Paj, Inc.

Trademark Trial and Appeal Board

Mar 7, 2001

No. 75438388 (T.T.A.B. Mar. 7, 2001)

03/07/01 Paper No. 12
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Paj, Inc.
________
Serial No. 75/438,388
_______
Henry L. Ehrlich of Winstead Sechrest & Minick P.C. for Paj, Inc.
Daniel P. Vavonese, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
_______
Before Cissel, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Paj, Inc. to register
the mark "DIAMONDLITE" for "jewelry."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant's mark, when used on or in connection with
its goods, is deceptively misdescriptive of "jewelry" which is
not made in whole or in substantial part of diamonds.
Registration also has been finally refused under Section 2(a) of
1 Ser. No. 75/438,388, filed on February 23, 1998, which is based on an
alleged bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/438,388
2
the Trademark Act, 15 U.S.C. §1052(a), on the basis that
applicant's mark comprises matter which is deceptive of the
material content of "jewelry" which is not made in whole or in
substantial part of diamonds.2
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusals to
register.
Both applicant and the Examining Attorney agree as to
the proper standards for determining whether a mark is
deceptively misdescriptive under Section 2(e)(1) and whether it
is deceptive within the meaning of Section 2(a). Specifically,
as set forth in, for example, In re Quady Winery Inc., 221 USPQ
1213, 1214 (TTAB 1984), a mark is deceptively misdescriptive if
the following two-part test is met: (1) does the mark
misdescribe the goods or services; and (2) are consumers likely
to believe the misrepresentation? A mark satisfying such
criteria is additionally considered to be deceptive if the
misrepresentation would be a material factor in the purchasing
decision. Id. Thus, as set forth in the leading case of In re
Budge Manufacturing Co. Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260
2 Although the Examining Attorney additionally made final a
"requirement for an amendment ... to specify that the goods are made
in whole or in substantial part of diamonds," no further mention of
such requirement has been made on appeal and, in view thereof, we
consider the requirement to have been waived.
3 While applicant, with its reply brief, has submitted as exhibits
excerpts from two websites, such evidence, which was not previously
made of record, is clearly untimely under Trademark Rule 2.142(d) and
is not proper subject matter for judicial notice. Although no further
consideration will accordingly be given thereto, it is nevertheless
pointed out that, even if such evidence were to be considered, it
would make no difference in the outcome of this appeal.
Ser. No. 75/438,388
3
(Fed. Cir. 1988), a mark must meet the following three-prong test
to be adjudged deceptive:
(1) Is the term misdescriptive of the
character, quality, function, composition or
use of the goods [or services]?
(2) If so, are prospective purchasers
likely to believe that the misdescription
actually describes the goods [or services]?
(3) If so, is the misdescription likely
to affect the decision to purchase?
Provided that the United States Patent and Trademark Office puts
forth sufficient evidence to establish prima facie that each of
the above elements is met, a mark is deceptive and hence is
unregistrable under Section 2(a). Id. at 1261.
Turning first to the refusal on the basis of deceptive
misdescriptiveness, applicant argues that the misdescriptiveness
of a term in a mark "may be negated by its meaning in the context
of the whole mark inasmuch as the combination is seen together
and makes a unitary impression." Here, while admitting that the
term "DIAMOND" in its mark is misdescriptive of jewelry which is
not made in whole or in substantial part of diamonds, applicant
contends that its "composite mark DIAMONDLITE is not deceptively
misdescriptive[,] but is suggestive of jewelry that is light
('lite') of diamonds and that may include imitation diamonds."
