Prestige Jewelry International, Inc.

Trademark Trial and Appeal Board

Sep 26, 2013

No. 76701289 (T.T.A.B. Sep. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Prestige Jewelry International, Inc.
_____

Serial No. 76701289
_____

Mark J. Seyer, Jr. of Archer & Greiner, P.C. for Prestige Jewelry International, Inc.

Mark Sparacino, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
_____

Before Grendel, Holtzman and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Prestige Jewelry International, Inc. (“applicant”) seeks registration of the
mark UNITY, in standard characters, for “Jewelry with precious and semi-precious
stones, but not including retail store services.”1 The examining attorney refused
registration of the mark under Section 2(d) of the Act, on the ground that

1 Application Serial No. 76701289, filed January 21, 2010 based on an intent to use
the mark in commerce. Applicant’s identification of goods was originally just “Jewelry,” but
after it appealed the final refusal of registration, applicant sought and obtained a remand
to the examining attorney for the purpose of amending its identification to include the
limitations to the identification set forth above. While the examining attorney disagreed
that the amended identification obviated the finding of likelihood of confusion, he accepted
the amendment, but did not in fact enter it. Accordingly, we hereby enter the amendment
and base our decision on the identification of goods, as amended.
Serial No. 76701289
2

applicant’s mark, when used in connection with applicant’s goods, so resembles the
previously-registered mark UNITY SHOPPE, in standard characters and with
SHOPPE disclaimed, for, inter alia, “retail store services for clothing, furniture,
jewelry, gift items and art work”2 as to be likely to cause confusion.
After the refusal was made final, applicant appealed, the application was
remanded twice, once at the examining attorney’s request and once at applicant’s
request, and applicant and the examining attorney filed briefs. We affirm the
refusal to register.
Analysis
Our determination under Section 2(d) is based on an analysis of all 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 Company, 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 goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
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.”). We discuss each of the

2 Registration No. 2991266, issued September 6, 2005 (Section 8 affidavit accepted
and Section 15 affidavit acknowledged). In addition to the Class 35 retail store services
listed above, the cited mark is registered for a variety of charitable services in International
Classes 36, 41, 43 and 45.
Serial No. 76701289
3

du Pont factors concerning which applicant or the examining attorney submitted
argument or evidence.
Turning first to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is,
we may not dissect the marks into their various components. In re Nat’l 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). The test
is not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression so that confusion as to the source of the goods and
services offered under the respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks (in this case jewelry
buyers). See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Of course, one feature of a mark may be more significant than another, and it
is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l Data Corp., 224 USPQ at 751
(“There is nothing improper in stating that, for rational reasons, more or less weight
Serial No. 76701289
4

has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”); Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d
759, 105 USPQ 266, 268 (CCPA 1955).
In this case, applicant’s mark is identical to the dominant element of the
cited mark. Indeed, the cited mark is registered for retail store services, and
accordingly SHOPPE is merely descriptive of those services and disclaimed. It
therefore has little significance in our likelihood of confusion determination.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion,
93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word
ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). Furthermore,
UNITY appears first in the cited mark, which also establishes that it is the
dominant element of registrant’s mark. Presto Prods. Inc. v. Nice-Pak Prods., 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”); Palm Bay
Serial No. 76701289
5

Imports Inc., 73 USPQ2d 1692; Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Applicant’s argument that UNITY means one thing when used by applicant
and something else when used by registrant is unsupported by any evidence of
record, and the question is not what meaning registrant and applicant intend to
convey with their marks, the question is what commercial impression the marks
will have on consumers. Consumers will perceive the word UNITY, which appears
in both applicant’s and registrant’s marks in typed/standard character format,3 the
same way, whether the word is used alone or with the merely descriptive word
SHOPPE.4
In short, the marks look and sound alike and convey similar meanings
because applicant’s mark is identical to the dominant element of the cited mark.
Accordingly, this factor weighs heavily in favor of a finding of likelihood of
confusion.5

3 In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until
2003, ‘standard character’ marks formerly were known as ‘typed’ marks, but the preferred
nomenclature was changed in 2003 to conform to the Madrid Protocol … we do not see
anything in the 2003 amendments that substantively alters our interpretation of the scope
of such marks”).
4 Applicant’s reliance on Colgate-Palmolive Company v. Carter-Wallace, Inc., 432 F.2d
1400, 167 USPQ 529 (CCPA 1970) is misplaced, because in that inter partes case the goods
at issue were found to be “essentially different,” and the word the marks at issue shared
was found to have a different meaning in the context of those different goods. Here,
applicant’s goods and registrant’s services both involve jewelry, so the word UNITY will
convey a similar meaning as used in both marks. The other cases upon which applicant
relies are not binding upon the Board and involve significantly different facts than this one.
Each case must be decided on its own merits.
5 We have not considered the untimely evidence attached to applicant’s or the
examining attorney’s briefs. Trademark Rule 2.142(d). Had we done so, it would not have
changed our ultimate decision. In any event, applicant’s arguments that registrant’s store
Serial No. 76701289
6

Turning to the goods and services, it is settled that they need not be identical
or even competitive in order to support a finding of likelihood of confusion. It is
enough that the goods and services are related in some manner or that the
circumstances surrounding their marketing are such that they would be likely to be
seen by the same persons under circumstances which could give rise, because of the
marks used, to a mistaken belief that applicant’s and registrant’s goods and services
originate from or are in some way associated with the same source or that there is
an association between the sources of the goods and services. Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993);
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza
Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros.
Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether purchasers would
confuse the goods and services, but rather whether there is a likelihood of confusion
as to the source of the goods and services. In re Rexel Inc., 223 USPQ at 832.
Here, the examining attorney has introduced evidence that services such as
registrant’s and goods such as applicant’s are offered by the same source. For
example, the following marks are registered by different owners, and based on use
for jewelry on the one hand and retail store services featuring jewelry on the other:

does not offer products which bear the marks UNITY SHOPPE or UNITY, and that
registrant is focused on charitable endeavors, are simply irrelevant to whether the marks
create similar overall commercial impressions.

