Fatollah Hematian

Trademark Trial and Appeal Board

Jun 12, 2014

No. 85638711 (T.T.A.B. Jun. 12, 2014)

Mailed: June 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hematian
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Serial No. 85638711
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Joseph Sofer of Sofer & Haroun LLP, for Fatollah Hematian.

Kevin M. Dinallo, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
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Before Seeherman, Ritchie, and Adlin, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Fatollah Hematian (“Applicant”) filed an application to register the mark
SOMETHING BLEU BY EFFY,1 in standard character form, for goods identified as
“jewelry, namely blue bridal jewelry,” in International Class 14. The Trademark
Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the registered mark SOMETHING BLUE,2 in typed drawing form,3 for

1 Serial No. 85638711, filed May 30, 2012, pursuant to Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce, and disclaiming
the exclusive right to use the term “SOMETHING BLEU” apart from the mark as shown.
2 Registration No. 3004731, issued October 4, 2005. Sections 8 and 15 affidavits accepted and
acknowledged.
This Opinion Is Not a
Precedent Of The TTAB
Serial No. 85638711
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“jewelry,” in International Class 14, that when used on or in connection with
Applicant’s identified goods, it is likely to cause confusion or mistake or to deceive.
Upon final refusal of registration, Applicant filed a timely appeal. Both Applicant
and the Examining Attorney filed briefs. For the reasons discussed herein, we affirm
the refusal to register.
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences in the marks.”). We consider
each of the factors for which there was relevant evidence and/or argument.
The Goods and Channels of Trade

The cited registration identifies “jewelry.” The “blue bridal jewelry” identified in
the application is merely a subset thereof and is encompassed thereby. Accordingly,
the goods are legally identical. The Examining Attorney further submitted evidence of
webpages showing blue bridal jewelry being advertised along with other jewelry.
Some examples are shown at www.katespade.com/bridal-trousseau;

3 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’ drawings.
The mark on a typed drawing was required to be typed entirely in capital letters. A typed
mark is the legal equivalent of a standard character mark.” TMEP § 807.03(i) (April 2014).
Serial No. 85638711
3
www.dillards.com/shop/Accessories-Jewelry-Bridal-Jewelry; www.annabellagio.com;
and www.carolee.com.
Because the goods described in the application and the cited registration are
identical, we must presume that the channels of trade and classes of purchasers are
the same. See Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983); see also In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed to travel in the same
channels of trade, and be sold to the same class of purchasers.”). Additionally, there is
nothing in the recital of goods in either the cited registration or the application that
limits either Registrant’s or Applicant’s channels of trade. See In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations as to channels of
trade or classes of purchasers in either the application or the cited registration, it is
presumed that the goods listed in the registration and the application move in all
channels of trade normal for those goods, and that the goods are available to all
classes of purchasers for the goods). Accordingly, we find that these du Pont factors
weigh heavily in favor of finding a likelihood of consumer confusion.
The Marks
Preliminarily, we note that when, as here, the goods at issue are identical, the
degree of similarity between the marks which is required to support a finding of
likelihood of confusion is less than if the goods were not identical. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012), citing Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We
consider and compare the appearance, sound, connotation and commercial impression
Serial No. 85638711
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of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
In comparing the marks, we are mindful that the test is not whether the marks
can be distinguished when subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall commercial impression so
that confusion as to the source of the goods offered under the respective marks is likely
to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff'd mem., No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
The mark in the cited registration is “SOMETHING BLUE.” Applicant’s mark is
“SOMETHING BLEU BY EFFY.” The first word in each mark is identical, and the
second is identical in meaning as revealed by the application’s translation statement;
furthermore, the second words look nearly identical, merely having the last two letters
transposed, and are likely to be pronounced the same way. Applicant submitted a
dictionary definition of the term “bleu” as “form of blue.”4 Accordingly we find this first
portion of the marks, “SOMETHING BLUE” and “SOMETHING BLEU” to be
substantially identical in sight, sound, meaning and commercial impression. Since it is
the first term of the mark that is likely to be impressed upon the consumer, the

4 Dictionary.com.
Serial No. 85638711
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similarity of the beginning words of the two marks is significant. See Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the
first part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered.”), and Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 73
USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT
because “veuve” is the first word in the mark and the first word to appear on the
label). Applicant argues that it is “Applicant’s intent to use this portion of the mark
descriptively.” (Applicant’s brief at 4). Applicant has voluntarily disclaimed
“SOMETHING BLEU” from its mark.5
The term SOMETHING BLUE,” in reference to “bridal jewelry,” derives from a
well-known rhyme often repeated in reference to brides as they prepare for their
wedding day:
Something Blue: Something Blue is a phrase deriving from a saying about the
items a bride should carry or wear on her wedding day for good luck.
Something old, something new,
Something borrowed, something blue,
And a silver sixpence in her shoe.