Applicant, in this regard, maintains in particular
that:4
4 Notwithstanding that applicant has neglected to make of record a copy
of any of the dictionary definitions of "light" which it refers to in
its main brief in support of its argument, we have considered such
definitions inasmuch as it is settled that the Board may properly take
judicial notice of dictionary definitions. See, e.g., University of
Ser. No. 75/438,388
4
In refusing registration, the Examining
Attorney concentrated only on "diamond" and
neglected to consider the composite mark of
DIAMONDLITE. Applicant concedes that the
word "diamond" alone would be misdescriptive
of jewelry if the jewelry did not include
actual diamonds. However, the coined,
composite mark DIAMONDLITE, not DIAMOND, is
sought to be registered. Therefore it is the
impression of the mark DIAMONDLITE as a whole
that must be considered. .... The composite
mark DIAMONDLITE immediately suggests to
consumers that the jewelry that it is
associated with lacks, or is "light of[,]"
diamonds. It is this impression on the
consumer that is paramount in determining
whether the composite mark is deceptively
misdescriptive ....
"Lite" is a qualitative term that has
become pervasive in American culture to
indicate "less," for example, lite beer or
lite food. The etymology is from "light,"
which is defined as "containing less than the
legal, standard, or usual weight," "of little
importance," and "made with a lower calorie
content or with less of some ingredient."
Collegiate Dictionary, Merriam-Webster 2000.
The term "LITE" has become so pervasive in
society that it is denoted in dictionaries.
"Lite ... having less substance or weight or
fewer calories than something else: 'Lite
music, shimmering on the surface and squishy
soft at the core' Mother Jones." The
American Heritage Dictionary of the English
Language, Third Edition, 1996 .... "Lite ...
containing less fat or sugar than similar
types of food and therefore less likely to
make you increase your weight."
International Dictionary of English, ...
2000. Although these samples are now
included in dictionaries, it is clear that
the connotation of the word "lite" is a
qualifying term representing "less" with
regard to food and drink.
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983); and Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953).
Ser. No. 75/438,388
5
The combination of "lite" with "diamond"
to form the composite mark DIAMONDLITE is a
unique combination. It is suggestive to
consumers that, consistent with public
knowledge and expression, an article might be
less than full diamond quality.
Applicant also asserts that, as a matter of fairness or
equity, its mark "is suited for registration" because, as shown
by the copies which it has made of record, there are 15 third-
party registrations on the Principal Register for marks which
contain the word "DIAMOND" and which list goods variously set
forth as "jewelry", "jewelry ... with or without precious, semi-
precious, simulated or synthetic stones," and "jewelry--namely,
cubic zirconia simulated diamonds ...." According to applicant,
"[t]hese examples clearly indicate" that, likewise, its mark
"should be registered on the [P]rincipal [R]egister" because
"DIAMONDLITE as a composite mark is not deceptively
misdescriptive[,] but is suggestive of a source of jewelry that
may exclude diamonds or may include imitation diamonds."
The Examining Attorney, on the other hand, argues that
notwithstanding the third-party registrations, applicant's mark
must still be regarded as deceptively misdescriptive. Citing In
re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986), in which the Board
held the mark "SILKEASE" to be deceptively misdescriptive of
women's blouses and ladies' dresses made of polyester crepe de
chine rather than silk, the Examining Attorney correctly notes
that prior third-party registrations are of no avail since, as
stated by the Board therein: "[E]ven if the Office has--perhaps
improvidently--, issued registrations of marks containing the
Ser. No. 75/438,388
6
term 'silk' for goods not made of silk in circumstances like
those presented here, we are not bound by those actions if we
believe that registration in the case before us would be contrary
to the statute." Moreover, citing In re Scholastic Testing
Service, Inc., 196 USPQ 517, 519 (TTAB 1977), the Examining
Attorney correctly points out that third-party registrations are
not conclusive on the issue of the propriety of registration and
that, instead, each case must be decided on its own merits.
Consequently, a mark which is merely descriptive or deceptively
misdescriptive should not be registered simply because other such
marks appear on the register. Id.
