[This guest post was authored by John S. Strand, Trademark & Litigation Shareholder at Wolf Greenfield.] As we’ve noted before on this blog, third-party registrations and uses may help an applicant overcome a Section 2(d) refusal under Juice Generation and Jack Wolfskin, but it depends on the quantity and quality of those registrations and uses. Here, the mark at issue was DIAMONDS ON THE ROCKS for “jewelry, namely diamond jewelry.” Applicant attempted to overcome a Section 2(d) refused based on a registration for SILVER ON THE ROCKS for “jewelry made in whole or significant part of silver.” Ultimately, the Board stranded the Applicant on the rocks and upheld the Examining Attorney’s rejection, even after applicant presented five common law uses of the phrase ON THE ROCKS. In re Don Vintache Inc., Serial No. 86186795 (Sept. 27, 2018) (Opinion by Judge Francie R. Gorowitz).

The goods and channels of trade: The Board found the involved goods and channels of trade are at least “in-part identical” because the Examining Attorney put forth evidence to show “that both ‘jewelry made in … significant part of silver’ and ‘diamond jewelry’ may encompass silver jewelry containing diamonds.”

The marks: The Board found that the marks at issue differed only in the highly descriptive or generic element – “silver” versus “diamonds.” The Board found the phrase “ON THE ROCKS” to be the dominant, unitary portion of the mark, defined as “(of a drink) served undiluted and with ice cubes” and “(of a relationship or enterprise) experiencing difficulties and likely to fail.”

The Board rejected the Applicant’s attempts to isolate the word “ROCKS” from the unitary phrase “ON THE ROCKS.”

Strength of the cited mark: Applicant contended that the phrase “ON THE ROCKS” was highly diluted. It did not introduce any other registrations, but instead introduced web pages from five different web sites related to various jewelry stores. The Board found that “merely five potential uses of the phrase ‘ON THE ROCKS,’ [was] not sufficient to establish that the phrase carries a suggestive or descriptive connotation in the jewelry industry and thus is weak.” The Board continued by expressly finding that this evidence was “easily distinguishable” from the evidence presented in Juice Generation and Jack Wolfskin.

Interestingly, if the Board would not have found the phrase “ON THE ROCKS” to be unitary, the Board likely would have had to evaluate the strength of the cited mark based on 15 different registrations for jewelry items containing the word “ROCKS” that the Applicant introduced.

Conclusion: The Board found DIAMONDS ON THE ROCKS likely to cause confusion with the cited registered mark SILVER ON THE ROCKS, and so it affirmed the refusal.

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TTABlog comment: Well, would you have appealed?

Text Copyright John L. Welch 2018.