Factory 79, Inc.

Trademark Trial and Appeal Board

Sep 5, 2006

No. 78366331 (T.T.A.B. Sep. 5, 2006)

Mailed: 9/5/06

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Factory 79, Inc.
________

Serial No. 78366331
_______

Jeffrey Landes of Catalyst Law Group, APC for Factory 79,
Inc.

Carrie Achen, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Bucher and Grendel, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Factory 79, Inc. to
register the mark GENESIS for “precious stones and jewelry
of precious metals.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), on the ground that applicant’s mark, as applied to
applicant’s goods, so resembles the previously registered

1 Application Serial No. 78366331, filed February 11, 2004,
alleging first use anywhere and first use in commerce on July 1,
1994.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78366331
2
mark GENESIS for “watches and clocks”2 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant contends that the marks are different in
that “applicant uses the mark on goods comprising Christian
emblems and sayings, thus leaving a general impression on
the consumer that Applicant’s goods are Christian in
nature; whereas Registrant does not.” (Appeal Brief, p.
3). Applicant also argues that the goods are not related
or marketed in a way that makes confusion likely to occur
among consumers and, in this connection, applicant states
that there has not been any actual confusion despite eleven
years of contemporaneous use with registrant’s mark.
Applicant also argues that the prior existence of a third-
party registration, now canceled, buttresses its view of no
likelihood of confusion. More specifically, applicant
points to canceled Registration No. 2079501 for the mark
GENESIS for precious stones and jewelry of precious metals.
Applicant asserts that inasmuch as this third-party
registration (for a mark and goods identical to applicant’s
mark and goods) issued over registrant’s registration cited

2 Registration No. 1498555, issued August 2, 1988; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser No. 78366331
3
herein, the coexistence of the registrations on the
register shows that applicant’s mark should now be allowed
to coexist on the register with the cited registration.
The examining attorney maintains that the marks are
identical and that the goods are closely related. In
connection with the goods, the examining attorney submitted
several third-party used-based registrations showing that
the same entity adopted the same mark for jewelry, watches
and clocks. The examining attorney also submitted catalog
excerpts from online retail store websites showing that
jewelry, watches and clocks are sold in the same trade
channels by the same source.
Before focusing on the substantive refusal, we direct
our attention to an evidentiary matter. Applicant
submitted, for the first time with its appeal brief, a
declaration of applicant’s president, a printout listing
third-party registrations retrieved via a search of the
USPTO’s TESS database, and dictionary definitions found in
online dictionaries. The examining attorney, in her brief,
objected to the untimely submission of this evidence,
citing to Trademark Rule 2.142(d).
The examining attorney is correct in stating that the
record in the application should be complete prior to the
filing of an appeal. Trademark Rule 2.142(d). Additional
Ser No. 78366331
4
evidence filed after appeal normally will be given no
consideration by the Board. Thus, we decline to consider
the declaration of April Fisher, applicant’s president, who
attests that she is unaware of any instances of actual
confusion. We hasten to add, however, that even if
considered, the evidence would not compel a different
result on the merits in this appeal. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205
(Fed. Cir. 2003); and In re Kangaroos U.S.A., 223 USPQ
1025, 1026-27. In any event, it is unnecessary to show
actual confusion in establishing a likelihood of confusion.
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
We likewise will not consider, due to its late
submission, the printout of the list of third-party
registrations retrieved from the USPTO’s TESS database.
Further with respect to the TESS printout, and in any
event, the mere submission of a listing from the TESS
database is insufficient to make the referenced
registrations of record. To make a third-party
registration of record, a copy of the registration, either
a copy of the paper USPTO record, or a copy taken from the
electronic records of the Office, should be submitted. In
re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456
Ser No. 78366331
5
n. 2 (TTAB 1998). We should add that, even if considered,
the list would not compel a different result in this case.
The list does not show the goods covered by the
registrations. Therefore, it has extremely limited
probative value, since we cannot determine whether the
marks are for goods similar to those of applicant and
registrant. See TBMP § 1208.02 (2d ed. rev. 2004). In
this connection, even complete copies of third-party
registrations covering goods far removed from the goods of
applicant and registrant would be irrelevant to the present
likelihood of confusion analysis. See Conde Nast
Publications, Inc. v. American Greetings Corp., 329 F.2d
1012, 141 USPQ 249, 252 (CCPA 1964).
Also submitted late were two dictionary definitions
retrieved from Merriam-Webster Online (www.m-w.com). The
Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). However, the
Board will not take judicial notice of definitions found
only in online dictionaries and not available in printed
format. In re Total Quality Group Inc., 51 USPQ2d 1474,
1476 (TTAB 1999). In the present case, inasmuch as
Merriam-Webster dictionaries are available in printed
Ser No. 78366331
6
format, we have opted to take judicial notice of the
dictionary definitions of “Genesis” and “genesis.”
We now turn to the substantive issue on appeal. 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.,
Inc., 65 USPQ2d at 1203-04. In any likelihood of confusion
analysis, however, 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 Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
With respect to the marks, they are identical in every
respect. That is to say, applicant’s and registrant’s
GENESIS marks are identical in sound, appearance, meaning
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). Use of identical marks
is a fact that “weighs heavily against applicant.” In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ
Ser No. 78366331
7
1289, 1290 (Fed. Cir. 1984); see also In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).
Although applicant concedes the identity between the
marks in sound and appearance, it goes on to argue that the
marks have different meanings. In considering the marks,
we note that the term “Genesis” (with an upper case “G”) is
defined as “the mainly narrative first book of canonical
Jewish and Christian Scriptures” while the term “genesis”
(with a lower case “g”) is defined as “the origin or coming
into being of something.” Applicant states that its goods
are Christian jewelry, that is, that the goods themselves
comprise Christian sayings, ideas and symbols; and that its
goods are marketed to consumers who are interested in
wearing jewelry bearing these Christian sayings, ideas and
symbols. Thus, applicant contends, the meaning of its mark
“GENESIS,” as used in connection with applicant’s goods, is
Christian, drawing a connection with the Christian Bible,
whereas there is no indication that registrant’s mark
connotes the Christian meaning of the word.
Any difference in meaning is clearly outweighed by the
identity in sound, appearance and commercial impression.
Further, inasmuch as the cited mark is registered in typed
(or standard character) form, registrant is free to use its
mark with an upper case “G.” In addition, inasmuch as
Ser No. 78366331
8
registrant’s identification of goods does not include any
limitations, the identification is broad enough to
encompass watches and clocks with a Christian theme; in
such circumstances the use of “GENESIS” (with an upper case
“G”) would convey the same meaning as the one applicant
asserts its mark conveys. In a similar vein, applicant’s
identification is not restricted to Christian jewelry;3
thus, the use of GENESIS on jewelry lacking a “Christian
theme” may not convey the biblical meaning.
We next turn to a consideration of the goods. We
note, at the outset of considering this du Pont factor,
that the greater the degree of similarity between
applicant’s mark and the cited registered mark, the lesser
the degree of similarity between applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). If the marks are the same, as in
this case, it is only necessary that there be a viable

