George Neil Sawyer

Trademark Trial and Appeal Board

May 6, 2013

No. 85318298 (T.T.A.B. May. 6, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 6, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sawyer
_____

Serial No. 85318298
_____

Jay Erstling of the William Mitchell College of Law Intellectual Property Law Clinic
for George Neil Sawyer.

Darryl M. Spruill, Trademark Examining Attorney, Law Office 112 (Angela Wilson,
Managing Attorney).
_____

Before Quinn, Bergsman and Wolfson, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
George Neil Sawyer, (“applicant”) filed a use-based application to register the
mark Wabi Sabi, in standard character format, for goods ultimately identified as
“one-of-a-kind jewelry pieces made from precious metals, some with precious stones,
and forming a collection featuring bracelets; brooches; jewelry; rings; women's
jewelry,” in International Class 14. The English translation of “Wabi Sabi” is “the
art of unconventional beauty” or “the beauty of imperfection.”
The Trademark Examining Attorney refused to register applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
Serial No. 85318298

2

that applicant’s mark so resembles the mark WABI-SABI, in standard character
form, for “retail shops featuring table settings, tableware, flatware, fountains,
Japanese pottery, Buddhist statues, meditations pillows, bath products, lamps, tea
pots, jewelry, gifts and loose leaf tea,” in International Class 35, as to be likely to
cause confusion.1 (Emphasis added). The English translation of the term WABI-
SABI is “the beauty of imperfection.”
Preliminary Issue
Although applicant made arguments regarding most of the du Pont likelihood
of confusion factors, applicant did not submit any evidence during the prosecution of
its application. Nevertheless, in his reply brief, applicant requested that the appeal
be suspended and the application be remanded so that citations to websites that he
referenced in his main brief may be considered. We assume that applicant is
requesting that the Board consider the websites referenced in his brief.
Applicant’s request is denied. Trademark Rule 2.142(d) is clear that the
record in the application should be complete prior to the filing of the appeal. There
is no justification to remand this application. The evidence was available to
applicant prior to the filing of the appeal, but applicant did not submit it. Moreover,
applicant merely referenced websites; he did not submit the websites themselves.
When making Internet evidence part of the record, the examining attorney or
application offering the evidence must both (1) provide complete information as to
the date the evidence was published or accessed from the Internet, and its source

1 Registration No. 3195748, issued January 9, 2007; Section 8 affidavit of use accepted.
Serial No. 85318298

3

(e.g., the complete URL address of the website), and (2) download and attach the
evidence to the Office action or response to the Office action. See Safer Inc. v. OMS
Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). Because of the transitory nature of
Internet postings, websites referenced only by links may be modified or deleted at a
later date without notification. See id. Thus, the information identified only by
links may not be available for verification by the Trademark Examining Attorney,
the Board, or a reviewing court to corroborate or refute. See In re HSB Solomon
Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (noting that “a reference to a
website’s internet address is not sufficient to make the content of that website or
any pages from that website of record”).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
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 and services. 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”). These
Serial No. 85318298

4

factors, and any other relevant du Pont factors in the proceeding now before us, will
be considered in this decision.
A. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, meaning and commercial impression.
For the purposes of this appeal, applicant’s mark Wabi Sabi and the mark in
the cited registration WABI-SABI are identical.
B. The similarity or dissimilarity or nature of the goods and services,
established, likely-to-continue trade channels and classes of consumers.

Where essentially identical marks are involved, as is the case here, the
degree of similarity between applicant’s goods and registrant’s services that is
required to support a finding of likelihood of confusion declines. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993) (“even when the goods
or services are not competitive or intrinsically related, the use of identical marks
can lead to the assumption that there is a common source”); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One
Inc., 60 USPQ2d 1812 (TTAB 2001). It is only necessary that there be a viable
relationship between the two to support a finding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The
issue here, of course, is not whether purchasers would confuse the parties’ goods
and/or services, but rather whether there is a likelihood of confusion as to the
source of these goods and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Applicant is seeking to register his mark for “jewelry,” albeit one-of-a-kind
jewelry made from precious stones and metals, and the mark in the cited
registration is for retail stores featuring, inter alia, jewelry. To show that jewelry
Serial No. 85318298

