Hallmark Licensing, LLCv.Hallmark Industries, Inc.

Trademark Trial and Appeal Board

May 3, 2017

No. 91215884 (T.T.A.B. May. 3, 2017)

mbm Mailed: May 3, 2017

Opposition No. 91211392 (Parent)
Opposition No. 91215884
Hallmark Licensing, LLC

v.
Hallmark Industries, Inc.

Before Richey, Deputy Chief Judge of the Trademark Trial and Appeal Board,
Wolfson and Pologeorgis, Administrative Trademark Judges.

By the Board:
These consolidated proceedings now come before the Board for consideration of
Hallmark Licensing, LLC’s (“Opposer”) motion for summary judgment (filed October
26, 2016) solely on its claims of likelihood of confusion and lack of bona fide use
asserted as grounds for opposing the registration of Hallmark Industries, Inc.’s
(“Applicant”) involved applications. The motion is fully briefed.1
As an initial matter, there is some confusion regarding the parties’ agreement to
service by email. The Board’s October 28, 2016 suspension order required Applicant
to file its response by November 25, 2016, insofar as the parties had appeared to have

1 Applicant’s counsel filed a request to withdraw as counsel on December 16, 2016.
Proceedings were subsequently suspended to allow Applicant time to appoint new counsel or
elect to proceed pro se. The Board notes Applicant’s substitute power of attorney filed
February 10, 2017. Board records have been updated accordingly.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition Nos. 91211392 and 91215884

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agreed to service by email. Applicant contends that, while it consented to
communication via email, it did not consent to service by email, and thus it was
permitted 5 additional days in which to file its response under former Trademark
Rule 2.119. Because Opposer filed a reply brief in support of its motion for summary
judgment on the merits thereof, the Board will exercise its discretion to consider
Applicant’s response on the merits. The parties should note, however, that the
Trademark Rules have been revised, effective January 14, 2017, and email service is
now required for all submissions filed with the Board and any other papers served
on a party not required to be filed with the Board, unless otherwise stipulated by the
parties or unless the serving party can show by written explanation accompanying
the paper that email service was attempted but could not be made due to technical
problems or extraordinary circumstances. Trademark Rule 2.119(b). Further, for
future filings, the time for taking action is no longer enlarged by 5 days, even where
service is effected by mail; rather “all fifteen-day response dates to submissions
served by an adverse party are now amended to twenty days” and the time to respond
to a motion for summary judgment is thirty days from the date of service of such
motion. TBMP § 113.05 (Jan. 2017); Trademark Rules 2.127(a) and (e).
I. Background
Applicant seeks to register the mark HALLMARK, in standard characters, for
the following goods in International Class 14:2

2 Application Serial No. 77457422, filed on April 24, 2008, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging April 23,
2008 as both the date of first use and the date of first use in commerce.
Opposition Nos. 91211392 and 91215884

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Beads for use in the manufacture of jewelry; Bracelets; Bronze jewelry;
Brooches; Charms; Costume jewelry; Diamond jewelry; Gemstone jewelry;
Identification bracelets; Jewelry; Jewelry and imitation jewelry; Jewelry
boxes; Jewelry boxes not of metal; Jewelry boxes of metal; Jewelry boxes of
precious metal; Jewelry cases; Jewelry cases not of precious metal; Jewelry
cases of precious metal; Jewelry caskets; Jewelry caskets of precious metal;
Jewelry chains; Jewelry findings; Jewelry for attachment to clothing; Jewelry
for the head; Jewelry in the nature of armbands; Jewelry organizers; Jewelry
pins for use on hats; Jewelry ring holders; Jewelry to be affixed to bikinis;
Jewelry watches; Jewelry, namely, amulets; Jewelry, namely, crosses;
Jewelry, namely, precious metal plated real leaves and flowers; Lapel pins;
Leather jewelry and accessory boxes; Metal wire for use in the making of
jewelry, namely, jewelry cable; Pet jewelry; Pins being jewelry; Plastic
bracelets in the nature of jewelry; Rings; Rings being jewelry; Watches and
jewelry; Watches, clocks, jewelry and imitation jewelry.

