Meeshaa Inc., dba Diamond Essencev.Anaya Gems Inc.

Trademark Trial and Appeal Board

Jul 31, 2017

No. 91219631 (T.T.A.B. Jul. 31, 2017)

mbm Mailed: July 31, 2017

Opposition No. 91219631
Meeshaa Inc., dba Diamond Essence

v.
Anaya Gems Inc.

Before Bergsman, Gorowitz, and Hightower,
Administrative Trademark Judges.

By the Board:
This proceeding now comes before the Board for consideration of the motion of
Meeshaa Inc. dba Diamond Essence (“Opposer”) for summary judgment (filed
November 8, 2016) on its claim of likelihood of confusion asserted as ground for
opposing the registration of the involved application of Anaya Gems Inc.
(“Applicant”); and the cross-motion of Applicant for summary judgment (filed
December 19, 2016) on the same claim.1 Opposer filed a combined reply in support of
its motion for summary judgment and response to Applicant’s cross-motion for
summary judgment on May 19, 2017.

1 On April 19, 2017, the Board denied Opposer’s motion to strike Applicant’s untimely
combined response to Opposer’s motion for summary judgment and cross-motion and elected
to consider the motion on the merits.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91219631

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I. Background
Applicant seeks to register the mark DIAMOND ESSENCE, in standard
characters, for “diamond jewelry” in International Class 14.2
On November 24, 2014, Opposer filed a notice of opposition opposing registration
of Applicant’s DIAMOND ESSENCE mark on the ground of likelihood of confusion
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In support of its
claims, Opposer has pleaded common law rights in the mark DIAMOND ESSENCE
for “simulated diamonds and simulated diamond jewelry.” Notice of opposition ¶ 1.
In its answer, Applicant denies the salient allegations in the notice of oppostion.3

