L.I.D. Ltd.

Trademark Trial and Appeal Board

Aug 21, 2003

No. 76226296 (T.T.A.B. Aug. 21, 2003)

Mailed: August 21, 2003
Paper No. 13
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re L.I.D. Ltd.
________
Serial No. 76/226,296
_______
Ezra Sutton of Ezra Sutton, P.A. for L.I.D. Ltd.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
L.I.D Ltd. has appealed from the final refusal of the
Trademark Examining Attorney to register ARIELLA as a
trademark for "diamonds and diamond jewelry."1 Registration
has been refused pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant's mark
1 Application Serial No. 76/226,296, filed March 6, 2001,
asserting first use and use in commerce as of August 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/226,296
2
so resembles the mark ARELLA, previously registered for
jewelry,2 that, as used on applicant's goods, it is likely
to cause confusion or mistake or to deceive.3
Applicant and the Examining Attorney have filed
briefs. However, in his brief the Examining Attorney has
directed his comments to the refusal based on the
registration which was cited in the initial Office action,
which refusal was subsequently withdrawn. See footnote 3.
Accordingly, we have given the brief no consideration.4
2 Registration No. 2,502,719, issued October 30, 2001.
3 The application has had a somewhat complicated prosecution
history. In the first Office action, the Examining Attorney who
initially examined the application refused registration on the
basis of Registration No. 1,512,607, and advised applicant that
Application No. 75/756,441, if it matured into a registration,
might be cited against applicant's application. (The Examining
Attorney also required applicant to indicate the significance of
the mark. Although applicant did not respond to this point, the
Examining Attorney never repeated the requirement, so this is not
an issue in the appeal). In the second Office action, the
Examining Attorney withdrew the refusal based on Registration No.
1,512,607, and cited Registration No. 2,502,719, which issued
into a registration from Application No. 75/756,441. The
Examining Attorney incorrectly made the refusal final, despite
the fact that applicant had not had an opportunity to respond to
the refusal based on this registration. However, that Office
action also indicated that applicant could respond to each of the
points raised in the Office action, and advised applicant to
telephone the Examining Attorney if it had any questions or
needed assistance in responding to the Office action. Applicant
subsequently did file a response addressing this refusal, and the
present Examining Attorney issued a new final refusal.
Accordingly, we see no need to remand the application at this
point to correct the mistake of the first Examining Attorney.
4 We are frankly surprised that the present Examining Attorney,
who obviously believes that there is a likelihood of confusion
with the registered mark ARIEL, did not reinstate the refusal
based on this registration when he took over the examination of
the application.
Ser No. 76/226,296
3
Applicant did not request an oral hearing.
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. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant's goods are identified as "diamonds and
diamond jewelry"; the cited registration is for "jewelry."
"Diamond jewelry" is, of course, encompassed within the
term "jewelry," and therefore the goods must be considered,
in part, as legally identical.
When marks would appear on virtually identical goods
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21,
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The marks in
question are ARIELLA and ARELLA. The substantial
similarities in appearance and pronunciation of the marks
are obvious. It is not clear whether consumers would
ascribe a particular significance to either mark, or would
Ser No. 76/226,296
4
simply regard both as arbitrary terms. However, they do
not have clearly different connotations. Thus, we find
both marks to convey very similar commercial impressions.
Applicant has argued that the cited registration is
entitled to a limited scope of protection because there are
six third-party registrations for marks which begin with
the letters "AR."5 Third-party registrations are not,
contrary to applicant's argument, evidence that the marks
are in use. Thus, they do not support applicant's
contention that purchasers have been conditioned to look to
the other elements of the marks. Third-party registrations
are probative to the extent that they may serve to suggest
that a portion of a mark has been adopted to convey the
dictionary meaning or suggestion of that portion. See
Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588 (TTAB
1975). However, the fact that several marks begin with the
letters "AR" does not show that "AR" has a particular
meaning or significance in the jewelry field. This is
clearly borne out by the different meanings or impressions
conveyed by the third-party registrations which have been
5 The data relating to these applications/registrations appear
to be from a private company's records, rather than the records
of the U.S. Patent and Trademark Office. Such records would
normally not be acceptable but, because the Examining Attorneys
discussed the registrations, we consider them to be stipulated
into the record.
Ser No. 76/226,296
5
made of record, namely, ARENA, ARIES, ARIUS, ARIEL, ARIANA
and ARIETTA.6 The only third-party mark that is similar to
applicant's mark and the cited mark is ARIEL. However, the
presence of this registration is not sufficient for us to
find that the scope of protection accorded the registration
for ARELLA does not extend to prevent the registration of
ARIELLA for identical goods. ARELLA is not as similar to
ARIEL as ARELLA is to applicant's mark ARIELLA, nor for
that matter is it as similar to ARIEL as applicant's mark
ARIELLA is.
Decision: The refusal of registration is affirmed.
6 The latter two marks were the subject of applications at the
time applicant made them of record, but the applications have
since matured into registrations.