Sterling Jewelers Inc.

Trademark Trial and Appeal Board

Apr 19, 2013

No. 85180269 (T.T.A.B. Apr. 19, 2013)

Mailed:
April 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sterling Jewelers Inc.
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Serial No. 85180269
_______

John J. Cunniff of Hahn, Loeser & Parks LLP for Sterling
Jewelers Inc.

Douglas M. Lee, Trademark Examining Attorney, Law Office
111 (Robert L. Lorenzo, Managing Attorney).
_______

Before Seeherman, Zervas and Hightower, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Sterling Jewelers Inc. (“applicant”) filed an
application (Serial No. 85180269) to register the mark
DIAMOND REVELATIONS (in standard character form) on the
Principal Register for “diamond jewelry” in International
Class 14. Applicant claims a bona fide intention to use
the mark in commerce pursuant to Trademark Act Section
1(b), 15 U.S.C. § 1051(b); and disclaimed the term
“diamond.”
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 85180269
2
The examining attorney finally refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant's mark so resembles
the previously registered mark

(Registration No. 3965127) for “horological and
chronometric instruments, namely, clocks, watches, table
clocks, chronometers; jewelry,” also in International Class
14, as to be likely to cause confusion or mistake or to
deceive. The description of the mark in the registration
record states: “The mark consists of two arrow[-]like
designs one facing left and one facing right above the
stylized word ‘REVELATION.’”
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs. We
affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Ser No. 85180269
3
Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); and In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
We first consider the goods, trade channels and
purchasers. Applicant's “diamond jewelry” is encompassed
with registrant’s “jewelry.” Consequently, the goods are
considered to be legally identical. For such legally
identical goods, and because no trade channel limitations
are included with either identification of goods, we
consider the trade channels and purchasers for such goods
as the same. See American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
Ser No. 85180269
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legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers.”). See also In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion).
We next consider the marks, keeping in mind that when
marks would appear on identical goods, as is the case here,
the degree of similarity of the marks necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
We compare the marks for similarities and
dissimilarities in appearance, sound, connotation and
commercial impression. Palm Bay, 73 USPQ2d at 1692. 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 that confusion as to the
source of the goods or services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
Ser No. 85180269
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In re Association of the United States Army, 85 USPQ2d 1264
(TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975). Under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255 (TTAB 1980).
Because the similarity or dissimilarity of the marks
is determined based on the marks in their entireties, 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. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). See also Franklin Mint Corp. V. Master Mfg.
Co., 667 F.2d 1005, 212 USPQ 23, 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 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. National Data Corp., 224 USPQ at 751.
Ser No. 85180269
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Considering the marks in their entireties, we find
that the marks are similar. REVELATION is the only word in
registrant’s mark, and is significantly larger in size than
the design element. Further, the design element will not
be articulated, as it comprises two stylized arrows without
meaning. Moreover, the design is not unusual or memorable.
Because “revelation” is defined in part as “an act of
revealing to view or making known,”1 applicant argues that
the term is “descriptive, or at the very least highly
suggestive”2 of the goods, and that a descriptive portion of
a mark should not be considered a dominant portion of a
mark. In support of its argument, applicant submitted into
the record one of registrant’s webpages which depicts the
opened case of a wristwatch, thereby “revealing” the
interior mechanisms of the wristwatch. Because we rely
above on registrant’s “jewelry” goods, applicant’s evidence
regarding the suggestive nature of “revelations” for
watches is of limited relevance. However, to the extent

1 http://www.merriam-webster.com/dictionary/revelation. The
Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
2 Brief at 8.
Ser No. 85180269
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that registrant’s goods include, for example, lockets
containing covers which, when opened, reveal something
inside, the term “revelation” can have some suggestive
significance. The term is not so suggestive (and certainly
not merely descriptive based on the definition alone) as to
allow the registration of applicant’s mark for those goods
that are legally identical, namely diamond jewelry. In
addition, there is no clear showing that consumers would
view the word REVELATION as even suggestive of such goods.
Therefore, we find that REVELATION is the dominant part of
the cited mark, and that, on this record, it is an
arbitrary term for diamond jewelry.
Turning to applicant’s mark, REVELATIONS is the
dominant term of its mark. Consumers will not look to the
term “diamond,” which is, at a minimum, merely descriptive
of a feature of applicant’s goods, to distinguish
applicant's mark from registrant's mark.
Further, the fact that REVELATIONS in applicant’s mark
is in the plural form and REVELATION in registrant’s mark
is in the singular form is not meaningful. Purchasers are
unlikely to make any distinction between REVELATIONS and
REVELATION. See Wilson v. Delauney, 245 F.2d 877, 114 USPQ
339, 341 (CCPA 1957) (“It is evident that there is no
material difference, in a trademark sense, between the
Ser No. 85180269
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singular and plural forms of the word ‘Zombie’ and they
will therefore be regarded here as the same mark.”); and
Chicago Bears Football Club v. 12th Man/Tennessee LLC, 83
USPQ2d 1073, 1077 (TTAB 2007) (“we cannot attribute much
trademark significance to the difference in the plural and
singular form of the word ‘Bear’ in the marks”).
In view of the foregoing, we find that the marks are
similar in appearance, sound, meaning and commercial
impression.
Applicant also argues that registrant is “clearly”
using the mark in association with higher priced
merchandise; that applicant’s goods are diamond jewelry
which cannot be considered inexpensive goods, typically
subject to “impulse” purchases; and that “the nature of the
goods of both the registrant and the applicant are such
that they will be chosen only after careful consideration.”
Brief at 8-9. The record reflects that diamond jewelry can
be purchased at prices as low as $71.40. See webpage from
Zales The Diamond Store (www.zales.com) submitted with
final action at 15 (“Diamond Accent Heart Pendant in
Sterling Silver”). At such prices, we agree with
registrant that the goods would not be purchased on
impulse. However, because registrant’s and applicant’s
identifications of goods encompass relatively low cost
Ser No. 85180269
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goods such as jewelry which includes one small, low grade
diamond, we find that the goods may be purchased with
ordinary care. Thus, in this case, where the only real
differences in the marks are the addition of a descriptive
term in applicant’s mark and an insignificant design in
registrant’s mark, ordinary care is not sufficient to avoid
a likelihood of confusion.
After careful consideration of the record evidence and
arguments, in view of the applicable du Pont factors, we
conclude that applicant's mark for the identified goods is
likely to cause confusion with registrant’s mark for
registrant’s identified goods.
Decision: The Trademark Act § 2(d) refusal is
affirmed.