2 Serial No. 86293737, filed May 28, 2014, claiming January 1, 2013 as both the date of first
use and the date of first use in commerce. The word “Diamond” is disclaimed.
3 Applicant has also asserted the following affirmative defenses: (1) Opposer fails to state a
claim upon which relief may be granted; (2) Opposer’s claims are barred by laches,
acquiescence, waiver or estoppel; and (3) reservation of right to assert other defenses. The
Board has sua sponte reviewed Opposer’s pleading and finds that Opposer’s allegation
regarding its standing and its asserted claim of likelihood of confusion are sufficiently
pleaded. In view thereof, Applicant’s first affirmative defense is stricken from Applicant’s
answer with respect to the likelihood of confusion claim only. To the extent Opposer may
have intended to plead a claim of false suggestion of a connection under Section 2(a) of the
Trademark Act, however, Opposer has failed to adequately plead such a claim. See Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505,
508 (Fed. Cir. 1983); Petróleos Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1405 (TTAB 2010)
(citing Univ. of Notre Dame du Lac, 217 USPQ at 508-10); Buffet v. Chi-Chi’s, Inc., 226 USPQ
428, 429 (TTAB 1985). With respect to the affirmative defenses of laches, acquiescence,
waiver, and estoppel, Applicant fails to assert any facts to support these defenses.
Accordingly, Applicant’s second affirmative defense is stricken from its answer. See Fair
Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007). Moreover, the defenses
of laches and acquiescence are generally unavailable in opposition proceedings. See Barbara’s
Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292 n.14 (TTAB 2007); see also Nat’l Cable
Television Ass’n Inc. v. Am. Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed.
Cir. 1991). Applicant’s third affirmative defense attempts to reserve the right to assert other
valid defenses in this proceeding. The Board finds that this is not an affirmative defense but
merely an advisory statement that Applicant may amend its pleading at some future date. A
defendant cannot reserve unidentified defenses since it does not provide a plaintiff fair notice
of such defenses. Thus, Applicant’s third affirmative defense is stricken from Applicant’s
answer.
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II. The Parties’ Cross-Motions for Summary Judgment
Opposer moves for summary judgment on its claim of likelihood of confusion. In
support of its motion for summary judgment, Opposer submitted the declaration of
Raja Shah, the Chief Executive Officer and Senior Cost Accountant of Opposer, who
introduces, inter alia, the following exhibits: (1) Opposer’s registration of an
alternative name with the State of New Jersey; (2) copies of mail order catalogs; (3)
copies of invoices; (3) images of jewelry boxes bearing the DIAMOND ESSENCE
mark; (4) copies of packing slips; (5) screenshots of videos available on YouTube.com;
(6) printouts of email advertisements; (6) notes related to customer inquiries; and (7)
a printout of a customer email.
Opposer also submits the declaration of Bruce L. Adams, counsel for Opposer,
who introduces, inter alia, the following exhibits: (1) Applicant’s amended responses
to Opposer’s First Set of Requests for Admission; and (2) Applicant’s supplemental
responses to Opposer’s First Set of Interrogatories.
Applicant did not submit any evidence in support of its response and cross-motion
for summary judgment.
For purposes of this order, we presume the parties’ familiarity with the pleadings,
the history of the proceedings and the arguments and evidence submitted with
respect to Opposer’s motion for summary judgment.
A. Summary Judgment Standard
Summary judgment is appropriate where the movant shows that there is no
genuine dispute as to any material fact and that it is entitled to judgment as a matter
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of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely
disputed must support its assertion by either (1) citing to particular parts of materials
in the record, or (2) showing that the materials cited do not establish the absence or
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c).
A movant for summary judgment carries the burden of proof in regard to its
motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the
motion, the function of the Board is not to try issues of fact, but to determine if there
are any genuine disputes of material fact to be tried. See TBMP § 529.01 (June 2017)
and cases cited therein. When the moving party has supported its motion with
sufficient evidence that, if unopposed, indicates there is no genuine dispute of
material fact and that the moving party is entitled to judgment as a matter of law,
the burden then shifts to the non-moving party to demonstrate the existence of a
genuine dispute of material fact to be resolved at trial. Enbridge, Inc. v. Excelerate
Energy LP, 92 USPQ2d 1537, 1540 (TTAB 2009). Further, merely because both
parties have moved for summary judgment does not necessarily mean that there are
no genuine disputes of material fact, and does not dictate that judgment should be
entered. See Univ. Book Store v. Univ. of Wis. Bd. of Regents, 33 USPQ2d 1385, 1389
(TTAB 1994).
The nonmoving party must be given the benefit of all reasonable doubt as to
whether genuine issues of material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed facts, must be viewed
Opposition No. 91219631

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in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great
Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).
B. Decision
Opposer moves for summary judgment on the ground that Opposer has priority
and that there is a likelihood of confusion as to Opposer’s and Applicant’s marks when
used in connection with the identified goods. Opposer argues that it has prior rights
based on its first use in commerce of the DIAMOND ESSENCE mark in connection
with simulated diamond jewelry as of October 22, 2009, which predates both the filing
date of Applicant’s involved application and Applicant’s claimed date of first use.
Opposer also argues that the marks are identical, the goods are closely related, if not
identical, and that there have been instances of actual confusion.
Applicant contests Opposer’s alleged priority in the DIAMOND ESSENCE mark
and argues, inter alia, that the parties’ goods are sold through different channels of
trade. Applicant further contends that there has been no actual confusion or,
alternatively, that the parties’ marks coexisted for several years without
encountering or causing confusion.
To prevail on its claim of likelihood of confusion, Opposer must establish that
there is no genuine dispute of material fact that it has standing to maintain this
proceeding, that it has priority of use, and that contemporaneous use of the parties’
marks on their respective goods would be likely to cause confusion, mistake, or to
deceive consumers. See Trademark Act Section 2(d); Hornblower & Weeks, Inc. v.
Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). Similarly, to prevail
Opposition No. 91219631