As to applicant's contention that the addition of the
term "LITE" to the word "DIAMOND" is sufficient to create a mark
which is not deceptively misdescriptive of jewelry not made in
whole or in substantial part of diamonds, the Examining Attorney
argues that the admittedly misdescriptive word "DIAMOND" still
predominates in applicant's "DIAMONDLITE" mark "and is the first
thing consumers will notice in making their determination about
the applicant's jewelry. Similar marks, in which another term
has been added to a misdescriptive term, have been held to be
deceptively misdescriptive, the Examining Attorney accurately
observes, citing inter alia R. Neumann & Co. v. Bon-Ton Auto
Upholstery, Inc., 140 USPQ 245, 247 (CCPA 1964) [mark "VYNAHYDE"
for plastic film and plastic film made into furniture slip
covers]; and In re Shapely, Inc., supra.
With respect to the term "LITE" as assertedly meaning
"less" in contemporary American culture, we judicially notice, as
Ser. No. 75/438,388
7
requested by the Examining Attorney in his brief, that in The
American Heritage Dictionary of the English Language (3rd ed.
1992), "'[l]ite' is defined as 'having less substance or weight
or fewer calories than something else,' whereas 'less' is defined
as 'not as great in amount or quantity.'" In view thereof, the
Examining Attorney maintains that:
The above stated definition merely indicates
that lite identifies an item that has less of
a feature than another item. The applicant's
argument regarding the meaning of lite in
American culture is also restricted to
identifying products with less of something,
such as lite beer and lite food. .... It
appears evident, however, that "lite" does
not mean that a product is completely lacking
in or devoid of the named feature.
Therefore, the applicant's argument that
consumers will view DIAMONDLITE as suggesting
that its goods do not have diamonds or
contain imitation diamonds is contrary to the
understood meaning of the word LITE. When
viewed in the context of the applicant's
mark, DIAMONDLITE, consumers may assume that
the applicant's jewelry has less of a certain
quality of diamonds, such as less color,
lower clarity, or lower weight, but will
still likely believe that the goods contain
real diamonds.
Based on the applicant's identification
of [its goods as] "jewelry," the applicant
seeks protection for all types of jewelry,
including jewelry that does not contain real
diamonds but instead contains fake or
imitation diamonds. Since the composite mark
DIAMONDLITE is likely to give the impression
that the applicant's jewelry contains
diamonds, the proposed mark misdescribes any
goods produced by the applicant which do not
include diamonds.
Referring to the excerpt of record from An Illustrated
Dictionary of Jewelry (1981) at 96, which among other things
defines "diamond" as "a PRECIOUS STONE that is pure native
Ser. No. 75/438,388
8
crystallized carbon, highly valued, especially when free from
FLAWS and cut into various forms with differently shaped FACETS
of variable numbers and positions ... and consequently showing
great BRILLIANCE and prismatic colours (see FIRE)" and which
mentions that "certain ... SYNTHETIC GEMSTONES" imitate the
diamond" while "PASTE and STRASS have also been made into stones
as cheap substitutes for a diamond," the Examining Attorney
concludes that:
Consumers are likely to believe the
misrepresentation and assume that the
applicant's goods contain real diamonds.
.... See ... the dictionary definition from
An Illustrated Dictionary of Jewelry 96
(1981), which describes a diamond as "highly
valued" and identifies some of the imitations
and deceptive substitutes for real diamonds
that exist in the industry.
As stated previously, the proposed mark
DIAMONDLITE may give an impression that its
jewelry contains less of a certain feature of
diamonds. The value of a diamond depends on
size, color, flaws, and quality of cutting.
An Illustrated Dictionary of Jewelry 96
(1981). Considering the high price for
diamonds, consumers may assume that the
applicant produces lower valued diamond
jewelry which is not of the highest quality,
but still is a real diamond nevertheless.
Therefore, when the proposed mark DIAMONDLITE
is used in connection with jewelry that
contains imitation or fake diamonds,
consumers are likely to believe that the
goods do in fact contain real diamonds.