Applicant also seeks to register the mark HALLMARK925, in standard
characters, for the following goods in International Class 14:3
Beads for use in the manufacture of jewelry; Body jewelry; Bracelets; Bronze
jewelry; Brooches; Charms; Clocks and watches; Costume jewelry; Dials for
clock-and-watch-making; Diamond jewelry; Gemstone jewelry; Gold; Gold
alloy ingots; Gold and its alloys; Gold ingots; Gold, unworked or semi-worked;
Identification bracelets; Jewellery and watches; Jewellery, clocks and
watches; Jewelry; Jewelry and imitation jewelry; Jewelry boxes; Jewelry
boxes not of metal; Jewelry boxes of metal; Jewelry boxes of precious metal;
Jewelry cases; Jewelry cases not of precious metal; Jewelry cases of precious
metal; Jewelry caskets; Jewelry caskets of precious metal; Jewelry chains;
Jewelry findings; Jewelry for attachment to clothing; Jewelry for the head;
Jewelry in the nature of armbands; Jewelry organizers; Jewelry pins for use
on hats; Jewelry ring holders; Jewelry to be affixed to bikinis; Jewelry
watches; Jewelry, namely, amulets; Jewelry, namely, anklets; Jewelry,
namely, crosses; Jewelry, namely, precious metal plated real leaves and
flowers; Jewelry, namely, stone pendants; Lapel pins; Leather jewelry and
accessory boxes; Metal wire for use in the making of jewelry, namely, jewelry
cable; Pet jewelry; Pins being jewelry; Plastic bracelets in the nature of
jewelry; Rings; Rings being jewelry; Silver; Silver alloy ingots; Silver and its
alloys; Silver ingots; Stainless steel jewelry bracelets; Watch bands; Watch
bands and straps; Watch bracelets; Watch chains; Watch crowns; Watches;
Watches and clocks; Watches and jewelry; Watches and jewelry; Watches,

3 Application Serial No. 77666333, filed on February 9, 2009, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging May 30,
2008 as both the date of first use and the date of first use in commerce.
Opposition Nos. 91211392 and 91215884

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clocks, jewelry and imitation jewelry, all of the foregoing being made in
significant part from sterling silver, namely, 92.5% of pure silver.

On July 3, 2013, Opposer filed a notice of opposition opposing registration of
Applicant’s HALLMARK mark on the grounds of false suggestion of a connection and
likelihood of confusion. On April 14, 2014, Opposer filed a notice of opposition
opposing registration of Applicant’s HALLMARK925 mark on the grounds of
likelihood of confusion, dilution, and fraud. The Board consolidated these proceedings
on January 29, 2015. 18 TTABVUE. On February 27, 2015, Opposer filed a motion to
amend its pleading in a consolidated notice of opposition asserting grounds of
likelihood of confusion, dilution, fraud, lack of bona fide use, and abandonment. On
May 6, 2016, the Board granted Opposer’s motion to amend its notice of opposition as
conceded. In support of its claims, Opposer has pleaded ownership of, inter alia, the
following registrations acquired by Opposer while these proceedings were pending:
• HALLMARK DIAMONDS, in typeset form,4 with the word “diamonds”
disclaimed, for “Jewelry, diamonds” in International Class 14.5

• HALLMARK RINGS, in typeset form, with the word “rings” disclaimed, for
“Jewelry, diamonds” in International Class 14.6

4 Prior to November 2, 2003, “standard character” drawings were known as “typed” or
“typset” drawings. A typed or typeset mark is the legal equivalent of a standard character
mark. See TMEP § 807.03(i) (Jan. 2017).

5 Registration No. 3898292, issued January 4, 2011, claims 1988 as both the first use date
and first use in commerce date.

6 Registration No. 3898293, issued January 4, 2011, claims 1988 as both the first use date
and first use in commerce date.

