Dougherty Enterprises, Inc.

Trademark Trial and Appeal Board

Jan 8, 2009

No. 77127337 (T.T.A.B. Jan. 8, 2009)

Mailed:
January 8, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dougherty Enterprises, Inc.
________

Serial No. 77127337
_______

Mathew R.P. Perrone, Jr. for Dougherty Enterprises, Inc.

Jaclyn N. Kidwell, Trademark Examining Attorney, Law Office
112 (Angela Bishop Wilson, Managing Attorney).
_______

Before Zervas, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Dougherty Enterprises, Inc. (applicant) has applied to
register the mark PRECIOUS PORTRAITS in standard characters
on the Principal Register for “jewelry” in International
Class 14.1 Applicant has disclaimed “PORTRAITS.”

1 Application Serial No. 77127337, filed March 9, 2007, claiming
first use of the mark anywhere on June 1, 2001, and first use of
the mark in commerce on December 31, 2003.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77127337
2
The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with Registration No. 2442051 for
the mark PRECIOUS PRINTS in typed form for “jewelry
incorporating prints of body parts” in International Class
14. The registration issued on April 10, 2001, and it is
active. The registration includes a disclaimer of
“PRINTS.”
Applicant and the Examining Attorney have filed
briefs. We reverse.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” The opinion in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1977) sets forth the factors to consider in
determining likelihood of confusion. We will consider each
of the factors as to which applicant or the Examining
Attorney presented arguments or evidence.
Regarding the goods, in comparing the goods and the
channels of trade for those goods we must consider the
goods as identified in the application and registration.
See Octocom Systems, Inc. v. Houston Computers Services
Serial No. 77127337
3
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)
(“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”).
Applicant’s “jewelry” logically includes the goods in
the cited registration, “jewelry incorporating prints of
body parts.” Accordingly, we conclude that the goods are
legally identical. Furthermore, because the goods
identified in the application and the cited registration
are legally identical, we must presume that the channels of
trade and classes of purchasers are the same. See Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003).
A key factor in this case is the strength of the cited
mark, in particular, the word PRECIOUS, the element common
to both marks. In arguing that PRECIOUS is weak, Applicant
states, “… the number and nature of similar marks
overwhelmingly supports Appellant’s contention.” Applicant
has properly made of record copies of third-party
registrations for marks which include PRECIOUS, including
the following:
Serial No. 77127337
4
PRECIOUS TREASURES (Reg. No. 1453158) for
jewelry;

PRECIOUS MEMORY (Reg. No. 1653015) for jewelry,
namely, finger rings;

PRECIOUS MOMENTS (Reg. No. 1931009) for jewelry,
clocks and watches;

COSTAR FOR YOUR PRECIOUS MOMENTS (and design) for
jewelry;

PRECIOUS OCCASIONS (Reg. No. 2698075) for
jewelry;

PRECIOUS TIME (Reg. No. 3270347) for jewelry;

PRECIOUS BLEND (Reg. No. 3280760) for jewelry,
with “PRECIOUS” disclaimed;

PRECIOUS FEET (Reg. No. 1687791) for jewelry,
with “FEET” disclaimed;

PRECIOUS PRECIOUS (Reg. No. 2028027) for jewelry;

FOREVER PRECIOUS (Reg. No. 2730046) for jewelry;

BORN PRECIOUS (Reg. No. 3193207) for jewelry;

GOD’S PRECIOUS STONES (Reg. No. 3197530) for
jewelry, with “PRECIOUS STONES” disclaimed;

IMPERIAL PRECIOUS COLLECTION (Reg. No. 3301467)
for jewelry, with “PRECIOUS COLLECTION”
disclaimed;

THE PRECIOUS METAL FOR THE NEW MILLENNIUM (Reg.
No. 3303510) for jewelry, with “PRECIOUS METAL”
disclaimed;

PRECIOUS JEWELS BY MILANO (Reg. No. 2123135) for
costume jewelry consisting of necklaces,
earrings, bracelets and sets thereof, with
“PRECIOUS JEWELS” disclaimed;

BALOCCHI PRECIOSA (and design) (Reg. No. 2907595)
for articles of jewelry of precious and semi-
Serial No. 77127337
5
precious stones including a translation of
“BALOCCHI PRECIOSA” as “PRECIOUS AMUSEMENTS”;

PRIMAL ELEGANCE IN PRECIOUS METALS (Reg. No.
3330866) for jewelry, with “PRECIOUS METALS”
disclaimed;

PRECIOUS ACCENTS (Reg. No. 3356340) for retail
jewelry store, online retail store services
featuring jewelry;

BRUCE G. WEBER PRECIOUS JEWELS (Reg. No. 3201561)
for retail jewelry stores, with “PRECIOUS JEWELS”
disclaimed; and

LOVE IS PRECIOUS (Reg. No. 2724297) for retail
jewelry stores.

Attachments to Applicant’s Request for Reconsideration of
January 15, 2008.2
The Examining Attorney argues that the marks in the
third-party registrations which are properly of record “…
convey a different commercial impression than applicant’s
‘PRECIOUS PORTRAITS’ mark.” Examining Attorney’s Brief at
6. The Examining Attorney continues, “The registrations
incorporate other wording and/or design elements such that
an entirely different commercial impression is created to
that of the mark ‘PRECIOUS PORTRAITS.’” Id.
The Examining Attorney does not address directly the
probative value of this evidence. In Red Carpet Corp. v.

