuade us that
registrant’s mark is entitled to only a narrow scope of
protection. First, to the extent that purchasers would
understand the meaning of the foreign word TIANA, this term
would have the same meaning, i.e., “princess,” in both
marks. There is no additional word in registrant’s mark
which changes the meaning or commercial impression of the
marks. Third, and regardless of whether the marks would be
perceived as a given name or foreign term, even if marks
which consist of the term TIANA are considered to be weak,
even weak marks are entitled to protection where confusion
is likely. Here, notwithstanding any alleged weakness in
the term TIANA, the marks are identical and the goods are
related.
Serial No. 77235868
10
In view of the foregoing, we conclude that consumers
familiar with registrant’s jewelry sold under the mark
TIANA would be likely to believe, upon encountering
applicant’s women’s dresses, shirts, skirts, and sweaters,
sold under the identical mark TIANA, that the goods
originated with or are associated with or sponsored by the
same entity.
To the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register under Trademark Act
§2(d) is affirmed.