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Opposer attached printouts from the USPTO’s TSDR online database for each
registration showing current status and title of the marks evidencing Opposer’s
current ownership of the pleaded registrations. 20 TTABVUE at 112-125. 7
In its answer, Applicant denies the salient allegations in the consolidated notice
of opposition.
II. Opposer’s Motion for Summary Judgment
Although Opposer has pleaded numerous HALLMARK and HALLMARK-
formative registrations, Opposer states that “for purposes of this summary judgment
motion, the Board need not consider the full extent of the broad and longstanding
rights of Hallmark Licensing in the famous HALLMARK mark,” but rather submits
that summary judgment should be granted based on the HALLMARK RINGS and

7 The HALLMARK DIAMONDS and HALLMARK RINGS registrations were acquired by
Opposer from the finance company Rosenthal & Rosenthal (“Rosenthal”), which held a
security interest in the registrations pursuant to an agreement entered into on November 2,
2006 with Diastar, Inc. (“Diastar”)—the original listed owner of the underlying applications
for the HALLMARK DIAMONDS and HALLMARK RINGS registrations. 42 TTABVUE at
29-73, 119-126. After Diastar entered into the security agreement and a second, related,
trademark security interest agreement with Rosenthal, Diastar purported to assign its rights
in the marks to two individuals, Monica and Anita Jain (42 TTABVUE at 241), who in turn
purported to assign their rights to the marks to Applicant (42 TTABVUE at 285). Because
both of the purported assignments occurred subsequent to the effective date of the security
interest agreement, and Applicant was plainly on notice of the agreements entered into with
Rosenthal, Applicant’s subsequent ownership interest was subject to Rosenthal’s security
interest. Accordingly, we need not decide if the purported assignments of the registrations to
Monica and Anita Jain or to Applicant were valid, a matter of dispute in this proceeding,
because there is no genuine dispute that to the extent any rights were assigned, the marks
were assigned subject to Rosenthal’s security interest. Further, there is no genuine dispute
of material fact that Opposer acquired the marks from Rosenthal on August 27, 2014 through
a private sale, as authorized by the security agreements between Rosenthal and Diastar. See
TTABVUE at 111-113, 196-200. Moreover, in its response to Opposer’s motion for summary
judgment, Applicant does not contest Opposer’s ownership of or rights in the HALLMARK
DIAMONDS and HALLMARK RINGS marks and registrations for purposes of the instant
motion.
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HALLMARK DIAMONDS registrations alone. 42 TTABVUE at 3-4. Accordingly, we
confine our analysis to those two registrations. In support of its motion for summary
judgment, Opposer submitted the declaration of Thomas D. Lauria, Senior Vice-
President of Rosenthal, who introduces, inter alia, the following exhibits: (1) a
financing agreement between Diastar and Rosenthal executed on November 2, 2006;
(2) an “Open-end Mortgage and Security Agreement” between Diastar and Rosenthal
executed on November 2, 2006; (3) a “Security Agreement” between Diastar and
Rosenthal executed on November 2, 2006; (4) a trademark security agreement
between Rosenthal and Diastar executed on November 2, 2006; (5) amendments to
the financing agreement; (6) an amended order from the Bankruptcy Court of the
District of New Jersey, Case No. 08-14641-DHA; (7) a letter from Rosenthal sent to
Applicant providing notification of disposition of the HALLMARK DIAMONDS and
HALLMARK RINGS registrations; (8) the private foreclosure sale agreement of the
HALLMARK DIAMONDS and HALLMARK RINGS registrations from Rosenthal to
Opposer; (9) a trademark assignment agreement assigning Rosenthal’s interest in
the HALLMARK DIAMONDS and HALLMARK RINGS marks to Opposer; and (10)
U.C.C. Financing Statements dated April 25, 2014. Opposer also submitted the
declaration of Barry M. Katz, Associate General Counsel for Hallmark Cards, Inc.,
who introduces, inter alia, the following exhibits: (1) documents from the prosecution
file of Applicant’s HALLMARK mark; (2) documents from the prosecution file of
Applicant’s HALLMARK925 mark;8 (3) a bill of sale and assignment of the

