Don Vintache Inc.

Trademark Trial and Appeal Board

Sep 27, 2018

No. 86186795 (T.T.A.B. Sep. 27, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Don Vintache Inc.
_____

Serial No. 86186795
_____

Keith A. Weltsch of Scully, Scott, Murphy and Presser. P.C.,
for Don Vintache Inc.
Dominic R. Faithy, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Taylor, Kuczma and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Don Vintache Inc. (“Applicant”) seeks registration on the Principal Register of the
mark DIAMONDS ON THE ROCKS (in standard characters) for
Jewelry, namely diamond jewelry in International Class
14.1

1 Application Serial No. 86186795 was filed on February 6, 2014, pursuant to Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere
and use in commerce since at least as early as July 25, 2013. The word “DIAMONDS” has
been disclaimed.
Serial No. 86186795
- 2 -

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the registered mark SILVER ON THE ROCKS (in standard characters),
with a disclaimer of “SILVER, for “jewelry made in whole or significant part of silver”
in International Class 142 that it is likely to cause confusion or mistake or to deceive.
When the refusal was made 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.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., 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. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); see also In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
A. Similarity of the goods and channels of trade.
We start our analysis with the second and third du Pont factors, the similarities
or dissimilarities of the goods and the channels of trade. We base our determination

2 Registration No. 4091859 issued on January 24, 2012; Section 8 declaration accepted March
30, 2018.
Serial No. 86186795
- 3 -

under these factors on the goods as they are identified in the registration and
application. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014). See also Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant’s goods are identified as “jewelry, namely, diamond jewelry” and the
goods in the cited registration are identified as “jewelry made in whole or significant
part of silver.” Applicant has not submitted either evidence or argument contesting
the relationship between the goods or the channels of trade in which they travel. The
burden, however, is on the Examining Attorney to establish the relationship between
the goods. The Examining Attorney has met this burden by establishing through
website evidence that the precious metal in diamond jewelry may be silver and that
silver jewelry may include diamonds. See:
1. Zales The Diamond Store — www.zales.com3

2. Overstock — www.overstock.com4

3 Denial of Request for Reconsideration, 5 TTABVUE 6-17.
4 Id., at 18-25.
Serial No. 86186795
- 4 -

3. Ross Simons — www.ross-simons.com5
and
4. Wendel’s Diamond Jewelers
— www.wendelsjewelers.com6
.

5 Id., at 26-30.
6 Id., at 34-37.

Serial No. 86186795
- 5 -

This evidence establishes that both “jewelry made in … significant part of silver”
and “diamond jewelry” may encompass silver jewelry containing diamonds. Thus, as
identified, the goods are in-part identical.
Further, the evidence establishes that such goods are sold on websites for jewelry
stores (Zales, Ross Simons and Wendels) and in online stores offering jewelry
(Overstock).
The second and third du Pont factors weigh heavily in favor of a finding of
likelihood of confusion.
B. Similarity between the marks.
We next consider the first du Pont factor, the similarity or dissimilarity of the
marks in their entireties. In comparing the marks we must consider their 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, 1692
(Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently 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).
While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties … 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
Serial No. 86186795
- 6 -

re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). It is well-
settled that 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 the likelihood of confusion.’”) (quoting Nat’l Data Corp., 224 USPQ at 752. Dixie
Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Cf. In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (finding
JOSE GASPAR GOLD “nearly identical” to GASPAR ALE once the commercial
significance of the descriptive and otherwise non-dominant terms JOSE, GOLD and
ALE are properly discounted).
The marks at issue here differ only in the highly descriptive or generic element
“silver” and “diamonds.” Once the commercial significance of these terms is properly
discounted, we are left, in both marks, with the identical phrase, “ON THE ROCKS,”
which is the dominant portion of each mark. The phrase “ON THE ROCKS,” which
is unitary,7 is defined as “(of a drink) served undiluted and with ice cubes” and “(of a
relationship or enterprise) experiencing difficulties and likely to fail.”8

7 “A unitary mark has certain observable characteristics. Specifically, its elements are
inseparable. In a unitary mark, these observable characteristics must combine to show that
the mark has a distinct meaning of its own independent of the meaning of its constituent
elements. In other words, a unitary mark must create a single and distinct commercial
impression.” Dena Corp. v. Belevedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047,1052.
8 July 15, 2015 Office Action, Definition of “on the rocks,” from Oxford Dictionaries,
www.oxforddictionaries.com/us/definition/americanenglish, Trademark Status and
Document Retrieval Database (TSDR) 2, 5. Citations to the TSDR database are to the
downloadable .pdf format.
Serial No. 86186795
- 7 -

Applicant concentrates on the word “ROCKS” in the phrase, arguing that the
marks are not similar because the word “ROCKS” is weak. In support of this position,
Applicant introduced records from seven registrations for the following marks,
consisting of or containing the word “ROCKS” for jewelry items: ROCKS, GOD
ROCKS, RODEO ROCKS, COUNTRY ROCKS, MUSIC ROCKS, QUEEN OF
ROCKS, and JESUS ROCKS MY SOUL.910 In its Request for Reconsideration,
Application introduced an additional eight registrations for the same types of marks,
also for jewelry items: GIVING ROCKS, CHANGE ROCKS, LOVE ROCKS NY,
BLING ROCKS, BETTY ROCKS, SYD ROCKS, RECOVERY ROCKS & design, and
LA ROCKS.11
In all of the examples, the meaning of “rocks” is different than the meaning of the
unitary phrase “ON THE ROCKS.” In each of the composite marks the word “rocks”
clearly means “to be extremely enjoyable, pleasing, or effective //her new car rocks.”12
The mark ROCKS alone has other meanings, however, none consist of the meaning

