Chow Tai Fook Jewellery Company Limited

This Opinion Is Not a
Precedent of the TTAB

Mailed: December 13, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chow Tai Fook Jewellery Company Limited
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Serial No. 87374361
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Diane J. Mason of LeClairRyan LLP,
for Chow Tai Fook Jewellery Company Limited.

Thomas Young, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Taylor, Wellington, and Gorowitz,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant Chow Tai Fook Jewellery Company Limited seeks to register on the

Principal Register the mark T MARK, in standard characters, for, in part: 1

Precious metals and their alloys; goods in precious metals or coated therewith,
namely, jewelry, key rings, key chains, jewelry cases, watches, jewelry charms,
medals, figurines, tie clips, cuff links, sculptures, decorative pins in the nature
of jewelry, decorative boxes, jewelry ornaments in the nature of jewelry; jewelry,
precious stones, semi-precious stones, gemstones, pearls, jades, diamonds,

1Application Serial No. 87374361 was filed March 16, 2017, under Section 44(e) of the
Trademark Act, based on Applicant’s ownership of a foreign (Hong Kong) registration
No. 303814227. The application also covers goods and services in Classes 9, 35, and 42, which
the Examining Attorney made clear are not subject to the “partial refusal.” 9 TTABVUE 3.
Serial No. 87374361

rubies, sapphires, emeralds; horological and chronometric instruments, clocks,
watches; cases for jewelry in International Class 14.

The Trademark Examining Attorney refused registration under Section 2(d) of the

Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied

to the goods identified in Class 14 of the application, so resembles the registered

mark:2

for “jewelry” in International Class 14, as to be likely to cause confusion, to cause

mistake, or to deceive.

After the Examining Attorney made the refusal final, Applicant requested

reconsideration and appealed to this Board. The request for reconsideration was

denied by the Examining Attorney. The appeal is briefed. We affirm the refusal to

register.

I. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all probative facts

in evidence that are relevant to the factors bearing on the issue of likelihood of

confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,

2 Registration No. 4512182, issued April 8, 2014. The colors red and gold are claimed as a
feature of the mark and the registration contains a statement that “the name ‘T J MARC’ in
the mark does not identify a living individual.

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Serial No. 87374361

1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key

considerations are the relatedness of the goods or services and the similarities

between the marks. 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.”).

A. Identity of the Goods/ Trade Channels/ Classes of Purchasers

With regard to the goods and channels of trade, we must make our determinations

under these factors based on the goods as they are identified in the application and

the cited registration. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534

(Fed. Cir. 1997); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746

F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard

Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v.

Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

In this case, Applicant’s identification of goods includes “jewelry,” which is also

listed in the cited registration. Thus, these goods are identical in part.3

In view of the identity of the goods, and in the absence of restrictions or limitations

in their identifications, it is presumed that the channels of trade and classes of

customers for these goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101

3Applicant’s Class 14 goods also includes “jewelry cases, … jewelry charms,” that are either
encompassed by or closely related to Registrant’s identified “jewelry.” Nevertheless, we focus
our likelihood of confusion analysis on the identical jewelry goods; it is sufficient for a refusal
based on likelihood of confusion that relatedness is established for any item encompassed by
the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).

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Serial No. 87374361

USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel

in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co.,

403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical

goods, the channels of trade and classes of purchasers are considered to be the same);

In re Am. Cruise Lines, Inc., 128 USPQ2d 1157, 1158 (TTAB 2018). Accordingly, the

factors involving the relatedness of the goods and their trade channels and classes of

purchasers weigh heavily in favor of finding a likelihood of confusion.

B. Conditions of Sale – Consumer Care

Applicant argues that “jewelry is purchased by consumers with care” because it is

usually a “very personal” item and “can often be expensive.”4 However, the

identifications of Applicant’s and Registrant’s goods includes “jewelry,” without any

restriction as to quality or price point. We must presume that the jewelry includes

inexpensive jewelry items that may be purchased without more than ordinary care.

Indeed, we must base our decision on the least sophisticated potential consumers.