We agree with the Examining Attorney that, when used in
connection with jewelry which does not consist in whole or in
substantial part of diamonds, the mark "DIAMONDLITE" is
deceptively misdescriptive of such goods. It is clear from the
record that, in this regard, the word "diamond" per se is
Ser. No. 75/438,388
9
commonly understood in connection with jewelry as designating
only a real or genuine gemstone made of pure crystallized carbon
rather than a synthetic or imitation product. Applicant's
arguments, like those of the Examining Attorney, assume such and,
in addition to definition noted above from An Illustrated
Dictionary of Jewelry, the record contains an excerpt from the
Jewelers' Dictionary (3rd ed. 1976) at 63 which defines "diamond"
as meaning "[a] mineral composed of pure carbon, the hardest of
all known substances and a valued gem, found in many colors. It
crystallizes in the cubic system, has a refractive index of 2.42
and strong dispersion." Accordingly, to jewelers and consumers
alike, the word "diamond" denotes the actual gemstone, rather
than a fake one, so that the issue of whether applicant's mark is
deceptively misdescriptive of its goods concerns what affect, if
any, the addition of the term "lite" has on the significance of
the word "diamond" when the designation "DIAMONDLITE" is
considered as a whole.
As to the term "light" and its phonetic equivalent
"lite," we judicially notice in this respect that, in addition to
the definitions previously mentioned, The Random House Dictionary
of the English Language (2d ed. 1987) at 1112 defines "light" as
a noun meaning, inter alia, "5. the radiance or illumination from
a particular source" and as an adjective signifying, among other
things, "1. of little weight; not heavy .... 2. of little weight
in proportion to bulk; of low specific gravity .... 3. of less
than the usual or average weight .... 4. weighing less than the
proper or standard amount .... 5. Of small amount, force,
Ser. No. 75/438,388
10
intensity, etc. .... 12. low in any substance, as sugar, starch,
or tars, that is considered harmful or undesirable .... 13. (of
alcoholic beverages) a. not heavy or strong .... b. (esp. of
beer and wine) having fewer calories and usually a lower alcohol
content than the standard product. .... 16. slender or delicate
in form or appearance ...."5
While any number of the foregoing definitions arguably
could have significance with respect to applicant's goods when
the term "lite" is combined with the word "diamond" to form the
mark "DIAMONDLITE," it is unlikely that consumers, as urged by
applicant, would regard its jewelry as being "light ('lite') of
diamonds and that [the goods] may include imitation diamonds,"
especially when the term "lite" or "light," which is generally
applied to foods and beverages, is typically used to signify that
a product contains less of a harmful or undesirable substance.
Clearly, purchasers would not consider diamonds to be a harmful
or undesirable property of jewelry and would not, therefore, view
the mark "DIAMONDLITE" as being suggestive of articles which lack
real diamonds or contain synthetic substitutes. Moreover, even
if such mark might signify to consumers that applicant's jewelry
is "light ('lite') of diamonds," in the sense that such goods
"might be less than full diamond quality" in that the diamonds
5 To the same effect, Webster's Third New International Dictionary
(1993) at 1308 lists the word "light" as a noun connoting "1 ... b :
the sensation aroused by stimulation of the visual pathways :
BRIGHTNESS, LUMINOSITY ..." and as an adjective which variously means
"1 a : having little weight : not heavy ... b : less heavy than others
of its kind ... d : being of small specific gravity : having
relatively little weight in proportion to bulk ... 10 of a beverage a
: having a comparatively low alcoholic content ... 17 : not heavy or
massive in construction or appearance ...."
Ser. No. 75/438,388
11
therein are of lesser value in terms of, for instance, clarity,
color, cut and/or carats, the fact remains that the mark still
connotes, as the Examining Attorney points out, that the jewelry
sold thereunder contains genuine diamonds, even if of lesser
quality. Thus, when used in connection with jewelry not made in
whole or in substantial part of diamonds, the mark "DIAMONDLITE"
is misdescriptive in that it denotes jewelry which, while perhaps
not containing high quality diamonds, still contains genuine
diamonds, even if such are of a lesser quality or value. Since
consumers would be likely to believe such misrepresentation,
particularly in light of the variety of available diamond
substitutes for use in jewelry, the mark "DIAMONDLITE" is
deceptively misdescriptive of applicant's goods which are not
made entirely or in substantial part of diamonds. See, e.g., R.
