Mark Thomas

Trademark Trial and Appeal Board

Apr 24, 2006

No. 78334625 (T.T.A.B. Apr. 24, 2006)

Mailed: April 24, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mark Thomas
________

Serial No. 78334625

_______

Patricia S. Kramer of Walker & Jocke for Mark Thomas.

Rebecca L. Gilbert, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Seeherman, Bucher and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Mark Thomas has filed an application to register the mark
MARCHE NOIR (in standard character form) for "jewelry" in
International Class 14.1 The application includes an English
translation of MARCHE NOIR as "black market."

1 Application Serial No. 78334625, filed December 1, 2003, alleging
dates of first use and first use in commerce on June 4, 1982.
THIS DISPOSITION IS
CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 78334625
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the marks in the following three registrations, the first two of
which are owned by the same entity, as to be likely to cause
confusion:
Registration No. 2047169 of the mark shown below for
"clothing for women, namely, dresses, pants, jackets,
lingerie, tops, skirts, and shorts" in International
Class 25;2

Registration No. 2443749 of the mark BLACK MARKET for
"jewelry; necklaces; earrings; watches; bracelets" in
International Class 14;3

Registration No. 1709522 for the mark BLACK MARKET
MINERALS (MINERALS disclaimed) for "retail jewelry
and mineral store services" in International Class
35.4

When the refusal to register was made final, applicant
appealed. Briefs have been filed. An oral hearing was not
requested.

2 Issued to White House, Inc. on March 25, 1997; affidavits under
Sections 8 and 15 accepted and acknowledged, respectively.

3 Issued to White House, Inc. on April 17, 2001. This registration
also includes goods in International Classes 3, 9, 18, 20, 21, 24, 25,
26, 28 and 35.

4 Issued to Village Originals Inc. on August 18, 1992; renewed.
Ser. No. 78334625
3
As a preliminary matter, we note applicant's argument that
Registration No. 2443749 (BLACK MARKET) issued in error in Class
14 for jewelry. Applicant submitted portions of the file for
that registration (the final refusal and applicant's request for
reconsideration) showing that during prosecution of the
underlying application, the Class 14 jewelry, as well as the word
"jewelry," which was listed as a field in the Class 35 retail
store services, had been deleted from the application by
amendment in order to overcome a Section 2(d) refusal as to those
classes. Despite the deletion, however, the registration issued
in Class 14. The Office records have now been corrected, and
Class 14 no longer appears in the registration. Accordingly, the
refusal as to this registration is moot.
We also note that applicant filed a main brief that is 29
pages long in violation of the 25-page limit for appeal briefs
set forth in Trademark Rule 2.142(b)(2). The rule clearly states
that "[w]ithout prior leave of the Trademark Trial and Appeal
Board, a brief shall not exceed twenty-five pages in length in
its entirety, including the table of contents, index of cases,
description of the record, statement of the issues, recitation of
the facts, argument, and summary." See also TBMP §1203.01 (2d
ed. rev. 2004). Applicant did not request leave of the Board to
Ser. No. 78334625
4
file a brief that exceeds the page limit. Accordingly,
applicant's main brief has not been considered.5
We turn then to the merits of this case. Our determination
under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue, including the
similarities of the marks and the similarities of the goods
and/or services. In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973).
Registration No. 1709522
We first consider the refusal with respect to Registration
No. 1709522 of the mark BLACK MARKET MINERALS (MINERALS
disclaimed) for "retail jewelry and mineral store services."
Applicant's goods are "jewelry." Registrant's services involve
the retail sale of those goods. These are competitive,
inherently related goods and services. See, e.g., Fortunoff
Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863, 866 (TTAB
1985) ("there is little question that jewelry store services and
jewelry are highly related goods and services"); and In re
Jewelmasters, Inc., 221 USPQ 90 (TTAB 1983). See also J. Thomas
McCarthy, Trademarks and Unfair Competition §24:25 (2006)
("[w]here the services consist of retail sales services,

