HK Designs, Inc.

Trademark Trial and Appeal Board

Mar 27, 2015

No. 85928419 (T.T.A.B. Mar. 27, 2015)

Mailed:
March 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re HK Designs, Inc.
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Serial No. 85928419
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Jennifer Meredith of Meredith & Keyhani PLLC
for HK Designs, Inc.

Sally Shih, Trademark Examining Attorney,
Law Office 106 (Mary I. Sparrow, Managing Attorney).
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Before Seeherman, Wellington, and Lykos,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Applicant, HK Designs, Inc., filed an application to register on the Principal
Register the standard character mark THE DIAMOND STORY for goods
identified as “diamond jewelry; gemstone jewelry; jewelry; precious gemstones;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85928419

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semi-precious gemstones,” in International Class 10.1 The word “Diamond” has been
disclaimed.
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 on the identified
goods, so resembles the mark gold story in standard character form
registered on the Principal Register for “gold jewelry” in International Class 14.2
The word “Gold” has been disclaimed.
When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney have filed briefs. We affirm the refusal to register.
When the question is likelihood of confusion, we analyze 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).
Similarity of Goods and Channels of Trade
We first consider the goods and channels of trade. We must make our
determinations under these factors based on the goods as they are identified in the
registration and application. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v.

1 Application Serial No. 85928419, filed on May 10, 2013, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
2 Registration No. 4079460, issued on January 3, 2012. Because the mark is registered in
standard characters, the registrant’s protection extends to all manners in which the mark
may be displayed; we show it here in all lower case because that is the way it appears in the
drawing.

Serial No. 85928419

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Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157 (Fed. Cir. 2014); 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).
In this case, the goods are identical, in part, inasmuch as Applicant’s “jewelry”
encompasses Registrant’s “gold jewelry.” Applicant’s “diamond jewelry [and]
gemstone jewelry” are otherwise closely related to Registrant’s “gold jewelry,” as
they could contain gold, e.g., settings.
Because there are no trade channel limitations in the identifications of goods,
the legally identical goods must be deemed to travel in the same channels of trade
to the same consumers. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (when goods are identical, absent restrictions in the application and
registration, goods are presumed to travel in same channels of trade to same class
of purchasers). Also, the other types of jewelry identified in Applicant’s
identification may be offered for sale in the same retail outlets, such as jewelry
stores and the jewelry section of a department store, where they may be
encountered by the same customers.
In view of the above, the du Pont factors of the similarity of the goods and the
channels of trade weigh heavily in favor of finding a likelihood of confusion.
Similarity of the Marks
We now consider the marks and compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
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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). In our analysis of
the marks, we also keep in mind that when marks would appear on legally identical
goods, as they do here, the degree of similarity necessary to support a conclusion of
likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). See also, In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010).
The Examining Attorney argues that the dominant element of each mark is the
term, STORY, noting that the respective additional terms in each mark, DIAMOND
and GOLD, are generic when applied to the identified goods and, accordingly, have
been disclaimed. Applicant, on the other hand, points out that the disclaimed terms,
DIAMOND and GOLD, appear first in each mark and, because the marks must be
considered in their entireties, this is sufficient to distinguish the two marks.
Applicant is correct that the marks must be considered in their entireties,
including any disclaimed portions of marks; however, as the Examining Attorney
pointed out, it is also well-settled that disclaimed, generic or descriptive matter
generally has less significance in likelihood of confusion determinations. See In re
National Data Corp., 753 F2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)). See also,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (quoting In re National Data Corp., 224 USPQ at 752 (“Regarding descriptive
terms, this court has noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion”)); In re Dixie
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Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); and In re
Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is
often “less significant in creating the mark's commercial impression”).
With the aforementioned principles in mind, we agree with the Examining
Attorney that the term STORY common to both marks is dominant in each mark
and, when the marks are considered in their entireties, will figure prominently in
consumers’ minds as the source-identifying element. Put differently, it is the term
STORY, rather than either the disclaimed term “gold” or “diamond,” that will make
an impression on consumers in the context of gold and diamond jewelry. As a result,
consumers will not rely on the descriptive terms DIAMOND or GOLD in order to
distinguish the respective marks. To the contrary, it is likely that consumers who
are familiar with Registrant’s GOLD STORY mark for gold jewelry will, upon
encountering Applicant’s THE DIAMOND STORY mark for diamond jewelry,
mistakenly believe that the marks identify the same source, and that the
differences in the marks are due to the fact that they describe the composition or
type of jewelry, i.e., gold versus diamond. Further, both marks convey the same
connotation and commercial impression of stories about either gold or diamonds.
In sum, we find the respective marks similar in sound, appearance, meaning and
commercial impression. Accordingly, this factor favors a finding of a likelihood of
confusion.
We make the above finding regarding the similarity of the marks after giving
due consideration to Applicant’s argument that the common element, STORY, is
Serial No. 85928419