3 Applicant asserts that, during a telephone conversation with
the examining attorney, it offered to amend its identification of
goods to limit its jewelry to “Christian jewelry.” According to
applicant, it “called the Examiner and unsuccessfully proffered
an amendment that further limited and defined the application of
goods by inserting the word ‘Christian’ before the word
‘jewelry.’” (Appeal Brief, p. 2). In the absence of such
amendment, we must presume that applicant’s identification of
goods encompasses jewelry of all nature and types. In re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
Ser No. 78366331
9
relationship between the goods in order to support a
finding of likelihood of confusion. In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
In the past, the Board has found that jewelry and
watches are related goods. See Monocraft, Inc. v. Leading
Jewelers Guild, 173 USPQ 506 (TTAB 1972); and Gruen
Industries, Inc. v. Ray Curran & Co., 152 USPQ 778 (TTAB
1967). In connection with the argument that the goods are
commercially related, the examining attorney submitted
several third-party registrations, based on use in
commerce, covering jewelry, watches and clocks. Third-
party registrations that individually cover different items
and that are based on use in commerce serve to suggest that
the listed goods are of a type that may emanate from a
single source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
The examining attorney also submitted excerpts from
the catalogs of six online retailers. This evidence shows
that jewelry, watches and clocks are sold in the same trade
channels and are marketed to the same classes of
purchasers. These purchasers include ordinary consumers
who may exercise nothing more than ordinary care when
Ser No. 78366331
10
purchasing such goods when they are sold at relatively
inexpensive prices.
We find that jewelry, watches and clocks are
sufficiently related that, when sold under identical marks,
confusion is likely to occur among purchasers in the
marketplace.
As referenced above, applicant cites to an expired
third-party registration for a mark and goods identical to
the mark and goods set forth in the involved application.
Applicant contends that this evidence shows “that the
market recognizes Applicant’s goods as sufficiently
unrelated to registrant’s goods and is not confused when
these dissimilar goods bear the same mark.” (Reply Brief,
p. 2). Applicant further points out that this earlier
registration issued over registrant’s registration, and
that registrant neither filed an opposition against the
underlying application nor a petition to cancel against the
registration.
In making this argument, applicant readily
acknowledges that the Board is not bound by the prior
actions of examining attorneys. Indeed, there is
longstanding, well-settled precedent holding that the Board
is not bound by prior decisions of examining attorneys, and
that each case must be decided on its own merits and on the
Ser No. 78366331
11
basis of its own record, in accordance with relevant
statutory, regulatory and decisional authority. See, e.g.,
In re International Flavors & Fragrances Inc., 183 F.3d
1361, 51 USPQ2d 1513 (Fed. Cir. 1999). More specifically,
we are not bound by the previous examining attorney’s
determination that the third-party’s mark was registrable,
and we will not compound the problem of the registration of
a confusingly similar mark by permitting registration, this
time to applicant, of the identical mark for the same
goods, again. See In re Thomas, 79 USPQ2d 1021 (TTAB
2006); In re Perez, 21 USPQ2d 1075 (TTAB 1991); and In re
Wilson, 57 USPQ2d 1863 (TTAB 2001).
The fact that the cited mark and the third-party’s
mark at one time coexisted on the register does not prove
that they coexisted during that time without confusion in
the marketplace. Without evidence of the nature and extent
of both the third-party’s and registrant’s use of their
respective marks, we cannot determine whether a meaningful
opportunity for actual confusion ever existed. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992). We cannot conclude that registrant had no objection
to the third-party’s earlier registration simply because
registrant failed to object to it. We are not privy to
registrant’s reasons for not challenging the registration
Ser No. 78366331
12
and we will not speculate about them. Further, any
objections registrant may have had to the earlier
registration were eliminated once the registration was
canceled. In re Thomas, 79 USPQ2d at 1028. See Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563,
10 USPQ2d 1307, 1309 (Fed. Cir. 1989) [“[A] canceled
registration does not provide constructive notice of
anything.”].
We conclude that consumers familiar with registrant’s
watches and clocks sold under its mark GENESIS would be
likely to believe, upon encountering applicant’s precious
stones and jewelry of precious metal sold under the
identical mark GENESIS, that the goods originate with or
are associated with or sponsored by the same entity.
Lastly, 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).
Decision: The refusal to register is affirmed.