5 We have, however, considered applicant's responses to Office actions
and its reply brief.
Ser. No. 78334625
5
likelihood of confusion is found when another mark is used on
goods which are commonly sold through such a retail outlet.").
Because the goods and services are closely related, and
there are no restrictions as to their channels of trade or
classes of purchasers, they must be deemed to be promoted in the
same channels of trade and directed to the same purchasers.
Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910
(TTAB 2000).
Applicant, while noting that the jewelry associated with
both marks is "relatively inexpensive," attempts to distinguish
the nature of the goods as well as the purchasers for the goods.
In particular, applicant argues that the website for BLACK MARKET
MINERALS shows that the items sold under this mark are used as
components for creating jewelry whereas, according to applicant,
as shown on its website, applicant's jewelry is "counter-culture"
or "Goth" style jewelry that would be purchased by those
interested in that style.6
As our primary reviewing court has often stated, the
question of likelihood of confusion is determined on the basis of
the identification of goods and services set forth in the
application and registration, rather than on the basis of what

6 Applicant does not explain what exactly "Goth" jewelry is but we note
the definition of "Goth" in Microsoft Encarta College Dictionary (2001)
as meaning "fashion of dark clothes and makeup...characterized by black
clothes, heavy silver jewelry, black eye makeup and lipstick, and often
pale face makeup."
Ser. No. 78334625
6
evidence might show the actual nature of the goods and services
or purchasers to be. See J & J Snack Foods Corp. v. McDonald's
Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); and
Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990). There are no limitations
on the types of jewelry produced by applicant or sold in
registrant's retail store. While the minerals purchased from
registrant's store may be used by customers to create pieces of
jewelry, the term "jewelry" itself in the identification
encompasses all kinds and styles of jewelry, including fine
jewelry and costume or "Goth" jewelry. Thus, whether or not
registrant actually sells the same type of "Goth" style jewelry
as applicant is immaterial.
Furthermore, the purchasers of at least costume items of
jewelry are ordinary members of the general public. Considering
that this type of jewelry, as applicant points out, is relatively
inexpensive, it is therefore likely to be purchased casually and
on impulse, thus increasing the risk of confusion. Kimberly-
Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ
541 (Fed. Cir. 1985).
It is clear that consumers would be likely to believe that
jewelry on the one hand and retail stores selling jewelry on the
other emanate from or are sponsored by the same source if such
goods and services are sold under the same or similar marks.
Ser. No. 78334625
7
Thus, we turn to the marks. The issues concerning the
similarity of the marks and the similarity of the goods and
services are interrelated. When goods and services are highly
related, "the degree of similarity necessary to support a
conclusion of likely confusion declines." Shen Manufacturing
Co., Inc. v. The Ritz Hotel Limited, 393 F.3d 1238, 73 USPQ2d
1350, 1354 (Fed. Cir. 2004).
The mark in Registration No. 1709522 is BLACK MARKET
MINERALS. Applicant's mark is MARCHE NOIR, a French term which
applicant has translated into English as "black market." Under
the doctrine of foreign equivalents, foreign words from common
languages are translated into English to determine similarity of
connotation with English word marks. See Palm Bay Import, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). The doctrine is applied when it
is likely that "the ordinary American purchaser would 'stop and
translate [the term] into its English equivalent.'" Palm Bay,
supra at 1696, quoting In re Pan Tex Hotel Corp., 190 USPQ 109,
110 (TTAB 1976).
Applicant points to a printout from the website of
www.ethnicharvest.org purporting to show figures for the 1990
U.S. Census, and indicating that 1,544,454 of the 230,445,777
individuals in the United States speak French "very well" or
"well." Applicant reasons that because this figure represents
Ser. No. 78334625
8
only 0.6% of the population, it is unlikely that the "average
American buyer" will translate the mark MARCHE NOIR as required
by Palm Bay because the evidence shows that the average American
buyer does not speak French.
The "ordinary American purchaser" in this context refers to
the ordinary American purchaser who is knowledgeable in the
foreign language. See Trademarks and Unfair Competition, supra
at 23:26 (4th ed.) ("The test is whether, to those American buyers
familiar with the foreign language, the word would denote its
English equivalent."). See also, e.g., Nestle's Milk Products,
Inc. v. Baker Importing Company, Inc., 182 F.2d 193, 86 USPQ 80,
82 (CCPA 1950) ("Foreign language words, not adopted into the
English language, which are descriptive of a product, are so
considered in registration proceedings despite the fact that the
words may be meaningless to the public generally."). We
recognize that the doctrine is not an absolute rule, but
applicant's interpretation of it would write the doctrine out of
existence. In fact, this very argument was rejected in In re
Ithaca Industries, Inc., 230 USPQ 702, 703 (TTAB 1986) where, in
response to applicant's argument that, in effect, the doctrine of
foreign equivalents is not applicable where the foreign word is
in Italian, the Board said "it does not require any authority to
conclude that Italian is a common, major language in the world
and is spoken by many people in the United States." French is a
Ser. No. 78334625
9
common foreign language spoken by an appreciable segment of the
population. Indeed, applicant's own evidence shows that of the
foreign languages with the greatest number of speakers in the
United States, French is ranked second only to Spanish.
Applicant also argues that an analysis of the marks requires
more than simply the literal translation of MARCHE NOIR.
Applicant contends that when MARCHE NOIR and BLACK MARKET
MINERALS are compared in their entireties, the two marks are not
at all similar in sound or appearance, and moreover that the
connotations of the two marks are different.7 Relying on
dictionary entries from www.wordreference.com, applicant notes
that the word "marche" in French can be translated to mean "deal"
or "dealing." Applicant has also submitted a printout of
Registration No. 2129644 for the mark THE BON MARCHE pointing out
that the translation is listed as "good bargain." In addition,
applicant points to its website showing, according to applicant,
that its goods are substantially counter-culture or "Goth"
jewelry and accessories. Applicant concludes from the evidence
that applicant's mark can have a connotation of a black/dark
deal, a dirty deal, or a "deal with the devil."
When we evaluate the similarities between an English word
mark and a foreign word mark, we must, as in the comparison of

