Tuesday, March 08, 2022

"MADE FOR YOU LAB-GROWN DIAMONDS" Fails to Function as a Trademark For Diamonds, Says TTAB

The Board upheld a refusal to register the proposed mark MADE FOR YOU LAB-GROWN DIAMONDS, in standard character and design form, for 'diamonds; jewelry" [LAB-GROWN DIAMONDS disclaimed], finding that the phrase fails to function as a trademark. Dictionary definitions, media references, third-party uses, and applicant's own specimen of use convinced the Board that MADE FOR YOU LAB-GROWN DIAMONDS "is a merely informational phrase it would not be perceived as an indicator of source in the context of Applicant's identified goods." In re Renaissance Jewelry New York, Inc., Serial Nos. 88304005 and 88584338 (February 24, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).

"The Trade Mark [sic] Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration." In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA 1960). "Whether the composite phrase MADE FOR YOU LAB GROWN DIAMONDS falls within this definition and functions as a mark depends on whether the relevant public, i.e., purchasers or potential purchasers of Applicant’s diamonds and jewelry, would perceive the phrase as identifying the source or origin of Applicant’s goods." Applicant's "mark" failed that test.


Applicant’s proposed standard character mark is a merely informational combination of two widely used phrases , and Applicant’s proposed design mark merely adds a common geometric shape as a background carrier . Applicant’s competitors and other third parties should be able to freely use MADE FOR YOU and LAB GROWN DIAMONDS, either together or separately.

In applicant's specimen of use, the term THE BRILLIANT JEWERLY SHOP is displayed in a stylized manner in the upper right corner, while MADE FOR YOU LAB-GROWN DIAMONDS design mark appears with no indicia of source indication. "To the contrary, it appears immediately above and summarizes the other descriptive matter appearing below it." Although arguably displayed in the manner of a trademark, applicant’s proposed design mark "is merely part of the informational material appearing on the lower left side of the specimen." In short, "applicant’s proposed mark merely informs consumers that Applicant’s goods are lab created and custom made."


Applicant pointed to several third-party registrations for mark that include the phrase "MADE FOR YOU," but the marks and goods were distinguishable and, in any event, each case must be decided on its own record. 

And so the Board affirmed the refusal under Section 1, 2, and 45 of the Lanham Act. The Board declined to reach the issue of genericness.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2022.


At 12:32 PM, Anonymous Anonymous said...

I absolutely WHA and the Board got this wrong INMSHO. Absolutely wrong for the design mark, and probably wrong for the stand-character mark as well.


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