Select Jewelry Inc.

Trademark Trial and Appeal Board

Mar 27, 2014

No. 85556113 (T.T.A.B. Mar. 27, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 27, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Select Jewelry Inc.
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Serial No. 85556113
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Max Moskowitz and Sean P. McMahon of Ostrolenk Faber LLP for Select Jewelry
Inc.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Law Office 105 (Thomas
G. Howell, Managing Attorney).
_____

Before Taylor, Wolfson, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Select Jewelry Inc. filed an application to register on the Principal Register
the mark GENEVIEVE & GRACE in standard character form for the following
goods:
Jewelry, namely, wedding bands, rings, bracelets,
pendants, earrings, necklaces, brooches and pins, in
International Class 14.1

1 Application Serial No. 85556113, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on
February 29, 2012, on the basis of applicant’s bona fide intention to use the mark in
commerce.
Serial No. 85556113
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The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s goods, so resembles the mark GENEVIVE, which is
registered in standard character form for “jewelry,”2 as to be likely to cause
confusion, or to cause mistake, or to deceive. When the refusal was made final,
applicant filed a notice of appeal and a request for reconsideration. The request for
reconsideration having been denied by the examining attorney, the appeal is now
before us. Applicant and the examining attorney have filed briefs.
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 as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, applicant
and the examining attorney have also submitted evidence and arguments regarding
trade channels, customers, and the coexistence of other similar marks.
1. The goods at issue.
Addressing first the goods of applicant and registrant, we find that they are
legally identical. The cited registration covers “jewelry,” which encompasses within
its scope the “wedding bands, rings, bracelets, pendants, earrings, necklaces,

2 Reg. No. 4024295, issued on September 13, 2011.
Serial No. 85556113
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brooches and pins” identified in the application. Accordingly, the du Pont factor
relating to the similarity or dissimilarity of the goods at issue weighs in favor of a
finding of likelihood of confusion.
2. Customers; trade channels; conditions of sale.
As applicant’s goods are legally identical to those of registrant, we must
presume that the goods of applicant and registrant move in the same channels of
trade and are available to the same classes of customers for such goods. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994).
Applicant argues that the customers for jewelry are “sophisticated and
discriminating”; that they exercise “reasonable care” in making purchases; and that
jewelry is generally not purchased on impulse. For these propositions, applicant
cites In re Leonard S.A., 2 USPQ2d 1800, 1802 (TTAB 1987); and Fortunoff Silver
Sales, Inc. v. Norman Press, Inc., 225 USPQ863, 869-70 (TTAB 1985). Those cases
were, of course, decided on different records. In the case before us, there is no
evidence to show that jewelry purchasers are sophisticated, discriminating, and
careful; or that jewelry is not purchased on impulse. Moreover, some of the jewelry
items identified in applicant’s application might not be so costly as to eliminate the
likelihood of impulse purchasing; neither does the application indicate that sales
will be limited to customers of particular sophistication. See Octocom Syst. Inc. v.
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Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“the factors which OSI asks to have considered are not reflected, either
expressly or inherently, in its application. Thus, it was not error… for the board to
give no weight to OSI’s evidence purporting to show that OCTOCOM modems are
[bought] by a particular class of purchasers. It would have been error to do
otherwise.”).
In sum, the du Pont factors relating to the similarity or dissimilarity of trade
channels and classes of customers favor a finding of likelihood of confusion. The
factor of the conditions under which sales are made (impulse vs. careful purchasing
by sophisticated consumers) is neutral.
3. The marks at issue.
We next consider the similarity or dissimilarity of the marks in appearance,
sound, meaning, and overall commercial impression. We must, of course, compare
the marks at issue in their entireties. However, there is nothing 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., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). In comparing the marks, we are mindful that where, as here,
the goods are identical, the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a recognizable disparity between
the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
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USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Applicant seeks registration of the mark GENEVIEVE & GRACE. The cited
registered mark is GENEVIVE. Applicant argues that the two marks have “no
similarity it appearance”;3 but this contention is not persuasive. The registered
mark and the first word of applicant’s mark are nearly identical in appearance,
differing by only a single letter. The initial component of applicant’s mark,
GENEVIEVE, and the entirety of the registered mark, GENEVIVE, are also highly
similar in meaning and overall commercial impression because, as applicant
acknowledges, “[c]onsumers will undoubtedly recognize the cited mark and the
GENEVIEVE component of Applicant’s mark as first or given names.4 Applicant
has also submitted evidence to show that both designations are recognized female
given names that are acknowledged to be variants of each other.5 In view of this
recognized significance, the two names are not only similar in appearance, but are
likely to be pronounced the same, or nearly the same.
It is true that applicant’s entire mark is longer, both visually and in likely
pronunciation, than the registered mark; and that the addition of the component “&
GRACE” affects the significance and overall commercial impression of the mark.
However, the similarities discussed in the preceding paragraph are not
inconsequential to our analysis. As the examining attorney points out, consumers