2 We have not considered the copy of the registration for
PRECIOUS PRONG, which applicant submitted with its brief, because
the submission was not timely. Trademark Rule 2.141(d).
Serial No. 77127337
6
Johnstown American Enterprises Inc., 7 USPQ2d 1404 (TTAB
1988), the Board explained that third-party registrations
may be used in evaluating likelihood of confusion to show
that a portion common to two marks has an understood and
well-known meaning. If the third-party registrations show
that the common element has such a meaning, the remaining
portions of the marks may be sufficient to distinguish the
marks as a whole, even when the goods are the same or
closely related. In such cases the mere presence of the
common element in each mark may be insufficient to find
that the marks are confusingly similar. Red Carpet, 7
USPQ2d at 1406. See also Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313 (TTAB 2005). We must
consider applicant’s evidence, in particular the third-
party registrations, to determine whether PRECIOUS is such
a common, weak element in this case. Truescents LLC v.
Ride Skin Care LLC, 81 USPQ2d 1334 (TTAB 2006) (GENUINE
held to be inherently weak and laudatory and therefore
entitled only to the narrowest scope of protection).
“Precious” is defined, in relevant part, as “of great
value or high price (jewels).”3 The third-party

3 We take judicial notice of this definition from Merriam-
Webster’s Collegiate Dictionary (11th ed. 2003). University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Serial No. 77127337
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registrations further illustrate the particular meanings of
“precious” as applied to jewelry. We note the disclaimed
terms “precious stones,” “precious metals” and “precious
jewels” in the marks in the third-party registrations, as
well as the use of “precious and semi-precious stones” in
one identification of goods. “Valuable” materials, such as
precious stones and precious metals, are often used in
making jewelry. Thus, we conclude that the evidence of
record, in particular the third-party registrations, shows
that PRECIOUS is highly, and indeed extremely suggestive,
and therefore extremely weak, as applied to jewelry.
We now turn to the comparison of the marks in their
entireties. To determine whether the marks are confusingly
similar, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re Chatam International Inc., 380 F.3d
Serial No. 77127337
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1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applicant argues that PRECIOUS is weak, and therefore,
that the other elements in the respective marks, PORTRAITS
and PRINTS, are sufficient to distinguish the marks
overall. Applicant argues further that PRECIOUS PORTRAITS
and PRECIOUS PRINTS differ in sound and appearance, and
further that the marks differ in meaning and commercial
impressions. Applicant states, “A print conjures the
impression of a reproduction or mechanical copy of an
original art (sic). While a portrait creates the
impression of a handmade drawing or painting portraying a
living subject (sic).” Applicant’s Brief at 8.
The Examining Attorney argues, on the other hand, that
the terms PORTRAITS and PRINTS have similar meanings and
are insufficient to distinguish the marks.
After careful consideration of the respective
arguments, we conclude that the marks are not confusingly
similar. While there are similarities between the marks,
most notably the fact that each begins with PRECIOUS, we
conclude that the marks, when viewed in their entireties,
are sufficiently different to conclude that there is not a
likelihood of confusion, particularly in view of the
Serial No. 77127337
9
extreme weakness of PRECIOUS as applied to jewelry. We
find the Examining Attorney’s arguments that PORTRAITS and
PRINTS are similar unpersuasive.
The Knight Textile case is instructive here. In
Knight Textile the applicant sought to register NORTON
MCNAUGHTON ESSENTIALS for various items of “ladies
sportswear.” Knight Textile, 75 USPQ2d at 1314. Knight
Textile Corporation opposed registration based on its
registration for the mark ESSENTIALS for various items of
“women’s clothing.” Id. at 1314. In the opinion the Board
found that the applicant’s goods were “in part identical to
and otherwise highly similar to the goods in opposer’s
pleaded registration.” Id. at 1315. The Board then
concluded, as follows, with regard to the comparison of the
marks, “We find that the parties’ marks are dissimilar
rather than similar when viewed in their entireties in
terms of appearance, sound, connotation and overall
commercial impression.” Id. at 1315.
In Knight Textile, the critical factual issue was the
strength or weakness of ESSENTIALS. In concluding that
ESSENTIALS was highly suggestive the Board relied primarily
on a dictionary definition for “essential-s” and “twenty-
three extant ESSENTIAL registrations on the register in the
Serial No. 77127337
10
clothing field registered to twenty-one different owners.”
Knight Textile, 75 USPQ2d at 1316.
As in the Knight Textile case, here we have a
dictionary definition and copies of third-party
registrations which corroborate the highly suggestive
meaning and extreme weakness of PRECIOUS in the relevant
field. See In re Red Carpet Corp. v. Johnstown American
Enterprises Inc., 7 USPQ2d at 1406. Also, in this case
each of the marks includes another term which serves to
distinguish the source of the goods.
Accordingly, even though the goods are legally
identical, we find no likelihood of confusion between
PRECIOUS PORTRAITS when used on “jewelry” and PRECIOUS
PRINTS when used on “jewelry incorporating prints of body
parts” principally because PRECIOUS, the common element in
the respective marks, is extremely weak.
Decision: We reverse the refusal under Trademark Act
Section 2(d).