Gino’s Jewelers

Trademark Trial and Appeal Board

Mar 30, 2004

No. 76354413 (T.T.A.B. Mar. 30, 2004)

Mailed: Paper No. 12
March 30, 2004 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gino's Jewelers
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Serial No. 76354413
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James V. Tura, Esq. for Gino's Jewelers.
Midge F. Butler, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Hairston, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Gino's Jewelers, an Ohio corporation [applicant], has
applied to register the mark set forth below for "goods in
precious metals, namely, rings, bracelets, watches,
earrings, necklaces, pins being jewelry, precious and non-
precious gemstones," in International Class 14.
This Opininon is Not
Citable as Precedent
of the TTAB
Ser No. 76354413
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As the record reveals, applicant previously had
registered the term GINO'S alone, for similar goods1, but
the registration inadvertently was allowed to expire. Both
the prior registration and the current application claim a
date of first use of any type as of September 1950. The
prior registration claims first use of the mark GINO'S in
commerce as of January 1961; and the current application
claims first use of the stylized GINO'S JEWELERS mark in
commerce as of May 1996. The Office listed the prior
registration as expired on October 31, 1994. The current
application was filed January 3, 2002. The application
includes a disclaimer of JEWELERS.
The examining attorney refused registration of the
current application under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), in view of the existence of a
registration for the mark GINO M for goods identified as
"jewelry made of precious metals and/or semi-precious or
precious stones," in International Class 14.2 As the record
reveals, the application resulting in issuance of the cited
1 Applicant's prior registration issued January 22, 1974, and
covered "jewelry—namely rings, bracelets, pendants, earrings and
broaches," in International Class 14 and "awards in the form of
engraved plaques, and trophies in the form of engraved cups and
engraved statuettes," in International Class 20.
2 Registration No. 2274996 issued August 31, 1999 to H.K.
Schaeffer & Co., a corporation of Florida.
Ser No. 76354413
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registration was filed more than three years after
applicant's prior registration expired and the cited
registration issued more than two years prior to the filing
of applicant's current application.
When the refusal of registration was made final,
applicant appealed. Applicant and the examining attorney
have filed briefs, but applicant did not request an oral
hearing. We affirm the refusal of registration.
Applicant and the examining attorney agree that the Du
Pont factors govern our analysis of likelihood of confusion
in this case. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). For a
recent restatement of these factors, see In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003).
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and services] and differences in the marks”). Further,
when, as in this case, the goods in the application and the
Ser No. 76354413
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cited registration are virtually identical, it has been
held that the marks need not be as close as they might
otherwise have to be to support a finding of likelihood of
confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Applicant argues that it is particularly significant
that it uses a stylized font for the term GINO'S in its
GINO'S JEWELERS mark, while the registered mark is in
"block form." However, the examining attorney is entirely
correct in observing that when a mark is registered in
typed form, as is the GINO M mark in the cited
registration, the registration of the typed mark is not
limited to any particular font and we must consider all
reasonable forms of display in which the mark may be
presented. Phillips Petroleum Co. v. C. J. Webb, Inc., 442
F.2d 1376, 170 USPQ 35 (CCPA 1971). We find that the font
used in applicant's stylized presentation of the term
GINO'S would be a reasonable form of display for the
registered mark GINO M. Accordingly, in our analysis of
likelihood of confusion, we consider that the marks may
look very similar. We are not persuaded otherwise by
applicant's argument (Reply Brief, p. 2), that the stylized
form of its mark "is a unique design which is subject to
Ser No. 76354413
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patent protection" and that the registrant would not be
able to present its GINO M mark in the same or similar form
as the term GINO'S in GINO'S JEWELERS.
As to the sound of the marks, to the extent that each
of the marks would be fully articulated, they would sound
different. However, in practice, the respective marks may
not be fully articulated. Applicant has disclaimed rights
in the term JEWELERS, which is, of course, a generic term
