United States Postal Service

Trademark Trial and Appeal Board

Apr 21, 2017

No. 86645466 (T.T.A.B. Apr. 21, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 21, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re United States Postal Service
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Serial No. 86645466
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Sandra A. Riley and Karen E. Owczarski for United States Postal Service.

Jeffrey C. Coward, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Zervas, Kuczma, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
The United States Postal Service (“Applicant”) seeks registration on the Principal
Register of the mark GEM in standard characters for “mailing services, namely,
sorting, handling, and receiving packages and letters,” in International Class 35, and
“delivery services, namely, pickup, transportation and delivery of packages and
documents by various modes of transportation,” in International Class 39.1

1 Application Serial No. 86645466 was filed on May 29, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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The Trademark Examining Attorney has refused registration of the mark in both
classes under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that the mark so resembles the composite word-and-design mark depicted below

and shown in Registration No. 4091950 on the Principal Register for “shipping of
goods,” in International Class 39,2 as to be likely, when used in connection with
Applicant’s services, to cause confusion, mistake, or deception.
After the Examining Attorney made the refusal final, Applicant timely appealed
and requested reconsideration, which was denied. The case has been fully briefed. We
affirm the refusal to register.
I. Prosecution History and Record on Appeal
On June 5, 2016, the Examining Attorney issued a first Office Action refusing
registration on the basis of the cited mark. The Examining Attorney made of record
a definition of the word “shipping” from the American Heritage Dictionary
(www.ahdictionary.com) as “the act or business of transporting goods,” as well as
third-party registrations that the Examining Attorney claimed covered both mailing

2 The cited registration issued on January 24, 2012 and has been maintained through the
filing and acceptance of a combined declaration under Sections 8 and 15 of the Trademark
Act. The registered mark is described as “consist[ing] of a swoosh with three gems. Below
there is the stylized text ‘Gempostage www.Gempostage.com.’”
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and delivery services, and shipping services. Applicant responded to the first Office
Action on December 7, 2015 by traversing the refusal of registration and making of
record pages from the website of the cited registrant.
On February 9, 2016, the Examining Attorney issued a second Office Action
making final the refusal to register and making of record additional third-party
registrations that the Examining Attorney claimed covered shipping services,
mailing services, and pickup, transportation and delivery services, as well as
definitions of the word “postage” from the MacMillan Dictionary
(www.macmillandictionary.com) as “money that you pay in order to send letters and
packages through the mail” and from the Merriam-Webster Online Dictionary
(www.merriam-webster.com) as “the cost of sending a letter or package by mail.”
On August 9, 2016, Applicant filed a Notice of Appeal and a Request for
Reconsideration. The Board instituted the appeal, suspended it, and remanded the
application to the Examining Attorney for consideration of the Request for
Reconsideration. 2 TTABVUE. In the Request for Reconsideration, Applicant made
of record a definition of the word “gem” as a “precious stone; treasure” and various
synonyms for the word from Thesaurus.com, 4 TTABVUE 9-10, as well as pages from
the Internet that Applicant claimed showed the gem-related services with which the
cited mark is actually used.3

3 These consisted of a LinkedIn profile for the registrant’s president, 4 TTABVUE 11-13, an
article entitled “Recommendations for Shipping Jewelry,” which mentions the registrant, 4
TTABVUE 14-16, a member benefits brochure issued by the Mid-America Jewelers
Association that displays the cited mark and mentions the registrant, 4 TTABVUE 17-18,
and what Applicant described as the “Services” page from the registrant’s website. 4
TTABVUE 19.
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After the Examining Attorney denied Applicant’s Request for Reconsideration on
September 21, 2016, 5 TTABVUE, the appeal was resumed. 6 TTABVUE.
II. Likelihood of Confusion Analysis
Section 2(d) of the Trademark Act prohibits the registration of a mark that so
resembles a registered mark as to be likely, when used in connection with the goods
or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based upon an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We consider each du Pont factor that is relevant and
for which there is record evidence. See, e.g., M2 Software, Inc. v. M2 Commc’ns, Inc.,
450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015).
In every case under Section 2(d), two key considerations are the similarities
between the marks and the similarities between the goods 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 turn first to the du Pont factor regarding the similarity of the services, on which
there is no disagreement between Applicant and the Examining Attorney, and to the
related du Pont factor regarding the similarity of the channels of trade and classes of
customers for the services.
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A. Similarity of the Services, Channels of Trade, and Classes of
Customers
Our determination of the similarity of the services is based upon the
identifications of services in the application and in the cited registration. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The services do not have to be identical or
even competitive for confusion to be likely because the relevant issue is not whether
consumers would confuse the respective services per se, but rather whether they
would confuse the source of the services. In re Davia, 110 USPQ2d 1810, 1818 (TTAB
2014). “[L]ikelihood of confusion can be found ‘if the respective [services] are related
in some manner and/or if the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source.’” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)).
In Applicant’s main brief, “Applicant concedes that the ‘shipping of goods’ services
covered by the registration for the [cited mark] are related to the mailing and delivery
services covered by the Application. Thus, the sole issue is the similarity or
dissimilarity of Applicant’s GEM mark when compared with [the cited mark].” 7
TTABVUE 7.4 In Applicant’s reply brief, Applicant reiterates “that the likelihood of

