Jewelry Theory LLC

Trademark Trial and Appeal Board

Dec 14, 2015

No. 86124700 (T.T.A.B. Dec. 14, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jewelry Theory LLC
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Serial No. 86124700
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Samuel H. Johnson of Rosenberg & Johnson, PLLC
for Jewelry Theory LLC.
Brian Neville, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Seeherman, Ritchie and Heasley,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Jewelry Theory LLC has appealed from the final refusal of the Trademark
Examining Attorney to register on the Principal Register the mark JEWELRY
THEORY (in standard characters), with JEWELRY disclaimed, for goods in the
following four classes:
Retail store services featuring jewelry (Class 35);

Jewelry appraisal (Class 36);

Jewelry repair (Class 37); and

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Designing jewelry to order and specifications of others (Class 42).1

Registration was refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the mark
THEORY (in typed form), registered for “jewelry, clocks and watches,”2 that if used
in connection with Applicant’s identified services it is likely to cause confusion or
mistake or to deceive.
We affirm the refusal to register.
I. Analysis
Our determination of the issue 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 set forth 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, 1203 (Fed. Cir. 2003).
Turning first to the du Pont factor of the similarity of the marks, Applicant’s
mark incorporates the cited mark, THEORY, in its entirety, and adds the
descriptive term JEWELRY to it. In its appeal brief Applicant claims, without any
support, the additional word in its mark causes the marks to “have different
appearances, sounds, connotations and commercial impressions.” 10 TTABVUE 10.
Applicant explains this assertion in its reply brief by saying that the cited mark

1 Application Serial No. 86124700, filed November 20, 2013, based on Section 1(b) of the
Trademark Act (intent-to-use).
2 Registration No. 3004691, issued October 4, 2005. Until 2003, “standard character”
marks were known as “typed” marks. See Citigroup Inc. v. Capital City Bank Group Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1258 n.1 (Fed. Cir. 2011).
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THEORY “has no apparent connection to jewelry of any kind,” while the addition of
JEWELRY “sets the marks apart and gives off different commercial impressions.”
13 TTABVUE 6.
We are not persuaded by Applicant’s arguments. It is a well-established
principle that, in articulating reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). In the present case, because JEWELRY describes Applicant’s services of
retail services featuring jewelry, jewelry design, jewelry appraisal and jewelry
repair, consumers will regard the term THEORY in Applicant’s mark as being the
stronger source-identifying element, with JEWELRY merely providing information
about a primary characteristic of the services. As a result, the inclusion of
JEWELRY in Applicant’s mark does not change the connotation or commercial
impression of the marks. Thus, considering the marks as a whole, the word
JEWELRY in Applicant’s mark, JEWELRY THEORY, does not serve to distinguish
it from the cited mark, THEORY.
Turning next to the du Pont factors of the similarity of the goods/services, and
the channels of trade, there is an inherent relatedness between Applicant’s
identified services and the “jewelry” identified in the cited registration, as jewelry is
the subject of “retail store services featuring jewelry,” “jewelry appraisal,” “jewelry
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repair” and “designing jewelry to order and specifications of others.” That is, the
goods and services are inherently complementary, since jewelry can be bought in a
retail store featuring jewelry, can be appraised or repaired by a company rendering
jewelry appraisal or jewelry repair services, and can be created by jewelry designing
services. Moreover, the Examining Attorney has submitted evidence to show the
relatedness of the services. With the May 22, 2015 Office Action the Examining
Attorney made of record third-party registrations showing that various entities
have registered a single mark for, inter alia, jewelry, jewelry appraisal, jewelry
repair, custom design of fine gold jewelry and wedding jewelry, and retail stores
featuring jewelry (Reg. No. 2212142); jewelry, retail stores featuring jewelry, repair
of jewelry, design of jewelry (Reg. No. 2287652); jewelry, retail jewelry stores,
custom design of jewelry, jewelry repair (Reg. No. 3069926); jewelry, retail jewelry
stores, design for others in the field of jewelry (Reg. No. 3633834); and jewelry,
retail store services featuring jewelry, financial valuations of jewelry, jewelry repair
(Reg. No. 4315904). Third-party registrations that individually cover a number of
different items and that are based on use in commerce serve to suggest that the
listed goods and/or services are of a type that may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). And
with the March 11, 2014 Office Action the Examining Attorney submitted excerpts
from various third-party websites showing that entities offer, for example, jewelry,
jewelry design, jewelry appraisal services (www.bluenile.com, pp. 4-12); jewelry,
jewelry design, jewelry repair (www.jared.com, pp. 13-18); jewelry and jewelry
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design (www.zales.com, pp. 19-21); jewelry, retail jewelry stores (www.tiffany.com,
pp. 22-28); jewelry, jewelry repair, jewelry appraisal, jewelry store services
(www.kingsjewelry.net, pp. 29-38); and jewelry, jewelry design, retail jewelry store
services, jewelry repair, jewelry appraisal (Belleview Jewelers, p. 38).
This evidence, taken together with the complementary nature of the goods and
services, demonstrates that Applicant’s identified services are related to the
“jewelry” identified in the cited registration. Moreover, the Internet evidence shows
that the goods and services can be offered to the same classes of customers through
the same channels of trade.
Applicant relies on evidence regarding the way its services are rendered, and
evidence regarding the Registrant’s specific goods, in an attempt to show the goods
and services are not related. For example, Applicant asserts that it “is not a jewelry
store—it is a jewelry architectural studio specializing in the design and later
realization of one-of-a-kind fine jewelry truly unique to the particular customer
purchasing each item of jewelry,” brief, 10 TTABVUE 7, and that Registrant is a
clothing store and that the ring shown on its website3 “is so vastly different from the
services and end-creations provided by Applicant as to not even be considered the
same.” Id. at 10.
The problem with Applicant’s position is that, in determining whether confusion
is likely, we must consider the goods and services as they are identified in the
application and the cited registration, and not what the evidence shows the goods

