Monday, March 26, 2007

Precedential No. 21: LEADING JEWELERS Bests JEWELERS GUILD in TTAB 2(d) Tussle

What could be more exiting than two jewelers' associations fighting over their respective collective membership marks? Well, almost anything. In this snorefest, the Board dismissed an opposition and two cancellation petitions aimed at the mark LEADING JEWELERS OF THE WORLD for "indicating membership in an organization which sells diamond jewelry," finding it not likely to cause confusion with the mark MEMBER LEADING JEWELERS GUILD & Design mark (shown immediately below) for "indicating membership in an organization consisting of jewelry distributors" [JEWELERS GUILD disclaimed]. Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901 (TTAB 2007). [precedential].

Although the marks would be encountered by "the same relevant persons," the Board found this factor to be outweighed by the dissimilarities between the marks:

"in view of the weakness of Plaintiff's mark, when we compare the respective marks in their entireties as to appearance, sound and meaning, we find that the dissimilarities in the marks outweigh the similarities, and that the marks are likewise dissimilar rather than similar in terms of their commercial impression."

There were a few interesting facets to the decision. The Defendant lamely argued that its mark is aimed primarily at high-end jewelry retailers, while Plaintiff's mark is directed to chain-store retailers located in shopping malls. Unfortunately, however, the involved applications and registrations contain no such restrictions. Indeed, the testimony showed that the marks would be encountered by "some of the same members of the relevant public, who could include businesses and vendors of jewelry, as well as the ultimate purchasers of jewelry."

the applied-for mark

Plaintiff claimed that actual confusion had occurred: its President was approached at trade shows on several occasions, and was asked if plaintiff and defendant were one and the same. He also received an e-mail from a former member who asked whether plaintiff and defendant were different. The Board was not impressed:

"the incidents ... show, at most, that inquiries were made as to the relationship, if any, between plaintiff and defendant. It is not clear, however, that the persons were, in fact, confused. In other words, there is no evidence that a jewelry retailer mistakenly joined or attempted to join defendant when it intended to join plaintiff. In short, it is not clear that actual confusion has occurred."

In any case, the Board noted, even if some actual confusion could be inferred from that evidence, it would be de minimis.

In sum, the Board found the marks "too dissimilar" to support a likelihood of confusion finding.

Text Copyright John L. Welch 2007.


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