Tsavo Gem Imports, Inc.

Trademark Trial and Appeal Board

Aug 24, 2007

No. 76641945 (T.T.A.B. Aug. 24, 2007)

Mailed: August 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tsavo Gem Imports, Inc.
________

Serial No. 76641945
_______

Mark Levy of Mark Levy & Associates, PLLC for Tsavo Gem Imports,
Inc.

Renee McCray, Trademark Examining Attorney, Law Office 111 (Craig
D. Taylor, Managing Attorney).
_______

Before Holtzman, Zervas and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Tsavo Gem Imports, Inc., has filed an application
to register the mark MANDARIN ICE (in standard character form) for
goods which were ultimately identified as "synthetic garnets having
an orange tinge" in Class 14.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Serial No. 76641945, filed October 13, 2004, asserting dates of first
use and first use in commerce of March 2005. The examining attorney's
initial requirement for a disclaimer of the word ICE was subsequently
withdrawn.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 76641945
2
applicant's mark, when applied to applicant's goods, so resembles
the mark MANDARIN (in typed form) for "jewelry, namely, pearls" in
Class 14 as to be likely to cause confusion.2
When the refusal was made final, applicant appealed.
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 likelihood of confusion issue. In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between the
marks and the similarities or dissimilarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
We turn first to the goods. Applicant contends that its
"synthetic garnets having an orange tinge" are "completely
different" from registrant's "jewelry, namely, pearls," arguing
that the stones differ in their formation process, toughness,
specific gravity and color. In applicant's view the difference in
the two stones is "equivalent to the difference between $.99
children's wristwatches and antique grandfather clocks." Applicant
maintains that while the goods are "technically related," they are
not likely to be confused. (Brief, pp. 8-10.)