4 After making this concession, Applicant purports to emphasize, “[f]or the record,” that “the
underlying services with which Applicant and Registrant intend to use or use their respective
marks are quite different,” claiming that the registrant “does not ship goods, but instead
Serial No. 86645466
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confusion analysis hinges on the similarity or dissimilarity of the Marks.” 10
TTABVUE 5.
Apart from Applicant’s concession that the services are related, the record
contains at least 15 use-based, third-party registrations covering the services
identified in the application in one or both of the International Classes and in the
cited registration, or very similarly-described services. June 5, 2016 Office Action at
9-11; 15-23; February 9, 2016 Office Action at 2-4; 8-10; 17-29; 36-38; 42-47; 54-56;
60-62; 66-68; 75-77. This evidence corroborates Applicant’s concession and indicates
that the “‘services are of a type which may emanate from a single source.’” In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (quoting In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998)). This du Pont factor supports
a finding of a likelihood of confusion.
Finally, the Class 39 identification in the application, “delivery services, namely,
pickup, transportation and delivery of packages and documents by various modes of
transportation,” clearly encompasses the “shipping of goods” services identified in the
cited registration.5 Accordingly, the Class 39 services are legally identical.

arranges for others to ship gemstones and jewelry,” and that the cited registration “covers
services Registrant does not offer.” 7 TTABVUE 7, n.1. This claim is based upon the
registrant’s website and other Internet evidence, and is irrelevant to our analysis of the
similarity of the services. We must consider that issue based solely upon the identifications
of services in the application and in the cited registration, Stone Lion, 110 USPQ2d at 1161;
Octocom, 16 USPQ2d at 1787; and “we may not limit, by resort to extrinsic evidence, the
scope of [services] as identified in the cited registration or in the subject application.” In re
Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015).
5 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed form or
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We take
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Because the services identified in both International Classes in the application
and in the cited registration are unrestricted as to their channels of trade or classes
of consumers, the services in both International Classes are presumed to be rendered
through all normal channels of trade to all ordinary purchasers of those services. See,
e.g., Coach, 101 USPQ2d at 1722. In view of the unrestricted identifications of the
services, Applicant’s concession that the services are related, the record evidence
corroborating that concession, and the legal identity of the Class 39 services, we may
presume that the channels of trade and classes of customers for the services in both
International Classes are the same, and that the services in both International
Classes are marketed to and used by the general public. See In re Viterra, Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). As a result, this du Pont factor
also supports a finding of a likelihood of confusion.
B. Similarity of the Marks
We turn now to consideration of the similarity of the marks. This du Pont factor
focuses on “‘the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.’” Palm Bay Imps. Inc. v.
Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “[L]ikelihood of confusion