8 The prosecution files of the subject applications for Applicant’s HALLMARK and
HALLMARK925 marks are considered part of the record automatically. See The Cold War
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HALLMARK DIAMONDS and HALLMARK RINGS applications from Diastar to
Anita Jain and Monica Jain; (4) portions of the deposition of Applicant’s Fed. R. Civ.
P. 30(b)(6) witness, Pradip Jain; (5) Applicant’s responses to Opposer’s First Set of
Interrogatories; and (6) Applicant’s responses to Opposer’s Requests for Admission.
In opposition to Opposer’s motion for summary judgment, Applicant provided
Applicant’s Responses to Opposer’s First Set of Interrogatories.
For purposes of this order, we presume the parties’ familiarity with the pleadings,
the history of the proceedings and the arguments and evidence submitted with
respect to Opposer’s motion for summary judgment.
A. Summary Judgment Standard
Summary judgment is appropriate where the movant shows that there is no
genuine dispute as to any material fact and that it is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely
disputed must support its assertion by either (1) citing to particular parts of materials
in the record, or (2) showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c).
A movant for summary judgment carries the burden of proof in regard to its
motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the
motion, the function of the Board is not to try issues of fact, but to determine if there
are any genuine disputes of material fact to be tried. See TBMP § 529.01 and cases

Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1628 (Fed. Cir.
2009)
Opposition Nos. 91211392 and 91215884

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cited therein. When the moving party has supported its motion with sufficient
evidence that, if unopposed, indicates there is no genuine dispute of material fact and
that the moving party is entitled to judgment as a matter of law, the burden then
shifts to the non-moving party to demonstrate the existence of a genuine dispute of
material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92
USPQ2d 1537, 1540 (TTAB 2009).
The nonmoving party must be given the benefit of all reasonable doubt as to
whether genuine issues of material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed facts, must be viewed
in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great
Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).
B. Decision
Opposer moves for summary judgment solely on the grounds of (1) likelihood of
confusion with respect to both of Applicant’s involved marks and (2) Applicant’s
alleged non-use of its HALLMARK mark in commerce as of the filing date of the use-
based application.
To prevail on its claim of likelihood of confusion, Opposer must establish that
there is no genuine dispute of material fact that it has standing to maintain this
proceeding, that it has priority of use, and that contemporaneous use of the parties’
marks on their respective goods would be likely to cause confusion, mistake, or to
deceive consumers. See 15 U.S.C. § 1052(d); Hornblower & Weeks, Inc. v. Hornblower
& Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
Opposition Nos. 91211392 and 91215884