2 Registration No. 2686274, issued February 11, 2003.
Ser No. 76641945
3
It is true that pearls and synthetic garnets are different
stones with different attributes. However, the question is not
whether purchasers can differentiate the goods themselves but
rather whether purchasers are likely to confuse the source of the
goods. See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). Thus, goods need not be similar or even
competitive to support a finding of likelihood of confusion. It is
sufficient if the respective goods are related in some manner
and/or that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
from or are associated with the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Registrant's pearl jewelry and applicant's synthetic garnets
are inherently related items of finished jewelry with gemstones and
loose gemstones. The examining attorney has made of record a
number of use-based, third-party registrations showing that the
same mark has been registered for finished jewelry, on the one
hand, and loose gemstones such as garnets, on the other. For
example, Registration No. 3023758 for the mark PUREBEADS lists
necklaces, bracelets, rings and earrings, as well as semiprecious
beads, pearls, and precious and semiprecious gemstones;
Registration No. 3036223 for the mark LANTANA COLLECTION broadly
Ser No. 76641945
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lists "jewelry" as well as precious stones including pearls and
garnets; Registration No. 3036236 for the mark LULET (and design)
lists "jewelry," as well as "gems and stones, namely, pearls,
...garnets,...and the like"; Registration No. 2838465 for the mark
LIANG DESIGNS lists "jewelry," as well as pearls and semi-precious
gemstones; and Registration No. 2989287 for the mark BEADS AMORE
lists "jewelry," such as pearls, necklaces and bracelets, as well
as semi-precious gemstones and glass beads. Although the third-
party registrations are not evidence of use of the marks in
commerce, the registrations have probative value to the extent that
they suggest that the respective goods are of a type which may
emanate from the same source. See, e.g., In re Albert Trostel &
Sons Co., supra; and In re Mucky Duck Mustard Co., 6 USPQ2d 1467
(TTAB 1988).
In addition, the evidence shows that pearls and garnets are
complementary stones that are often used together in the same
pieces of jewelry. See, for example, metmuseum.org selling
earrings decorated with garnets and river pearls, and also earrings
with freshwater pearls and synthetic garnets; tyler-adam.com
selling earrings designed with pearls and garnets; mysimon.com
selling a pearl and garnet "jewelry set"; cgi.ebay.com auctioning a
"bangle bracelet with real pearls and garnets"; and a Nexis excerpt
from WWD (February 25, 2002) describing a jewelry designer's
"garnet and freshwater-pearl earrings."
Ser No. 76641945
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Applicant argues that the goods are sold in different channels
of trade to different purchasers. In particular, applicant argues
that its own goods "travel through channels of commerce for people
interested in synthetic garnet stones" who are either attracted to
the characteristics of that type of stone or who "are looking for a
less expensive alternative to registrant's pearls"; whereas
registrant's goods, according to applicant, "travel through
channels of commerce for more affluent people interested in
pearls." (Brief, p. 10.) Applicant maintains that purchasers of
both goods "are sophisticated and conscientious in their purchase
and use of the goods." (Brief, p. 11.)
In cases where, as here, an application and registration do
not contain limitations describing a particular channel of trade or
class of customer, the goods are presumed to travel in all normal
channels of trade to all usual purchasers. See Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1492, 1
USPQ2d 1813, 1814-15 (Fed. Cir. 1987). It can be presumed that
these closely related goods are marketed through at least some of
the same channels of trade, and that the purchasers for both types
of products would include ordinary purchasers. See Venture Out
Properties LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887 (TTAB
2007). The examining attorney has submitted printouts of several
third-party registrations covering retail stores or other retail
outlets that sell both jewelry and gemstones. See, for example,
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Registration No. 3067964 for the mark JEWELRY CENTRAL for "mail
order catalog services and telephone order services featuring
jewelry, jewelry supplies, diamonds, gemstones, pearls, [etc.]";
and Registration No. 2979955 for the mark LEGEND BLUE for on-line
retail store services in the field of "jewelry" and gemstones and
pearls. At least one website, idasgems.com, sells both finished
jewelry as well as loose gemstones, including garnets and pearls.
However, it is not particularly significant whether or not
applicant’s and registrant’s goods may typically be purchased
through the same outlets since the two items may not even be
purchased at the same time. Consumers who had previously purchased
registrant's pearl jewelry, upon encountering applicant's synthetic
garnets, if offered under a similar mark, regardless of where or
when they found it, are likely to believe because the goods are
closely related, that they come from or are in some way associated
with the same company.
Applicant's argument that pearls are expensive and are
purchased only by "affluent" customers is unpersuasive. The
evidence shows that pearls may be, but are not necessarily
expensive items of jewelry, and that pearls and garnets may both
fall within same inexpensive to moderate price range. For example,
target.com offers pearl bracelets for $25.49 and garnet earrings
for $33.99; mysimon.com offers pearl necklaces "from $35"; silver-
insanity.com offers "genuine" pearl earrings for $16.99 and garnet
Ser No. 76641945
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earrings for $16.91; cherishedtimedesigns.com sells synthetic pearl
earrings for $25.00 and simulated garnet earrings for $25.00, and
it also sells synthetic pearl bracelets and synthetic garnet
bracelets, both for $40.00.3 In addition, the previously mentioned
Nexis excerpt from WWD refers to "garnet and freshwater-pearl
earrings" that sell for $26. Ordinary purchasers of these
relatively low cost items of jewelry and gemstones are not
necessarily sophisticated, and they may purchase these goods
casually and on impulse, thus increasing the risk of confusion.
See Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d
1144, 227 USPQ 541 (Fed. Cir. 1985); and In re Thomas, 79 USPQ2d
1021 (TTAB 2006).
We turn next to the marks. Applicant argues that MANDARIN and
MANDARIN ICE are not similar in sound or appearance because of the
different number of words and syllables in the two marks; and that
the addition of the word ICE to MANDARIN distinguishes the meaning
and commercial impression of the two marks. Applicant points to
the definitions of "ice" in Merriam Webster's OnLine Dictionary (m-
w.com) which include the following: "1. a) Frozen water,... 2. a

