Jewelry Supply Inc.

Trademark Trial and Appeal Board

May 4, 2011

No. 77475181 (T.T.A.B. May. 4, 2011)

Mailed: May 4, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jewelry Supply Inc.
________

Serial No. 77475181
_______

Lawrence G. Townsend of Owen Wickersham & Erickson PC for
Jewelry Supply Inc.

Laurie Mayes, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Cataldo, Taylor and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Jewelry Supply Inc. filed an application to register on the
Principal Register the mark JEWELRYSUPPLY.COM in standard
characters for the following services:
online retail store services featuring jewelry boxes,
jewelry findings, jewelry displays, jewelry repair
kits, tools for making jewelry, beads, magnifiers,
craft kits, crystals, and educational material,
specifically books and various media, including
instructional videos on the subject of jewelry (in
International Class 35).

The application was filed on May 15, 2008 based on an allegation
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser. No. 77475181
2
of January 1999 as a date of first use of the mark in commerce.1
During prosecution applicant amended its application to seek
registration of its mark under Section 2(f) of the Trademark
Act.
The trademark examining attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that
applicant’s mark is merely descriptive of its services and that
applicant’s evidence is insufficient to show acquired
distinctiveness of the mark under Section 2(f) of the Act.2 When
the refusal was made final, applicant appealed. Applicant and
the examining attorney have filed briefs, and applicant filed a
reply brief.
Applicant having filed the application seeking registration
under Section 2(f) has conceded that the mark is merely
descriptive under Section 2(e)(1). See Yamaha International
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1005 (Fed. Cir. 1988); and The Cold War Museum, Inc. v. Cold War
Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir.
2009). Thus, the sole issue on appeal is whether applicant has
carried its burden of establishing, by a preponderance of the
evidence, a prima facie case that its merely descriptive mark

1 Application Serial No. 77475181.
2 The examining attorney also issued and subsequently withdrew a
genericness refusal. In addition, the examining attorney issued
several requirements with which applicant complied.

Ser. No. 77475181
3
has acquired distinctiveness under Section 2(f). See Yamaha,
supra; and In re Rogers, 53 USPQ2d 1741 (TTAB 1999).
First, we must determine the degree of descriptiveness
of the JEWELRYSUPPLY.COM mark that applicant seeks to register
in relation to its recited services. In this regard, we note
that a term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods
or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with those goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use. That a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979).
We turn then to the evidence made of record by the
examining attorney in support of her position that
JEWELRYSUPPLY.COM merely describes the recited services. This
Ser. No. 77475181
4
evidence includes dictionary definitions of “JEWELRY” as
“ornaments for body, items worn as ornaments, e.g. necklaces,
bracelets, earrings or rings;”3 and “SUPPLY” as “provide, to
give, sell, or make available something that is wanted or needed
by somebody or something.”4 In addition, the examining attorney
made of record articles and advertisements from Internet
websites in which “JEWELRY SUPPLY” is used by third parties to
identify their online jewelry store services. The following
examples are illustrative:
Gemshow-Online Jewelry Supply
Swarovski Crystal Beads Bali Beads Jewelry Supply
Sterling Silver Beads Sterling Silver Findings
Sterling Silver Alphabet Beads Bali Bead Caps 14KGF
Beads …
(gemshow-online.com)

Lotta Displays
Jewelry Supply Super Store
Beads, Findings, Jewelry Displays, Tools, Merchant
Supplies, Gift Bags, Jewelry Boxes, Jewelry Pouches,
Wholesale Jewelry and more!
Our goal is to offer unique, eye-catching jewelry
displays at affordable prices. We directly import
many of our items, and we search the globe for unique
gift packaging ideas. We have a large stock of
inexpensive jewelry making supplies including beads,
findings, bead cord, sterling silver, tools and more
in order to make our store a one-stop jewelry supply
center.
(lottadisplays.com)

American Jewelry Supply is the world’s largest full
line distributor of tools and equipment for assayers,
smelters, refiners, jewelers, polishers, casters, and
electroplaters.