judicial notice of the following definitions from dictionary.com of words in the Class 39
identification of services in the application: (1) “pickup” is “an instance of stopping for or
taking aboard passengers or freight as by a train, ship, taxicab, etc., especially an instance
of taking freight or a shipment of goods onto a truck;” (2) “transportation” means “the
business of conveying people, goods, etc.;” (3) “delivery” means “the carrying and turning
over of letters, goods, etc. to a designated recipient or recipients;” and (4) “package” means
“the packing of goods, freight, etc.” (www.dictionary.com, accessed on April 20, 2017).
Serial No. 86645466
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cannot be predicated on dissection of a mark, that is, on only part of a mark. On the
other hand, in articulating reasons for reaching a conclusion on the issue of confusion,
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 consideration of the marks in their entireties.” In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
“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, 101 USPQ2d at 1721 (quotation omitted). Where, as
here, the goods or services are “offered to the general public, emphasis must also be
placed on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of them.” In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987). Because the services here are legally-identical in part and
otherwise “related, ‘the degree of similarity necessary to support a conclusion of likely
confusion declines.’” Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d
1350, 1354 (Fed. Cir. 2004) (quoting Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)).
For ease of reference in following our analysis on this du Pont factor, including
our discussion of the arguments of Applicant and the Examining Attorney, we again
reproduce the cited composite word-and-design mark below:
Serial No. 86645466
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The Examining Attorney argues that the “literal term” GEM, not the design
element or the URL in the cited mark, is the dominant portion of the mark because
of the visual prominence of GEMPOSTAGE within the mark, the fact that the gem
design element reinforces the meaning of the word, and the fact that GEMPOSTAGE
is the portion of the mark that consumers use when referring to or requesting the
registrant’s shipping of goods services. 9 TTABVUE 10-12. The Examining Attorney
argues that within the word GEMPOSTAGE, the word GEM would receive greater
focus than the word POSTAGE because GEM is the first part of the word and “the
term ‘POSTAGE’ is on its face descriptive for ‘shipping services.’” 9 TTABVUE 11-12.
The Examining Attorney contends that the overall commercial impression of the
marks is similar because Applicant’s mark consists solely of GEM, “the same common
wording as the registered mark, and there is no other wording to distinguish it from
the registered mark.” 9 TTABVUE 13.
In Applicant’s main brief, Applicant summarizes its arguments as follows:
“• The term GEM is descriptive for Registrant’s services and entitled to no
protection apart from the Mark and Design as a whole;
• The Marks differ in overall commercial impression;
Serial No. 86645466
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• The wording of the Mark and Design is inherently weak and entitled to only a
narrow scope of protection; therefore
• Confusion is not likely.”
7 TTABVUE 8.
Applicant argues that the Examining Attorney makes three errors in comparing
the marks:
(1) He gives no deference to the evidence of record showing
that GEM is descriptive for Registrant’s gemstone and
jewelry postage payment, postage insurance and shipping
arrangement services (“Registrant’s Services”); (2) He
gives undue significance to the descriptive term GEM as
the “dominant portion” of the Mark and Design; and (3) He
does not compare the marks in their entireties, referring
both implicitly and literally to the Mark and Design as the
word mark “GEM POSTAGE,” disregarding the URL and
the design element of the Mark and Design.”
7 TTABVUE 8. Applicant further argues that the “design element of the cited mark
is its dominant portion” and “[t]here is no similarity between this design and
Applicant’s GEM mark,” 7 TTABVUE 15, and that GEM “is an acronym for Global
Ecommerce Marketplace,” 7 TTABVUE 13, and its status as an acronym affects the
pronunciation and meaning of the mark. 7 TTABVUE 13. Applicant cites to no
evidence of the meaning of “gem” other than its dictionary definition from
Thesuarus.com as a “precious stone; treasure.”
We begin our analysis by determining the dominant portion of the cited mark.6
On this issue, Applicant and the Examining Attorney are far apart; Applicant claims

6 There is no need to determine the dominant portion of Applicant’s mark because Applicant
concedes that “the dominant and only feature of its mark is the term GEM.” 7 TTABVUE 14.
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that the design element of the cited mark is the dominant portion, 7 TTABVUE 14-
15, while the Examining Attorney claims that the word GEM within the word
GEMPOSTAGE is the dominant portion. 9 TTABVUE 12. We conclude that neither
is correct, and that GEMPOSTAGE is the dominant portion of the cited mark.
The cited mark is a composite word-and design mark. “In the case of a composite
mark containing both words and a design, ‘the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it is affixed,’” Viterra, 101
USPQ2d at 1908 (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200
(Fed. Cir. 1983)),7 because “the literal component of brand names likely will appear
alone when used in text and will be spoken when requested by consumers.” Id. at
1911.
The word GEMPOSTAGE is the most prominent portion of the cited mark, as it
appears in the center of the mark in large bolded lettering. The design element of the
mark, consisting of what appear to be three postage stamps, each displaying a
precious stone, and a swoosh design that appear above GEMPOSTAGE, cannot be
verbalized when the cited mark is spoken, and the URL “www.gempostage.com” that
appears below GEMPOSTAGE in smaller type has no source-identifying significance