5

and retail stores selling jewelry are related, the Trademark Examining Attorney
submitted copies of third-party registrations for both jewelry and retail stores
selling jewelry.2 Third-party registrations which individually cover a number of
different goods and services that are based on use in commerce may have some
probative value to the extent that they serve to suggest that the listed goods and
services are of a type which may emanate from the same source. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The registrations listed below are
representative.3
Mark Reg. No. Goods

XOMEKA 3354348 Jewelry; retail store services featuring
jewelry

PROMISE
POWER
3482474 Jewelry; retail stores services featuring
jewelry

JENNIFER
MILLER
3261115 Jewelry; retail stores featuring jewelry

ALLUMONDE 3888164 Jewelry, namely, rings; on-line retail store
services featuring jewelry

SONYARNÉE 3879438 Jewelry; on-line retail store services featuring
jewelry

2 June 29, 2011 Office action.
3 We have not included the entire description of goods for each of the registrations. Only
the goods and services that are in both applicant’s description of goods and registrant’s
recitation of services are listed.
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Serial No. 85318298

7

3. Blue Nile (bluenile.com) allows the reader to view engagement rings
that other customers have built. Blue Nile also advertises that the customer may
“Build Your Own Earrings.”
In cases with similar facts, the Board has found that jewelry and retail
jewelry store services are “inherently related goods and services.” In re Thomas, 79
USPQ2d 1021, 1023 (TTAB 2006) (MARCHE NOIR, translated as “black market”
for jewelry found likely to cause confusion with BLACK MARKET for retail jewelry
store services), citing, Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ
863, 866 (TTAB 1985) (“there is little question that jewelry store services and
jewelry are highly related goods and services”); and In re Jewelmasters, Inc., 221
USPQ 90 (TTAB 1983).
Because the goods and services are closely related, and there are no
restrictions as to their channels of trade or classes of purchasers, they must be
deemed to be promoted in the same channels of trade and directed to the same
purchasers. In re Thomas, 79 USPQ2d at 1023; Interstate Brands Corp. v. McKee
Foods Corp., 53 USPQ2d 1910 (TTAB 2000).
Applicant contends that because applicant and registrant are not
competitors, the goods and services are not related.5 To support this contention,
applicant notes that its jewelry is categorized in International Class 14 and
registrant’s services are categorized in International Class 35.6 However,
classification is not relevant to the likelihood of confusion analysis. Section 30 of

5 Applicant’s Brief, p. 15.
6 Applicant’s Brief, p. 15.
Serial No. 85318298

8

the Trademark Act, 15 U.S.C. §1112, provides the authority for establishing a
classification system. That section states, in part, as follows:
The Director may establish a classification of goods and
services, for convenience of Patent and Trademark Office
administration, but not to limit or extend the applicant’s
or registrant’s rights.
Thus, the nature and scope of a party’s goods or services must be determined on the
basis of the goods or services recited in the application or registration. See, e.g.,
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1370, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 1463, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991);
Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). Accordingly, “classification is wholly irrelevant to the
issue of registrability under section 1052(d), which makes no reference to
classification.” Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774
(Fed. Cir. 1993).
Applicant also argues that registrant is a small retail shop while applicant
creates luxury, custom high-end jewelry.7 The problem with applicant’s argument
is that this proceeding concerns applicant’s right to registration of a trademark, not
applicant’s actual trademark use. Because the scope of the registration applicant
seeks is defined by its application (and not by its actual use) it is the application

7 Applicant’s Brief, pp. 7 and 15.
Serial No. 85318298

9

(and not actual use) that we must look to in determining applicant’s right to
register:
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 sales
of the goods are directed.
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 16 USPQ2d at 1787.
Likewise, in considering the scope of the cited registration, we look to the
registration itself, and not to extrinsic evidence about the registrant’s actual
services, customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
While applicant’s description of goods implies that the jewelry is expensive because
they are one-of-a-kind pieces made of precious metals and stones, there are no
restrictions or limitations in registrant’s recitation of services which would preclude
registrant from selling similar custom jewelry made of precious metals and stones.
In view of the foregoing, we find that applicant’s goods and registrant’s
services are related and they move in the same channels of trade and are sold to the
same classes of consumers.
C. Degree of consumer care.
Applicant argues that the conditions under which consumers purchase from
applicant and registrant are different. For example, applicant asserts registrant’s
trading area is limited to registrant’s store in Taos, New Mexico while applicant’s
Serial No. 85318298

