Lavish Leathers, LLC.

Trademark Trial and Appeal Board

Mar 23, 2018

No. 87027455 (T.T.A.B. Mar. 23, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lavish Leathers, LLC.
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Serial No. 87027455
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Blake Jansen of Larson Newman for Lavish Leathers, LLC.

Collier L. Johnson II,1 Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
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Before Zervas, Cataldo and Kuczma, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Lavish Leathers, LLC (Applicant) seeks registration on the Principal Register of
the standard character mark LAVISH LEATHERS (“LEATHERS” disclaimed),
identifying the following goods:
Leather jewelry, leather earrings including single cut, double cut, tassel
and studded leather knots; leather hand-cut and tassel necklaces, and
leather wrapped bracelets, in International Class 14.2

1 The Trademark Examining Operation reassigned this case to Mr. Johnson after the appeal
was instituted.
2 Application Serial No. 87027455, filed on May 6, 2016, based upon Applicant’s allegation of
March 20, 2015 as a date of first use of the mark anywhere and in commerce under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods, so resembles
the mark registered on the Principal Register for
“jewelry,” in International Class 14,3 as to be likely to cause confusion, mistake or
deception.4
When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant filed briefs. We affirm the refusal to register.
I. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to 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). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the relatedness of the

3 Registration No. 4956150, issued on May 10, 2016. The mark consists of the stylized term
“LAVISH” in black font. There is a stylized design of a gold crown above the “H”. Next to the
term “LAVISH” are the stylized terms “BY TJM” in black font. The colors black and gold are
claimed as a feature of the mark.
4 In his August 26, 2016 first Office Action, the Examining Attorney also cited Reg. No.
3054005 for the mark LAVISHY, identifying “jewelry, namely necklaces, bracelets, rings,
earrings, body jewelry, pendants, watches” in International Class 14 and “leather and
imitation leather bags” in International Class 18. However, in his March 12, 2017 final Office
Action, the Examining Attorney withdrew the refusal of registration under Section 2(d) as to
this registration.
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goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
A. Relatedness of the Goods/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations under these factors based on the goods as they are
identified in the application and cited registration. See In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming
public may perceive [the respective goods or services of the parties] as related enough
to cause confusion about the source or origin of the goods and services.’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting
Hewlett Packard, 62 USPQ2d at 1004).
In this case, the broadly identified goods in the cited registration, namely,
“jewelry,” must be presumed to include Applicant’s more narrowly and specifically
identified “leather jewelry, leather earrings including single cut, double cut, tassel
and studded leather knots; leather hand-cut and tassel necklaces, and leather
wrapped bracelets.” In other words, Applicant’s leather jewelry, leather earrings,
knots, necklaces and bracelets, are subsumed under the more generally identified
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“jewelry” in the cited registration. As a result, Applicant’s goods are presumed to be
included among the goods in the cited registration and are legally identical thereto.5
Because the goods identified in the application and the cited registration are
legally identical, we must presume that the channels of trade and classes of
purchasers for these goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’
goods, and the lack of any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”); In re Smith & Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“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”). See also Octocom Sys., Inc., 16 USPQ2d at 1787 (“The authority
is legion that the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of goods are
directed.”).
We find that the du Pont factors of the legal identity of the goods, channels of
trade and consumers weigh heavily in favor of likelihood of confusion.

5 We note that in its briefs, Applicant does not argue that its goods are dissimilar from those
in the cited registration. See generally 4 TTABVUE and 7 TTABVUE.
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B. Conditions of Sale
Neither identification of goods restricts the identified jewelry by price. Because
the identifications of goods in the application and cited registration contain no
limitations as to price points, we must presume that the jewelry includes lower cost
jewelry items that may be purchased without a high degree of care. We further note
that Applicant’s specimen of record, submitted with its application, displays Double
Cut Taupe Dino and White Leather Earrings for sale at the modest price of $21.00.6
There is no evidence that Applicant’s leather jewelry items or the jewelry identified
in the cited registration are limited to high-priced items such that consumers would
exercise a heightened degree of care in their purchasing decisions.
We therefore presume that the recited jewelry includes lower cost jewelry items
that may be subject to casual, impulse purchase. As a result, this du Pont factor also
favors a finding of likelihood of confusion.
C. Similarity/Dissimilarity of the Marks
We consider Applicant’s mark LAVISH LEATHERS and the registered mark
and compare them “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imports Inc. 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). The marks “must be considered