7 In determining the dominant portion of the cited mark, we are mindful of the Federal
Circuit’s admonition in Viterra “that there is no general rule that the letter portion of the
mark will form the dominant portion of the mark,” and that each case involving a composite
mark must be decided on its own facts. Id. The facts here make it clear, for the reasons
discussed below in the text, that the word GEMPOSTAGE, and not the design element, is
the dominant portion of the cited mark.
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because it simply identifies the Internet address for the GEMPOSTAGE entity
identified by the mark.8
The record contains third-party webpages (including one that depicts the cited
mark), made of record by Applicant for another purpose, which are directed to
consumers and which contain textual references to the cited registrant and its
services simply as “Gempostage.” These suggest that consumers are conditioned to
consider the word GEMPOSTAGE as the primary source identifier in the cited mark.
See Viterra, 101 USPQ2d at 1911 (“the literal component of brand names likely will
appear alone when used in text and will be spoken when requested by consumers.”)
They also suggest that the relevant “literal component” of the cited mark is the word
GEMPOSTAGE alone and that the URL www.gempostage.com functions in the cited
mark as merely an Internet address, not a stand-alone source-identifier. Two
examples are reproduced below:

8 Applicant “agree[s] that WWW. and .COM are not source indicative and PTO and Board
precedent is in accord with this view.” 7 TTABVUE 14, n.5.
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4 TTABVUE 14-18.
Applicant spends several pages of its main brief, 7 TTABVUE 8-11, arguing that
the design element of the cited mark is its dominant portion because the word GEM
in the cited mark is descriptive for what Applicant calls “Registrant’s Services,” which
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Applicant defines, based on extrinsic evidence, as “gemstone and jewelry postage
payment, postage insurance and shipping arrangement services.” 7 TTABVUE 8.
Applicant cites cases discussing mere descriptiveness under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1). These arguments completely miss the mark.
As explained above, the determination of likelihood of confusion is based solely
upon the identifications of services in the application and in the cited registration,
and we cannot narrow or restrict the identification of services in the cited registration
on the basis of the extrinsic evidence offered by Applicant.9 There is nothing on the
face of the cited registration indicating that the word GEMPOSTAGE lacks
distinctiveness for the services of shipping of goods, as the Patent and Trademark
Office did not require its disclaimer as applied to those services, and, as discussed
below, there is no evidence in the record that the distinctiveness of the word
GEMPOSTAGE has been reduced by third-party uses and registrations of GEM-
formative marks. The dominant portion of a mark is the portion “most likely to be
remembered by consumers” and “used in calling for the services or otherwise in

9 Applicant argues that the “Examining Attorney mixes the questions of relatedness of
services and similarity of the marks, and consequently misconstrues the test for
descriptiveness, which does not depend at all on the recitation of services, but instead
depends on whether the word GEM ‘immediately conveys knowledge of a quality, feature,
function or characteristic of the goods or services with which it is used.’ See In re Guaylay
[sic], 820 F.2d 126, 128, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).” 7 TTABVUE 10 (emphasis
supplied by Applicant). The issue on appeal obviously is not whether the cited mark is merely
descriptive, but Applicant misconstrues the test for descriptiveness in any event. That test,
like the one for likelihood of confusion, is based upon the identification of goods or services in
the subject application or registration, not upon extrinsic evidence of actual use of the subject
mark. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512, 1518 (TTAB 2016)
(considering the issue of mere descriptiveness “in relation to the goods for which registration
is sought . . .” and the issue of likelihood of confusion on the basis of “the similarity or
dissimilarity of the goods as identified in the application and the cited registration.”).
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referring to” the registrant. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). The
design element in the cited mark cannot be used to call for the registrant’s services
or to refer to their provider, and for this reason and the other reasons discussed above,
we reject Applicant’s position that the design element is the dominant portion of the
cited mark.
The Examining Attorney, on the other hand, argues that “the term ‘GEM’ would
be viewed as the dominant literal term of the mark.” 9 TTABVUE 12. He reaches this
conclusion because “the wording ‘GEMPOSTAGE’ is the only source indicative
wording contained in the literal portion of the registered mark, and the term
‘POSTAGE’ is on its face descriptive for ‘shipping services,’” 9 TTABVUE 12, and
because “‘GEM’ is the first word appearing in the registered mark . . .” 9 TTABVUE
13. We reject this position as well. GEMPOSTAGE appears as a single term in the
cited mark, and while Applicant argues “that the term POSTAGE within the [cited
mark] is descriptive for . . . the services covered by the registration, namely ‘shipping
of goods,’” 7 TTABVUE 14, n.5, the record suggests that the entire word
GEMPOSTAGE is the portion of the cited mark that will be used to identify and refer
to the registrant and to call for its services.10