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on summary judgment, Applicant must establish that there is no genuine dispute of
material fact that Opposer does not have standing to maintain this proceeding,
Opposer is not the prior user of its pleaded mark, or contemporaneous use of the
parties’ respective marks on their respective goods would not be likely to cause
confusion, mistake or to deceive consumers. See id.
1. Standing
We first consider whether Opposer has standing to bring this opposition
proceeding. Standing is a threshold issue that must be proven by a plaintiff in every
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc.,
94 USPQ2d 1942, 1945 (TTAB 2010). A plaintiff must have a “real interest” in the
outcome of the proceeding and a “reasonable basis” for its belief of damage. See
Empresa Cubana del Tabaco, 111 USPQ2d at 1062 (citing Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)); Universal Oil Prods. Co. v.
Rexall Drug & Co., 463 F.2d 1122, 1123, 174 USPQ 458, 459 (CCPA 1972).
In support of its standing, Applicant has pleaded use of the mark
DIAMOND ESSENCE in connection with simulated diamonds and simulated
diamond jewelry. Notice of opposition ¶ 1. Here, because Opposer has not pleaded or
submitted evidence of any trademark registrations, Opposer must rely on common
law rights to prove standing. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020,
1022 (TTAB 2009). The Shah declaration states that Opposer has been offering
simulated diamond jewelry items under the DIAMOND ESSENCE mark since at
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least as early as October 22, 2009. The Shah declaration, combined with Opposer’s
evidence of use of Opposer’s DIAMOND ESSENCE mark, is sufficient to support
Opposer’s allegations of a reasonable belief that it would be damaged by registration
of Applicant’s mark. See Giersch, 90 USPQ2d at 1022. Moreover, Applicant has not
challenged Opposer’s standing. Accordingly, we find that there is no genuine dispute
of material fact regarding Opposer’s standing to bring this proceeding.
2. Priority
We turn next to the issue of whether there is a genuine dispute of material fact
regarding Opposer’s asserted priority of use. Because Opposer is relying upon
common law rights in the DIAMOND ESSENCE mark, priority is an issue in this
case.
As noted in the preceding section, Opposer has introduced evidence that it has
used the DIAMOND ESSENCE mark since at least as early as October 22, 2009. In
response to Opposer’s First Set of Interrogatories, Applicant identifies November 21,
2011 as the date of its first use of its mark in commerce (25 TTABVUE 323), which
precedes the filing date of its application, May 28, 2014. For purposes of deciding
these motions, we accept November 21, 2011 as Applicant’s date of first use.4
Upon a careful review of the parties’ arguments and the evidence submitted by
Opposer, we find that there is no genuine dispute that Opposer’s first use of the
DIAMOND ESSENCE mark precedes both Applicant’s first use and filing dates.

4 In an unsupported argument in its brief, Applicant states that “[a]fter months and months
of discussions, planning, and preliminary art work, [Applicant] received its first order from
Kohl’s for Diamond Essence products on October 22, 2011.” 28 TTABVUE 6. Even if we were
to accept the October 22, 2011 date, it would not change the result herein.
Opposition No. 91219631

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Mr. Shah states in his declaration that Opposer has been using the mark
DIAMOND ESSENCE in connection with the sale and repair of jewelry items
continuously since October 2009. 25 TTABVUE 22. Opposer also submitted a copy of
an invoice dated October 22, 2009, which includes the following design in the top left
corner:

