Powerful Vision Limited

Trademark Trial and Appeal Board

Dec 28, 2015

No. 79145119 (T.T.A.B. Dec. 28, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Powerful Vision Limited
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Serial No. 79145119
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Pam Kohli Jacobson of Betts, Patterson & Mines P.S.,
for Powerful Vision Limited.
Cynthia Y. Rinaldi, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Bergsman, Gorowitz and Heasley,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Powerful Vision Limited (“Applicant”) seeks registration on the Principal
Register of the mark DIAMOND X COLLECTION (in standard characters) for
Mirrors; mirrored bathroom furniture made of plastic,
mild steel, stainless steel and aluminum; mirrored
bathroom cabinets made of plastic, mild steel, stainless
steel and aluminum; mirrored cabinets made of plastic,
mild steel, stainless steel and aluminum; mirrors
enhanced by electric lights, in Class 20.1

1 Application Serial No. 79145119 was filed on January 23, 2014, under Section 66(a) of the
Trademark Act of 1946, 15 U.S.C. § 1141f(a), based upon Applicant’s International
Trademark Registration No. 1198350, registered on January 23, 2014.
Serial No. 79145119
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark DIAMOND (typed
drawing form) for “wooden cabinets,” in Class 20, as to be likely to cause confusion.2
In addition, the Trademark Examining Attorney issued a final requirement for
Applicant to disclaim the exclusive right to use the word “Collection.”3
When the refusal and requirement were made final, Applicant appealed and
requested reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register and the
requirement to disclaim the exclusive right to use the word “Collection.”
I. Likelihood of Confusion
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper

2 Registration No. 1231958, issued March 22, 1983; second renewal.
Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i)
(October 2015).
3 In her brief at 12 TTABVUE 4, the Trademark Examining Attorney withdrew the
requirement that Applicant disclaim the exclusive right to use the word “Diamond.”
Serial No. 79145119
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Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
A. The similarity or dissimilarity of the marks.

We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, “two marks may be found to be confusingly
similar if there are sufficient similarities in terms of sound or visual appearance or
connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d
1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation
omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519
(TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion.”)).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
Serial No. 79145119
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mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific impression of the
marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the goods are
mirrors, mirrored bathroom furniture and cabinets, and wooden cabinets, the
average customer is an ordinary consumer.
The marks DIAMOND and DIAMOND X COLLECTION are similar because
they share the word DIAMOND. Because Applicant’s mark DIAMOND X
COLLECTION incorporates Registrant’s entire mark, consumers familiar with
Registrant’s DIAMOND wooden cabinets are likely to perceive DIAMOND X
mirrored cabinets as a different line of Registrant’s DIAMOND products. While the
fact that Applicant’s mark incorporates Registrant’s entire mark does not ipso facto
mean that the marks are similar, under the circumstances in this case, the Board
and its primary reviewing court have often found that such marks are similar. See,
e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(applicant’s mark ML is similar to registrant’s mark ML MARK LEES); Lilly
Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967)
(THE LILLY as a mark for women's dresses is likely to be confused with LILLI
ANN for women's apparel including dresses); Hunter Indus., Inc. v. Toro Co., 110
USPQ2d 1651, 1660-61 (TTAB 2014) (applicant’s mark PRECISION is similar to
registrant’s mark PRECISION DISTRIBUTION CONTROL); In re United States
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Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's
clothing stores and women's clothing likely to cause confusion with CREST
CAREER IMAGES for uniforms including items of women's clothing). In United
States Shoe, the Board observed that “Applicant's mark would appear to prospective
purchasers to be a shortened form of registrant's mark.” 229 USPQ at 709.
Likewise, consumers are likely to refer to Applicant’s mark DIAMOND X
COLLECTION as DIAMOND X because DIAMOND X appears as the first part of
Applicant’s mark and it is an arbitrary term when used in connection with the
products listed in Applicant’s description of goods; whereas the term COLLECTION
is likely to be perceived as Applicant’s collection of such products.4 “[U]sers of
language have a universal habit of shortening full names – from haste or laziness or
just economy of words. Examples are: automobile to auto; telephone to phone;
necktie to tie; gasoline service station to gas station.” In re Abcor Development
Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring).
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to
Sears alone), and Ward’s for Montgomery Ward’s, and
Bloomies for Bloomingdales.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
See also, Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ

