GZR Jewelry, Inc. d/b/a Sibella

Trademark Trial and Appeal Board

Jan 31, 2013

No. 85145004 (T.T.A.B. Jan. 31, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 31, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re GZR Jewelry, Inc. d/b/a Sibella
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Serial No. 85145004
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Anthony J. Biller of Coats & Bennett PLLC for GZR Jewelry, Inc. d/b/a Sibella.

Andrea R. Hack, Trademark Examining Attorney, Law Office 108 (Andrew
Lawrence, Managing Attorney).
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Before Seeherman, Kuhlke and Taylor, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, GZR Jewelry, Inc. d/b/a Sibella, filed an application to register on
the Principal Register the mark SIBELLA1 in standard characters for goods and
services ultimately identified as “jewelry” in International Class 14 and “retail
stores featuring jewelry” in International Class 35.
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
goods and services, so resembles the registered mark shown below for “ankle

1 Application Serial No. 85145004, filed on October 5, 2010, alleging first use and use in
commerce on October 21, 2001, under Section 1(a) of the Trademark Act, 15 U.S.C. §
1051(a).
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bracelets; bracelets; bronze jewelry; brooches; charms; clip earrings; costume
jewelry; ear clips; ear studs; earrings; fancy keyrings of precious metals; jewel
chains; jewel pendants; jewelry; jewelry boxes; jewelry chains; jewelry ring holders;
key chains of precious metal; ornamental pins; pendants; pins being jewelry; rings
being jewelry” in International Class 14:2

as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in 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 Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

2 Registration No. 3391697, issued on March 4, 2008. The colors brown and blue are
claimed as features of the mark. The registration also includes the following goods: “all
purpose sport bags; all-purpose carrying bags; backpacks; billfolds; carry-all bags; carry-on
bags; carrying cases; clutch bags; clutch purses; coin purses; evening handbags; garment
bags for travel; handbags; imitation leather key chains; key case; leather bags, leather
handbags; leather purses; luggage; overnight bags; pocketbooks; purses; small purses; tote
bags; travel bags; wallets” in International Class 18.
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We begin with the du Pont factor of the relatedness of the goods and services.
We base our evaluation on the goods and services as they are identified in the
registrations and application. In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). It is settled that it is not necessary that the respective goods and
services be identical or even competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is, the issue is not whether
consumers would confuse the goods and services themselves, but rather whether
they would be confused as to the source of the goods and services. See In re Rexel
Inc., 223 USPQ 830 (TTAB 1984). The goods and services need only be sufficiently
related that consumers would be likely to assume, upon encountering the goods and
services under similar marks, that the goods and services originate from, are
sponsored or authorized by, or are otherwise connected to the same source. See In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant’s “jewelry” is identical to registrant’s “jewelry” and otherwise
encompasses many of the other items listed in the registration (e.g., earrings,
bracelets, rings). It is sufficient for a finding of likelihood of confusion if the
relatedness is established for any item encompassed by the identification of goods
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within a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
With regard to applicant’s retail services, it features goods included in the
cited registration. It is well established that goods and services may be related. In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988)
(BIGGS for retail grocery and general merchandise store services likely to be
confused with BIGGS for furniture); In re Thomas, 79 USPQ2d 1021 (TTAB 2006)
(“It is clear that consumers would be likely to believe that jewelry on the one hand
and retail stores selling jewelry on the other emanate from or are sponsored by the
same source if such goods and services are sold under the same or similar marks.”).
In view thereof, we find applicant’s identified goods and services to be, in
part, identical and otherwise closely related to the registrant’s identified goods.
With regard to the channels of trade, as to the identical goods, because there
are no limitations in the identifications in the application or cited registration, we
must presume that they are offered in the same channels of trade to the same
classes of customers. Hewlett-Packard Co., 62 USPQ2d 1001. As to the services,
again because there are no restrictions in the registration, retail stores featuring
jewelry are included in the ordinary channels of trade for registrant’s goods.
Applicant’s arguments regarding the conditions under which and buyers to
whom sales are made, i.e., that the jewelry is expensive and sold to careful
consumers, are not persuasive. In view of the absence of limitations in the
identifications we must consider all types of jewelry, including inexpensive jewelry.
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We turn then to the du Pont factor of the similarities and dissimilarities
between applicant’s mark SIBELLA and registrant’s mark . We analyze
“the marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont,
177 USPQ at 567. Further, where the goods or services are legally identical, as
with the jewelry, the degree of similarity between the marks necessary to support a
determination that confusion is likely declines. In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93
USPQ2d 1243, 1246 (TTAB 2010).
We analyze the marks in their entireties; however, 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 when evaluating the similarities of the
marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). The literal portion, SOBELLA, dominates over the color scheme and
minimal design element in registrant’s mark. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Max Capital Grp. Ltd., 93 USPQ2d 1243,
1247 (TTAB 2010).
Applicant’s mark differs only by one letter from registrant’s mark. The
stylization in registrant’s mark is of no consequence for purposes of our analysis
inasmuch as applicant seeks to register a mark in standard characters. The rights
associated with a mark in standard characters reside in the wording and not in any
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particular display. In re RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP
1207.01(c)(iii) (7th ed. rev. 2010). Thus, the minimal stylization in registrant’s
mark cannot serve to distinguish the marks, inasmuch as we must consider
applicant’s mark “regardless of font style, size, or color.” Citigroup Inc. v. Capital
City Bank Group Inc., 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). See also Viterra,
101 USPQ2d at 1908. The question remains, however, if SIBELLA and SOBELLA
are sufficiently similar when used on identical goods and closely related goods and
services.
Applicant argues that the marks differ in sound asserting that the “sounds
made by the o vowel simply do not sound like the sounds made by the i vowel.” App.
Br. p. 3. There is no correct pronunciation as it is impossible to predict how the
public will pronounce a mark that is not a common word. Centraz Indus. Inc. v.
Spartan Chem. Co., 77 USPQ2d 1698, 1701 (TTAB 2006). Thus, the marks can be
pronounced with the accent on the second syllable, in which case the difference in
sound of the initial vowels of each mark would not be very noticeable. As a result,
the marks are very similar in sound.
Applicant also contends that the marks “have significantly different
meanings” because applicant’s mark is a created word with no meaning, whereas
registrant’s mark means “so beautiful” as “bella” is Italian for beautiful.3 Perhaps