3 It is clear from the evidence that pearls, like garnets and other
gemstones, can be "natural" or "synthetic" and that the stones may vary
widely in price and quality. See, generally, gemsociety.org and
diamondgiveaway.com; and also, e.g., Registration No. 3083658 for the mark
REAL PEACE (and design) for necklaces made of "synthetic, and/or genuine
pearls...and/or simulated, synthetic and/or genuine gemstones...".
Registrant's broadly worded identification is presumed to encompass pearls
of all types and levels of quality.
Ser No. 76641945
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substance resembling ice... 3. a state of coldness... 4. a) a
frozen dessert containing a flavoring... 5. slang: diamonds;
broadly: jewelry." (Italics in original.) Applicant also relies
on definitions of "mandarin" in its noun form meaning, "1. a) A
public official in the Chinese Empire...; 2. a) a form of spoken
Chinese used by the court and the official classes of the
Empire...; 3. [Swedish mandarin (apelsin) mandarin (orange),...
perhaps from the color of a mandarin's robes] a) a small spiny
orange tree...of southeastern Asia with yellow to reddish-orange
loose-rinded fruits;... b) the fruit of a mandarin"; and as an
adjective, meaning, "... 2. marked by polished ornate complexity of
language ." (Merriam Webster's, supra; italics in
original.)
Based on these definitions, applicant argues that MANDARIN
standing alone suggests a public official, a form of spoken
Chinese, a tree, or ornate complexity, but that MANDARIN followed
by ICE functions as an adjective modifying ICE and "could mean, for
example, a frozen dessert derived from a Mandarin tree." (Brief,
p. 8.)
When applicant's mark MANDARIN ICE and registrant's mark
MANDARIN are compared in their entireties, we find that the marks
are similar in sound, appearance, meaning and commercial
impression. The word MANDARIN is registrant's entire mark, and
that word is aurally and visually a significant component of
Ser No. 76641945
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applicant's mark. There is only one short, single syllable word
difference in the two marks and that difference is not sufficient
to distinguish one mark from the other either in sound or in
appearance. Moreover, the word MANDARIN is the first word
purchasers will see or hear when encountering either mark and it is
therefore more likely to have a greater impact on purchasers and be
remembered by them when they encounter the two marks at different
times. See Presto Products Inc. v. Nice-Pak Products Inc., 9
USPQ2d 1895 (TTAB 1988).
This is particularly likely considering that both marks convey
similar suggestive meanings, and that the additional word ICE in
applicant's mark does not significantly change the meaning or
commercial impression created by MANDARIN alone.4 We disagree with
applicant that MANDARIN in registrant's mark would suggest a form
of spoken Chinese and that MANDARIN ICE would suggest a frozen
dessert. The significance of a mark must be determined not in the
abstract but rather in relation to the goods to which it is

4 Applicant argues that "many registrations include ICE as part of the
mark, even though the companion words in the mark are separately
registered" (Brief, p. 5), and applicant has listed three "sets" of such
third-party registrations. The examining attorney did not object to the
list as being unsupported by copies of the registrations. Accordingly,
this evidence has been treated as if properly of record and considered for
whatever probative value it may have. That said, however, this evidence
is of no probative value. Applicant has only listed the marks and the
registration numbers without specifying the identification of goods and/or
services therein or providing any other information contained in the
registrations. In any event, the fact that ICE has been registered as a
component of other marks has no bearing on the question of whether the
mark involved in this case, MANDARIN ICE, is registrable.
Ser No. 76641945
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applied. See Presto Products Inc., supra at 1897. Applicant's
goods are synthetic garnets and applicant has identified these
stones as "having an orange tinge." Further, applicant states that
the mark was selected in part to suggest the orange tinge of the
stone. (Response dated January 23, 2006, p. 3.) Thus, in the
context of applicant's goods, the word MANDARIN in MANDARIN ICE is
likely to suggest the color of the stones rather than a food
product.
Registrant's mark, MANDARIN, is likewise suggestive of color.
It can be seen from the evidence submitted by the examining
attorney that pearls can come in a variety of colors and shades.
The entry from the American Heritage Dictionary of the English
Language (Fourth Edition)5 defines "pearl" as "1. A smooth,
lustrous, variously colored deposit...". (Italics added.) The
website cgi.ebay.com sells black as well as lavender colored
pearls; target.com sells white pearls; mysimon.com sells "natural
golden," pearls as well as blue, pink and "black rose" colored
pearls; and silver-insanity.com sells "creamy white" pearl earrings
as well as peach or pink colored pearl earrings.
Further, the word ICE in applicant's mark is highly suggestive
of gemstones. One meaning of "ice" as shown in the dictionary