Id. at 254. Mr. Shah attaches other examples of invoices also bearing the DIAMOND
ESSENCE mark dated October 23, 24, 25, and 27, 2009. Id. at 256-59. Mr. Shah’s
declaration provides that the items listed in the invoices were simulated diamond
jewelry products that were all shipped in commerce in boxes bearing the DIAMOND
ESSENCE mark and containing packing slips also bearing the DIAMOND ESSENCE
mark. Id. at 23.
The Shah declaration also provides that Opposer has advertised its DIAMOND
ESSENCE brand jewelry products through mail order catalogs and attaches
examples of catalogs marked with the following dates: “2010-11,” “Winter 2011,”
“Winter 2012,” “2013-2014,” “2014-2015,” and “2015-2016.” Id. at 30-252. Mr. Shah’s
declaration attached to its combined reply brief and brief in response to Applicant’s
cross-motion for summary judgment states that the mail order catalog dated 2010-11
was distributed in or around December 2010. 34 TTABVUE 19. The Shah declaration
in support of Opposer’s combined reply and response to Applicant’s cross-motion also
states that an item listed in the October 22, 2009 invoice (product number VRD132)
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matches an item of jewelry in the 2010-11 catalog. Id. at 20. Mr. Shah also avers that
Opposer has advertised its jewelry products under the DIAMOND ESSENCE mark
through YouTube since 2009 and provides estimated advertising costs from 2010
through 2015 and product sales of its goods from 2009 through 2015. 25 TTABVUE
22-23.
Applicant contends that Opposer has not established October 2009 as its date of
first use, because “[Opposer] cannot provide any credible evidence that it has
promoted, let alone sold, through any method other than mail order catalogs, of which
the earliest provided has no proof of being mailed, no date of printing, and no date of
publication beyond ‘10-11.’” 28 TTABVUE 6. Opposer’s documentary evidence is
supported by the declaration of Mr. Shah, however, which is clear and uncontradicted
by Applicant. See Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305,
316 (TTAB 1979) (oral testimony may be sufficient to establish both prior use and
continuous use when the testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent, and sufficiently
circumstantial to convince the Board of its probative value); GAF Corp. v. Anatox
Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may
establish prior use when the testimony is clear, consistent, convincing, and
uncontradicted); see also Weatherford/Lamb, Inc. v. C&J Energy Services, Inc., 96
USPQ2d 1834 (TTAB 2010) (finding cumulative evidence of declarations with
attached exhibits sufficient to establish priority on summary judgment); Interfax Inc.
v. Searchcraft Inc., 21 USPQ2d 1553 (TTAB 1991) (finding affidavits and supporting
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evidence sufficient to establish priority on summary judgment). Applicant does not
offer evidence to contradict the declaration of Mr. Shah, who provides that Opposer
did offer, advertise, and sell simulated diamond jewelry items in boxes labeled with
the DIAMOND ESSENCE mark as early as October 22, 2009.5 Here, the
documentary evidence coupled with the Shah declaration establishes that the
DIAMOND ESSENCE mark was used on simulated diamond jewelry goods or their
containers and sold as of October 22, 2009.
In view of the foregoing, there is no genuine dispute as to the material fact that
Opposer has priority with respect to its DIAMOND ESSENCE mark as used in
connection with simulated diamond jewelry. Accordingly, Opposer’s motion for
summary judgment is GRANTED with respect to Opposer’s priority. Applicant’s
cross-motion for summary judgment is DENIED with respect to Opposer’s priority.
3. Likelihood of Confusion
Turning to the likelihood of confusion analysis, we are guided by the factors set
forth in E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1893). It is not required that every du Pont factor be considered but only “those factors
that are of record.” See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78
USPQ2d 1944, 1948 (Fed. Cir. 2006). Two key considerations are the similarities
between the marks and the similarities between the goods. Federated Foods, Inc. v.

5 Applicant’s arguments that the evidence submitted is insufficient because it does not show
use of the mark on the goods themselves is unavailing. A mark is used in commerce on goods
when “it is placed in any manner on the goods or their containers” and “the goods are sold or
transported in commerce.” Trademark Act Section 45, 15 U.S.C. § 1127; see also Trademark
Rule 2.56(b), 37 C.F.R. § 2.56(b) (“A trademark specimen is a label, tag, or container for the
goods, or a display associated with the goods.”).
Opposition No. 91219631

