Opposer Proves Prior Use of Common Law REVOLUTION JEWELRY WORKS Marks, Wins Opposition Battle

Opposer Revolution Jewelry Works survived some harsh Board sanctions for its attorneys' violation of the Standard Protective Order [TTABlogged here] and emerged victorious in this consolidated opposition to registration of the marks REVOLUTION JEWELRY in standard character form, and REVOLUTION JEWELRY DESIGNS in the design form shown first below [JEWELRY and JEWELRY DESIGNS disclaimed]. The Board found those two marks likely to cause confusion with opposer's common law marks REVOLUTION JEWELRY WORKS and the two marks shown second below, all for jewelry. The Board declared, "[t]he crux of the parties’ dispute in this case rests on priority." Revolution Jewelry Works, Inc. v. Stonebrook Jewelry, LLC DBA Revolution Jewelry, Oppositions Nos. 91248007 and 91248009 (January 15, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch).

To prevail on its likelihood of confusion claims, Opposer Revolution had to prove "that it owns a trademark that was used in connection with its pleaded 'sale of custom jewelry' and various jewelry goods, and not abandoned, prior to Applicant’s constructive use date of January 18, 2017 when it filed the applications, or any earlier priority date Applicant proves." Life Zone Inc. v. Middleman Grp. Inc., Opp. No. 91160999, 2008 TTAB LEXIS 37, *21 (TTAB 2008); see also 15 U.S.C. § 1057(c); Larami Corp. v. Talk to Me Programs, Inc., Opp. No. 85987, 1995 TTAB LEXIS 13, *14 (TTAB 1995) (parties may rely on the constructive use filing dates for purposes of priority).

Reviewing opposer's extensive evidentiary filings, the Board found "the record more than sufficient to prove Opposer’s November 8, 2013 priority date for all three pleaded marks. The supporting testimony by multiple witnesses is detailed, clear and consistent, and the testimony is corroborated by voluminous documentation."

Turning to Applicant Stonebrook’s allegations of priority, the Board noted its admission that its word-and-design mark was not used prior to May 14, 2014 (the alleged first use date in the opposed applications). As to the word mark REVOLUTION JEWELRY, however, applicant claimed a priority date of December 2009, a date earlier than the date alleged in its applications. That raised a problem for Stonebrook:

Because Applicant’s asserted priority date for the ‘185 Mark predates the alleged first use date of May 14, 2014 in the application for the 185 Mark, Applicant must prove this earlier date by clear and convincing evidence. Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, n.7 (Fed. Cir. 1993) (“VCDS alleges use prior to the date that it apparently listed in its registration application as its date of first use, i.e., prior to May of 1985, and therefore VCDS has the burden of establishing that use by clear and convincing evidence instead of mere preponderance of the evidence”).

Stonebrook failed to clear that evidentiary hurdle. The Board found that Stonebrook's testimony was "not specific enough" as to the nature of the alleged use of REVOLUTION JEWELRY "to assure us that it was used as a trademark for jewelry by the relevant date." See, for example, Elder Mfg. Co. v. Int’l Shoe Co., 194 F.2d 114, 118-19 (CCPA 1952) (testimony without specifics and without supporting documentation deemed too vague). "The testimony is not clear, specific and certain. And . . . we lack persuasive documentary evidence that Applicant used REVOLUTION JEWELRY as a mark for the identified goods prior to Opposer’s established priority date."

Turning to the merits of the likelihood of confusion claims, the Board focused on Opposer Revolution's word mark and its second word-plus-design mark. In a straightforward DuPont analysis, it found the parties' respective goods to be identical and the trade channels and consumers overlapping, "weighing heavily in favor of a likelihood of confusion." The mark REVOLUTION JEWELRY in standard characters is "highly similar" to Opposer’s common law word mark REVOLUTION JEWELRY WORKS, since the disclaimed word JEWELRY in Applicant’s mark and the words JEWELRY WORKS in Opposer’s mark, all are generic or descriptive.

As to Stonebrook's word-and-design mark, the Board found it to be "highly similar" to Revolution's word mark and its second word-and-design mark. "[T]hey both display REVOLUTION in relatively large block lettering that appears in the same black-and-red color combination, contain underlining of REVOLUTION, and display the remaining wording in much smaller block lettering underneath."

Finally, the Board found the testimony of two of Revolution's witnesses to be "probative to demonstrate some actual consumer confusion between Applicant’s and Opposer’s marks. "[E]vidence of some instances of actual confusion can serve as a powerful demonstration that many more people are likely to be confused." See In re ALP of South Beach, Inc., Serial No. 75819306, 2006 TTAB LEXIS 108, *12 (TTAB 2006).

And so, the Board concluded (unsurprisingly) that confusion is likely and it sustained the consolidated opposition:

As previously noted, when marks appear on identical goods, the marks need not be as similar to lead to likely confusion. Century 21 Real Estate Corp., 970 F.2d at 877. The parties’ marks share sufficient indicia of similarity that we find them similar overall. In addition, the previous occurrence of actual confusion between the parties’ respective marks weighs heavily in favor of likely additional confusion in the future. However, even if the actual confusion factor were neutral, we still would reach the same conclusion in overall balancing. Given that the relevant DuPont factors weigh in favor of likely confusion, most of them heavily so, the challenged applications present a likelihood of consumer confusion.

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Text Copyright John L. Welch 2025.