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1. Standing
We first consider whether Opposer has standing to bring these opposition
proceedings. Standing is a threshold issue that must be proven by a plaintiff in every
inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed.
Cir. 1999). As interpreted in binding precedent, a plaintiff must have a “real interest”
in the outcome of the proceeding and a “reasonable basis” for its belief of damage. See
Empresa Cubana del Tabaco, 753 F.3d 1270, 111 USPQ2d 1058, 1062 (citing Ritchie,
50 USPQ2d at 1025-26); Universal Oil Prods. Co. v. Rexall Drug & Co., 463 F.2d 1122,
1123, 174 USPQ 458, 459 (CCPA 1972). Opposer submitted with its amended notice
of opposition printouts from the USPTO’s TSDR electronic database showing that the
pleaded registrations for HALLMARK DIAMONDS and HALLMARK RINGS are
valid and subsisting, each issued in 2011. Opposer’s standing to bring these
consolidated oppositions is established by the TSDR printouts. See Trademark Rule
2.122(d)(1); Edwards Lifesciences Corp. v. Vigilanz Corp., 94 USPQ2d 1399, 1408
(TTAB 2010); Cunningham v. Laser Gold Corp., 222 F.3d 943, 945, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000). Moreover, Applicant has not challenged Opposer’s standing.
Accordingly, we find that there is no genuine dispute of material fact regarding
Opposer’s standing.
2. Priority
We turn next to the issue of whether there is a genuine dispute of material fact
regarding Opposer’s asserted priority of use. There is no genuine dispute of material
fact regarding Opposer’s priority in this case because Opposer submitted TSDR
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printouts of Opposer’s pleaded registrations for HALLMARK DIAMONDS and
HALLMARK RINGS showing that the registrations are valid and subsisting and
owned by Opposer. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA); see also TBMP § 309.03(c). Moreover, Applicant has not
challenged Opposer’s priority. Accordingly, there is no genuine dispute of material
fact as to Opposer’s priority.
3. Likelihood of Confusion
Turning to the likelihood of confusion analysis, we are guided by the factors set
forth in E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1893). It is not required that every du Pont factor be considered but only “those factors
that are of record.” See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78
USPQ2d 1944, 1948 (Fed. Cir. 2006). Two key considerations are the similarities
between the marks and the similarities between the goods. Cf. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); Fram Trak
Industries, Inc. v. Wiretracks LLC, 77 USPQ2d 2000, 2005 (TTAB 2006).
(a) Similarity of Goods
With regard to the similarity of the goods at issue, we must compare the goods
identified in the opposed applications to those identified in Opposer’s pleaded
registrations for HALLMARK DIAMONDS and HALLMARK RINGS. See Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002). Additionally, we may find that there is a likelihood of confusion when only one
item in a class of goods is commercially similar to the other party’s goods. See Tuxedo
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Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981) (stating that it is sufficient for a finding of likelihood of confusion if relatedness
is established for any item encompassed by the identification of goods within a
particular class in an application); see also Research in Motion Ltd. v. Defining
Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1194 (TTAB 2012) (“Likelihood of
confusion must be found if there is likely to be confusion with respect to any item that
comes within the identification of goods in the application.”); Hewlett-Packard Dev.
Co. v. Vudu, Inc., 92 USPQ2d 1630, 1633 n.4 (TTAB 2009) (“It is sufficient if
likelihood of confusion is found with respect to use of the mark on any item that comes
within the description of goods in the application or registration”) (internal citations
omitted).
As noted above, the identification of goods in each of Applicant’s HALLMARK
and HALLMARK925 applications is identical, except that the HALLMARK925
application contains the additional limitation that all of the goods identified therein
are “made in significant part from sterling silver, namely, 92.5% of pure silver.” The
goods in each application include the broad identification “jewelry,” along with
various specific types of jewelry, components for making jewelry, watches, and items
related to jewelry, such as jewelry boxes. Opposer’s goods include “jewelry,” without
limitation. There is therefore no genuine dispute that Applicant’s goods are in part
identical to, or encompassed by, Opposer’s goods.
(b) Channels of Trade/Class of Purchasers
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Because there are no restrictions or limitations as to trade channels or classes of
purchasers in the parties’ identifications of goods, the goods are presumed to travel
in all normal channels of trade and it is presumed that they would be purchased by
the same class of customers. See Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Accordingly, there is no
genuine dispute as to the material fact that both parties’ purchasers encompass the
same, ordinary purchasers for jewelry and that the goods travel in the same channels
of trade. See Adidas AG and Adidas Am., Inc. v. Etonic Holdings, LLC, 121 USPQ2d
1188, 1195 (TTAB 2016).
(c) Similarity of Marks
With respect to the similarity of the marks, we look to the marks in their entireties
as to appearance, sound, meaning or connotation, and commercial impression. See E.
I. du Pont de Nemours & Co., 177 USPQ at 567; Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). Where the goods of the parties are in-part identical, as is the case