7 Applicant's arguments concerning the analysis used by the Japanese
Trademark Office to determine the similarity of marks are not relevant.
Ser. No. 78334625
10
two English word marks, consider the marks in their entireties in
terms of sound, appearance, meaning and commercial impression.
Here, we find that the marks BLACK MARKET MINERALS and MARCHE
NOIR, while decidedly different in sound and appearance, have the
same connotations. Applicant has translated its mark as "black
market." We also take judicial notice of the translation of
"marche noir" in both Cassell's French-English English-French
Dictionary (1951) and Collins French Dictionary (2000) as "black
market" with no other qualifying information for either term.8
MARCHE NOIR is the exact French equivalent of the English idiom
BLACK MARKET.
There may be different definitions and meanings associated
with the individual words "marche" and "noir" or with "marche"
combined with a different word such as "bon" (as in the
registered mark THE BON MARCHE). However, none of those other
meanings is relevant to a determination of the meaning of the
unitary expression MARCHE NOIR. The evidence clearly shows that
the one and only meaning of that phrase is "black market," and,
without question, that is how it would be recognized and
understood by the French-speaking public.

8 The listings in these dictionaries show an accent over the letter "e"
in "marche." However, the presence or absence of the accent does not
affect the meaning or perception of the term "marche noir." As noted,
applicant has translated its mark as "black market."
Ser. No. 78334625
11
Thus, this case is distinguishable from In re Sarkli, Ltd.,
721 F.2d 353, 220 USPQ 111, 112 (Fed. Cir. 1983), finding that
none of the dictionary definitions showed "second chance" to be
the exact translation of the French term "repechage." This case
is also distinguishable from In re Pan Tex Hotel Corporation, 190
USPQ 109, 110 (TTAB 1976), which found that while LA POSADA may
be literally translated as "the inn," the various dictionary
definitions made it clear that the designation had a "connotative
flavor" which was slightly different from that of the words "the
inn.").
Moreover, MARCHE NOIR and BLACK MARKET MINERALS not only
have the same literal meaning, but they create the same overall
commercial impression in relation to the respective goods and
services, both marks suggesting contraband or illicit goods. To
whatever extent MARCHE NOIR suggests a "Goth" connotation for
applicant's jewelry, BLACK MARKET MINERALS conveys that same
suggestive meaning for the jewelry sold in registrant's retail
store.9 Nor does the additional word MINERALS in registrant’s
mark serve to distinguish the marks. This word, which has been
disclaimed, is descriptive of the components of jewelry, and