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“diluted generally and as applied to jewelry” and is “thus less likely to create
consumer confusion.” Brief, p. 4. In support of its position that STORY is “weak as it
has common use by many sellers in the market,” Applicant submitted copies of
approximately thirty-six (36) use-based third-party registrations for marks
containing this term.3
The third-party registrations do not support Applicant’s position. First, it has
long been held that registrations are not evidence that the marks are actually being
used in commerce or “of what happens in the market place or that customers are
familiar with them.” AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973). When considering the sixth du Pont factor, the
number and nature of similar marks in use on similar goods, “[t]he probative value
of third-party trademarks depends entirely upon their usage.” Palm Bay, 73
USPQ2d at 1693. Simply put, Applicant has not shown that any of these registered
marks have been used or that consumers have been exposed to them. Moreover, a
review of the registered marks reveals that very few share the syntax employed in
the involved marks, namely, the term STORY preceded (or followed) by a single
generic term. Rather, many of the marks contain the term in a longer string of
words or in complete sentences whereby the significance of STORY is greatly

3 Submitted with Applicant’s response (filed on February 12, 2014). Applicant also,
unnecessarily so, attached copies of these registrations with its appeal brief. The Board
discourages this practice. In re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB
2011) (attachment to brief of hundreds of pages of exhibits already of record not helpful;
instead it would have been helpful to identify, by date of submission and page number in
Office’s TDR database, the material being referenced in the brief). In addition, we further
note that Applicant submitted copies of five (5) registrations (Nos. 4266292; 4558076;
4554007; 4409081; and 4329846) that do not even contain an allegation of use in interstate
commerce.
Serial No. 85928419

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diminished, e.g., YOUR HORSE. YOUR STORY. YOUR DREAM. (Reg. 4548928);
SABIKA IS THE PROMISE OF A SMILE, THE BEGINNING OF A STORY AND
THE END OF GOING UNNOTICED (Reg. 4087021); and EVERYONE LOVES A
STORY (Reg. 3991526).4
Although third-party registrations may be used in a limited manner, similar to
dictionaries, to show that terms have some significance in a particular industry, the
third-party registrations submitted by Applicant are ineffective in this regard. Cf.,
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA
1976); see also, In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB
2012) (registrations may be used to show that a mark or a portion of a mark is
descriptive, suggestive, or so commonly registered as a mark or portion of a mark
that the public will look to other elements to distinguish the source of the goods or
services). Many of the registrations are for very different services or goods from the
goods identified in the subject application and cited registration, e.g., “charitable
services … promote global awareness about human trafficking” (Reg. 4487990);
“multi-level marketing business services … providing marketing and income
opportunities to third parties through the sale and distribution of jewelry…” (Reg.
4482484).

4 We note that as part of the submissions of third-party registrations Applicant submitted a
copy of its own registration, No. 4109747 for the mark MY DIAMOND STORY for “Cut
diamonds; Diamond jewelry; Diamonds; Gemstone jewelry; Gemstones; Jewelry; Precious
gemstones; Semi-precious gemstones” (issued on March 6, 2012). The registration was not
claimed in the involved application. Neither Applicant nor the Examining Attorney
referenced this registration in the appeal briefs and, therefore, we presume that they do not
believe it has any effect on the registrability of the mark at issue here.
Serial No. 85928419

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As for the registrations for jewelry, they do not show that “Story” has any special
meaning or significance in the context of jewelry, except possibly to suggest that
certain pieces of jewelry have a “story” behind them. Even allowing for this possible
meaning, we find the marks remain similar based on the shared term STORY. As
previously explained, the connotation of one mark involving “a story about
diamonds” and the second mark as having the connotation of “a story about gold”
will be understood by consumers, in the context of jewelry, as conveying a similar
connotation and commercial impression.
In sum, after a review of the third-party registrations, we disagree with
Applicant’s assertion that the common element STORY is weak or diluted in
connection with jewelry and, accordingly, that confusion is unlikely.
Conclusion
Because the goods are, in part, legally identical or closely related, and we thus
must assume the channels of trade and consumers will be the same for the identical
goods, and because of the similarity of the marks, we find that confusion is likely
between Applicant’s mark THE DIAMOND STORY and the registered mark GOLD
STORY for these goods.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.