3 Submitted by Applicant with December 15, 2014 response, p. 11.
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and/or services to be. In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB
1999). Accord, Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). The cited registration identifies the
goods as “jewelry” per se, and therefore this identification must be deemed to
include all types of jewelry, including one-of-a-kind fine jewelry creations. Further,
Applicant’s identification does not limit its services to be for a particular type of
jewelry. Its retail jewelry store services,4 jewelry repair, jewelry design and jewelry
appraisal services must be deemed to be directed to all types of jewelry, including
costume and relatively inexpensive fine jewelry.
Applicant has argued that “there is no market interface between Applicant and
the owner of the Cited Mark.” Brief, 10 TTABVUE 8. Although “market interface” is
one of the du Pont factors that we may consider where relevant, it is clear from
Applicant’s arguments—that the services are different, that Applicant and the
Registrant are not competitors and do not interact with each other in the
marketplace—that Applicant is treating this argument as part of the similarity of
the services factor, and not as a separate factor. However, the “market interface
between applicant and the owner of a prior mark” factor, as explained in du Pont, is
whether there is a consent to register or use, an agreement designed to preclude
confusion, an assignment of the mark, or laches and estoppel. See In re Opus One,

4 We note Applicant’s statement, quoted above, that it “is not a jewelry store,” but we do
not interpret this as an admission that Applicant is not entitled to register its mark for
“retail jewelry store services.” Rather, we view this statement as puffery or hyperbole in an
attempt to differentiate Applicant’s retail establishment from those of “ordinary” jewelry
stores. Therefore, we do not remand the application to the Examining Attorney to consider
whether an additional refusal should issue.
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60 USPQ2d 1812, 1819-22 (TTAB 2001). None of these points is applicable to the
present case.
The next du Pont factor we consider is the conditions under which and buyers to
whom sales are made, i.e., “impulse” versus careful, sophisticated purchasing.
Applicant’s arguments regarding this factor rely on Applicant’s evidence that the
jewelry it sells are one-of-a-kind pieces, and its contention that the Registrant’s
jewelry is “generic, costume jewelry.” Brief, 10 TTABVUE 9. We have already
discussed why this argument based on the asserted differences in the type of
jewelry that is the subject of Applicant’s services and the Registrant’s goods is not
persuasive. Applicant’s retail jewelry store services and its jewelry repair services
must be deemed to encompass the retail sale and repair of costume jewelry as well
as fine jewelry, and such costume jewelry can be inexpensive and subject to impulse
purchase. The decision to shop in a retail jewelry store that sells costume jewelry
can also be made on impulse and without deliberation. As for Applicant’s jewelry
repair services, such services can include very minor repairs, such as fixing a loose
clasp on a bracelet, which would not require the skill of a master craftsman. The
decision to avail oneself of such repair services can be made without deliberation.
We agree that jewelry appraisal services and jewelry design services might
involve some deliberation and care, as jewelry appraisal normally has financial
consequences, and a customer who goes to the trouble of having jewelry designed to
order would also exercise care. We accept that this factor would favor Applicant
with respect to these services.
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The final du Pont factor discussed by Applicant is the length of time and
conditions under which there has been concurrent use without evidence of actual
confusion.5 Applicant makes this argument for the first time in its appeal brief,
stating therein that the marks “have been used in commerce for the last several