10 At the same time, we note that one of the third-party webpages depicted above, and the
page from the registrant’s website made of record by Applicant in response to the first Office
Action, depicts the cited mark as follows:

This depiction of the cited mark provides particular emphasis to the term GEM, which is the
entirety of Applicant’s mark.
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Having determined that GEMPOSTAGE is the dominant portion of the cited
mark, we turn next to the required comparison of the marks in their entireties in
terms of their appearance, sound, connotation, and commercial impression.
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar,” Davia, 110 USPQ2d at 1812 (citations omitted), and “[i]n a
particular case, any one of these means of comparison may be critical in finding the
marks to be similar.” M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544, 1550 (TTAB
2010).
With respect to the appearance of the marks, Applicant identifies the obvious
differences by listing the word and design elements in the cited mark that are not
contained in Applicant’s standard character mark. 7 TTABVUE 12. These differences
are insufficient to distinguish the marks in appearance. As discussed above, the word
GEMPOSTAGE is the dominant portion of the cited mark, in part because it appears
in large, bolded, and slanted lettering. Applicant does not claim any particular font
style, size, or color for its standard character GEM mark, and thus would be “entitled
to depictions of the standard character mark regardless of font style, size or color,”
Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259
(Fed. Cir. 2011), including a depiction of GEM in the same font style and size in which
the dominant word GEMPOSTAGE is depicted in the cited mark, and in the same
color or colors in which the cited mark is or may be rendered. In re Mr. Recipe, LLC,
118 USPQ2d 1084, 1090 (TTAB 2016).
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The other elements in the cited mark largely reinforce the visual prominence of
GEMPOSTAGE. The stamps-and-gems design element serves to “emphasize, in a
pictorial way, the main word portion of the cited mark.” In re Wine Society of America,
12 USPQ2d 1139, 1142 (TTAB 1989),11 while the URL www.gempostage.com
incorporates the word GEMPOSTAGE into an Internet address in which Applicant
“agree[s] that WWW. and .COM are not source indicative.” 7 TTABVUE 14, n.5. We
acknowledge the visual differences between the marks noted by Applicant, but find
that the marks are nevertheless similar in appearance when considered in their
entireties, with greater weight being given to the dominant word GEMPOSTAGE in
the cited mark, and taking into account that the “proper test is not a side-by-side
comparison of the marks.” Coach, 101 USPQ2d at 1721.
With respect to the similarity of the marks in sound, Applicant argues that its
mark “is an acronym for Global Ecommerce Marketplace and will be pronounced by
consumers as either ‘G-E-M’ or as the common dictionary term ‘gem,’”12 while the
cited mark “is pronounced ‘GEM-POST-AGE W-W-W-(dot)-GEM POST-AGE-(dot)-