here, it has been held that the degree of similarity between the marks need not be as
great to support a finding of likelihood of confusion. Century 21 Real Estate v. Century
Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Further, “[t]he
proper test is not a side-by-side comparison of the marks, but instead whether the
marks are sufficiently similar in terms of their commercial impression such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Trumph Learning LLC, 668 F.3d 1456, 101 USPQ2d
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1713, 1721 (Fed. Cir. 2012) (internal citation omitted). We examine the similarities
of Opposer’s marks to each of Applicant’s marks separately.
(i) Applicant’s HALLMARK Mark
As to Applicant’s HALLMARK mark, it consists entirely of a single word
“hallmark” that is identical to the first word in each of Opposer’s HALLMARK
DIAMONDS and HALLMARK RINGS marks. The mark differs from Opposer’s
marks only to the extent that Opposer’s marks include descriptive terms, namely,
“diamonds” or “rings,” which have each been disclaimed. Opposer argues that
“hallmark” is the dominant feature of the mark and that the non-distinctive “rings”
and “diamonds” portions of the marks are insufficient to distinguish the parties’
marks. Applicant, on the other hand, argues that the addition of “diamonds” or “rings”
is sufficient to distinguish the marks. 44 TTABVUE at 8. While, for purposes of
comparing the involved marks, we must consider them in their entireties,
nevertheless one feature of a mark may be dominant and therefore entitled to more
weight in determining the commercial impression of the mark. See In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 750-51 (Fed. Cir. 1985). Here, the first word of
each of Opposer’s pleaded marks, namely, “hallmark,” is the dominant element. See,
e.g., Palm Bay Imps., 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); Century 21 Real Estate Corp., 23 USPQ2d at 1700 (upon
encountering the marks, consumers will first notice the identical lead word); Presto
Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often
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the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”). Disclaimed words are often “less significant in creating
the mark’s commercial impression.” In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001). Thus, “diamonds” and “rings” are each entitled to less weight in
analyzing the overall commercial impression of the marks. Applicant’s mark consists
solely of the word “HALLMARK” with no other distinguishing elements.
In view of the foregoing, we find that there is no genuine dispute of material fact
as to the similarity of Applicant’s HALLMARK mark and Opposer’s HALLMARK
DIAMONDS and HALLMARK RINGS marks.
(ii) Applicant’s HALLMARK925 Mark
As to Applicant’s HALLMARK925 mark, each of the marks at issue begins with
the word “hallmark.” The marks differ to the extent that Applicant’s mark is a single
word containing the additional element “925,” a reference to the 92.5% silver
composition of Applicant’s goods. Opposer’s marks, as previously stated, are each two
words and contain the additional, descriptive term “diamonds” or “rings.” “Hallmark”
is the dominant element in Applicant’s HALLMARK925 mark where the “925” refers
to the 92.5% silver composition of the goods offered in connection with the mark. For
the same reasons stated above, we find that “hallmark” is the dominant element of
each mark and that “925,” “rings,” and “diamonds” are each entitled to less weight.
We therefore find that there is no genuine dispute of material fact as to the similarity
of Applicant’s HALLMARK925 mark and Opposer’s HALLMARK DIAMONDS and
HALLMARK RINGS marks.
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(d) Other Du Pont Factors
Applicant argues that Opposer’s motion for summary judgment must be denied
because Opposer has not addressed any of the remaining Du Pont factors. Applicant
has, however, failed to put forward any evidence or argument regarding any of the
remaining factors. The Board need not consider factors that are not of record before
the Board. See M2 Software, Inc., 78 USPQ2d at 1947; Kellogg Co. v. Pack’Em
Enterprises Inc., 14 USPQ2d 1545, 1550 (TTAB 1990).
C. Conclusion
Based on the foregoing, and viewing the evidence in the light most favorable to
Applicant and drawing all justifiable inferences in favor of Applicant, we find that
Opposer has satisfied its burden of setting forth a prima facie case showing that there
is no genuine dispute as to any material fact remaining for trial with respect to
Opposer’s standing and priority or Opposer’s likelihood of confusion claim against
either of Applicant’s marks. We also find that Applicant has failed to demonstrate the
existence of a genuine dispute regarding at least one material fact that would require
resolution by trial. Opposer is therefore entitled to judgment as a matter of law on its
claim of likelihood of confusion against Applicant’s Serial Nos. 77457422 and
77666333 based on Opposer’s pleaded Registration Nos. 3898292 and 3898293.
In view thereof, Opposer’s motion for summary judgment on its likelihood of
confusion claim is GRANTED. Judgment is hereby entered against Applicant, the
oppositions are sustained, and registration of Applicant’s marks is refused.
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Having determined that Opposer is entitled to judgment as a matter of law based
on its likelihood of confusion claim, we need not and do not reach Opposer’s motion
for summary judgment on the ground that Applicant did not use its HALLMARK
mark in interstate commerce at the time of filing its use-based application.