Neumann & Co. v. Bon-Ton Auto Upholstery, Inc., supra; and In re
Shapely, Inc., supra.
With respect to the additional ground that applicant's
mark is deceptive of the material content of jewelry which is not
manufactured in whole or in substantial part of diamonds, both
applicant and the Examining Attorney essentially reassert their
positions as to whether the first two prongs of the test for
deceptiveness, which also form the test for whether a mark is
deceptively misdescriptive, are met. However, since the mark
"DIAMONDLITE," for the reasons just discussed, has been found to
be deceptively misdescriptive of applicant's goods, in this case
it is the third element of the test for deceptiveness, namely,
Ser. No. 75/438,388
12
whether the diamond content of jewelry is a material factor
inasmuch as the presence or absence thereof is likely to affect
or influence the decision to purchase such goods, which is
determinative of the issue of deceptiveness. Applicant contends
that its mark is not deceptive because the Examining Attorney has
"incorrectly based his refusal of registration upon the existence
of some fraud elsewhere in the market," as mentioned in reports
of various deceptive trade practices contained in the "NEXIS"
excerpts made of record by the Examining Attorney, "and [upon] a
misrepresentation of a Federal Trade Commission regulation,"
which the Examining Attorney also made of record.
In particular, as to the evidence offered with respect
to the issue of materiality, applicant insists that:
The Examining Attorney bases his
conclusion as to deception on NEXIS articles
which indicate that there are individuals
who, [among other things,] misstate the
quality of diamonds, fill cracks in the gems,
and pawn off imitation diamonds as natural
diamond[s]. The Examining Attorney's broad
jump from "diamond" to DIAMONDLITE shows a
lack of faith in Applicant and consumers as a
group. ....
The Examining Attorney takes a further
leap, concluding that DIAMONDLITE is
deceptive based on a Federal Trade Commission
regulation, 16 C.F.R. §23.11, which sets out,
in part:
(a) A diamond is a natural mineral
consisting essentially of pure carbon
crystallized in the isometric system.
It is found in many colors. Its
hardness is 10; its specific gravity is
approximately 3.52; and it has a
refractive index of 2.42.
(b) It is unfair or deceptive to use
the unqualified word "diamond" to
Ser. No. 75/438,388
13
describe or identify any object or
product not meeting the requirements
specified in the definition of diamond
provided above, or which, though meeting
such requirements, has not been
symmetrically fashioned with at least
seventeen (17) polished facets.
(emphasis added).
Based on the FTC regulation the Examining
Attorney states, [in his final refusal, that]
"[t]he Federal Trade Commission has
determined that it is deceptive to use the
word DIAMOND on objects which do not meet the
definition of a diamond." .... The
Examining Attorney neglected to observe that
the regulation refers only to the
"unqualified word 'diamond'." In the present
case Applicant is not seeking registration of
the unqualified word "diamond" to describe a
source of jewelry. Applicant seeks the
registration of the composite mark
DIAMONDLITE, which includes the qualifying
word "lite." ....
Applicant consequently urges, in essence, that the Examining
Attorney's evidence is inapposite and, hence, is insufficient to
establish that the presence or absence of diamond content in an
item of jewelry is a material factor in the decision to buy such
a product. Moreover, according to applicant, "[i]f there is any
affect on the decision to purchase goods provided by [applicant
under the mark] DIAMONDLITE[,] it will be to purchase goods which
are affordable and 'light of' diamonds."
The Examining Attorney, citing In re Intex Plastics
Corp., 215 USPQ 1045 (TTAB 1982), for the valid proposition that
"[d]eceptive marks may include marks which falsely describe the
material content of a product," argues that the evidence made of
record suffices to demonstrate the materiality of diamond content
in a consumer's decision to purchase a piece of jewelry.