6 Applicant’s specimen of record, submitted on May 6, 2016, consists of a screenshot from its
internet website displaying a photograph of its leather earrings attached to a tag bearing the
mark, and an offer of sale thereof.
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… in light of the fallibility of memory.” St. Helena Hosp., 113 USPQ2d at 1085
(quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,
196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
consumer, who retains a general rather than specific impression of the marks.
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark LAVISH LEATHERS and Registrant’s mark
are similar inasmuch as they share the term LAVISH as the
sole distinctive term in Applicant’s mark and the most distinctive and prominent
term in the registered mark. The disclaimed word “Leathers” in Applicant’s mark has
little, if any, trademark significance because it is at a minimum highly descriptive of
Applicant’s identified goods. It is well-settled that disclaimed, descriptive matter may
have less significance in likelihood of confusion determinations. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’”)
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));
In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc.,
60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”). There is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
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of a mark, such as a common dominant element, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. In re Nat’l Data Corp.,
224 USPQ at 751.
Further highlighting the importance of the term LAVISH in both Applicant’s
mark and the registered mark is its location as the first part thereof. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 73 USPQ2d at 1692
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”
is the first word in the mark and the first word to appear on the label); Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994) (upon encountering the marks,
consumers will first notice the identical lead word); Presto Prod. Inc. v. Nice-Pak
Prod., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”).
“[I]f the dominant portion of both marks is the same, then confusion may be likely
notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB
1985). The peripheral differences in this case, Applicant’s addition of the word
“Leathers” and the presence in the registered mark of a much less visibly prominent
crown design and wording “by TJM,” fail to distinguish the marks. As discussed
above, “Leathers” is at best highly descriptive of Applicant’s goods and the wording
“by TJM” modifies LAVISH in the registered mark and thus serves to reinforce it. In
addition, because Applicant’s mark is in standard characters, it may be presented in
any font, including the same font in which the registered mark appears. Cunningham
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v. Laser Golf Corp., 55 USPQ2d at 1847 (“Registrations with typed drawings are not
limited to any particular rendition of the mark and, in particular, are not limited to
the mark as it is used in commerce”); In re Cox Enterprises Inc., 82 USPQ2d 1040,
1044 (TTAB 2007) (“We must also consider that applicant’s mark, presented in typed
or standard character form, is not limited to any special form or style as displayed
on its goods”).
Based upon the above analysis, we find that LAVISH LEATHERS is more similar
than dissimilar to in terms of appearance, sound, connotation
and commercial impression. As a result, consumers encountering LAVISH
LEATHERS could mistakenly believe that it represents a variation on the registered
mark used to identify leather jewelry emanating from the same source. This is
particularly the case because, “[w]hen marks would appear on virtually identical ...
[goods or] services, the degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century
Life of America, 23 USPQ2d at 1700. See also ECI Division of E-Systems, Inc. v.
Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
In view thereof, the du Pont factor of the similarity of the marks favors a finding
of likelihood of confusion.
D. Strength or Weakness of the Mark in the Cited Registration
Applicant did not submit any evidence to support a finding that the mark in the
cited registration, or any portion thereof, is weak or entitled to a narrow scope of
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protection. Nonetheless, we note that in his first Office Action the Examining
Attorney also cited Registration No. 3054005 for the mark LAVISHY, identifying
“jewelry, namely necklaces, bracelets, rings, earrings, body jewelry, pendants,
watches” in International Class 14 and “leather and imitation leather bags” in
International Class 18.
The “existence of [third party] registrations is not evidence of what happens in the
market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nevertheless,
“[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’
even where the specific extent and impact of the usage has not been established.”
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice
Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).
However, the record in this case, consisting of a single third-party registration
originally cited as an additional bar to registration under Trademark Act Section 2(d)
and subsequently withdrawn, does not show the extensive third-party use and
registration evidence that was found to be “powerful on its face” because “a
considerable number of third parties use [of] similar marks was shown.” Juice
Generation, 115 USPQ2d at 1674. We find therefore, that the mark in the cited
registration is entitled to a normal scope of protection.

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II. Conclusion
In conclusion, we find that the goods are legally identical and are presumed to be
available in the same channels of trade at all price points to the same classes of
consumers. We further find Applicant’s mark LAVISH LEATHERS and the
mark in the cited registration are more similar than dissimilar, and
evidence of record does not establish that any portion of the registered mark is weak
in connection with the goods at issue. We find, therefore, that confusion is likely
between Applicant’s mark LAVISH LEATHERS and the mark in the cited
registration.
Decision: The refusal to register based on likelihood of confusion under Section
2(d) of the Trademark Act is affirmed.