3 Encarta World English Dictionary (North American Edition) 2007.
4 Id.
Ser. No. 77475181
5
(americanjewelrysupply.com)

Welcome to BestBuyBeads.com – your online bead store.
We are your source for CRYSTALLIZED – Swarovski
Elements, crystal beads, silver & gold beads, jewelry
supplies, and jewelry making ideas.
(bestbuybeads.com)

National Jewelers Supplies
Welcome to National Jewelers Supplies where you can
find over 1000 quality jewelers tools, equipment and
supplies. Our mission is to ensure that every
customer’s online experience is convenient, easy, and
informative. We are distinguished from other
jeweler’s supplies companies based on our knowledge of
jewelry supply products, our friendly service, our
competitive prices and our valuable warranties.
(nationaljewelerssupplies.com)

SilverSource – Your Sterling Wholesale Silver Jewelry
Supplier
Our quality wholesale jewelry supplies are
competitively priced and proven to sell. Sterling
silver jewelry has an excellent price point, and more
style and design variation than jewelry made of any
other precious metal. SilverSource carefully selects
a wide variety of silver jewelry ring and earring
designs to appeal to diverse customer tastes – all
while assuring maximum profitability for our wholesale
silver jewelry supply customers.
(silversource.com)

In addition, the examining attorney made of record copies of
third-party registrations for various goods and services
including services related to those in the involved application
in which the terms JEWELRY or SUPPLY is disclaimed.
Based upon the evidence of record, we find that JEWELRY
SUPPLY is, at best, highly descriptive of applicant’s online
retail store services featuring jewelry and jewelry-related
products. Furthermore, although applicant does not appear to
Ser. No. 77475181
6
dispute the point, we note for completeness that the “.com”
element in the JEWELRYSUPPLY.COM mark is not distinctive, nor
does it render the mark, when viewed in its entirety,
distinctive. See In re Oppendahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370 (Fed. Cir. 2004); In re Reed Elsevier Properties
Inc., 77 USPQ2d 1649 (TTAB 2005). We find, therefore, that
JEWELRYSUPPLY.COM is a highly descriptive mark as used in
connection with applicant’s services and, as a result, applicant
needs a commensurate high degree of evidence to show that its
mark has acquired distinctiveness for its services. See Yamaha,
6 USPQ2d at 1008 (“in general, the greater the degree of
descriptiveness the term has, the heavier the burden to prove it
has attained secondary meaning.”)
We turn next to the evidence submitted by applicant in
support of its Section 2(f) claim of acquired distinctiveness.
As noted above, it is applicant's burden to prove acquired
distinctiveness. See Yamaha, 6 USPQ2d at 1006; and In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA
1954) (“[T]here is no doubt that Congress intended that the
burden of proof [under Section 2(f)] should rest upon the
applicant”). “[L]ogically that standard becomes more difficult
as the mark's descriptiveness increases.” Yamaha, 6 USPQ2d at
1008. A claim that applicant has been using the subject matter
for a long period of substantially exclusive use may not be
Ser. No. 77475181
7
sufficient to demonstrate that the mark has acquired
distinctiveness. See In re Gibson Guitar Corp., 61 USPQ2d 1948,
1952 (TTAB 2001) (66 years of use). The amount and character of
evidence required to establish acquired distinctiveness depends
on the facts of each case, Roux Laboratories, Inc. v. Clairol
Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970), and more evidence
is required where a mark is so highly descriptive that
purchasers seeing the matter in relation to the services would
be less likely to believe that it indicates source in any one
party. See In re Bongrain International Corp., 894 F.2d 1316,
13 USPQ2d 1727 (Fed. Cir. 1990). Evidence of acquired
distinctiveness can include the length of use of the mark,
advertising expenditures, sales, survey evidence, and affidavits
asserting source-indicating recognition. However, a successful
advertising campaign is not in itself necessarily enough to
prove secondary meaning. In re Boston Beer Co. L.P., 198 F.3d
1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual
sales under the mark of approximately eighty-five million
dollars, and annual advertising expenditures in excess of ten
million dollars, not sufficient to establish acquired
distinctiveness in view of highly descriptive nature of mark).
In this case, as proof of acquired distinctiveness,
applicant submitted a claim of ownership of Registration No.
3260055 for the mark displayed below, with a disclaimer of
Ser. No. 77475181
8
“JEWELRY SUPPLY” for “costume jewelry parts and findings,
finished jewelry, jewelry boxes not of metal, jewelry boxes of
precious metal” in Class 14; and “jewelry display cases” in
Class 20.5

