Leading Jewelers Guild, Inc.v.LJOW Holdings, LLC

Trademark Trial and Appeal Board

Mar 7, 2007

CANC (T.T.A.B. Mar. 7, 2007)

Hearing: Mailed: March 7, 2007
April 27, 2006 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Leading Jewelers Guild, Inc.
v.
LJOW Holdings, LLC substituted for SJD LLC as
party defendant1
_____

Opposition No. 91160856
Cancellation Nos. 92041930 and 92042246
_____

Todd E. Stockwell and Christopher T. Smedley of Stockwell &
Associates, PSC for Leading Jewelers Guild, Inc.

Arthur J. Greenbaum and Sujata Chaudhri of Cowan, Liebowitz
& Latman, P.C. for LJOW Holdings, LLC.
______

Before Seeherman, Hohein and Hairston, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

LJOW Holdings, LLC (hereinafter “Defendant”) seeks to
register the mark LEADING JEWELERS OF THE WORLD and design
as shown below,

1 During this proceeding, the involved application and
registrations were assigned from SJD LLC to LJOW Holdings, LLC.
The Board, in an order issued October 24, 2006, substituted LJOW
Holdings, LLC as the party defendant herein.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
2

for “indicating membership in an organization which sells
diamond jewelry.”2 Defendant is also the owner of
registrations on the Supplemental Register for the mark
LEADING JEWELERS OF THE WORLD (in standard character form)
for both “indicating membership in an organization which
sells diamond jewelry,”3 and “association services, namely,
promoting the interests of vendors of quality diamonds and
diamond jewelry.”4
Leading Jewelers Guild, Inc. (hereinafter “Plaintiff”)
has respectively opposed registration of the application and
petitioned to cancel the registrations for the above marks.5
Plaintiff alleges that it is a nationwide member-owned
cooperative association of jewelers doing business under the
mark MEMBER LEADING JEWELERS GUILD; that since April 23,
1979 it has used the registered mark MEMBER LEADING JEWELERS
GUILD and design, as shown below

2 Serial No. 78244958, filed May 2, 2003, alleging a date of
first use anywhere and a date of first use in commerce of May 1,
2002. The words LEADING JEWELERS OF THE WORLD have been
disclaimed apart from the mark as shown.
3 Registration No. 2703309, issued April 1, 2003.
4 Registration No. 2716705, issued May 13, 2003.
5 The Board, in its order issued on March 14, 2005, consolidated
these proceedings.
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
3

for “indicating membership in an organization consisting of
jewelry distributors,”6 and that defendant’s LEADING
JEWELERS OF THE WORLD marks so resemble plaintiff’s MEMBER
LEADING JEWELERS GUILD and design mark as to be likely to
cause confusion.
Defendant has answered the notice of opposition and
petitions for cancellation by denying the salient
allegations thereof.
The record includes the pleadings, and the files of the
opposed application and involved registrations. Plaintiff
has submitted the testimony, with exhibits, of its executive
director, James West; and a notice of reliance on a copy of
its pleaded registration and defendant’s answers to
plaintiff’s first set of interrogatories. Defendant
submitted the testimony, with exhibits, of Jack Gredinger,
executive director of defendant’s “Leading Jewelers of the