3 Applicant’s brief at 7.
4 Id. at 8.
5 Request for reconsideration, Exhibits A (Genevive) and B (Genevieve).
Serial No. 85556113
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may be likely to focus more on the initial component of applicant’s mark, which is
highly similar to the cited mark. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin, 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); see also 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); and Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”). The propensity of
consumers to shorten trademarks has also been noted. See Marshall Field & Co. v.
Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992) (“companies are
frequently called by shortened names, such as Penney’s for J.C. Penney’s, Sears for
Sears and Roebuck..., Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdale’s); Big M. Inc. v. United States Shoe Corp., 228 USPQ 614, 616 (TTAB
1985) (“[W]e cannot ignore the propensity of consumers to often shorten trademarks
and, in the present case, this would be accomplished by dropping the ‘T.H.’ [in T.H.
MANDY] in referring to registrant’s stores”); and Polo Fashions, Inc. v. La Loren,
Inc., 224 USPQ 509, 512 (TTAB 1984) (“Lauren” is a shorthand term for Ralph
Lauren).
Applicant’s mark GENEVIEVE & GRACE, by its structure, would most likely
be understood as a pair of women’s given names. The concept that arises from the
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mark, i.e., that of a unified pair of individuals, is not lost on the Board. However,
the components GENEVIEVE and GRACE are separable, in the sense that each
component would, separately, be recognizable as a woman’s name, without
alteration to its meaning arising from the separation. Accordingly, the mark is
susceptible to the potential shortening discussed in the Marshall Field, Big M, and
Polo Fashions cases cited above.
Applicant argues that the cited registered mark is weak, because it consists
of a personal name, and is accordingly entitled only to a narrow scope of protection.6
Applicant finds support in Aileen, Inc. v. Eileen Togs, Corp., 188 USPQ 698 (TTAB
1975) and Brennan’s Inc. v. Brennan’s Restaurant LLC, 69 USPQ2d 1939, 1943 (2d
Cir. 2004). In Aileen, the Board did indeed say that “given names, per se, because of
their proliferation of use, are generally considered to fall within the designation of
‘weak’ marks….” 188 USPQ at 700. However, this general observation of the Board
does not apply with equal effect to every given name, because names differ from one
another in their relative strength or weakness. Evidence is required to demonstrate
whether a particular name is weak because it is in widespread use, or strong
because it is unusual.7 The record before us contains no reliable evidence to
demonstrate the degree of commonness of the name GENEVIVE;8 accordingly, the