Applicant “concedes that its prior registration does not
constitute prima facie evidence of its acquired distinctiveness
in its JEWELRYSUPPLY.COM mark.”6 However, applicant asserts that
its applied-for JEWELRYSUPPLY.COM mark and the mark in its prior
registration are legal equivalents.
In addition, applicant submitted the declaration of its
president, Kenneth W. Roberts, attesting that the mark has been
in substantially exclusive and continuous use in commerce in
connection with the identified services for more than five years
preceding the date of the declaration. Mr. Roberts declares
that (1) applicant has been using the mark “at least as early as
January 1999,” and since then “has invested a total of
approximately $3.35 million in advertising for its
JEWELRYSUPPLY.COM services” which are “primarily spent on

5 Issued on the Principal Register on July 10, 2007 with the following
description of the mark: “The mark consists of JEWELRY SUPPLY and
design of triangle including beads, spool of wire, tools and
findings.”
6 Applicant’s brief, p. 12-13.
Ser. No. 77475181
9
internet marketing and magazine features;”7 (2) applicant further
has “invested an additional $1.5 million on its 270 page color
catalog and related flyers;”8 (3) in 2007, applicant delivered
its catalog to 60,000 customers;9 (4) “the www.jewelrysupply.com
site, which prominently features the Mark, reaches approximately
240,000 people per month and receives a daily page view of
approximately 104,000;”10 (5) applicant’s mark “has been promoted
to consumers nationwide through various online sources,
including, but not limited to: www.kaboodle.com,
www.beadjewelryblog.com, www.thisnext.com, and
www.aboutus.org;”11 (6) applicant’s instructional videos
featuring its mark are displayed on online video streaming
services including You Tube, MySpace, and MetaCafe;12 (7)
applicant’s sales through its “online retail store average
approximately $7 million per year” and “total approximately $45
million;”13 and (8) applicant has sold 5 million products bearing
the JEWELRYSUPPLY.COM mark on their packaging.14
Applicant submitted a copy of its prior registration
printed from the Office’s Trademark Electronic Search System

7 Roberts Declaration, paras. 1-3, 8.
8 Id. at para. 9.
9 Id.
10 Id. at para. 5.
11 Id. at para. 6.
12 Id. at para. 7.
13 Id. at para. 10.
14 Id. at 11.

Ser. No. 77475181
10
(TESS); printed copies of screenshots from its internet website
as well as the above-noted third-party websites featuring
advertisements and instructional videos regarding applicant’s
services; and an example of its catalog and packaging labels for
goods available under its services.
With regard to applicant’s prior registration, Trademark
Rule 2.41(b) provides that ownership of a registration of “the
same mark” on the Principal Register may be accepted as prima
facie evidence of acquired distinctiveness. In relying on this
rule, an applicant is essentially seeking to “tack” the use of
the registered mark to its use of the present mark for purposes
of transferring distinctiveness to the new mark. See In re
Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977). Thus, the
analysis used to determine whether applicant’s present mark is
“the same mark” as its previously registered mark, for purposes
of the rule, is the analysis used in tacking cases, i.e.,
whether the marks are legal equivalents. See Van Dyne-Crotty,
Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed.
Cir. 1991). See also In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). To meet the
legal equivalents test, the marks must be indistinguishable from
one another or create the same, continuing commercial impression
such that the consumer would consider both as the same mark.
See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., supra; and In re
Ser. No. 77475181
11
Dial-A-Mattress Operating Corp., supra. Aside from the identity
of the marks in the registration and the application, applicant
is also required to establish, through submission of relevant
evidence rather than mere conjecture, a sufficient relationship
between the goods and services in the prior registration and the
goods and services identified in the application to warrant the
conclusion that the distinctiveness of the mark associated with
the goods and services in the registration will “transfer” to
the goods and services listed in the application. See In re
Rogers, supra.
In this case, we find that

