TTAB Test: Is "DIAMONDESS" Deceptive for Simulated Diamonds?
The USPTO refused registration of the mark DIAMONDESS for "jewelry primarily comprised of simulated diamonds and gemstones," deeming the mark deceptive under Section 2(a). Applicant Hyman appealed, arguing that DIAMONDESS is a coined term that suggests a female figure, rather than a diamond. The Examining Attorney argued that the word could be viewed as simply a plural of the word "diamond." How do you think this came out? In re The Hyman Companies, Inc., Serial No. 85483397 (January 14, 2015) [not precedential].
A mark is deceptive if: (1) it contains matter that is misdescriptive of the character, quality, function, composition or use of the goods; (2) prospective purchasers would be likely to believe that the misdescription actually describes the goods; and (3) the misdescription would be likely to affect a significant portion of the relevant consumers’ decision to purchase the goods.
The crucial question, according to the Board, was this: "whether the addition of the suffix –ESS provides a basis for not believing that the goods are in fact made of real diamonds." The Board found applicant's emphasis on the coined nature of the mark to be "highly relevant."
While acknowledging that this is a close case, we find that DIAMONDESS is not deceptive within the meaning of Section 2(a). Placing the word DIAMONDESS on a product is not the same as placing the word DIAMOND on it: the use of DIAMONDESS, which has no definite meaning, is objectively not a statement that the product is a diamond. While the presence of the word “diamond” within the mark obviously suggests the idea of a diamond, a costume jewelry merchant could certainly, without deceptiveness, compare his goods to diamonds or say that they are diamondlike. In such a context, we believe the differences between “diamond” and DIAMONDESS in appearance, sound, and meaning are a sufficient signal to customers that they are not being offered a diamond.
And so the Board reversed the refusal to register.
Read comments and post your comment here.
TTABlog comment: I wouldn't call this opinion a jewel of clarity.
Text Copyright John L. Welch 2016.
posted by John L. Welch @ 1/15/2016
3 comments
3 Comments:
I agree with this decision (as summarized in the post).
This mark is less deceptive than most of the scams and deceptions involved in the "real" diamond business.
I'm with the examining attorney on this one. The Board's reasoning that "a costume jewelry merchant could certainly, without deceptiveness, compare his goods to diamonds or say that they are diamondlike" is inapposite. Saying product X is "like" product Y necessarily means X is not Y, so yeah, that merchant could say his costume jewelry is "diamondlike." But unlike “diamondlike,” applicant's mark DIAMONDESS doesn't contain any element that negates the strong implication of diamonds.
And the Board is obviously correct that “DIAMONDESS, which has no definite meaning, is objectively not a statement that the product is a diamond,” but so what? Could someone register DIAMOND123, which has no definite meaning, for simulated diamonds?
As an aside, when I first saw the mark my mind saw “diamondNess.”
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