Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE LEONARD S.A.
Serial No. 531,892
May 6, 1987
John J. McGlew, Marion R. Tuttle, Peter Co. Michalos and Margaret Ranft for applicant
Judith Becker
Trademark Examining Attorney
Law Office 2
(John C. Demos, Managing Attorney)
Before Allen, Simms and Krugman
Members
Opinion by Krugman
Applicant has appealed from the Section 2(d) refusal of registration of its mark LEONARD SWISS (Swiss disclaimed) in the form depicted below
for watches and parts thereof [FN1] in view of the previously registered mark LEONARD for precious metalware, namely, sterling silver flatware and jewelry. [FN2] Applicant contends that the marks are different, applicant's mark presented in stylized form as well as featuring an accent mark over the letter 'e' and the term 'Swiss' and that registrant's goods are flatware, rings and pendants made exclusively of silver while applicant sells fine watches of high cost available through exclusive jewelry stores in metropolitan areas. Applicant further points to a consent agreement and a supplemental consent agreement reached between applicant and the owner of the cited registration and made of record herein as evidence that the parties most affected by confusion as to source believe that no such confusion has occurred or is likely to occur.
In the Examining Attorney's view, the marks are quite similar in the commercial impression engendered, the only differences being the addition of an accent mark and a geographically descriptive term which connotes a well known place for the manufacture of high quality watches. The Examining Attorney further asserts that watches and jewelry are related products likely to be sold through the same channels of trade. In support of her position, the Examining Attorney has made of record articles taken from various issues of Jewelers Circular Keystone which show that watches on the one hand and jewelry on the other hand are sold through jewelry stores, catalog showrooms, department stores, discount stores, etc. Finally, the Examining Attorney asserts that the consent agreement and supplemental consent agreement are insufficient to avoid the likelihood of confusion arising from the use of the respective marks on such closely related goods. For the reasons stated below, we reverse the refusal of registration.
As has often been stated, each likelihood of confusion case must be determined on its own facts taking relevant circumstances into account. See: In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 530 F.2d 1396, 189 USPQ 138 (CCPA 1976). In the present case, applicant's stylized LEONARD SWISS mark is used in connection with watches and parts thereof and the mark LEONARD is registered for, inter alia, jewelry. With respect to the marks, while we are constrained to agree with the Examining Attorney that they engender similar commercial impressions, they are not identical; applicant's mark which includes the accent mark over the letter 'e' does serve to alter the pronunciation of the word from its ordinary pronunciation without an accent mark and further serves to give the word a somewhat European connotation, a connotation that is reinforced by the inclusion of the term SWISS.
*2 With respect to the goods, while they are not identical we must again concur with the Examining Attorney's view that they are related products which may be found in jewelry stores, department stores and the like. We note, however, that watches and jewelry are items that are generally not impulse type products but, rather, constitute goods that may be said to be purchased by relatively sophisticated discriminating purchasers who, while concededly not immune from confusion, can be expected to exercise some care in purchasing these goods. See: Fortunoff Silver Sales, Inc. v. Norman Press, Inc., 225 USPQ 863 (TTAB 1985).
Notwithstanding the specific differences in the marks and goods and the relatively discriminating class of purchasers we would, nevertheless, be inclined to affirm the refusal of registration if there were no other factors to consider based on the overall similarity in the commercial impressions engendered by the marks and the commercial relationship between the goods. However, the record also includes a consent agreement between applicant and the owner of the cited registration dated September 25, 1978, a date well prior to the application filing date and a supplemental consent agreement signed by the same parties on September 18, 1985 and October 25, 1985, respectively. The substance of these agreements is that both applicant and registrant have used their marks for many years in the United States and elsewhere without any instances of purchaser confusion; that the parties believe there is no likelihood of confusion's arising from the simultaneous use of the marks; that applicant shall, at all times practicable, include an accent mark over the letter 'e' in its LEONARDn mark; that applicant shall use its best efforts to emphasize and advertise the Swiss origin of itself and its goods and that the parties shall both use their best efforts to assure that all potential and actual purchasers of their respective goods are not confused as to the origin of goods bearing the mark LEONARD OF LEONARD. [FN3]
While the provisions in the consent agreements noted above may not be as stringent as the Examining Attorney would have preferred, the fact remains that the agreements between these two parties selling nonidentical but related products on the question of likelihood of confusion are entitled to substantial weight. These agreements represent the views of parties in the marketplace and in a better position to know the real life situation relating to likelihood of confusion. See: Bongrain International (American) Corp. v. Delice De France, Inc., 811 F.2d 1479, 1 USPQ 2d 1775 (Feb. Cir. 1987); [FN4] In re N.A.D., Inc., supra. In the present case, we find the parties' agreement to use their best efforts to assure that potential and actual purchasers of their respective goods are not confused as to the origin of the goods to be significant and we have no reason to believe that the parties will not be diligent in using their best efforts to accomplish their mutual goal of no purchaser confusion as to source or sponsorship. See: In re American Management Association, 218 USPQ 477 (TTAB 1983).
*3 In view of all the foregoing circumstances and especially in view of the agreements between the parties acknowledging the lack of actual confusion, the mutual belief that there is no likelihood of confusion and the steps to be taken, albeit broadly expressed, to avoid any future likelihood of confusion, we believe the record before us is sufficient to warrant reversal of the refusal of registration and publication of the instant mark for opposition.
Decision: The refusal of registration is reversed.
D. B. Allen
R. L. Simms
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 531,892 filed April 12, 1985.
FN2. Registration No. 943,619 issued September 26, 1972. Section 8 affidavit accepted. Section 15 affidavit received.
FN3. The consent agreements refer to applicant's mark as LEONARD while the actual mark sought to be registered herein is LEONARD SWISS (stylized). To the extent that the agreement is persuasive of a finding of no likelihood of confusion between the use of LEONARD and LEONARD, it is even more persuasive of such a conclusion when the registered mark is compared with applicant's mark sought to be registered.
FN4. This recent decision was decided subsequent to the filing of the appeal briefs herein.