4 The word “Collection” is defined, inter alia, as “a line of products produced for one season,
as those developed by a designer: promoted the summer collection in the store window.”
YourDictionary.com derived from THE AMERICAN HERITAGE DICTIONARY (date illegible)
(7 TTABVUE 5).
Serial No. 79145119
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390, 395 (Fed. Cir. 1983); Big M Inc. v. The United States Shoe Co., 228 USPQ 614,
616 (TTAB 1985).
The significance of the word “Diamond” in Applicant’s mark DIAMOND X
COLLECTION is further reinforced by its location as the first part of the mark. See
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the
first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering
the marks, consumers will first notice the identical lead word); Presto Products Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”).
While our discussion has focused on the shared word “Diamond,” we are aware
the analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on the entire marks, not just part of
the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master Mfg.
Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion”). On the other hand, there is nothing
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improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 224 USPQ
at 751. As noted above, the word “Diamond,” as the first part of Applicant’s mark,
will be perceived as the dominant element of Applicant’s mark because it is an
arbitrary term, the term DIAMOND X will be perceived as part of the line of
DIAMOND products, and the commercial impression of the term “Collection” is that
of an informational statement informing consumers of Applicant’s DIAMOND X line
of mirrors and mirrored cabinets.
In view of the foregoing, we find that the marks DIAMOND and DIAMOND X
COLLEECTION are similar in terms of appearance, sound, connotation and
commercial impression.
B. The similarity or dissimilarity and nature of the goods.
As noted above, Registrant’s mark DIAMOND is registered for wooden cabinets
and Applicant is seeking to register its DIAMOND X COLLECTION for mirrors,
mirrored bathroom cabinets and mirrored cabinets made of plastic, mild steel,
stainless steels and aluminum. The term “wooden cabinets” encompasses mirrored
bathroom cabinets and mirrored cabinets. Because we do not read limitations into
the identification of goods, we must presume that Registrant's wooden cabinets
include all types of wooden cabinets, including mirrored cabinets made of wood and
mirrored bathroom cabinets made of wood. See Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and
Serial No. 79145119
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nothing in the inherent nature of Squirtco's mark or goods that restricts the usage
of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly
read limitations into the registration”). Thus, Registrant’s goods are related to
Applicant’s goods because Registrant’s identification of goods includes mirrored
bathroom cabinets and mirrored cabinets, albeit made of wood rather than other
materials.
This presumption is corroborated by Applicant’s sales of DIAMOND X
COLLECTION illuminated mirrors in “Solid Oak Bathroom Cabinets.”5 Similarly,
Pottery Barn sells Quiklook mirrors and wooden cabinets,6 and Ikea sells Hemnes
mirrors and wooden cabinets.7
In view of the foregoing, we find that the goods are related.
C. Channels of trade.
Because there are no limitations as to channels of trade or classes of purchasers
in the description of goods in the application or cited registration, it is presumed
that Applicant’s goods and Registrant’s goods move in all channels of trade normal
for those goods, and that they are available to all classes of purchasers for those
goods. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119
USPQ 139, 140 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992). As noted above, because Registrant’s wooden cabinets encompass mirrored

5 5 TTABVUE 5-8
6 5 TTABVUE 9-16 to 6 TTBVUE 2-3 and October 9, 2014 Office Action.
7 6 TTABVUE 4-9 and October 9, 2014 Office Action.
Serial No. 79145119
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bathroom cabinets and mirrored cabinets, we must presume that those goods move
in the same channels of trade and are sold to the same classes of consumers. In this
regard the IKEA, Wayfair and Pottery Barn websites submitted by the Trademark
Examining Attorney show that the products at issue are sold through the same
channels of trade.8
Applicant asserts that because Applicant’s goods and Registrant’s goods are
different, they move in different channels of trade.9 The only limitation in
Applicant’s description of goods is that the cabinets are made of plastic, mild steel,
stainless steels and aluminum as compared to Registrant’s wooden products. The
description of goods in the cited registration does not have a restriction in its
channels of trade, so those goods are presumed to move in all the normal channels
of trade for those goods. And as we have seen, such goods can and do move in the
same channels of trade. Applicant also contends that a restriction in the description
of goods may avoid a likelihood of confusion, but it has not made a further
restriction in its description of goods.
D. Balancing the factors.
Because the marks are similar, the goods are related and the goods move in the
same channels of trade, we find that Applicant’s mark DIAMOND X COLLECTION
for “mirrors; mirrored bathroom furniture made of plastic, mild steel, stainless steel
and aluminum; mirrored bathroom cabinets made of plastic, mild steel, stainless
steel and aluminum; mirrored cabinets made of plastic, mild steel, stainless steel

