Hartz & Co., Inc.

Trademark Trial and Appeal Board

Dec 17, 1998

No. 75019666 (T.T.A.B. Dec. 17, 1998)

Paper No. 17
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 12/16/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hartz & Company, Inc.
________
Serial No. 75/019,666
_______
Herbert Cohen of Wigman, Cohen, Leitner & Myers, P.C.
for applicant.
Robert C. Clark, Jr., Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Simms, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Hartz & Company, Inc. has filed an application to
register the mark TALLIA for “cuff links and stud sets for
use with formal wear shirts”.1
Registration has been finally refused under Section
2(d) of the Trademark Act, on the ground of likelihood of

1 Ser. No. 75/019,666, filed Nov. 13, 1995 based on a bona fide
intent to use. Ownership of Reg. No. 1,943,279, issued Dec. 26,
1995, for the mark TALLIA for “men’s and women’s clothing,
namely, suits, jackets, pants, blouses” has been claimed.
Ser No. 75/019,666
2
confusion with the mark TALIA and design, as depicted
below, which is registered for use in connection with
“jewelry”.2
Applicant and the Examining Attorney have filed briefs, but
the request for an oral hearing was withdrawn.
We look first to the degree of similarity of the goods
involved here. Although applicant argues that
registrant’s goods and its goods are sophisticated jewelry
items which would be sold in different types of stores,
this claimed distinction is without support. As pointed
out by the Examining Attorney, the issue of likelihood of
confusion must be determined on the basis of the goods as
identified in the application and the cited registration.
In addition, in the absence of specific limitations
therein, our consideration should include all the normal
and usual channels of trade for the goods. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). The only limitation

2 Reg. No. 1,393,982, issued May 20, 1986, claiming first use
dates of Feb. 1, 1985. Section 8 affidavit accepted; Section 15
affidavit submitted.
Ser No. 75/019,666
3
in applicant’s identification relates to the manner of use
of applicant’s cuff links and stud sets, not to the
particular type of stores in which the items may be
purchased. Whether or not, as argued by applicant,
applicant’s goods are generally sold in retail and
specialty stores specializing in the sale and rental of
men’s formal wear, the application is not so restricted.
Furthermore, the “jewelry” of registrant is completely
unrestricted as to type, cost or place of sale. While the
design portion of the registered mark consists of a
representation of a woman’s ring, the goods are not limited
to rings or even to women’s jewelry. Accordingly, we agree
with the Examining Attorney that the goods identified in
the registration, i.e., jewelry, fully encompass the
specific jewelry items of applicant. Furthermore, the
Examining Attorney has made of record several third-party
registrations as evidence of the listing by others of cuff
links and stud sets as specific items to be covered under
the general category of “jewelry.”3
Thus, we must determine the issue of likelihood of
confusion on the basis that the goods are legally identical
jewelry items which would travel in the same channels of

3 We note that applicant’s identification of goods in the
application as initially filed listed other jewelry items,
Ser No. 75/019,666
4
trade and might be encountered by the same prospective
purchasers in the same stores. It is well established that
when the goods are identical or closely related, the degree
of similarity of the marks necessary to uphold the
likelihood of confusion decreases. See Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
With respect to the present marks, the Examining
Attorney argues that the dominant feature of the registered
mark is the word TALIA, with the ring design only being
used as a background for the word. He considers the word
TALIA to be a strong, fanciful term with no apparent
meaning, whereas the ring design is suggestive of the goods
with which it is being used. Thus, from the Examining
Attorney’s viewpoint, it is the word portion of the
registered mark which would be the more significant in
terms of creating a commercial impression and, as a result,
registrant’s TALIA mark and applicant’s TALLIA mark would
create similar impressions.
Applicant contends that the design feature of the
registered mark cannot be so disregarded. Instead,
according to applicant, the “gemstone ring design” serves

including items worn by women, such as brooches, earrings and
bracelets.
Ser No. 75/019,666
5
as the distinguishing portion of the registered mark and
eliminates the likelihood of confusion with applicant’s
mark. Applicant argues that the addition of a second “L”
to the word portion in applicant’s mark and the prominence
of the design in registrant’s mark result in “distinctly
different overall commercial impression[s].”
Although it is true that in determining the likelihood
of confusion marks must be considered in their entireties,
it is well established that there is nothing improper in
giving more or less weight to a particular feature of a
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985). If the word portion of a mark rather
than the design feature is more likely to be remembered and
relied upon by purchasers in referring to the goods, it is
the word portion which will be accorded more weight. See
Ceccato v. Manifattura Lane Gaetano Marzotto & Figli
S.p.A., 32 USPQ2d 1192 (TTAB 1994); In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Here we consider the word portion TALIA to be the
dominant portion of the registered mark. The design of a
ring, when used in connection with jewelry, is clearly
suggestive, if not descriptive, of the goods and is less
likely to be remembered by purchasers as a source
indicator. See In re Appetito Provisions Co., supra at
Ser No. 75/019,666
6
1554 [sandwich design merely descriptive of type of food
sold in registrant’s restaurant and thus word portion of
mark is the dominant element]. Accordingly, the overall
commercial impressions which will be created by the marks,
and which will be remembered by potential purchasers over a
period of time, will be created by the words TALIA and
TALLIA. Inasmuch as these words are very similar in
appearance and virtually identical in sound, and inasmuch
as it is a general impression which is often retained by
purchasers, confusion is likely as to the source of the
jewelry items offered under these marks. See Faberge, Inc.
v. Madison Shirt Corp., 192 USPQ 223 (TTAB 1976) and the
cases cited therein.
Applicant has further raised the argument that its
prior registration for the same mark TALLIA for clothing
items entitles applicant to expand to other goods normally
licensed by clothing designers. In particular, applicant
claims that the cuff links and stud sets for which it now
seeks registration of the mark TALLIA are closely related
to the formal wear sold by applicant for many years under
its TALLIA mark.
Applicant’s argument is to no avail. The mark TALIA
and design has been previously registered by another for
jewelry items. Applicant cannot rely upon use and
Ser No. 75/019,666
7
registration of the mark TALLIA for clothing as a defense
under Section 2(d), when it is now seeking to register the
mark for the goods listed in the cited registration. See
In re L.C. Licensing, Inc., ___USPQ2d___, S.N. 75/132,969
(TTAB Nov. 20, 1998)[applicant cannot rely upon prior
registration of LIZSPORT in connection with apparel and
accessories as defense against likelihood of confusion with
previously registered mark LIZ for fragrances and personal
care products, when applicant is seeking to register
LIZSPORT for fragrances and personal care products].
Accordingly, we find that there is a likelihood of
confusion if applicant’s mark TALLIA is used on its
particular jewelry items, cuff links and stud sets for
formal wear, in view of the previously registered TALIA and
design mark for jewelry in general.
Decision: The refusal to register under Section 2(d)
is affirmed.
R. L. Simms
E. J. Seeherman
H. R. Wendel
Ser No. 75/019,666
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Trademark Administrative Judges,
Trademark Trial and Appeal Board