See, e.g., In re La Peregrina Ltd., 86 USPQ2d 1645, 1649 (TTAB 2008) (where

identification of “jewelry” in application was not limited by price, Board was required

to “assume that the jewelry includes inexpensive items that consumers would

purchase with nothing more than ordinary care.”). As a result, this du Pont factor is

neutral in our analysis.

4 7 TTABVUE 14, 15.

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Serial No. 87374361

C. Purported Weakness of “TJ”

Applicant argues that “TJ has the connotation of a common nickname, and

therefore is a somewhat weak mark, as demonstrated by the co-existing marks,”

referencing a Wikipedia entry to “T.J. (given name),” a printout from an

“eBabyNames” website for “TJ,” and a table of six third-party registrations.5

Applicant further concludes that “given the weakness of the term TJ, such marks are

able to co-exist with the mark T for the same or highly related goods.”6

We disagree with Applicant’s assertion that the evidence demonstrates that the

TJ element is weak due to extensive third-party use. While the sixth du Pont factor

requires us to give weight to any commercial weakness based on third-party use of

similar marks for the same or similar goods/ services, the record is devoid of such

evidence. Only one of the six third-party registrations containing the letters TJ covers

jewelry, whereas the others involve apparel or other facially unrelated goods.

Moreover, as the Board explained in In re Morinaga Nyugyo Kabushiki Kaisha, 120

USPQ2d 1738, 1745 (TTAB 2016), “citation of third-party registrations as evidence

of market weakness is unavailing because third-party registrations standing alone,

are not evidence that the registered marks are in use on a commercial scale, let alone

that consumers have become so accustomed to seeing them in the marketplace that

they have learned to distinguish among them by minor differences.” See also AMF

5 7 TTABVUE 8. Applicant’s referenced materials, including copies of the third-party
registrations, were submitted by Applicant with its Request for Reconsideration. (6
TTABVUE).
6 Id. at 13.

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Serial No. 87374361

Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973).

The record does not establish that the letter combination TJ or the letter T has any

special meaning in connection with jewelry.7

In sum, we find no commercial weakness in “TJ,” or any element of either mark,

in connection with jewelry.

D. Similarity of the Marks

We now address the first du Pont likelihood of confusion factor focusing 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 Clicquot

Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691 (quoting du Pont, 177 USPQ

at 567). “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 Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101

USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).

The marks “‘must be considered … in light of the fallibility of memory ….’” In re

St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting

San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196

USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average

purchaser, who normally retains a general rather than a specific impression of

7In our analysis of the marks and their connotations and commercial impressions, we discuss
any suggestiveness or weakness of the cited mark, or elements thereof.

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Serial No. 87374361

trademarks. See St. Helena Hosp., 113 USPQ2d at 1085; Geigy Chem. Corp. v. Atlas

Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971). Because the goods

are “jewelry,” the average purchaser is an ordinary consumer of jewelry and, in this

respect, we reiterate that Registrant’s and Applicant’s jewelry, as described in the

respective identifications of goods, is not limited to any range of quality or price point.

Our analysis is not predicated on dissection of the involved marks. Stone Lion, 110

USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties. Id.;

see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 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.”). Nonetheless, 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. Stone

Lion, 110 USPQ2d at 1161. For instance, as the Federal Circuit has observed, “[t]hat

a particular feature is descriptive or generic with respect to the involved goods or

services is one commonly accepted rationale for giving less weight to a portion of a

mark ….” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

In addition, where, as here, marks are used on legally identical goods, the degree

of similarity between the marks necessary to support a determination that confusion

is likely declines. Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330,

102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century

Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).

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Serial No. 87374361

With the aforementioned principles in mind, we find the respective marks,

and T MARK, are overall more similar than not. In terms of sound,

they are very close. That is, consumers are likely to verbalize each mark by its

respective initial letters, T or TJ, followed by the phonetic equivalents, MARK or

MARC.

As to appearance, there is some similarity due to MARK being the larger term in

Applicant’s mark and MARC displayed prominently in the registered mark. We also

remain cognizant that Applicant seeks registration of T MARK in standard

characters, and therefore seeks protection of a mark that may be displayed in any

font, including the same stylized font as Registrant’s mark. In re i.am.symbolic, LLC,

866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Viterra, 101 USPQ2d at

1910; SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983).

