The goods and services:Examining Attorney Hai-Ly Lam submitted persuasive evidence – both third-party registrations and uses – that consumers are accustomed to seeing jewelry and retail store services featuring jewelry under the same marks. This factor weighed heavily in favor of a finding of likely confusion, and also reduced the degree of similarity needed between the marks to establish likely confusion.
Trade channels and customers: As to the goods, because they are identical the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers. As to applicant’s retail store services, the third-party evidence demonstrated that jewelry and retail jewelry services are featured on the same websites and would be encountered by the same customers.
Third-party marks: Applicant De Beers claimed that the “abundance of third party uses of ‘TRUE BRILLIANT’ and similar variations underscore [sic] that the matter common to the marks is diluted and generic.” However, only one third-party “use” was made of record, and that was not enough to show commercial weakness – i.e., it “does not show that consumers are conditioned to distinguish among marks including BRILLIANT(S), BRILLIANCE, and TRU(E).”
Applicant’s substantial third-party registration evidence showed conceptual weakness, and dictionary definitions and third-party descriptive use further supported “the descriptive nature of BRILLIANT(S) and BRILLIANCE, and the suggestive nature of TRU(E) in the jewelry industry.” The Board concluded that the individual terms in the cited mark are conceptually weak.
The record did not show, however, that the combination TRU BRILLIANCE is weak. The cited mark is registered on the Principal Register with no Section 2(f) claim, and none of the third-party registrations combine the two words.
The Board found that, even though there is some degree of conceptual weakness in the individual components of the cited mark, “it is still entitled to appropriate protection against confusingly similar marks.”
The Marks: Applicant, not surprisingly, argued that the inclusion of the “famous DEBEERS trademark” offsets the effect of the similar terms in the subject marks. The Board, however, found the marks to be similar overall in appearance and sound. In addition, the connotations and commercial impressions are “quite similar.”
As to the DE BEERS element in applicant’s mark, the Board observed that “the addition of even a famous house mark by the junior party does not obviate a finding of likelihood of confusion.” Indeed, the addition of a well-known house mark may increase the likelihood of confusion, with consumers mistakenly believing that the goods offered under the registered mark emanate from the newcomer.
If an applicant’s fame were to be considered, a newcomer could unfairly wrest ownership of a prior user’s mark merely by spending more on advertising. Thus, “[a] junior party’s fame cannot excuse likelihood of confusion created by its use of a mark similar to one already in use.” * * * The Trademark Act “protects the registrant and senior user from adverse commercial impact due to use of a similar mark by a newcomer.”
Conditions of Sale: Applicant argued that the relevant purchasers are sophisticated, but the goods and services in the application and cited registrations are not limited to any particular type, quality or cost. The Board must based its decision on the least sophisticated potential purchaser. And so the Board considered this factor to be neutral.
Conclusion: The Board found confusion likely and it affirmed the refusal.
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TTABlog comment: Another “reverse confusion” case.
Text Copyright John L. Welch 2018.