Pepi Kelman

Trademark Trial and Appeal Board

Dec 8, 1998

No. 75162017 (T.T.A.B. Dec. 8, 1998)

Paper No. 9
HRW
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB DEC. 8, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pepi Kelman, Inc.
________
Serial No. 75/162,017
_______
Michael A. Painter of Isaacman Kaufman & Painter PC for
applicant.
Odette Bonnet, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohen, Managing Attorney)
_______
Before Hanak, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Pepi Kelman, Inc. has filed an application to register
the mark RHAPSODY for “men’s and women’s fine jewelry,
namely, rings.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, on the ground of likelihood of
confusion with the registered mark RHAPSODY, in the
Ser No. 75/162,017
2
stylized format reproduced below, for “watches, namely,
wrist or strap watches.”2
Applicant and the Examining Attorney have filed
briefs, but no request was made for an oral hearing.
It is obvious that the marks of applicant and
registrant are virtually identical. Although the
registered mark is restricted to a stylized version of the
word RHAPSODY, applicant has applied to register its mark
in a typed drawing and thus is not limited to any
particular style. As a result, applicant could present its
mark in a stylized format very similar to registrant’s.
See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937
(Fed. Cir. 1983); Jockey International Inc. v. Mallory &
Church Corp., 25 USPQ2d 1233 (TTAB 1992).
It is well established that the greater the degree of
similarity in the marks, the lesser the degree of
similarity of the goods which is required to support a
holding of likelihood of confusion. See In re Concordia

1 Ser. No. 75/162,017, filed Sept. 6, 1996, claiming first use
dates of Aug. 14, 1996.
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3
International Forwarding Corp., 222 USPQ 355 (TTAB 1983)
and the cases cited therein.
With this in mind, we look to the determinative factor
in this case, i.e., the similarity or dissimilarity of the
respective goods. The Examining Attorney argues that both
watches and rings are considered jewelry and both would be
sold in the same type of stores. She points to the third-
party registrations which have been made of record as
evidence not only that both watches and rings are
categorized as “jewelry,” but also that both items are
often marketed under the same mark by a single source. In
addition, she cites prior decisions of the Board involving
the issue of likelihood of confusion in which a close
relationship was found to exist between watches and
jewelry, including rings [In re Leonard S.A., 2 USPQ 1800
(TTAB 1987)], watches and men’s jewelry [Gruen Industries,
Inc. v. Ray Curran & Co., 152 USPQ 778 (TTAB 1967)] and
watches and rings [Clinton Diamond Corp. v. General Time
Corp., 135 USPQ 272 (TTAB 1962)].
Applicant contends that in order for a relationship to
exist between the goods involved, there must be a
“functional” relationship, or a “logical association or

2 Reg. No. 563,428, issued Aug. 26, 1952, claiming first use
dates of July 23, 1951. The second renewal was filed Nov. 9,
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4
joinder” between the goods, citing as an example the test
applied by the Board in determining the relationship
between various food products. Applicant argues that there
is no such association or “complementary use” relationship
between rings and watches and that purchasers would not
reasonably believe that the source of applicant’s rings is
a watch manufacturer.
We find that the Examining Attorney has clearly
established that a close relationship exists between
applicant’s rings and registrant’s watches. In the first
place, as she points out, while applicant’s rings are
described as “fine jewelry’, there are no limitations as to
cost or grade in the registration and, thus, the complete
range of watches are encompassed thereby, including very
costly watches. Next, she has shown by means of third-
party registrations that several entities have adopted a
single mark under which to market both rings and watches.
We note with particular interest the registration issued to
Bulova Corporation, the present owner of the cited
registration, for the stylized letter “B” for “jewelry,
namely, watches, earrings, pins, rings, pendants and
bracelets.” Such evidence fully rebuts applicant’s
argument that purchasers would not reasonably believe that

1992.
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5
rings and watches might emanate from the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467
(TTAB 1988). There is no need for any proof of
complementary use, although it is readily obvious that both
jewelry items, watches and rings, are often worn at the
same time.
Finally, the Examining Attorney has cited more than
one prior decision in which the Board has held that watches
and rings are jewelry items which might be viewed by the
same purchasers in the same jewelry stores or the like and
accordingly are considered to be related goods.
Thus, on the basis of the virtual identity of the
marks and the close relationship of watches and rings, we
find that there is a likelihood of confusion.
Decision: The refusal to register under Section 2(d)
is affirmed.
E. W. Hanak
B. A. Chapman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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