6 Registration No. 1476369, issued February 9, 1988. Affidavits
under Section 8 and 15 have been accepted and acknowledged
respectively.
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
4
World” program, and Sheldon J. David, executive vice
president of W.B. David & Company. In addition, defendant
submitted a notice of reliance on two third-party
registrations for marks which include the words LEADING
JEWELER for services in the jewelry field.
Briefs have been filed and an oral hearing, attended by
counsel for the parties, was held.
The Parties
According to its executive director, James West,
plaintiff is a “a co-op of family owned independent
jewelers” which was “created to pool their buying resources
in order to get more advantageous buys in merchandise and
advertising and in any other area where we can bring our
group to bear.” (Dep. at 7). Mr. West testified that
plaintiff first used MEMBER LEADING JEWELERS GUILD and
design as a membership mark on April 23, 1979. At the end
of 2004, plaintiff had 27 members with 150 stores in 32
states. Plaintiff offers its members several services,
including advertising and catalog production, merchandise
buying programs for discounts, and a warranty service for
its members to offer customers. Plaintiff’s MEMBER LEADING
JEWELERS GUILD and design mark is used on catalogs,
newspaper advertisements and inserts, and mailers which are
sent by members to customers. The mark also appears on
signs at members’ stores, on bags, wrapping and stickers
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
5
that are used by members when packing items for customers,
and on warranties, service contracts, repair envelopes,
repair tickets, credit contracts, and installment contracts.
According to Mr. West, the total circulation of catalogs
that plaintiff produced for its members in 2003 was
approximately 17 million. In addition, for the same year,
plaintiff, “as a group collectively,” spent approximately
$11 million on advertising. (Dep. at 35).
Sheldon David, executive vice president of W.B. David &
Company, testified that in 2000, “he thought up the name”
LEADING JEWELERS OF THE WORLD for use in connection with a
program “directed to a specific group of retailers
throughout the United States that could meet certain
criteria of being able to fill that, if you want to call it,
area of adding value to the sale of diamonds.” (Dep. at 9).
According to Mr. David, W.B. David & Company formed a
limited liability company, SJD LLC (now LJOW Holdings, LLC),
to own the trademark LEADING JEWELERS OF THE WORLD. The
LEADING JEWELERS OF THE WORLD program is administered by LJW
Associates, Inc. pursuant to an oral license. The LEADING
JEWELERS OF THE WORLD mark has been used in connection with
association services since at least as early as May 31, 2001
and as a membership mark since September 20, 2001. Jack
Gredinger, executive director of the LEADING JEWELERS OF THE
WORLD program, testified that the program is “more about how
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
6
the jeweler treats the customer than about the products that
the retail jeweler sells.” (Dep. at 11). In this
connection, defendant provides to its members an in-store
training program geared primarily towards providing a luxury
shopping experience to the public. The typical member of
the LEADING JEWELERS OF THE WORLD program is “a single store
operation” which sells “higher-priced, more quality-oriented
product[s].” (Dep. at 67). According to Mr. Gredinger,
“[t]hey tend to be premier retailers in the marketplace.”
(Dep. at 67). From 2001 to 2004, defendant spent
approximately $4 million on “putting the [LEADING JEWELERS
OF THE WORLD] program together.” (Dep. at 67). In 2004, 42
retail jewelers belonged to defendant’s LEADING JEWELERS OF
THE WORLD program, and in the same year defendant spent
between $4 and 5 million on advertising. Much of
defendant’s advertising is directed to attracting new
members to its program.
Priority
The record demonstrates that plaintiff first used its
mark, MEMBER LEADING JEWELERS GUILD and design, on April 23,
1979 to indicate membership in its organization. Further,
the record shows that defendant first used the LEADING
JEWELERS OF THE WORLD mark in connection with association
services on May 31, 2001, and to indicate membership in its
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
7
organization on September 20, 2001. Thus, priority rests
with plaintiff in the opposition and cancellations.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion 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. duPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003).
At the outset, we note that plaintiff’s Registration
No. 1476369 identifies a collective membership mark;
defendant’s Application Serial No. 78244958 and Registration
No. 2703309 identify collective membership marks; and
defendant’s Registration No. 2716705 identifies a service
mark. As the Board stated in Carefirst of Maryland, Inc. v.
FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1512
(TTAB 2005):
Although the ultimate inquiry is the same, the
analysis under Section 2(d) with respect to
collective membership marks is somewhat different
from that with respect to trademarks or service
marks. The trademark or service mark analysis
typically involves a determination of likelihood
of confusion among purchasers or users as to the
source of goods or services. However, a
collective membership mark does not involve
purchasers of goods or services. The sole purpose
of a collective membership mark is to indicate
membership in an organization. While goods and
services may be provided by members of an
organization, a collective membership mark, as
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
8
used or displayed by the members of an
organization, serves only to identify the fact
that such members belong to the collective
organization and to inform relevant persons of the
members’ association with the organization.
(citation omitted)

In addition, the Board indicated at 77 USPQ 1513 that:

The term “relevant persons,” for purposes of a
collective membership mark, would not consist of
“purchasers,” but rather those persons or groups
of persons for whose benefit the membership mark
is displayed. (citation omitted)