Attached to November 27, 2013 Office Action, p.2. http://en.Wikipedia.org

We do find the term to be highly suggestive, if not descriptive, of applicant’s “blue
bridal jewelry.” However, we decline to find the term to be descriptive of “jewelry”
generally, as the term is identified in the cited registration. Applicant voluntarily
disclaimed the term, but it is not disclaimed in the cited registration. By contrast, the

5 “In MCI Commc’ns Corp., 21 USPQ2d 1534 (Comm’r Pts. 1991), the Commissioner held that
§ 6(a) of the Act permits an applicant to disclaim matter voluntarily, regardless of whether the
matter is registrable or unregistrable.” TMEP § 1213.01(c) (April 2014).
Serial No. 85638711
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added term in Applicant’s mark “BY EFFY,” is likely to be perceived as a house mark.
The Examining Attorney submitted evidence that Applicant is the owner of several
registrations for “jewelry” that include the term “EFFY” or “BY EFFY,” including
Registration No. 3402216 for “jewelry” (EFFY & Co); Registration No. 3297438 for
“jewelry and watches” (EFFY); Registration No. 3297444 for ““jewelry and watches”
(EFFY, and design); Registration No. 4123816, for “jewelry” (EFFY JEWELERS, and
design); Registration No. 4018323, for “jewelry” (GENTO BY EFFY); and Registration
No. 4021966 for “jewelry” (ROYALTY INSPIRED BY EFFY). The latter registration,
which states that it is owned by Applicant, Fatollah Hematian, includes Applicant’s
DBA: “Effy Jewelers www.Effyjewelers.com.” Even without these registrations,
because of the structure of the mark, it is likely that consumers will perceive “BY
EFFY” as a house mark providing additional information about the source of the
“SOMETHING BLEU” jewelry. It has often been said that likelihood of confusion will
not be avoided when trade names and house marks are added to otherwise highly
similar terms. “[S]uch addition may actually be an aggravation of the likelihood of
confusion as opposed to an aid in distinguishing the marks so as to avoid source
confusion.” In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations
omitted) (finding LE CACHET DE DIOR confusingly similar to CACHET). See also In
re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA 1972) (stating
that addition of a trade name will make consumers think that products have a
common origin or that the companies have merged); Nike Inc. v. WNBA Enters. LLC,
85 USPQ2d 1187, 1201-02 (TTAB 2007) (applying principle that “the addition of a
Serial No. 85638711
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trade name or house mark or other such matter to one of two otherwise similar marks
will not serve to avoid a likelihood of confusion.”).
Viewing the marks in their entireties, we find on balance that they are similar in
sight, sound, meaning and commercial impression. Accordingly, we find this du Pont
factor also weighs in favor of finding a likelihood of consumer confusion.
Consumer Sophistication
We note that there is no evidence that either Applicant’s or Registrant’s
consumers are sophisticated. Furthermore, as our precedent dictates, even
sophisticated buyers are not immune from source confusion where, as here, the marks
are highly similar and the goods are legally identical. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000); see also In re La Peregrina Ltd., 86
USPQ2d 1645, 1649 (TTAB 2008) (finding jewelry not limited by price “so we must
assume that the jewelry includes inexpensive items that consumers would purchase
with nothing more than ordinary care.”) Accordingly, we find this factor to weigh in
favor of finding a likelihood of consumer confusion.
Balancing the Factors
In summary, we have carefully considered all of the evidence and arguments of
record relevant to the pertinent du Pont likelihood of confusion factors. We conclude
that with legally identical goods travelling in the same channels of trade, and similar
marks with similar connotations, there is a likelihood of confusion between Applicant’s
mark, SOMETHING BLEU BY EFFY, for which it seeks registration for “jewelry,
namely, blue bridal jewelry,” and the mark in the cited registration, SOMETHING
BLUE, for “jewelry.”
Serial No. 85638711
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Decision: The refusal to register is affirmed.