years without any confusion.” 10 TTABVUE 9. We have no evidence as to when
Applicant began using its mark for its services (its application was filed based on an
intention to use the mark), where Applicant renders its services, or the extent of its
usage of the marks. Thus, we cannot determine whether there has been an
opportunity for confusion to occur, such that we can conclude that confusion is not
likely to occur.
Moreover, as the Federal Circuit said in In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003), an Applicant’s
uncorroborated statements of no known instances of actual confusion
are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving
testimony of appellant's corporate president's unawareness of
instances of actual confusion was not conclusive that actual confusion
did not exist or that there was no likelihood of confusion). A showing of
actual confusion would of course be highly probative, if not conclusive,
of a high likelihood of confusion. The opposite is not true, however. The
lack of evidence of actual confusion carries little weight, J.C. Hall Co.

5 During the course of prosecution Applicant had also argued that the cited mark was weak
and the registration should be accorded a limited scope of protection. Applicant did not
submit any probative evidence to support this argument, a point that was made by the
Examining Attorney during examination. Applicant did not pursue this argument in its
briefs, and we therefore assume that Applicant no longer asserts that either the factor of
the strength of the cited mark, or third-party use, favor its position. In any event, we concur
with the Examining Attorney that there is no evidence regarding third-party registrations
or third-party use. Based on the dictionary meanings of the word “theory,” the mark is
arbitrary for jewelry, and the cited registration must be considered to be conceptually
strong.
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v. Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA
1965), especially in an ex parte context.

Accordingly, we treat this du Pont factor as neutral.
II. Conclusion
After considering all of the du Pont factors for which there has been evidence or
argument,6 we find that the Examining Attorney has shown that Applicant’s mark
and the Registrant’s mark are very similar, the goods and services are related and
the channels of trade and classes of consumers are, in part, the same. With respect
to Applicant’s retail store services featuring jewelry, and jewelry repair services, we
find that they may be the subject of impulse purchase or selection without great
deliberation, and the same is true for the Registrant’s goods, which may include
inexpensive costume jewelry. The only du Pont factor that favors Applicant’s
position is the care which may be taken with respect to choosing jewelry appraisal
services and jewelry design services, but that factor is outweighed by the similarity
of the marks and the relatedness of the goods and services. That is, even if
consumers pay attention to the marks, and note that Applicant’s mark includes the
word JEWELRY in addition to the word THEORY, the inclusion of this descriptive
term is not likely to convey to consumers that the mark identifies a different entity
from the owner of the THEORY mark. Further, because of the evidence that jewelry
appraisal and jewelry design services, and jewelry, may emanate from a single
source, even careful consumers are likely to assume that JEWELRY THEORY

6 To the extent that any other du Pont factors may be deemed relevant, we treat them as
neutral.
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appraisal services and jewelry design services are connected with the source of
jewelry sold under the mark THEORY.
Accordingly, we find that the mark JEWELRY THEORY for retail jewelry store
services, jewelry appraisal services, jewelry repair services and jewelry design
services is likely to cause confusion with THEORY for jewelry.
Decision: The refusal to register Applicant’s mark JEWELRY THEORY is
affirmed as to all four of the applied-for classes.