while perhaps confusingly similar to, is clearly not the legal
equivalent of the applied-for mark, JEWELRYSUPPLY.COM. The only
similarity between the marks is the common term JEWELRY SUPPLY,
wording to which applicant disclaimed any exclusive rights when
seeking registration of that mark. Otherwise, the mark in
applicant’s prior registration contains a triangular design
depicting jewelry beads, tools, spools of wire and findings, all
of which is notably absent from the applied-for mark. Such
design clearly is not the equivalent of the top level domain
indicator .COM. As a result, the two marks are distinguishable
from one another, create somewhat different commercial
Ser. No. 77475181
12
impressions, and cannot be considered “the same” for purposes of
Trademark Rule 2.41(b). Because the marks are not the same,
Trademark Rule 2.41(b) cannot be used to establish that
JEWELRYSUPPLY.COM has acquired distinctiveness as a mark for any
goods or services, let alone the services for which registration
is now sought. Thus, it is unnecessary to consider the
relationship between the goods for which the mark has been
registered and the services identified in the application.
We do not disregard applicant’s prior registration, but
consider it for such probative value as it may have in the
context of the rest of applicant’s evidence of acquired
distinctiveness. In this regard, however, we keep in mind that
the registration contains a disclaimer of the wording JEWELRY
SUPPLY and, perhaps more importantly, the examining attorney’s
evidence demonstrates that said wording is used by several
others in describing retail jewelry services.
With regard to the sales and advertising figures recited in
the declaration of applicant’s president, we observe that
applicant has provided no context for the industry by which we
may determine applicant’s share of the online jewelry supply
market or where such sales and advertising expenditures place
applicant among others in the same and related fields. In other
words these figures, without context, tell us very little about
whether consumers of applicant’s online jewelry supply services
Ser. No. 77475181
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have come to recognize JEWELRYSUPPLY.COM as a source indicator.
Therefore this evidence has very limited probative value.
Similarly, while Mr. Roberts states in his declaration that
applicant’s website is viewed by 104,000 people per day and
240,000 people per month, such figures suggest that applicant’s
website is repeatedly viewed by the same individuals rather than
supporting a finding that large numbers of new individuals are
exposed to applicant’s mark on its web site each month. In
addition, there is no indication of the number of individuals
viewing the promotions of applicant’s services under the
JEWELRYSUPPLY.COM mark on the third-party websites
beadjewelryblog.com, thisnext.com, or kaboodle.com, while the
number of page views listed for JEWELRYSUPPLY.COM on the
aboutus.org site is a very modest 237 views. Furthermore, the
viewership of streaming videos featuring applicant’s mark range
from 33,500 on YouTube to approximately 300 to 1,000 on other
video services. Again, there is no indication as to the number
of individuals who have repeatedly viewed these videos.
In short, the evidence submitted by applicant suggests that
it has enjoyed some commercial success in marketing its jewelry-
related services under its JEWELRYSUPPLY.COM mark. However, the
evidence falls rather short of demonstrating that
JEWELRYSUPPLY.COM, as used in connection with such services, has
acquired distinctiveness under Section 2(f). There is neither
Ser. No. 77475181
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context for the sales and advertising figures, marketing
materials, and internet website impressions nor direct evidence
in the form of, for instance, surveys or affidavits asserting
source-indicating recognition by which we may determine that
JEWELRYSUPPLY.COM has come to indicate source in applicant.
Finally, we note that applicant and the examining attorney
argue at length in their briefs regarding whether applicant’s
evidence that displays the applied-for mark with the triangular
design from its prior registration in place of the “dot” as
displayed below on its specimen of record, is sufficient to
support a finding of acquired distinctiveness as to the word
mark JEWELRYSUPPLY.COM.

However, even setting aside the question of whether these marks
Ser. No. 77475181
15
are legal equivalents and considering all of the evidence
submitted by applicant as supporting its Section 2(f) claim as
to JEWELRYSUPPLY.COM, we find that with this highly descriptive
mark, applicant has not met its burden of showing acquired
distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki Co.,
Ltd., supra, 6 USPQ2d at 1008.
Decision: The refusal to register under Trademark Act
Section 2(e)(1) without acquired distinctiveness under
Section 2(f) is affirmed.