3 Applicant bases this translation on some of the third-party uses of “sobella” (see, e.g.,
January 17, 2010 Response Exh. D printout from SoBella Hair Studio website showing the
statement “SoBella – So Beautiful”). In addition, in its reply brief applicant referenced, but
did not submit, several online translation sources. While the Board may take judicial
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some potential consumers would dissect the registrant’s mark into the English word
component “so” and the Italian word component “bella,” translate “bella” as
“beautiful” and therefore discern the meaning of the mark as “so beautiful,” but
they are just as likely to simply view “sobella” as a single made up word. The
evidence of record showing a third party pointing out the “so beautiful” meaning in
connection with its hair cutting services does not support a finding that consumers
of registrant’s jewelry would understand the mark in this way; in fact, it appears
that the hair salon had to make this “translation” because the meaning wasn’t
readily apparent.
While there are differences in appearance and sound between the marks, we
find that the similarities far outweigh the dissimilarities.
Applicant argues that the term SOBELLA is weak and entitled to a limited
scope of protection in view of the laudatory nature of the mark (based on the
contention that it means “so beautiful”) and third-party use. As to the laudatory
argument, there is not sufficient evidence to support the contention that “so
beautiful” is the connotation of this mark.
In support of the assertion of third-party use, in its January 17, 2012
response applicant submitted web pages from third-party websites where the term
SOBELLA is used as a trade name or trademark in connection with jewelry and a
variety of other goods, including paper, photography, clothing and furniture. See,

notice of online dictionary definitions which also exist in printed format or have regular
fixed editions, there is no information in the record to determine if that is the case with
these references. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590 n.8
(TTAB 2008). See also In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999).

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e.g., www.facebook.com/;ages/Sobella-Fine-Jewelry; www.sosobella.com (jewelry);
www.sobellajewelryshop.com (jewelry); www.etsy.com/shop/ohsobella (jewelry).
App. Response (January 17, 2012). Of the four instances that are arguably with
or for jewelry, there is no evidence as to the extent of this use or consumer exposure.
Second, four possible third-party uses is not substantial.4 Finally, even if we
considered the term SOBELLA to be weak in the context of these goods and
services, in view of the legally identical goods, closely related services, and highly
similar marks, the cited registration would still be entitled to protection. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974).
Applicant notes that the USPTO allowed a third party’s SIBELLA mark for
jewelry5 to register over the cited SOBELLA mark. The fact that a third-party’s
SIBELLA mark was allowed to register over the cited SOBELLA mark for the same
goods is not determinative. We are not bound by prior decisions of examining
attorneys. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); and In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994).
Finally, applicant argues that despite nearly a decade of concurrent use,
there are no known instances of actual confusion. Applicant submitted a
declaration by Belinda Coe, applicant’s owner and president, in support of this

4 The examples pertaining to other goods and services are not relevant for consideration of
this du Pont factor.

5 This registration (Reg. No. 3896646) was originally cited against applicant. Applicant
filed a petition to cancel this registration which was granted based on a default judgment
against that registrant. Thereafter, the refusal in this case was withdrawn as to that
registration.
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assertion. First, the inquiry here is likelihood of confusion, not actual confusion.
HRL Associates Inc. v. Weiss Associates Inc., 12 USPQ2d 1819, 1824 (TTAB 1989)
aff’d, 14 USPQ2d 1840 (Fed. Cir. 1990). The Court of Appeals for the Federal
Circuit has observed, “A showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of confusion. The opposite is not
true, however. The lack of evidence of actual confusion carries little weight,
especially in an ex parte context.” In re Majestic Distilling Co., Inc., 65 USPQ2d at
1205, internal citation omitted.
Further, based on applicant’s statements regarding the conditions of sale, i.e.,
that applicant’s goods are high end custom made designs, it appears that there has
not been a meaningful opportunity for confusion to occur.
In conclusion, we find that because the goods and services are identical and
otherwise closely related and the marks are highly similar, confusion is likely
between applicant’s mark SIBELLA and the mark SOBELLA and design in the
cited registration.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.