11 As Applicant puts it, the “designs reinforce that the term GEM within the combined term
GEMPOSTAGE and the URL means exactly what consumers perceive it to mean, namely a
‘precious stone.’” 7 TTABVUE 10 (emphasis in original).
12 The Merriam-Webster Dictionary defines an “acronym” as “a word (such as NATO, radar,
or laser) formed from the initial letter or letters of each of the successive parts or major parts
of a compound term; also: an abbreviation (such as FBI) formed from initial letters.”
(www.merriam-webster.com, accessed on April 20, 2017). The latter form of acronym, in
which letters are pronounced individually in the manner in which Applicant argues that its
mark will be pronounced “G-E-M,” is also known as an “initialism.” See, e.g., Miller Brewing
Co. v. Anheuser-Busch, Inc., 27 USPQ2d 1711 (TTAB 1993) (discussing the initialism “G.D.L.”
and “GDL”).
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COM.’” 7 TTABVUE 13. These claims are not supported by the drawing of Applicant’s
mark, or by the record.
There is nothing on the face of Applicant’s mark,13 or elsewhere in the record,
indicating that Applicant’s mark is in fact an acronym or initialism, much less that
consumers would perceive or pronounce it as such, and we cannot accept the
argument of Applicant’s counsel in lieu of proof. Cf. In re Piano Factory Grp. Inc., 85
USPQ2d 1522, 1525 (TTAB 2006) (noting absence of record evidence indicating that
VOSE mark would be perceived as an acronym or initialism, rather than as a
surname). We find, on the basis of the mark itself and the record, that it is much more
likely that consumers will perceive and pronounce Applicant’s mark “as the common
dictionary term ‘gem.’” 7 TTABVUE 13.14
Applicant acknowledges that “pronunciation of Applicant’s mark as ‘gem’ would
share some minor similarity with pronunciation of” the cited mark, but argues that
the marks sound different because “Applicant’s mark consists of a single syllable,
while the [cited mark] contains twelve.” 7 TTABVUE 13. The cited mark includes
both the word GEMPOSTAGE and the URL www.gempostage.com, but “‘[c]ompanies
are frequently called by shortened names . . .” Anthony’s Pizza & Pasta Int’l v.
Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1280 (TTAB 2009) (internal quotation

13 For example, the letters in Applicant’s mark are not separated by periods or other
punctuation marks, and the phrase “Global Ecommerce Marketplace” that Applicant claims
its GEM mark abbreviates does not appear in the drawing of the mark.
14 The principle that there is no correct way to pronounce a mark does not apply to common
English words like gem. Research in Motion Ltd. v. Defining Presence Mktg. Grp. Inc., 102
USPQ2d 1187, 1193 (TTAB 2012).
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omitted). In Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135 (Fed. Cir. 2015),
the Federal Circuit cautioned against simply assuming such truncation of a mark
without supporting evidence but the record here contains such evidence showing that
the cited mark has been truncated to the word GEMPOSTAGE alone in textual use
of the mark. We can reasonably infer from such textual use of GEMPOSTAGE alone
that consumers will also be likely to use GEMPOSTAGE alone, rather than the
twelve-syllable mouthful “‘GEM-POST-AGE W-W-W-(dot)-GEM POST-AGE-(dot)-
COM,’” 7 TTABVUE 13, in oral uses of the cited mark to identify and refer to the
registrant and to call for its services. See Viterra, 101 USPQ2d at 1911.15
We find that both marks would be heard to contain the identical word GEM as the
first sound when they are verbalized and, as Applicant acknowledges, “the term
POSTAGE within the [cited mark] is descriptive for . . . the services covered by the
registration, namely ‘shipping of goods,’” 7 TTABVUE 14, n.5, because “postage”
means the payment for the shipping of goods. Given the record evidence suggesting