10

jewelry is available through multiple channels of trade.8 Therefore, applicant
concludes that registrant’s sales are in the nature of impulse purchases while
applicant’s sales are concluded only after applicant’s customers exercise a high
degree of care because applicant’s products are works of art and very expensive.9
However, as indicated above, we cannot resort to such extrinsic argument to restrict
the prices or quality of the jewelry sold in registrant’s store(s). See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods
are expensive wines sold to discriminating purchasers must be disregarded given
the absence of any such restrictions in the application or registration). We must
presume that the jewelry sold in registrant’s retail stores includes all types of
jewelry at all the usual prices for such jewelry, including one-of-a-kind jewelry
pieces made from precious metals and stones.
D. Laches
Applicant argues that because applicant has been using its mark for over five
years and registrant has never asserted its trademark rights against applicant,
registrant is barred by laches from asserting its trademark rights.10
Since a large amount of time has passed between
Registrant obtaining trademark registration and the
denial of Applicant’s registration, laches prevents
Applicant from being denied trademark registration.11

8 Applicant’s Brief, p. 16.
9 Applicant’s Brief, pp. 16-18.
10 Applicant’s Brief, pp. 11-12.
11 Applicant’s Brief, p. 11.
Serial N

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Serial No. 85318298

12

F. No reported instances of actual confusion.
We turn next to the du Pont factor dealing with the length of time during and
conditions under which there has been contemporaneous use without evidence of
actual confusion. Applicant argues that coexistence over a period of several years
provides strong evidence that confusion is not likely to occur in the future.12 As to
whether there has been sufficient opportunity for confusion to occur, the record
contains no indication of the level of sales or advertising by applicant or registrant.
The absence of any instances of actual confusion is a meaningful factor only where
the record indicates that, for a significant period of time, an applicant’s sales and
advertising activities have been so appreciable and continuous that, if confusion
were likely to happen, any actual incidents thereof would be expected to have
occurred and would have come to the attention of one or both of these trademark
owners. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). See also In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009) (there
is no basis for finding that there has been a significant opportunity for actual
confusion to have occurred because “there is no evidence that the nature and extent
of applicant's and registrant's actual use of their marks in the marketplace,
including the extent of geographical overlap, has been so substantial as to render
the apparent absence of actual confusion legally significant.).
In this ex parte context, we also have no opportunity to hear from registrant
about its levels of sales and promotion, or of any incidents of actual confusion

12 Applicant’s Brief, pp. 21-22.
Serial No. 85318298

13

brought to registrant’s attention. Presumably limited sales by one or both of these
trademark owners over a relatively short period of contemporaneous usage may
well explain the lack of evidence of actual confusion. All of these enumerated
factors materially reduce the probative value of applicant’s argument regarding
asserted lack of actual confusion. Therefore, applicant’s claim that no instances of
actual confusion have been brought to applicant’s attention is not indicative of an
absence of a likelihood of confusion. See Gillette Canada Inc. v. Ranir Corp.,
23 USPQ2d at 1774. See also In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205
(“uncorroborated statements of no known instances of actual confusion are of little
evidentiary value”).
In any event, we are mindful of the fact that the test under Section 2(d) of the
Act is likelihood of confusion, not actual confusion.
G. Balancing the factors.
Because the marks are identical, the goods and services are closely related
and travel in the same channels of trade and are sold to the same classes of
consumers, we find that applicant’s mark Wabi Sabi for “one-of-a-kind jewelry
pieces made from precious metals, some with precious stones, and forming a
collection featuring bracelets; brooches; jewelry; rings; women’s jewelry” is likely to
cause confusion with the mark WABI-SABI for “retail shops featuring table
settings, tableware, flatware, fountains, Japanese pottery, Buddhist statues,
meditations pillows, bath products, lamps, tea pots, jewelry, gifts and loose leaf
tea.”
Serial No. 85318298

14

Decision: The refusal to register is affirmed.