Ser. No. 75/438,388
14
Specifically, "[r]egarding the third element [of the test for
whether a mark is deceptive], the examining attorney contends
that the misdescription with respect to the material content of
the goods is likely to affect the decision to purchase," pointing
out that "[t]he Federal Trade Commission has passed guidelines
for the jewelry industry concerning the deceptive use of the word
'diamond' which have been codified in the Code of Federal
Regulations at 16 C.F.R. §23.11." According to the Examining
Attorney:
The applicant contends that the cited
FTC regulation is inapplicable in this case
because its mark is not "unqualified" but
instead is qualified by the word LITE. This
regulation is still instructive, since it is
evident that the FTC found deception in the
diamond industry to be such an important
issue that it passed guidelines regarding
misuse of the word "diamond." In a similar
case, the Court of Customs and Patent Appeals
held that the mark VYNAHYDE was deceptive ...
for plastic film for furniture slip covers.
R. Neumann & Co. v. Bon-Ton Auto Upholstery,
Inc., 140 USPQ 245 (CCPA 1964). The court
referred to the guidelines of the Federal
Trade Commission which condemned trademarks
that include[d] the term "hide" or "hyde" for
nonleather products. Id. at 247. It is
noted that the current relevant section
regarding the term "hide," 16 C.F.R. Section
24.2, uses the same preliminary language as
16 C.F.R. [Section] 23.11, namely, that it is
"unfair or deceptive to use the unqualified
term 'leather' or other unqualified terms
suggestive of leather ...."
As to the remaining evidence, the Examining Attorney
asserts that:
A search of the NEXIS database reveals that
deception is used in the diamond industry to
sell imitation diamonds as the real thing,
and that consumers have believed the
misrepresentation. .... See also the
Ser. No. 75/438,388
15
dictionary definition from An Illustrated
Dictionary of Jewelry 96 (1981), which
describes a diamond as "highly valued" and
identifies some of the imitations and
deceptive substitutes for real diamonds that
exist in the industry. Since a diamond is
such a highly valued gem, consumers who
mistakenly believe that the applicant's
jewelry contains diamonds are likely to
purchase the goods based on that
misdescription.
Such materiality, the Examining Attorney maintains, is not
negated by applicant's mark since, as pointed out in his brief:
[T]he proposed mark DIAMONDLITE may give
an impression that its jewelry contains less
of a certain feature of diamonds. The value
of a diamond depends on size, color, flaws,
and quality of cutting. An Illustrated
Dictionary of Jewelry 96 (1981). Since
diamonds are generally expensive due to their
high intrinsic value, consumers often cannot
afford to purchase the highest quality
diamond. Consumers look at the different
quality features, and can lower the price of
their diamond purchase by selecting a lower
grade in color or cut, or by choosing a
diamond with more flaws. In this manner,
consumers purchase a diamond they can afford
even if it is not the best quality. The
applicant has stated that "if there is any
affect on the decision to purchase goods
provided by [applicant under the mark]
DIAMONDLITE[,] it will be to purchase goods
which are affordable and 'light of'
diamonds." .... The examining attorney has
previously argued that consumers will not
equate LITE with a lack of diamonds or
imitation diamonds. But consumers may look
at the applicant's goods as an affordable way
to purchase a real diamond. Specifically,
consumers may assume that the applicant
produces lower valued diamond jewelry which
is not of the highest quality, but still is a
real diamond nevertheless. Therefore, when
the proposed mark DIAMONDLITE is used in
connection with jewelry that contains
imitation or fake diamonds, consumers are
likely to believe that the goods do in fact
contain real diamonds, and are likely to
Ser. No. 75/438,388
16
purchase the goods based on that
misdescription.
In view thereof, the Examining Attorney reasons that
the mark "DIAMONDLITE" is deceptive because:
Consumers are likely to view the word
diamond in the applicant's mark as describing
the material content of the goods. Consumers
are likely to believe that the misdescription
actually describes the content of the goods.