9 Contrary to applicant's contention, it is not necessary that a
consumer believe that the owner of one mark would also use the foreign
equivalent in order to support a finding of likelihood of confusion.
It is sufficient that consumers would assume that applicant's jewelry
is in some way endorsed or approved by the owner of the English word
mark for jewelry store services or that there is otherwise some
connection between them.
Ser. No. 78334625
12
therefore is entitled to less weight when we compare the marks.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). It certainly does not change the meaning or
commercial impression conveyed by BLACK MARKET alone. The term,
if anything, reinforces that impression.
We find, in view of the foregoing, not only that the French
term MARCHE NOIR is the exact translation of "black market," but
further that the mark would be translated by those who are
familiar with the French language. This situation, thus, differs
from those cases in which it was found that the mark would not be
translated because of the inherent nature of the mark. Cf. In re
Tia Maria, Inc., 188 USPQ 524 (TTAB 1984); and Le Continental Nut
Co. v. Le Cordon Bleu S.A.R.L., 494 F.2d 1395, 181 USPQ 646 (CCPA
1974) (finding that CORDON BLUE, while literally translated as
BLUE RIBBON, would not be translated by the American public
because the two terms create different commercial impressions,
CORDON BLEU having been adopted into the English language and
acquiring a different meaning than BLUE RIBBON). Nor is this a
situation where the mark would not be translated because of
marketplace circumstances or the commercial setting in which the
mark is used. Cf. In re Pan Tex Hotel Corporation, supra; and In
re Tia Maria, Inc., supra (finding it unlikely that a person who
had purchased AUNT MARY'S canned fruits and vegetables from a
supermarket would, upon dining at the TIA MARIA restaurant
Ser. No. 78334625
13
surrounded by Mexican décor and serving Mexican food, translate
TIA MARIA into AUNT MARY and then mistakenly assume that both
goods and services originated from the same source.)
Applicant argues that registrant's mark BLACK MARKET
MINERALS is weak in view of the number of registrations
containing the term BLACK MARKET and the common use of that term
on the Internet. In addition to the three registrations cited
against applicant's mark, applicant notes that yet a fourth
registration (Registration No. 2327957) for BLACK MARKET owned by
a different entity, Amsterdam Art, Inc., exists on the register.
That registration is for retail services featuring artistic
materials for painters. Applicant also states that his search on
the Google search engine retrieved over 70,000 hits for "black
market" and "jewelry" but only 1,020 hits for "marche noir" and
"jewelry" and he has submitted a four-page printout of website
summaries from that search. According to applicant, the
summaries show that "black market" jewelry is "associated with a
number of different websites" whereas MARCHE NOIR is associated
only with applicant's jewelry.
We point out that the factor to be considered in determining
likelihood of confusion under du Pont is the "number and nature
of similar marks in use on similar goods." (Emphasis added.) See
In re E. I. du Pont de Nemours & Co., supra at 567. There are a
number of problems with applicant's showing in this regard.
Ser. No. 78334625
14
First, third-party registrations are not evidence of use of the
marks shown therein or that the public is aware of them. See AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268 (CCPA 1973); and Charrette Corp. v. Bowater Communication
Papers Inc., 13 USPQ2d 2040 (TTAB 1989). Further, the third-
party registration of BLACK MARKET for artist supplies, goods
completely dissimilar to jewelry, is irrelevant to the question
of whether the marks applied to the goods and services involved
in this case are likely to cause confusion.10
Applicant's evidence of use is similarly unpersuasive. The
number of Google hits for "black market" with jewelry, without
any context for the hits, is irrelevant. Further, some of the
website summaries in the list are so abbreviated that the context
of use, such as the specific nature of the business or the
particular goods or services offered on the various websites or
in connection with the term "black market," is unclear. See In
re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002); and TBMP
§1208.03 (2d ed. rev. 2004). Still other summaries contain

10 Applicant also argues that Registration No. 2327957 which issued to
Amsterdam Art, Inc. was not cited by the examining attorney, and "was
allowed to register for competitive (or at least related goods)"
despite the existence of Registration No. 2443749 for "picture frames"
(the registration cited herein with respect to items of jewelry in
Class 14). Applicant contends that there is less similarity between
applicant's goods and those of the cited marks than there is between
the goods associated with the cited marks and those identified in Reg.
No. 2327957. Suffice it to say that the similarity of the cited marks
to each other or to yet another third-party registration is irrelevant
to the question of whether there is a likelihood of confusion herein.
Ser. No. 78334625
15
irrelevant usage of "black market" having nothing to do with
jewelry (e.g., "black market adoption" and "black market
dealings"). To the extent, if any, that jewelry is offered on
certain websites in connection with "black market," we have no
information about the entities offering those goods or services.
The users may be affiliated with one of the cited registrants.
In any event, without evidence as to the extent of third-party
use, such as how long the websites have been operational or the
extent of public exposure to the sites, the probative value of
this evidence is minimal. See Palm Bay Imports, Inc., supra.
While we have no evidence that registrant's mark is strong
in terms of market strength, the mark by its nature is relatively
strong. Moreover, there is no persuasive evidence of record that
the term is commonly used in the jewelry field, or any other
evidence to show that the mark is weak, or entitled to less than
a normal scope of protection.11 The single third-party
registration for BLACK MARKET, discussed above, is not sufficient
to show that the term has a suggestive significance for jewelry.
Further, even if we were to assume some suggestiveness of the
mark, and therefore a more limited scope of protection, the

11 It appears that applicant contends that the absence of evidence of
fame of the registrant’s mark should be treated as a factor in
applicant’s favor. Because this is an ex parte proceeding, we would
not expect the examining attorney to submit evidence of fame of the
cited mark. This du Pont factor, as is normally the case in ex parte
proceedings, must be treated as neutral.

