Wednesday, August 29, 2007

Precedential No. 51: TTAB Affirms Rejection of Specimen of Use and 2(d) Refusal of "CORAZON BY CHICA" for Jewelry

In yet another citable decision, the Board affirmed the PTO's rejection of Applicant's specimen of use for the mark CORAZON BY CHICA and Design (mark shown immediately below) for jewelry, on the ground that the specimen of use comprised "a mere drawing of the goods with a representation of how the mark may be displayed and not an actual specimen that applicant used in commerce." For good measure, the Board also affirmed a Section 2(d) refusal, finding Applicant's mark likely to cause confusion with the mark CORAZON (Stylized) for jewelry. In re Chica, Inc., 84 USPQ2d 1845 (TTAB 2007) [precedential].

Under Rule 2.56(c), a photocopy or other reproduction of a specimen "as actually used" is acceptable. The specimen "may not be a "'picture' of the mark, such as an artist's drawing or a printer's proof that merely illustrates what the mark looks like and is not actually used on or in connection with the goods in commerce." TMEP 904.04. "Facsimiles" may be acceptable, but not a drawing of the mark on the goods. An artist's rendition is not a facsimile because it does not show the mark as actually used on the goods. Therefore, Applicant's artist's rendition (shown immediately below), failed the test.

Turning to the Section 2(d) refusal, the Board found that both marks are dominated by the word CORAZON (which means "heart"), and that the goods are identical or closely related and presumably travel in the same channels of trade to the same customers.

Applicant pointed to a third-party registration for the mark shown below for various jewelry items, arguing that it "must be considered undisputed evidence that the styles and logos of the CORAZON COEUR logo and the cited registration are different enough from each other and each sufficiently distinctive to allow both to be registered without the likelihood of confusion." No dice, said the Board.

Third-party registrations may be used to demonstrate that a portion of a mark is suggestive or descriptive, but "cannot justify the registration of another confusingly similar mark."

In addition, the Board noted that the third-party registration includes a disclaimer of "Corazon Coeur." According to the Board, the disclaimed terms may have less weight in a likelihood of confusion analysis. [TTABlog comment: yes, if they are descriptive. But what is descriptive about "Corazon Coeur"? Why did the registrant disclaim the words? Indeed, the public is unaware that terms have been disclaimed.] In any case, the Board discounted the significance of the third-party registration because of the disclaimer.

Text Copyright John L. Welch 2007.


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