Since a diamond is a valued gem, such
misdescription is likely to affect the
decision to purchase by consumers. In this
case, the proposed mark meets all elements of
the test for deceptiveness under Section 2(a)
as to the material content of the goods.
....
We concur with the Examining Attorney that the presence
or absence of genuine diamond content in items of jewelry is a
material factor in that it is likely to affect the decision to
purchase such goods. To us, this proposition not only seems
obvious, but in any event, the dictionary definitions of the word
"diamond" are more than sufficient to demonstrate that real
diamonds, even if of a lesser quality, are still gemstones and,
thus, jewelry made therefrom would generally be more valuable and
hence desirable than jewelry containing any of various imitation
diamonds. See, e.g., In re Budge Manufacturing Co. Inc., supra
at 1261 ["[e]vidence of record [which] shows that natural
sheepskin and lambskin is more expensive than simulated skins and
that natural and synthetic skins have different characteristics"
is sufficient to establish prima facie case that "the
misrepresentation is likely to affect the decision to purchase"].
Moreover, while we tend to agree with applicant that
the "NEXIS" excerpts relied upon by the Examining Attorney
Ser. No. 75/438,388
17
illustrate little more than that there are at least some sellers
of diamond jewelry that, as undoubtedly is the case in any field
or industry, are unscrupulous or otherwise are not above
defrauding their customers, the Federal Trade Commission
regulation cited by the Examining Attorney is additional,
relevant evidence that the genuineness of diamond content of
jewelry is a material factor affecting the decision to purchase
such goods. As was pointed out in R. Neumann & Co. v. Overseas
Shipments, Inc., 140 USPQ 276, 279 (CCPA 1964), in which the mark
"DURA-HYDE" was held deceptive (in addition to being found to be
deceptively misdescriptive) as used in connection with plastic
material of leather-like appearance made into shoes (footnote
omitted):
While not controlling here, we deem it
proper to take cognizance of the fact that
the Federal Trade Commission, which functions
under a statute prohibiting "deceptive acts
or practices in Commerce," repeatedly has
condemned trademarks which include the term
"hide" or "hyde" for nonleather products.
Likewise, as the Examining Attorney accurately notes, the same
court, in referring to the above case, "had occasion to observe
that the Federal Trade Commission, in dealing with 'deceptive
acts or practices in commerce,' has repeatedly condemned
trademarks which include the term 'hide' or 'hyde' for nonleather
products" and acknowledged that "the substance of the
observations which we there made is relevant in large measure
here." R. Neumann & Co. v. Bon-Ton Auto Upholstery, Inc., supra.
Thus, in view of the pertinent evidence of record, we
share the Examining Attorney's conclusion that the diamond
Ser. No. 75/438,388
18
content of applicant's jewelry is a factor which would materially
affect the decision of consumers to purchase applicant's goods.
Plainly, the mark "DIAMONDLITE" conveys to purchasers of jewelry
that such goods contain genuine diamonds, even if those diamonds
are of lesser value or quality in some respects. When used in
connection with jewelry which is not made in whole or in
substantial part of diamonds, applicant's mark would misdescribe
such goods as containing real diamonds and customers would be
likely to believe the misrepresentation. Because, as
demonstrated by the record, the presence or absence of diamond
content in jewelry is a significant consideration in that it
affects the decisions of customers to purchase such goods, the
mark "DIAMONDLITE" is deceptive of the material content of
applicant's goods which do not contain diamonds in whole or in
substantial part. See, e.g., R. Neumann & Co. v. Bon-Ton Auto
Upholstery, Inc., supra; R. Neumann & Co. v. Overseas Shipments,
Inc., supra at 281; Evans Products Company v. Boise Cascade
Corporation, 218 USPQ 160, 164 (TTAB 1983) [mark "CEDAR RIDGE"
held deceptive for embossed hardboard siding not made in whole or
in part of cedar]; and In re Intex Plastics Corp., supra at 1048.
Decision: The refusals under Section 2(e)(1) and
Section 2(a) are affirmed.