6 Applicant’s brief at 8-9.
7 Evidence might well demonstrate, for example, that HANNIBAL would have stronger
distinctiveness as a trademark than would JOHN.
8 The “baby names” websites submitted by applicant include popularity rankings relating to
the name Genevive (see Exhibit A to the request for reconsideration). However, it would be
inappropriate to rely upon these data for the truth of the matter asserted in them, as it is
Serial No. 85556113
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Board cannot determine how weak or strong it may be. (If anything, the record
suggests that GENEVIVE may be a relatively rare variant of the more common
GENEVIEVE.) Accordingly, we give little consideration to the purported weakness
of the registered mark.9
The case before us is also distinguishable from Brennan. In Brennan, the
Second Circuit treated the surname BRENNAN as inherently weak and protectable
only if it had acquired secondary meaning; considered evidence of the commonness
of the name; and found that the mark lacked secondary meaning. In the case before
us, there is no question that the cited registered mark is entitled to protection;
because it is registered, it is entitled to the presumption of validity set forth in
Trademark Act § 7(b), 15 U.S.C. § 1057(b); and its registered status is what makes
the provisions of Section 2(d) applicable.
We note that applicant has submitted copies of twelve U.S. registrations for
marks that consist of or include the designation GENEVIEVE.10 Applicant has not
argued in its brief that these registrations demonstrate the weakness of the mark
GENEVIVE; and we note that none of the submitted registrations relates to jewelry
or similar goods. In any event, such third-party registrations have little probative
value as to the strength or weakness of a mark, because they are not evidence that

hearsay. (By contrast, we have considered Exhibit A for what it shows on its face with
respect to the perception of Genevive as a female given name.)
9 We note also that in Aileen the Board, while recognizing the weakness of the given names
at issue, nonetheless found LOVE EILEEN to be confusingly similar to AILEEN (“it is our
view that the ‘EILEEN’ portion of applicant’s mark triggers the basic concept and
connotation of the mark and is that portion likely to stimulate the recollection of the
mark.”) 188 USPQ at 701.
10 Request for reconsideration, Exhibit C.
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the registered marks are in use on a commercial scale or that the public has become
familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462, 463 (CCPA 1973); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
22 USPQ2d 1542, 1545 (Fed. Cir. 1992); Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011).
Applicant also submitted a number of U.S. registrations for the mark
ELIZABETH AND JAMES and various other marks that include the designations
ELIZABETH or JAMES.11 Applicant’s intent was “[t]o demonstrate the weakness
of personal name marks” as well as to show, by analogy, that a mark having the
structure of applicant’s mark (i.e., two given names joined by “and”) can co-exist
with other marks that include one or the other of the two names.12 For similar
reasons, applicant submitted evidence to show that the Patent and Trademark
Office allowed an application for the mark ALICE + OLIVIA for jewelry to proceed
to publication, despite the existence of a registration of the mark OLIVIA
COLLECTION for jewelry.13 For a number of reasons, such evidence is not
persuasive for applicant’s intended purposes. Registrations do not prove
commercial “coexistence,” because they do not actually demonstrate that the marks
are in use in the marketplace. AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The existence of [third-party]
registrations is not evidence of what happens in the market place.”). It is true that

11 Applicant’s response of December 19, 2012, Exhibits A through D.
12 Applicant’s brief at 9.
13 Applicant’s response of December 19, 2012, Exhibits E and F.
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they demonstrate coexistence on the Register. Nonetheless, we must decide each
case on its own merits. Id. (“… nor should the existence on the register of
confusingly similar marks aid an applicant to register another likely to cause
confusion, mistake or to deceive.”); In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board.”) Finally, there is no evidence to indicate
that the names ELIZABETH, JAMES, and OLIVIA have the same degree of
strength or weakness as GENEVIVE; accordingly, the coexistence of marks
containing those names is not meaningfully relevant to the questions at issue in
this case.
4. Balancing the factors.
The Board has often found a likelihood of confusion where an applicant’s
mark incorporates the entirety of a registered mark together with additional
wording. See In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA
1972) (WEST POINT PEPPERELL and WEST POINT); In re Riddle, 225 USPQ 630
(TTAB 1985) (RICHARD PETTY'S ACCU TUNE and ACCUTUNE); Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526
F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER and BENGAL); The
Wella Corp, v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
1977) (CALIFORNIA CONCEPT and CONCEPT). The case now before us presents
a highly similar situation. Having considered the evidence of record and all
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relevant du Pont factors, including those not specifically discussed herein, we find
that applicant’s mark, as applied to applicant’s goods, so closely resembles the cited
registered mark for legally identical goods as to be likely to cause confusion,
mistake or deception as to the source of applicant’s goods.
Decision: The refusal of registration is affirmed.