Thus, in the case of plaintiff’s collective membership
mark and defendant’s collective membership mark, the
question is whether relevant persons are likely to believe
that there is some connection between the collective
organizations, i.e., plaintiff and defendant. And, in the
case of plaintiff’s collective membership mark and
defendant’s service mark, the question is whether relevant
persons are likely to believe that the collective
organization, i.e., plaintiff, is endorsed by or in some way
associated with the provider of the association services,
i.e., defendant.
It is essentially defendant’s position that there is no
likelihood of confusion because its collective membership
mark and service mark are encountered primarily by single
store jewelry retailers who sell higher-priced products,
whereas plaintiff’s collective membership mark is
encountered primarily by chain-store jewelry retailers with
stores located in shopping malls. However, the problem with
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
9
this argument is that the involved application and
registrations contain no such restrictions with respect to
type of jewelry retailers, distributors, or vendors. See
Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving
the issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”). In the
absence of any limitations, we must assume, for purposes of
our likelihood of confusion analysis, that “low-end” and
“high-end” jewelry retailers, distributors, and vendors
would encounter both plaintiff’s collective membership mark
and defendant’s collective membership mark and service mark.
In short, we cannot draw the distinctions urged by defendant
with respect to the relevant persons, but rather must deem
them to be, at the very least, overlapping.
Further, we note that plaintiff’s collective membership
mark and defendant’s collective membership mark may be
displayed or promoted in rendering jewelry retail store or
distributorship services to consumers so as to advertise the
member’s affiliation with the respective membership
organization even if the jewelry retail store or
distributorship services are being offered under a different
mark. Boise Cascade Corp. v. Mississippi Pine Manufacturers
Association, 164 USPQ 364 (TTAB 1969). Similarly,
defendant’s service mark may be displayed or promoted in
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
10
rendering jewelry retail store or distributorship services
to consumers so as to advertise the store’s association with
defendant. Indeed, the testimony shows that the respective
marks are used in these manners.
Under the circumstances, plaintiff’s collective
membership mark and defendant’s collective membership mark
and service mark would be encountered by some of the same
members of the relevant public, who could include businesses
and vendors of jewelry, as well as the ultimate purchasers
of jewelry. Thus, this factor favors a finding of
likelihood of confusion.
We next take up the factor of fame, because fame of the
prior mark plays a dominant role in likelihood of confusion
cases featuring a famous mark. Kenner Parker Toys, Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). Plaintiff argues that “[b]ased on [the]
widespread physical display of its mark, its large
advertising expenditures, and length of use, [plaintiff’s]
mark has acquired a level of fame that increases the
likelihood of confusion by a similar mark such as
[defendant’s]. (Brief at 27).
However, we find that the evidence plaintiff has
submitted is not sufficient to demonstrate that its mark is
famous. The record shows that 27 members (with 150 retail
stores) belong to plaintiff. This number of members,
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
11
standing alone, is not particularly impressive. In
addition, although plaintiff has used its collective
membership mark since 1979, it offered figures relating to
advertising and catalog circulation for the year 2003 only.
Such figures for a single year are not especially
meaningful. Moreover, as stated by the Federal Circuit,
“[r]aw numbers of product sales and advertising expenses may
have sufficed in the past to prove fame of a mark, but raw
numbers alone in today’s world may be misleading…
Consequently, some context in which to place raw statistics
is reasonable.” Bose Corp. v. QSC Audio Products, Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). Plaintiff
has failed to offer any information concerning the number of
jewelry retailers in this country, that is, the number of
potential members of an organization such as plaintiff’s.
It is the duty of a party asserting that its mark is famous
to clearly prove it. See Blue Man Productions Inc. v.
Tarmann, 75 USPQ2d 1811 (TTAB 2005). In this case, the
evidence falls far short of establishing that the MEMBER
LEADING JEWELERS GUILD mark is famous. Therefore, this
duPont factor is neutral.
The next duPont factor we consider is that of actual
confusion. Plaintiff points to several incidents of what it
contends is actual confusion. James West, plaintiff’s
executive director, testified that he was approached at
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
12
jewelry industry trade shows on several occasions where
individuals asked him if plaintiff and defendant were one
and the same. Additionally, Mr. West testified that he
received an email from a former member who asked whether
plaintiff and defendant were different. Although we agree
with plaintiff that, ordinarily, the occurrence of actual
confusion is an indication that confusion is likely, the
incidents related by Mr. West show, at most, that inquiries
were made as to the relationship, if any, between plaintiff
and defendant. It is not clear, however, that the persons
were, in fact, confused. In other words, there is no
evidence that a jewelry retailer mistakenly joined or
attempted to join defendant when it intended to join
plaintiff. In short, it is not clear that actual confusion
has occurred. Moreover, even if some actual confusion could
be inferred from plaintiff’s evidence on this point, any
such confusion would be de minimis. This duPont factor also
is neutral.
We next consider the similarity/dissimilarity of the
marks. We must determine whether plaintiff’s mark MEMBER
LEADING JEWELERS GUILD and design and defendant’s marks
LEADING JEWELERS OF THE WORLD in standard character form and
in design form, when compared in their entireties, are
similar or dissimilar in terms of sound, appearance,
connotation and commercial impression. Although the marks
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
13
must be considered in their entireties, it is well-settled
that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Furthermore, 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
commercial impression that the relevant persons who
encounter the respective marks would be likely to assume
that there is a connection or relationship between plaintiff
and defendant. Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Insofar as plaintiff’s MEMBER LEADING JEWELERS GUILD
and design mark is concerned, we note that the words
JEWELERS GUILD have been disclaimed. These words are highly
descriptive, if not generic, of plaintiff’s membership
services. Additionally, the entire phrase MEMBER LEADING
JEWELERS GUILD is highly suggestive of plaintiff’s
membership services. Further, we note that each of
defendant’s registrations for the mark LEADING JEWELERS OF
THE WORLD issued on the Supplemental Register.
Additionally, in defendant’s applied-for mark, LEADING
JEWELERS OF THE WORLD and design, the words LEADING JEWELERS
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
14
OF THE WORLD have been disclaimed. Thus, there is no
question that the words LEADING JEWELERS OF THE WORLD are
descriptive of defendant’s membership and association
services. As previously indicated, defendant also submitted
two third-party registrations (owned by different entities)
of marks that include the words “LEADING JEWELER” for
services in the jewelry field. They are Registration No.
1766432 for the mark AMERICA’S LEADING JEWELER for “retail
store and mail order services in the field of jewelry” and
Registration No. 1676439 for the mark THE AREA’S LEADING
JEWELER FOR VERY GOOD REASONS for “distributorship and
retail store services in the field of jewelry and watches.”
Although third-party registrations do not show that the
public is familiar with the marks shown in the
registrations, they are probative to the extent that they
may show the meaning of a mark or a portion of a mark in the
same way that dictionaries are employed. See Mead Johnson &
Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977). Here,
Registration No. 1766432 was registered pursuant to Section
2(f), thus indicating that, in the absence of a showing of
acquired distinctiveness for the mark, the words AMERICA’S
LEADING JEWELER are considered descriptive. Thus, that
third-party registration, at the very least, is further
evidence that the words LEADING JEWELER(S) are merely
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
15
descriptive for services in the jewelry field.7 Under the
circumstances, the mere presence of the words LEADING
JEWELERS in the parties’ respective marks is an insufficient
basis on which to find the marks confusingly similar.
Rather, because of the highly suggestive nature of
plaintiff’s mark, it is weak and not entitled to a broad
scope of protection. As stated in Sure-Fit Products Co. v.
Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA
1958):
It seems both logical and obvious to us that where
a party chooses a trademark which is inherently
weak, he will not enjoy the wide latitude of
protection afforded the owners of strong
trademarks. Where a party uses a weak mark, his
competitors may come closer to his mark than would
be the case with a strong mark, without violating
his rights. The essence of all we have said is
that in the former case there is not the
possibility of confusion that exists in the latter
case.