15 Applicant argues that “any similarity between the sound of the marks is of little
significance because Registrant and Applicant use or intend to use their respective marks
primarily on the Internet, where consumers do not audibly request services.” 7 TTABVUE
13. Neither the identification of services in the application nor the identification of services
in the cited registration limits the channels of trade for the respective services to the Internet,
and we cannot read such a limitation into either identification. See Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“where the likelihood of confusion is
asserted with a registered mark, the issue must be resolved on the basis of the goods named
in the registration and, in the absence of specific limitations in the registration, on the basis
of all normal and usual channels of trade and methods of distribution.”). The channels of
trade for both sets of services must be deemed to include retail store and telephone channels
in which the respective marks would be used orally to call for the services and to identify
their providers.
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that the cited mark is likely to be vocalized as GEMPOSTAGE, we find that GEM is
similar in sound to the cited mark when the cited mark is considered in its entirety.
Applicant’s argument for dissimilarity of the marks in the final means of
comparison, connotation and commercial impression, depends entirely upon
Applicant’s unsupported claim that GEM “is an acronym for Global Ecommerce
Marketplace.” 7 TTABVUE 13. Applicant argues that “[t]his meaning differs entirely
from ‘services related to sending precious stones and jewelry by mail, available at
www.gempostage.com,” which is one of the meanings that Applicant attributes to the
cited mark. 7 TTABVUE 13. As discussed above, the record indicates that Applicant’s
GEM mark would be viewed, heard, and understood simply “as the common
dictionary term ‘gem.’” 7 TTABVUE 13. In the absence of any evidence in the record
to the contrary, we agree with the Examining Attorney that “it is likely that
consumers would attribute the same meanings for the term ‘GEM’ to both marks
when used in connection with the highly related, if not identical, listed services.” 9
TTABVUE 13.
As used in connection with the identified respective mailing, delivery, and
shipping of goods services, both marks connote a similar impression of elegance or
refinement of service through the image (real or imagined) of a precious stone or
jewelry, and the marks thus have a similar commercial impression. The “-POSTAGE”
suffix in the dominant GEMPOSTAGE portion of the cited mark describes the
payment for the shipping of goods, but does not significantly detract from the mark’s
image of elegance or refinement. We thus find the marks to be similar in meaning,
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taking into account that the average consumer “retains a general rather than a
specific impression” of them. Appetito Provisions, 3 USPQ2d at 1554.
All three means of comparison of the marks support a finding that the marks are
similar when they are considered in their entireties. As the degree of similarity
required for confusion to be likely is reduced because the services with which the
marks are used are legally-identical in part and otherwise related, this du Pont factor
supports a finding of a likelihood of confusion.
Finally, we must address Applicant’s arguments that “[e]vidence demonstrating
the weakness of a senior mark must be considered in determining the likelihood of
confusion” and that “[m]erely descriptive and weak designations are entitled to a
narrower scope of protection.” 7 TTABVUE 15. We agree with these general
statements of the law, but neither they, nor the cases cited by Applicant, In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) and Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015), aid
Applicant on the record here.
In Coors, the Federal Circuit reversed the Board’s conclusion that the mark BLUE
MOON and design for beer was confusingly similar to BLUE MOON and design for
restaurant services, but not because the registered mark was a weak mark. To the
contrary, the court “sustain[ed] the Board’s factual finding that the [cited] mark is
not a weak mark.” 68 USPQ2d at 1063. The court reversed the Board’s decision
primarily because it found that substantial evidence did not support the Board’s
finding that beer was related to restaurant services, “[i]n light of the requirement
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that ‘something more’ [must] be shown to establish the relatedness of food and
restaurant products for purposes of demonstrating a likelihood of confusion.” Id.
There is no such requirement regarding the relatedness of the services here, which
Applicant concedes, and the record confirms, are related in part and legally identical
in part.
In Juice Generation, the Federal Circuit reversed the Board’s finding that the
applicant’s PEACE LOVE AND JUICE mark for juice bar services was confusingly
similar to the opposer’s PEACE & LOVE formative marks for restaurant services
because “the Board inadequately assessed and weighed the strength or weakness of
GS's marks—a consideration that is connected to ‘the number and nature of similar
marks in use on similar goods,’ identified in DuPont, 476 F.2d at 1361 . . .” 115
USPQ2d at 1674. That error was “significant given the evidence in th[e] case, which
include[d] a substantial number of third-party marks incorporating the phrase ‘peace
and love’ in connection with restaurant services or food products, the bulk of which
are three-word phrases much like Juice Generation's mark.” Id. The referenced
evidence consisted of more than 20 registered or unregistered marks containing the
words PEACE and LOVE that appeared in both parties’ marks. Id. at 1673, n.1. The
record here is devoid of evidence that the word GEMPOSTAGE (or the prefix GEM)
in the cited mark is inherently weak for the shipping of goods, or has been weakened
by third-party uses and registrations of GEM-formative marks for similar services.
The du Pont factor regarding the nature and number of similar marks in use on
similar services is neutral.
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Conclusion
The mailing and delivery services in the application are legally identical in part
and otherwise related to the shipping of goods services in the cited registration, and
the channels of trade and classes of customers for the services are the same or
overlap. The marks are sufficiently similar in appearance, sound, connotation, and
commercial impression under the circumstances for confusion as to the source or
sponsorship of Applicant’s mailing and delivery services to be likely.
Decision: The refusal to register is affirmed with respect to both International
Class 35 and International Class 39.