Ser. No. 78334625
16
protection to be accorded the cited registration still would
extend to prevent the registration of a mark with the same
connotation for closely related goods.12
We realize that the similarity of connotation of the marks,
in itself, is not determinative and that this factor must be
weighed against the dissimilarities in sound and appearance of
the marks and all the other relevant factors bearing on the
likelihood of confusion. See In re Sarkli, Ltd., supra.
However, when we consider the similarity in connotation of the
marks, together with the relative strength of the mark, the close
relationship of the goods and services and the inexpensive nature
of the goods and the impulse nature of their purchase, these
factors combine to outweigh the dissimilarities in the marks.
Thus, this case is distinguishable from the cases relied on
by applicant which found that the differences in the marks when
combined with other factors outweighed the similarity in
connotation. See, for example, Horn's Inc. v. Sanofi Beaute,
Inc., 963 F. Supp. 318, 43 USPQ 1008 (S.D.N.Y. 1997) (no

12 A mark that is only somewhat suggestive is entitled to greater
protection than a more highly suggestive mark. See, e.g., Andrew
Jergens Co. v. Sween Corp., 229 USPQ 394, 396 (TTAB 1986) ("'GENTLE
TOUCH,' while somewhat suggestive, must be considered a strong mark in
view of the absence of any evidence showing third-party uses of similar
marks in the same field"); In re Great Lakes Canning, Inc., 227 USPQ
483, 485 (TTAB 1985) ("the fact that a mark may be somewhat suggestive
does not mean that it is a 'weak' mark entitled to a limited scope of
protection"); and Husky Oil Co. of Delaware v. Huskie Freightways,
Inc., 176 USPQ 351 (TTAB 1972).

Ser. No. 78334625
17
likelihood of confusion between HERE & THERE for perfume and DECI
DELA for publishing fashion magazines and consulting services to
the fashion industry, based on the differences in the goods and
the sophistication of the purchasers); In re L'Oreal S.A., 222
USPQ 925 (TTAB 1984) (no likelihood of confusion between HAUTE
MODE for hair coloring cream shampoo, and HI-FASHION SAMPLER for
finger nail enamel, in view of the degree of suggestiveness of
the marks and the disparate nature of the goods); and In re Tia
Maria, Inc., supra (no likelihood of confusion between TIA MARIA
for restaurant services and AUNT MARY'S for canned fruits and
vegetables, finding that the mark would not be translated, but
rather would be accepted as it is, and in view of the differences
in the goods and services).
We note that applicant owned a prior registration, now
cancelled, for MARCHE NOIR for jewelry (Registration No. 2013903)
and that the Office allowed that registration to issue over the
now-cited registration for BLACK MARKET MINERALS. Applicant
argues that the Office has already decided that there is no
likelihood of confusion between these two marks and that it is
inappropriate to deny registration when registration was not
previously denied.
In connection with this point, applicant also contends that
there has been no actual confusion between MARCHE NOIR and the
cited mark despite contemporaneous use of these marks for fifteen
Ser. No. 78334625
18
years. Applicant maintains that if there had been any confusion,
registrant would have attempted to prevent the previous
registration of applicant’s mark or objected to its existence.
To support these contentions, applicant, Mark Thomas, states in a
declaration that he is not aware of any actual confusion. In
addition, Mr. Thomas sent letters to the holders of both cited
registrations inquiring as to whether the registrants were aware
of any actual confusion between their marks and applicant's mark,
and asking them to sign a sworn statement that they did not know
of any actual confusion and that they have no objection to
applicant's obtaining a registration. When applicant received no
response to those letters, applicant sent follow-up letters
stating that if he did not hear from the registrants within a
certain time he would assume that they had no objection to the
registration of applicant's mark.13
To begin with, the fact that the cited mark and MARCHE NOIR
at one time coexisted on the register does not prove that they
coexisted during that time without confusion in the marketplace.
Further, our determination of likelihood of confusion must be
based on the facts and record before us. We are not bound by the