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Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); Fram Trak
Industries, Inc. v. Wiretracks LLC, 77 USPQ2d 2000, 2005 (TTAB 2006).
Upon careful consideration of the parties’ arguments and evidence, and drawing
all inferences with respect to each motion in favor of each nonmoving party, we find
that neither Applicant nor Opposer has demonstrated the absence of a genuine
dispute of material fact for trial with respect to the likelihood of confusion claim and
that neither is entitled to summary judgment under applicable law.
Based on the present record, we find, at a minimum, that a genuine dispute of
material fact exists as to the relatedness of the goods offered in connection with the
parties’ respective marks for likelihood of confusion purposes.6 Accordingly, Opposer’s
motion and Applicant’s cross-motion are DENIED with respect to the likelihood of
confusion claim.7
III. Accelerated Case Resolution
The legal issues presented in this proceeding appear to be limited and the parties
are well-acquainted with the relevant facts. Accordingly, the Board strongly suggests
that the parties stipulate to resolution of this proceeding by means of the Board’s
accelerated case resolution (“ACR”) procedure.8 This may take the form of Petitioner’s

6 The fact that we have identified and discussed this genuine issue of material fact as
sufficient bases for denying the motion for summary judgment should not be construed as a
finding that these are necessarily the only issues that remain for trial.
7 Because we deny the cross-motions for summary judgment on the issue of likelihood of
confusion, we need not reach the evidentiary objections raised by Applicant regarding
Opposer’s evidence submitted in support of its motion for summary judgment that purports
to show instances of actual confusion.
8 However, absent such an agreement, the parties should note that the evidence submitted
in connection with a motion for summary judgment or opposition thereto is of record only for
consideration of that motion. Any such evidence to be considered at final hearing must be
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motion for summary judgment, and the evidence submitted therewith, with or
without supplementation. See, e.g., Freeman v. Nat’l Ass’n of Realtors, 64 USPQ2d
1700 (TTAB 2002) (parties agreed that evidence and arguments submitted with
Opposer’s motion for summary judgment and Applicant’s response could be treated
as the final record and briefs); see also TBMP § 528.05(a)(2) (June 2017) and
authorities cited therein. In the event the parties agree to ACR using summary
judgment briefs and incorporating the current evidence, including any
supplementation of evidence they may agree would be appropriate, they will need to
stipulate that the Board may determine any genuine disputes of material fact the
Board may find to exist. See TBMP § 702.04 (June 2017) for more information.
The parties are therefore encouraged, within fifteen (15) days of the mailing
date of this order, to jointly contact the Board’s interlocutory attorney responsible for
this proceeding by telephone to discuss the possibility of ACR, any necessary or
desired stipulations, and an agreed schedule for proceeding under ACR.
If the parties decide not to proceed via ACR the proceeding will continue on the
schedule as set below.
IV. Trial Schedule
Proceedings herein are resumed. Remaining trial dates are reset as follows: 9

properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co.
v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ
911 (TTAB 1983). The parties may, however, stipulate that any or all of the summary
judgment evidence be treated as properly of record for purposes of final decision. See, e.g.,
Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998).
9 Insofar as Opposer’s motion for summary judgment was filed after the deadline for
Opposer’s pretrial disclosures, the Board presumes that Opposer served its pretrial
disclosures. Opposer is reminded that it has an ongoing duty to supplement and/or correct
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Plaintiff's 30-day Trial Period Ends September 7, 2017
Defendant's Pretrial Disclosures Due September 22, 2017
Defendant's 30-day Trial Period Ends November 6, 2017
Plaintiff's Rebuttal Disclosures Due November 21, 2017
Plaintiff's 15-day Rebuttal Period Ends December 21, 2017
BRIEFS SHALL BE DUE AS FOLLOWS:
Plaintiff's Main Brief Due February 19, 2018
Defendant's Main Brief Due March 21, 2018
Plaintiff's Reply Brief Due April 5, 2018

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).

the pretrial disclosures in a timely manner, as needed. See Fed. R. Civ. P. 26(e). Effective
January 14, 2017, Trademark Rule 2.127 was revised to require that a motion for summary
judgment be filed before the day of the deadline for pretrial disclosures for the first testimony
period, as originally set or as reset. In view thereof, any additional motions for summary
judgment in this proceeding would be untimely.