for a purveyor of jewelry. It is not unlikely that many
customers of applicant would simply refer to applicant and
its jewelry store as GINO'S, without bothering to utilize
the generic term JEWELERS. Likewise, while the mark in the
cited registration is GINO M, customers of registrant may
be inclined to simply refer to registrant as GINO.
While we believe that the marks, when in actual use,
may be shortened by customers and have a resulting
similarity in sound, we do not rely on this to find the
marks similar for likelihood of confusion purposes.
Rather, we rely on the presumptive similarity in forms of
display and the virtually identical connotations of the
marks. In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113
(Fed. Cir. 1983) (“the [USPTO] may reject an application ex
parte solely because of similarity in meaning of the mark
Ser No. 76354413
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sought to be registered with a previously registered
mark”).
Applicant's mark obviously will have the connotation
of a jewelry store owned or run by an individual named
"Gino." While the application seeks registration of GINO'S
JEWELERS as a trademark for goods, rather than as a service
mark for a jewelry store, the record reveals (specifically,
a specimen submitted by applicant and its reply brief) that
applicant does, in fact, run an establishment identified by
the GINO'S JEWELERS name, and prospective purchasers of
applicant's products will consider them to be products of a
jeweler named "Gino." Likewise, the mark in the cited
registration has the connotation of the name of a jeweler
and the jewelry items in the cited registration will be
perceived as emanating from a jeweler named GINO M.
Because applicant does not utilize a last name, or an
initial from a last name, in its mark, there would be no
way for customers familiar with the registered mark, when
they encounter applicant's mark for identical products, to
know that GINO'S JEWELERS denotes a different "Gino" than
that denoted by the mark GINO M.
Applicant argues, "the Examiner should have considered
that there has been a long period of contemporaneous use
(over 60 years) without any actual confusion." Brief, p.
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4. The argument overlooks the fact that the cited
registration issued based on an intent-to-use application
and the cited mark was not even in use when the application
for its registration was filed on December 23, 1997.
Later, when an allegation of use was filed, the eventual
registrant asserted September 11, 1998 as the date of first
use of the GINO M mark, and as the date of first use of
that mark in commerce. Thus, the marks have only been in
contemporaneous use for a fraction of the 60 years claimed
by applicant. Moreover, because applicant is an Ohio
corporation and, according to its specimen3 and brief, is
based in Ohio, while the registrant is a corporation of
Florida and lists a Florida address, it is not clear that
the applicant's and registrant's respective businesses have
been conducted in such a way as to bring them into the same
territories or channels of trade. In short, the asserted
absence of any instances of actual confusion is not
particularly probative that there would be no likelihood of
confusion if applicant and registrant actually were doing
business in the same territories.4
3 One of the specimens is a postcard announcing 2001 holiday
hours for applicant's "new location" and bears a return address
of Cleveland, Ohio.
4 In addition, in this ex parte case, we have had no opportunity
to hear from the registrant as to its knowledge of any instances
of actual confusion.
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Finally, we decline applicant's implicit invitation
(Reply Brief, p. 3), to publish its mark for opposition so
as to "give the registrant an opportunity to file an
opposition, if there is any question of confusion." Such
an approach to examination and review of pending
applications has been rejected. In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1535 (Fed. Cir. 1997):
Dixie argues alternatively that the PTO should
pass the mark to publication and allow the
registrant to oppose the applicant's mark, if it
chooses. But it is the duty of the PTO and this
court to determine whether there is a likelihood
of confusion between two marks. In re Apparel,
Inc., 366 F.2d 1022, 1023, 151 USPQ 353, 354
(CCPA 1966). It is also our duty "to afford
rights to registrants without constantly
subjecting them to the financial and other
burdens of opposition proceedings." Id.; see
also In re The Clorox Co., 578 F.2d 305, 308, 198
USPQ 337, 341 (CCPA 1978); McCarthy, supra,
Section 23.24[1] [d] (where PTO rejects an
application under section 1052(d), "it is no
answer for the applicant to ask that the
application be passed to publication to see
whether the owner of the cited mark will oppose
the registration"). Otherwise protecting their
rights under the Lanham Act would be an onerous
burden for registrants.
Decision: The refusal of registration under
Section 2(d) of the Trademark Act is affirmed.