TTAB Test: Is "DIAMONDS IN THE TROUGH" Deceptive for Diamond-less Jewelry?

Tracy Boyle applied to register the mark DIAMONDS IN THE TROUGH & Design, shown below, for beaded bracelets and necklaces, and for retail services featuring same, but the Examining Attorney deemed the mark deceptive under Section 2(a) because Boyle's goods and services did not contain or concern diamonds. Boyle maintained that the phrase DIAMONDS IN THE TROUGH is a double entendre that creates the impression that her jewelry does not contain diamonds. How do you think this came out? In re Boyle, Serial No. 85741096 (October 15, 2015) [not precedential].

A mark is deceptive under Section 2(a) if: (1) it misdescribes the character, quality, function, composition, or use of the goods and/or services; (2) Prospective purchasers are likely to believe that the misdescription actually describes the goods and/or services; and 3) The misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase the goods and/or services. A mark is deceptive even if only a portion of the mark is deceptive.

Applicant Boyle contended that DIAMONDS IN THE TROUGH is a clever play on the phrase "diamond in the rough," and therefore it was improper to consider the word "diamonds" in isolation. She insisted that her mark "uses an incongruous, unitary phrase with a very unique commercial impression that trumps any descriptive meaning of the word 'diamonds.'"

Applicant argues the Mark plays on the expression “diamond in the rough” to indicate, in a very unique and recognizable way, that the goods and services bearing the Mark are a rare and unique commodity. According to Applicant, “[t]o suggest that diamonds, a very high cost, valuable commodity, would be found in such a location is laughable, which is the Mark’s intent.”

The Board, however, was not amused. "[W]hen customers see the phrase DIAMONDS IN THE TROUGH used in Applicant’s Mark, they are likely to initially think of and visualize an animal feeding trough filled with diamonds. Such an image does not convey the absence of diamonds." Moreover, the depiction of a diamond (and seven smaller diamond designs) in applicant's mark confirms the impression that applicant's goods and services contain or involve diamonds.

Thus the first prong of the deceptiveness test was met.

As to the second prong, Boyle argued that even if the word "diamonds" misdescribes her goods and services, consumers will not believe the description in view of the overall commercial impression made by the mark. She asserted (without support) that "consumers encountering the design would certainly recognize the clever play on the expression 'diamond in the rough' and deduce that the word 'diamond' is not meant to indicated jewelry."

Examining Attorney Matthew G. Galan submitted evidence that jewelry is often comprised of diamonds, customers often seek out diamonds, and jewelry retailers extol and market the desirability of diamonds. [Doh! - ed.]

The Board concluded that the words DIAMONDS IN THE TROUGH would certainly bring to mind diamonds, particularly in light of the use of the plural "diamonds" and the prominent display of a large diamond in the center of the mark. Purchasers are therefore likely to believe that DIAMONDS IN THE TROUGH actually describes goods having diamonds and services relating to diamonds.

As to materiality, Boyle did not dispute that the presence of diamonds would make jewelry more desirable. The record was chock full of evidence supporting that conclusion. Therefore, the third prong of the test was met.

And so the Board affirmed the refusal to register.

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TTABlog comment: Looks like the Examining Attorney had the last laugh. Note that the goods are identified as "jewelry, namely bracelets and necklaces with and without crystals." What is the purpose of the phrase "with and without crystals." Is that a significant non-limitation?

By the way, wouldn't "Diamonds in the Trough" be a great trademark for diamonds? Maybe in the farm belt.

Text Copyright John L. Welch 2015.