13 Applicant's contention that the USPTO permitted Registration No.
2443749 of BLACK MARKET (stylized) for jewelry to coexist with these
other registrations is not accurate. The file for that registration
shows that both BLACK MARKET MINERALS and MARCHE NOIR were cited as
bars to registration of BLACK MARKET (stylized) in Class 14 for jewelry
and Class 35 for retail jewelry store services. As a result, the goods
Ser. No. 78334625
19
previous examining attorney's determination that applicant’s mark
was registrable, and we will not compound the problem of the
registration of a confusingly similar mark by permitting such a
mark to register again. See In re Nett Designs, 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (stating that "The Board
must decide each case on its own merits" and specifically noting
that "Even if some prior registrations had some characteristics
similar to Nett Designs' application, the PTO's allowance of such
prior registrations does not bind the Board or this court.").
See also In re Perez, 21 USPQ2d 1075, 1077 (TTAB 1991)("[W]e are,
of course, not bound by an Examining Attorney's prior
determination as to registrability"; refusal affirmed
notwithstanding that the conflicting registration had not been
cited against applicant's previous registration, now expired, of
the same mark for the same goods.)
Further, applicant's unsupported allegation of long,
contemporaneous use is of little persuasive value. Without
evidence of the nature and extent of both applicant's and
registrant's use of their respective marks, we cannot determine
whether a meaningful opportunity for actual confusion ever
existed. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768
(TTAB 1992). Cf. In re General Motors Corp., 23 USPQ2d 1465

in Class 14 and the word "jewelry" in Class 35 were deleted. The
registration has now been corrected to reflect this amendment.
Ser. No. 78334625
20
(TTAB 1992). Nor will we infer from registrants' failure to
respond to applicant's letters that registrants have consented to
registration or that registrants have no objection to the
registration of applicant's mark. The registrants clearly had no
obligation to respond to applicant's inquiries. Therefore, their
failure to respond does not support applicant's claim that they
have no objection.
Similarly, we cannot conclude that registrant had no
objection to applicant's earlier registration simply because
registrant failed to object to it. We are not privy to
registrant's reasons for not challenging the registration and we
will not speculate about them. We do, however, note that any
objections registrant may have had to applicant's earlier
registration were eliminated once the registration was cancelled.
For the reasons stated above, we find that a likelihood of
confusion exists between MARCHE NOIR for "jewelry" and BLACK
MARKET MINERALS for "retail jewelry and mineral store services."
Registration No. 2047169
We reach a different result as to the question of likelihood
of confusion with respect to the mark BLACK MARKET (stylized) for
"clothing for women, namely, dresses, pants, jackets, lingerie,
tops, skirts, and shorts."
The examining attorney argues that jewelry and clothing are
highly related goods and to support her position has made of
Ser. No. 78334625
21
record several use-based, third-party registrations covering, in
each instance, both types of goods. Third-party registrations,
while not evidence of use, may be used to show that the
respective goods are of a type which may emanate from the same
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
While jewelry may be related to clothing, the goods are
nevertheless specifically different. We cannot conclude on the
basis of the evidence of record that jewelry and clothing are so
closely related that, notwithstanding the differences in the
marks, purchasers would naturally expect these goods to emanate
from the same source. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993) ("The degree of 'relatedness'
must be viewed in the context of all the factors, in determining
whether the services are sufficiently related that a
reasonable consumer would be confused as to source or
sponsorship.").
Thus, although the marks have the same connotation, because
of the cumulative differences in the respective marks and the
goods offered thereunder, and the fact that the goods are not
closely related, we cannot find likelihood of confusion with
respect to this registration.14

14 In making this determination, however, we have given no probative
weight to applicant's evidence and arguments concerning the manner of
Ser. No. 78334625
22
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed as to Registration No.1709522 and
reversed as to Registration No. 2047169.

actual use of registrant's mark and applicant's contentions regarding
the connotation of registrant's mark based on that use. It is well
established that, in proceedings before the Board, as distinguished
from infringement proceedings before the court, the question of
likelihood of confusion must be decided on the basis of the mark as
shown in the registration, regardless of how the mark is actually used.
Kimberly-Clark Corp. v. H. Douglas Enterprises, 774 F.2d 1144, 227 USPQ
541 (Fed. Cir. 1985).