Further, the respective marks have somewhat different
connotations. Plaintiff’s mark, MEMBER LEADING JEWELERS
GUILD and design, connotes membership in an organization or
guild of leading jewelers; defendant’s marks, LEADING
JEWELERS OF THE WORLD, both in standard character form and
with a design, connote that the members of the organization
are the best, that is, that they are the world’s leading

7 No disclaimer or Section 2(f) claim is indicated in
Registration No. 1676439, but it is USPTO policy not to require a
disclaimer of individual words in a slogan mark. Thus, we do not
regard this registration as showing that the words are inherently
distinctive.
Opposition No. 91160856; Cancellation Nos. 92041930 and 92042246
16
jewelers. In terms of appearance and sound, the respective
marks obviously look similar to the extent that they include
the words LEADING JEWELERS. However, we find that the
remaining words in the respective marks are different and,
when viewed in their entireties, the marks overall are
different. Thus, this duPont factor favors a finding of no
likelihood of confusion.
In sum, in view of the weakness of plaintiff’s mark,
when we compare the respective marks in their entireties as
to appearance, sound and meaning, we find that the
dissimilarities in the marks outweigh the similarities, and
that the marks are likewise dissimilar rather than similar
in terms of their commercial impression. Thus, after
consideration of the evidence of record with respect to the
relevant duPont factors, and the parties’ arguments with
respect thereto, we conclude that there is no likelihood of
confusion in this case. That is, notwithstanding that the
parties’ respective marks would be encountered by the same
relevant persons, we find that the marks are too dissimilar
to support a determination that confusion is likely.
Decision: The opposition is dismissed and the
petitions to cancel are denied.