Jerome Hutchinson

Trademark Trial and Appeal Board

May 8, 2008

No. 78794740 (T.T.A.B. May. 8, 2008)

Mailed:
May 8, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Jerome Hutchinson
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Serial No. 78794740
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Nicole M. Deforge of Van Cott, Bagley, Cornwall & McCarthy
for Jerome Hutchinson.

J. Brendan Reagan, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Drost, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Jerome Hutchinson filed an intent-to-use application
for the mark THE SIGNATURE OF YELLOWSTONE, in standard
character format, for goods and services ultimately
identified as follows:
Jewelry, in Class 14;
Beverage glassware, in Class 21;
Gift store and mail order catalog services in the
fields of jewelry and clothing and jewelry- and
clothing-related gifts and jewelry- and clothing-
related accessories, Class 35; and,
Design for others in the field of retail jewelry and
clothing, in Class 42.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78794740
2
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, as applied
to the goods and services listed in Classes 14, 35 and 42,
are likely to cause confusion with the registered mark
YELLOWSTONE for costume jewelry, in Class 14.1
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks”).

1 Registration No. 1721087, issued September 29, 1992; Sections 8
and 15 affidavits accepted and acknowledged; renewed.
Serial No. 78794740
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A. The similarity or dissimilarity and nature of the
goods and services.

Applicant is seeking to register his mark for, inter
alia, jewelry, in Class 14, gift store and mail order
catalogue services in the field of jewelry, in Class 35,
and the design of jewelry for others, in Class 42. The
registered mark is for costume jewelry. Because there are
no restrictions or limitations in applicant’s description
of goods and services, his jewelry, sales of jewelry, and
design of jewelry may encompass costume jewelry. We find,
therefore, that with respect to jewelry, the goods are
identical, and with respect to the applicant’s retail
store, mail order catalog and design services, all
involving jewelry, his services are closely related to
jewelry.
B. The similarity or dissimilarity of established,
likely-to-continue channels of trade and classes of
consumers.

Because there are no restrictions as to trade channels
and classes of consumers in either the application or the
cited registration, we presume that the goods and services
move in all normal trade channels for such goods and to all
normal classes of purchasers for such goods and services.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). See also In
re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
Serial No. 78794740
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(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”). Because we have
found that the goods are identical and that applicant’s
services are closely related to the registrant’s jewelry,
we find that applicant’s goods and services and the
registrant’s jewelry move in the same channels of trade and
will be bought by the same classes of purchasers.
C. The strength of the registered mark.
Applicant argued that the term “Yellowstone” is
primarily geographically descriptive “or, at best
suggestive.” Applicant’s contention that “Yellowstone” is
primarily geographically descriptive may not be considered
because it comprises an attack on the validity of a
registered mark which is not permitted in an ex parte
appeal. In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB
1992); In re Pollio Dairy Products Corp., 8 USPQ2d 2012,
2014-2015 (TTAB 1988). Accordingly, we may only consider
whether the registered mark is suggestive or arbitrary.
There is nothing in the record to indicate that the
term “Yellowstone” has any recognized meaning in connection
with jewelry. “Yellowstone” is defined as “a dark grayish
yellow that is redder, stronger, and slightly lighter than
California green or olive-sheen and very slightly greener
Serial No. 78794740
5
than honey.”2 There is no definition specifically related
to jewelry.
On the other hand, Yellowstone National Park is “a
park in NW Wyoming and adjacent parts of Montana and Idaho:
geysers, hot springs, falls, canyon.”3 Its name is often
abbreviated to “Yellowstone.”4 Accord Marshall Field & Co.
v. Mrs. Fields Cookies, 25 USPQ2d 1321 (1333 (TTAB 1992)
(“companies are frequently called by shortened names, such
as, Penney’s for J.C. Penney’s, Sears for Sears and Roebuck
(even before it officially changed its name to Sears
alone), Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdale’s”). Moreover, it is a well-known park.5

2 Webster’s Third New International Dictionary of the English
Language (Unabridged), p. 2650 (1993). The Board may take
judicial notice of dictionary evidence. University of Notre Dame
du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
3 The Random House Dictionary of the English Language
(Unabridged), p. 2202 (2nd ed. 1987).
4 “Yellowstone National Park,” Encyclopedia Britannica (2008);
“Yellowstone National Park,” Grolier Multimedia Encyclopedia
(2008); The Oxford Dictionary of the World, p. 657 (1996);
Chambers World Gazetteer p. 719 (1988); The Cambridge Gazetteer
of the United States and Canada, p. 736 (1995). The Board may
also take judicial notice of other standard reference works. In
re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.4
(TTAB 2001); Sprague Electric Co. v. Electrical Utilities Co. 209
USPQ 88, 95 n.3 (TTAB 1980).
5 “Yellowstone National Park,” Encyclopedia Britannica (2008)
(“the oldest, one of the largest, and probably the best-known
national park in the United States”); The Oxford Dictionary of
the World, p. 657 (1996) (“it is famous for its scenery, geysers
and wildlife and was the first national park to be designated in
the USA”). Moreover, because “Yellowstone” is listed in
dictionaries and encyclopedias we presume that the park has
achieved a high degree of renown. See B.V.D. Licensing v. Body
Serial No. 78794740
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Although the term “Yellowstone” will call to mind
Yellowstone National Park, there is no evidence that the
registrant’s goods originate in or around Yellowstone
National Park or that consumers are likely to believe that
registrant’s costume jewelry originate in or around
Yellowstone National Park.6 Based on the record, because