9 November 13, 2014 Response, TSDR 7-14.
10 Applicant also submitted a list of ten registrations without any identifying information.
Since the Examining Attorney did not object to the list, it has been stipulated into the record,
however, it is of extremely limited value because it does not include the title and status of
the registrations, nor does it include a list of goods.
11 January 5, 2016 Reconsideration Request, 4 TTABVUE 21-35.
12 We take judicial notice of the definition of “rocks” from the Merriam-Webster On-line
Dictionary. “Rock(s).” Merriam-Webster.com. Merriam-Webster, n.d. Web. 24 Sept. 2018.
The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Serial No. 86186795
- 8 -

of the phrase “ON THE ROCKS.”13 Given the differences in the meanings and
commercial impressions of the other registrations, none of these third party
registrations affects the strength of the phrase “ON THE ROCKS” in the cited mark.
cf. Coach Servs Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721 (Because of the
“completely different meanings and commercial impressions engendered” by
applicant’s COACH marks for educational software and opposer’s COACH mark for
accessible luxury products, the marks are not similar.)
Applicant also contends that “the expression ‘ON THE ROCKS’ is highly diluted
in connection with third party uses for marks with shared terms/phrases as well.”
To support this contention, Applicant introduced web-pages from the following
sites:14
1. On the Rocks Jewelry — www.otrjewelry.com — Id., at
10-11
The only use of the “On the Rocks Jewelry” is as a trade name for jewelry
store in Sheridan, Wyoming. The only mark appearing on the site is
OTR.

13 The other meanings include: (1) “to move back and forth as in a cradle,” (2) “to cause to
sway back and forth,” (3) “to rouse to excitement (as by performing rock music),” and (4.)
“slang – gem, diamond.” Id.
14 There were two other documents submitted. One had no source identifying information
and the other was an advertisement for Angie’s List, which questions the existence of a
jewelry store in New York.
Serial No. 86186795
- 9 -

2. OnTheRocks Designs — www.ontherocksdesigns.com15
— Id., at 12
The description given for this company is an “online jewelry store” The site includes
the following description of the goods: “each piece of jewelry is one-of-a-kind and
individually named after a classic cocktail.”
3. On The Rocks Jewelers — www.yelp.com/biz/on-the-
rocks-jewelers-san-clemente — Id., at 13.
This reference is to a Yelp review of a San Clemente, California jewelry store.
4. On the Rocks — www.ontherockschicago.com — Id., at
14.
The site indicates that this is a consignment shop in Chicago, Illinois which offers
gems, jewelry & more.
5. Boho Wire Wrapped Jewelry On the Rocks —
www.marthastewart.com/americanmade/nominee/908
31/charts/boho-wire-wrapped-jewelry-on-the-rocks —
Id., at 17-18
This webpage identifies a “Nominee for Martha Stewart American Made Award,”
which offers “[i]ntricate one of a kind hand crafted jewelry, heirloom quality wire
wrapped necklace, earrings, pendants, bracelets and anklets.”
The evidence discussed above, which consists of merely five potential uses of the
phrase “ON THE ROCKS,” is not sufficient to establish that the phrase carries a
suggestive or descriptive connotation in the jewelry industry and thus is weak. This
evidence is easily distinguishable from the evidence in Juice Generation, Inc. v. GS
Enters. LLC, 704 F3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015), where the Court
found that the twenty-six examples of registered or unregistered marks in the record

15 The URL is almost illegible.
Serial No. 86186795
- 10 -

were sufficient to establish that the use of the phrase “PEACE & LOVE” “carries a
suggestive or descriptive connotation in the food industry and is weak for that
reason.” Id., at 1675; as well as from the evidence in Jack Wolfskin Ausrustung Fur
Draussen GmbH v. New Millennium Sports, 797 F3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015) where the Court found that “Jack Wolfskin's extensive evidence of
third-party uses and registrations of paw prints indicates that consumers are not as
likely confused by different, albeit similar looking, paw prints.” Id.
Accordingly, we find that the phrase “ON THE ROCKS” has not been shown to be
week in the jewelry industry and that Applicant’s mark DIAMONDS ON THE
ROCKS is similar to the mark SILVER ON THE ROCKS in the cited Registration.
II. Conclusion.
Having considered all the evidence and arguments on the relevant du Pont
factors, whether discussed herein or not, we find that Applicant’s mark DIAMONDS
ON THE ROCKS for “diamond jewelry” is likely to cause confusion with the cited
registered mark SILVER ON THE ROCKS for “jewelry made in whole or significant
part of silver” that it is likely to cause confusion or mistake or to deceive.
Decision: The refusal to register Applicant’s mark DIAMONDS ON THE ROCKS
is affirmed.