5 From dictionary.com.

Ser No. 76641945
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entries relied on by applicant is as a slang term for "jewelry."6
The term is at least suggestive of the ice-like or glass-like
quality of gemstones. Applicant states that it chose the mark
MANDARIN ICE for synthetic garnets, not only for its orange tinge
as we noted earlier, but also to suggest "the ice-like...,
translucent quality of its goods." (Response dated July 10, 2006,
pp. 5, 8.) We also note that "ice" or "glass" is used to refer to
transparent gemstones. For example, thecraftkit.com website sells
"White Ice Glass Gems mix", "Blue Ice Glass Gems mix" and a variety
of other different colored "glass" gems. In the context of
applicant's goods, the word ICE does not impart a new meaning to
MANDARIN. Instead, the term MANDARIN combined with ICE retains its
suggestive meaning as a color of the gemstones, and does not change
the meaning of the mark as a whole into "a frozen dessert derived
from a Mandarin tree" as applicant claims. The mark MANDARIN ICE
is likely to suggest a line of MANDARIN gemstones or jewelry from
the same source as MANDARIN pearls.
Applicant argues that the shared term MANDARIN is weak and
entitled only to a narrow scope of protection given, according to
applicant "its widespread use by third parties within the field."
(Response dated July 10, 2006, p. 11.) In support of this
contention, applicant submitted a website directory listing for
"Mandarin Jewelry" on kellysearch.com; a listing for "Mandarin

6 Merriam-Webster OnLine Dictionary, supra.
Ser No. 76641945
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Jewelry Wholesalers" on goliath.ecnext.com; and an auction on
gds.org for a piece of jewelry from "Mandarin Jewelry Box." In
addition, applicant submitted a page from answers.com advertising
the sale "Mandarin Orange Topaz Jewelry" and from cgi.ebay.com
advertising the sale of a "Mandarin Red Nugget Freshwater Pearl" as
well as several listings on ebay.com for jewelry with "Mandarin
Orange" gemstones.
At best, this evidence shows only a few instances of use of
the term "MANDARIN" by other companies in the jewelry field. The
evidence fails to show sufficiently widespread use of MANDARIN to
demonstrate that registrant's mark is weak in relation to the
identified goods. Furthermore, in most of the listings, such as
those for "Mandarin Orange Topaz Jewelry" and "Mandarin Red Nugget
Freshwater Pearl," "Mandarin" is used to suggest the color of
gemstones including pearls. These uses serve to reinforce the
finding that the word MANDARIN in both applicant's and registrant's
marks suggests the color of their gemstones and that the meaning
and overall commercial impression of the two marks, as a whole, are
essentially the same.
We recognize that MANDARIN, as a suggestive mark, is not
entitled to the broadest scope of protection. However, the mere
fact that the shared term is suggestive, or even "weak," does not
automatically mean that confusion is not likely. Even weak marks
are entitled to protection against the registration of a similar
Ser No. 76641945
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mark for closely related goods. See King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between weak
marks as between strong marks).
We find that consumers familiar with registrant's pearl
jewelry sold under its MANDARIN mark would be likely to believe,
upon encountering applicant's mark MANDARIN ICE for closely related
goods, that the goods originated with or are associated with the
same entity.
Applicant's argument that doubt as to likelihood of confusion
is resolved in its favor is incorrect. To the extent that there is
any doubt on the issue of likelihood of confusion, it is settled
that such doubt must be resolved in favor of the prior registrant.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993).
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.