8 5 TTABVUE 9-16 to 6 TTABVUE 2-16 and October 9, 2014 Office Action.
9 10 TTABVUE 8.
Serial No. 79145119
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and aluminum; mirrors enhanced by electric lights” is likely to cause confusion with
the registered mark DIAMOND for “wooden cabinets.”
II. Requirement to Disclaim the Exclusive Right to Use “Collection.”
The Trademark Examining Attorney required Applicant to disclaim the
exclusive right to use the word “Collection” “because it merely describes a feature of
Applicant’s goods (i.e., the goods are a line of products). See Section 6(a) of the
Trademark Act of 1946, 15 U.S.C. §1056(a) (“The Director may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable”).
Pursuant to Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. §1052(e)(1),
merely descriptive matter in a mark is unregistrable; it therefore is subject to
disclaimer under Section 6(a). The Office may refuse registration of the entire mark
if Applicant fails to comply with a proper disclaimer requirement. See In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Grass
GmbH, 79 USPQ2d 1600, 1602 (TTAB 2006).
A term is merely descriptive of goods within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services. In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See
also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark
or a component of a mark is merely descriptive is determined in relation to the
goods for which registration is sought and the context in which the term is used, not
in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588
Serial No. 79145119
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F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). A term need not immediately convey an idea of each and every
specific feature of the goods or services in order to be considered merely descriptive;
it is enough if it describes one significant attribute, function or property of them.
See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). This requires consideration
of the context in which the mark is used or intended to be used in connection with
those goods or services, and the possible significance that the mark would have to
the average purchaser of the goods in the marketplace. See In re Chamber of
Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at
218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is not
whether someone presented only with the mark could guess the products listed in
the description of goods. Rather, the question is whether someone who knows what
the products are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002)). See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Serial No. 79145119
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As noted above, the word “Collection” is defined, inter alia, as “a line of products
produced for one season, as those developed by a designer: promoted the summer
collection in the store window.”10 Applicant, on its website, displays its mark as
follows:11

It advertises the products as follows:
1. “The large bathroom mirrors in the collection provide a beautiful focal
point in larger, open spaces.”12;
2. A “range of outstanding bathroom mirrors”;13 and
3. “[O]ur range of oak demister cabinets.”14
Thus, Applicant is using the word “Collection” to describe its DIAMOND line of
products.
Applicant argues that the mark DIAMOND X COLLECTION is a unitary term
and that, therefore, a disclaimer is not required. A unitary mark is a mark with
multiple elements that create a single and distinct commercial impression separate

10 YourDictionary.com derived from The American Heritage Dictionary (date illegible)
(7 TTABVUE 5).
11 October 9, 2014 Office Action and 4 TTABVUE 5.
12 October 9, 2014 Office Action.
13 October 9, 2014 Office Action.
14 5 TTABVUE 7.
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and apart from the meaning of its constituent elements. Dena Corp. v. Belvedere
International Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991). See also
In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) (the elements of a unitary mark
are so integrated or merged that they cannot be regarded as separate elements, and
it is obvious that no claim is made other than to the entire mark). In Kraft, the
Board explained that a unitary mark could be created “where the words which have
been put together function as a unit, with each relating to the other rather than
directly to the goods.” 218 USPQ at 573.15 See also In re EBS Data Processing, Inc.,
212 USPQ 964, 966 (TTAB 1981).
To determine whether a composite mark is unitary, the Board must determine
“how the average purchaser would encounter the mark under normal marketing of
such goods and also . . . what the reaction of the average purchaser would be to this
display of the mark.” In re Magic Muffler Service, 184 USPQ 125, 126 (TTAB 1974).
This can best be accomplished by looking at the specimen filed with the application
because it shows how the mark is used in connection with the goods or services. In
re Magic Muffler Service, 184 USPQ at 126. Since this application was filed based
on Applicant’s International Registration and not use in commerce, there is no
specimen. However, as noted above, we have the benefit of Applicant’s website
submitted by the Trademark Examining Attorney.

15 In re Kraft, the Board found that the mark LIGHT N’ LIVELY was unitary because it had
a suggestive significance apart from the merely descriptive significance of the individual
term LIGHT for reduced calorie mayonnaise. Based upon that reasoning, the Board held
that a disclaimer of the term LIGHT was unnecessary.
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Applicant displays the word “Collection” in a different size and font than the
term “Diamond X.” The commercial impression engendered by the display of
Applicant’s mark is the DIAMOND X collection of mirrors and cabinets. The word
“Collection” is used in its dictionary meaning in a display distinct from the term
“Diamond X.”
In view thereof, the requirement that Applicant disclaim the exclusive right to
use the word “Collection” is affirmed.
Decision: The refusal to register Applicant’s mark DIAMOND X COLLECTION
is affirmed.
The requirement that Applicant disclaim the exclusive right to use the word
“Collection” is affirmed.