The crown design element, present in the registered mark but not in Applicant’s

mark, is a point of difference that does very little to distinguish the marks. It is not

very prominent, being smaller in size than the lettering. Moreover, consumers will

focus on the literal portion of Registrant’s mark because consumers will use the

letters/words, rather than the design, to refer to and call for the goods. See Viterra,

101 USPQ2d at 1908; In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) (if

a mark comprises both a word and a design, then the word is normally accorded

greater weight because it would be used by purchasers to request the goods or

services). See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.

1983).

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Serial No. 87374361

As to the marks’ overall meaning and commercial impression, they also are related

in that consumers may understand each as a combination of similar initials followed

by very similar first names.8 Specifically, Applicant’s T MARK may be understood as

referencing a person with a first initial “T” preceding the given name, “Mark.”

Similarly, Registrant’s mark has the initials “TJ,” also followed by the first name,

“Marc.” In this regard, we have considered the Wikipedia and eBabyNames internet

evidence submitted by Applicant showing that “TJ” may be used as a nickname used

by individuals whose first name begins with “T” and middle name begins with “J.”9

While TJ may be a common or recognized set of initials, we do not find it so different

from the single initial “T.”

The online articles regarding “markings” placed on jewelry have little, if any,

relevance when comparing the overall similarity of the marks. Rather, the articles

describe the significance of certain engravings on jewelry and how some

manufacturers may imprint their trademark (or “mark”) on the jewelry or other

markings to indicate the quality and the material content of the jewelry.

Ultimately, considering the marks in their entireties, as we must, we find that

Applicant’s T MARK is similar to the stylized, registered mark, TJ MARC and design.

The term MARK and its phonetic (and near visual) equivalent, MARC, are featured

prominently in both marks. When spoken, the marks will sound almost alike. The

8In this respect, we do not necessarily agree with the Examining Attorney’s contention that
MARK, as used in Applicant’s mark, would be understood as a surname. 9 TTABVUE 5. The
Examining Attorney does not cite to evidence showing any popularity as to “Mark” being a
surname, whereas “Mark” is a common and popular first name.
9 6 TTABVUE 13-14.

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Serial No. 87374361

marks also convey similar meanings. These similarities in the marks outweigh their

differences. This factor weighs in favor of a finding that confusion is likely.

E. Other Factors

Applicant submitted copies of registrations for the following marks:

(Reg. No. 4319504, owned by Registrant) for “jewelry”;10
and

(Reg. No. 4256479) for “jewelry.”11

Applicant argues that these registrations show that “the USPTO has previously

determined that a registration for MARK for jewelry can co-exist with MARC for

jewelry.”12 However, as we often point out and it is well-settled, in an ex parte

proceeding involving a particular application, neither the examining attorney nor the

Board is bound by the decisions of other examining attorneys made in connection with

other applications. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566

(Fed. Cir. 2001) (“even if some prior registrations had some characteristics similar to

[applicant’s] application, the PTO’s allowance of such prior registrations does not bind

the Board or this court.”); and In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828

10 Registration issued on April 16, 2013.
11 Registration issued on December 11, 2012.
12 7 TTABVUE 6.

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Serial No. 87374361

F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). Here, as discussed above, we find

the specific involved marks to be confusingly similar.

We have considered all of the arguments and evidence of record, including those

not specifically discussed, as they pertain to the relevant du Pont likelihood of

confusion factors. To the extent that any other du Pont factors for which no evidence

was presented by Applicant or the Examining Attorney may nonetheless be

applicable, we treat them as neutral.

II. Conclusion

In this case, Applicant’s and Registrant’s goods – jewelry – are identical and will

be found in the same trade channels and encountered by the same classes of

consumers. Because Applicant’s and Registrant’s jewelry may include inexpensive

jewelry, we cannot assume a high degree of care in purchase selection. With these

factors in mind and because Applicant’s mark, T MARK, is similar to Registrant’s

stylized TJ MARC and design mark, we find that confusion is likely.

Decision: The refusal to register Applicant’s mark as to Class 14 is affirmed.

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