Test Your TTAB Judge-Ability: Are "SPARKLE LIFE" and "SPLASHES & SPARKLES" Confusable for Jewelry?

JJI International opposed an application to register the mark SPARKLE LIFE for "bracelets; charms; costume jewelry; necklaces; precious and semi-precious crystal stones and beads for use in jewelry," claiming a likelihood of confusion with its registered mark SPLASHES & SPARKLES for "jewelry." The goods are legally identical, but are the marks close enough? How do you think this came out? JJI International, Inc. v. Sparkle Life LLC, Opposition No. 91204296 (September 25, 2014) [not precedential].

As to the marks, an essential question was "what importance, if any, should be given to the fact that both marks contain the term SPARKLE(S)." It is that word that opposer primarily relied on in asserting likelihood of confusion. Applicant, however, contended that "Sparkle" is "fairly diluted" and is a weak formative for jewelry. It provided printouts from forty (40) websites depicting trademark and descriptive use of "Sparkle," in addition to third-party registered marks containing that term.

The Board agreed with applicant that "Sparkle" is a suggestive, if not descriptive, term entitled to only a narrow scope of protection. Dictionary definitions of "sparkle" referred to jewelry, and the high suggestiveness of the term was confirmed by the website evidence. Although the Board could not gauge the popularity of these websites, the sheer number of websites and the manner of use of the term made it plain that "Sparkle" is a term that "lends itself for use in the field of jewelry." This high suggestiveness is also reflected by the many third-party registrations in the jewelry field, for marks containing the word "Sparkle."

The fact that so many other third-parties in the jewelry business have adopted the term (or its formatives) in their own marks, registered marks with the same [term], or use the term to describe the goods certainly dilutes the term’s source-identifying significance.

In light of the "conceptual or inherent weakness" of "Sparkle," the Board found the involved marks to be dissimilar. The commercial impressions they create are different: SPARKLE LIFE denotes a glamorous lifestyle; SPLASHES & SPARKLES connotes flashy or showy goods. Moreover, opposer's mark has an alliteration that applicant's mark lacks. And the initial terms in the marks, often the focus of consumers, are different.

In sum, the Board found the marks sufficiently dissimilar to negate a likelihood of confusion.

Opposer offered the results of an Internet survey that, according to the expert's testimony, evidenced a 16.5% rate of actual confusion. Applicant voiced various criticisms of the survey, which loosely resembled the Squirt (array) format. The Board found that the universe of respondents was too narrow, and the survey did not present enough marks for the respondent to consider (the survey included only two). Finally, the 16.5% confusion rate was on the lower end of the spectrum for effective surveys.

The Board concluded that the survey results slightly favored a finding of likely confusion, but the dissimilarities between the marks was that critical factor in its decision to dismiss the opposition.

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Text Copyright John L. Welch 2014.