Serial N

(R
(Registr
4046475
JEWEL
BAXIES
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BRILLI
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(TTAB
2009).
o. 767012
egistratio
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); SAM’S
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(Stylized
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1998); see
89
n No. 3890
. 4099708
EMPOR
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4098961);
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gistration
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WHEN I
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T IS TIM
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. 4126750
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USPQ2d 1
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9); WEDD
gistration
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No. 40849
istration
gistration
); OLIPHA
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ETERNA
7); RS R
ST CAN
); TIKLAR
SOMETH
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467, 1470
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No.
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No.
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No.
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12.
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with
may
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n.6
TAB
Serial No. 76701289
8

Furthermore, applicant’s arguments to the contrary notwithstanding, it is
settled that goods and services may be related. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail grocery and
general merchandise store services likely to be confused with BIGGS for furniture).
In fact, we have applied this principle to the very goods and services at issue in this
case. In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“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.”).
While applicant amended its identification to specifically exclude retail store
services, that is essentially irrelevant. The point is that consumers (who are
generally unaware of the identification of goods or services in a registration, if they
are aware of the registration status at all) are accustomed to jewelry and retail
stores featuring jewelry being offered by the same source. While there is no
evidence that registrant sells jewelry bearing the marks UNITY or UNITY
SHOPPE, consumers familiar with applicant’s UNITY jewelry may nevertheless
believe there to be a connection between applicant which offers jewelry bearing the
mark UNITY and the UNITY SHOPPE retail store which offers jewelry, regardless
of what mark(s), if any, the jewelry sold in registrant’s store bear. See e.g., In re
H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) (“a customer who attends
a banquet which he knows is catered by the appellant would, when he encounters a
food product in the grocery store under an almost identical mark, naturally
Serial No. 76701289
9

assum[e] that it came from the catering firm”); In re Peebles Inc., 23 USPQ2d 1795,
1796 (TTAB 1992) (“As we have said before there is no question that store services
and the goods which may be sold in that store are related goods and services …”).
As for channels of trade, where, as here, registrant’s identification of services
contains no limitations, the services are presumed to encompass all services of the
type described, and the services are presumed to move in all normal channels of
trade and be available to all classes of consumers. Citigroup Inc. v. Capital City
Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump
Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). That is, registrant’s “retail store services for … jewelry …” are
presumed to encompass retail store services for “jewelry with precious and semi-
precious stones,” and applicant’s argument that registrant offers “modestly priced
sundries” rather than “precious jewelry” is irrelevant. In fact, while applicant has
introduced evidence that registrant is a charitable organization, and that its retail
store supports its charitable work, we are bound by registrant’s identification of
services and simply cannot limit the services or channels of trade or classes of
customers to what applicant’s evidence shows them to be. In re Bercut-Vandervoort
& Co., 229 USPQ 763, 764-65 (TTAB 1986) (“It is well settled that in a proceeding
such as this, the question of likelihood of confusion must be determined by an
analysis of the marks as applied to the goods identified in the application vis-à-vis
the goods recited in the registration, rather than what extrinsic evidence shows
those goods to be.”); see also, Tuxedo Monopoly, Inc. v. General Mills Fun Group,
Serial No. 76701289
10

Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re Thor Tech Inc., 90
USPQ2d 1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or
dissimilarity and nature of the goods based on the description of the goods set forth
in the application and the registration at issue … we may not limit or restrict the
trailers listed in the cited registration based on extrinsic evidence”). These factors
therefore also weigh in favor of a finding of likelihood of confusion.
Finally, applicant argues that the relevant purchasers are “sophisticated”
and “would not lightly undertake a purchase” of jewelry. Applicant’s Appeal Brief
at 10-11. There is no evidence of record which supports this contention.
Nevertheless, even if we accept that buyers of jewelry with precious and semi-
precious stones are sophisticated and likely to exercise more than ordinary care, it
is settled that even sophisticated purchasers are not immune from source confusion.
This is especially true where, as here, they are faced with similar marks and related
goods and services. See, In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); In re Decombe, 9 USPQ2d 1812, 1814-
15 (TTAB 1988); see also, HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d
1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods). Even
assuming that this factor weighs against a finding of likelihood of confusion, it is
Serial No. 76701289
11

outweighed by the similarities between the involved and cited marks, the
relatedness of the goods and services and the overlapping channels of trade.
There is no relevant evidence or argument concerning the remaining
likelihood of confusion factors, and we therefore treat them as neutral.
Conclusion
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors, including applicant’s arguments and evidence, even if not
specifically discussed herein. In view of our findings that the marks are similar, the
goods and services are related and registrant’s channels of trade are unlimited, we
find that use of applicant’s mark for applicant’s goods would be likely to cause
confusion with the cited registered mark for registrant’s services, notwithstanding
any sophistication of the relevant purchasers. To the extent that applicant’s
arguments raise any doubt concerning the likelihood of confusion, we resolve any
such doubt in registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, 223 USPQ at
1290.
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.