Action Design, 846 F.2d 727 6 USPQ2d 1719, 1720 (Fed. Cir. 1985)
(“When a trademark attains dictionary recognition as part of the
language, we take it to be reasonably famous”).
6 In his brief, the applicant sought to submit evidence not
previously made of record. In his brief, the Examining Attorney
objected to the applicant’s evidence as untimely. Trademark Rule
2.142(d), 37 CFR §2.142(d), provides, so far as pertinent, that
“[t]he record in the application should be complete prior to the
filing of the appeal.” See In re Norfolk Wallpaper, Inc., 216
USPQ 903, 904 (TTAB 1983); In re Royal Viking Line A/S, 216 USPQ
795, 797 n.3 (TTAB 1983). In view thereof, the Examining
Attorney’s objection to applicant’s late-filed evidence is
granted, and we have not given that evidence any consideration.
For the same reason, we have not given any consideration to the
evidence applicant sought to submit with his reply brief.
Nevertheless, we note that even had we considered applicant’s
late-filed evidence, it would not have changed our decision in
this appeal. For example, applicant submitted a hit list from a
search conducted in Trademark Office database for “Yellowstone,”
but did not include copies of the registrations or otherwise
provide goods and services data. Incomplete excerpts of
registrations from Trademark Office records are not sufficient to
make the registrations of record. In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). Applicant also submitted copies
of Trademark Office Actions from other applications refusing
registration on the ground that “Yellowstone” is geographically
descriptive. However, the Board decides each case on its own
merits, and not based on prior decisions by Examining Attorneys.
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1567, 1568
(Fed. Cir. 2000). Finally, applicant submitted excerpts from
websites by two jewelers in the Yellowstone geographic territory
that use Yellowstone as part of their name. However, because the
cited registration has been registered for more than five years,
it may not be canceled on the ground that it is primarily
geographically descriptive. Accordingly, all applicant may argue
is that YELLOWSTONE is suggestive; however, suggestive marks are
entitled to protection.
Serial No. 78794740
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there is no evidence that “Yellowstone” has any meaning
when it is used in connection with jewelry or jewelry-
related services, we must presume that the mark YELLOWSTONE
is an arbitrary mark when used in connection with costume
jewelry.
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
de Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
where, as here, the goods are in part identical, the degree
of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable
disparity between the goods. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Real Estate One, Inc. v. Real Estate
100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981);
Serial No. 78794740
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ECI Division of E-Systems, Inc. v. Environmental
Communications Incorporated, 207 USPQ 443, 449 (TTAB 1980).
In addition, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
The marks are similar in appearance and sound because
applicant’s mark (THE SIGNATURE OF YELLOWSTONE)
incorporates the entire registered mark (YELLOWSTONE).
With respect to the connotation and commercial impression
engendered by the marks, applicant’s prefatory use of THE
SIGNATURE OF fails to distinguish the marks because it
Serial No. 78794740
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serves to suggest that that applicant’s mark may be a new
or special line or variation of registrant’s jewelry (e.g.,
applicant’s signature piece of jewelry or applicant’s
signature line of jewelry). See Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155, 156 (TTAB
1982) (“likelihood of confusion has frequently been found
where contested marks used on related products involve one
mark which consists of a single word and another which is
comprised of that same word followed by a second term”).
On balance, we find that the similarities of the marks
outweigh the differences.
E. Balancing the factors.
Having found that applicant’s goods and services are
in part identical and otherwise closely related to
registrant’s goods, that the goods and services of the
partes move in the same channels of trade and are sold to
the same classes of consumers, and that the marks are
similar, we conclude that applicant’s mark THE SIGNATURE OF
YELLOWSTONE for the goods and services set forth in classes
14, 35, and 42, is likely to cause confusion with the mark
YELLOWSTONE for jewelry.
Decision: The refusal to register applicant’s mark in
Classes 14, 35 and 42 is affirmed.
Serial No. 78794740
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The application will be forwarded for publication in
Class 21.