Tuesday, June 07, 2005

TTAB Reverses Flow Of "PEARL RIVER" 2(d) Refusal

The Board reversed a Section 2(d) refusal to register PEARL RIVER for "retail department store services, featuring traditional Chinese goods," finding the mark not likely to cause confusion with the registered mark PEARL RIVERS for "mother of pearl jewelry" (PEARL disclaimed). In re Pearl River Chinese Products Emporium, Inc. , Serial No. 75406111 (May 26, 2005) [not citable].

PEARL RIVER department store
Canal & Broadway, NYC

As to the marks, the Board found that "the meanings of the marks differ to consumers." Applicant's mark is likely to be seen as a reference to the Pearl River in China. The registered mark (which may suggest an individual's name) "would likely refer to the composition of the pearl jewelry and to rivers where pearls are found." Thus the registered mark has a suggestive meaning and is not entitled to a broad scope of protection.

With regard to the relatedness of the goods and services, the Board agreed with applicant that "there is no 'under the same roof' rule that all products with similar marks sold in one store will cause confusion." Likewise, "there is no per se rule that confusion is likely simply because the marks involved concern department store services and an item that could be sold in a department store." While the Board did not disagree with the Examining Attorney's contention that Chinese department stores may sell jewelry, it could not find on this record that the goods and services involved are closely related.

PEARL RIVERS mother of pearl

The Examining Attorney submitted two third-party registrations (owned by I. Magnin's and Dillard's) that cover department store services and jewelry, as well as other third-party registrations for department store services featuring, inter alia, the sale of jewelry as part of those services. The Board noted that the latter registrations do not support the argument that "department stores use the same mark for the department store services and as a house mark for jewelry sold in the store." As to the former two registrations, they are "not sufficient for us to make such a finding."

Balancing the du Pont factors, the Board held that confusion is not likely.

Text ©John L. Welch 2005. All Rights Reserved.


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