459 F.2d 1049 | C.C.P.A. | 1972
This is an appeal by Industria Esponola de Perlas Imitación, S.A. (Industria) and Trifari, Krussman and Fisliel, Inc. (Trifari) from a decision of the Trademark Trial and Appeal Board
The record reflects that Industria has for many years manufactured, sold and advertised in various countries, including the United States, imitation pearls, various articles of jewelry containing imitation pearls, and related goods, all identified by the trademark MAJORICA in various forms and combinations. Industria is the owner of three validly subsisting registrations for its goods, namely:
MAJORICA.
MAJ ORICA PEARLS on a ribbon design:
The mark sought to be registered by National is a crest design incorporating and featuring the term “MAJORCA” in block letter form as well as the words “PERLAS AMANTE” for manufactured pearls. The mark which National seeks to register is depicted as follows :
In response to a requirement by the examiner, National disclaimed the term “MAJORCA.” ‘‘
Appellants introduced-testimony. establishing the commercial success of Industrial quality goods identified by its nationally and internationally known trademark MAJORICA. Appellants’ witness, Krussman, president and treasurer of Trifari, testified that the goods identified, 'by the. trademarks MAJORICA, alone and in association
Since June 1964, when Trifari became the exclusive United States licensee of the mark MA JÓNICA, to the end of 1967, sales of its goods in the United States approximated $2,500,000. During that period of time Trifari expended in excess of $250,000 in advertising and promotion of its imitation pearls, pearl necklaces and related goods identified by prominent display of the mark MA JONICA in various forms including the crest design.
We think the record establishes that, as a result of this widespread and extensive use and promotion, Industrial registered trademark MA JONICA has become well known to the consuming public. This conclusion finds further support in the fact that the mark MA JO-NICA alone and in association with the crest design has been prominently featured and displayed in many retail outlets, and by them ■advertised in national magazines such as The New Torher, Vogue, Harpers and Women’s .Wear Daily.
National is an importer of approximately 3,000 items of housewares and giftwares from various parts of the world. It imports imitation pearls from the island of Majorca, Spain and sells these simulated pearls in grocery stores and like outlets under the mark it seeks to register. The individual pearls, which sell for. approximately ten cents, are placed in packets which also contain a threader kit and a stringing and knotting kit for making a necklace. The mark sought to be registered appears on the back of the kit and on the front there appears illustrative material along with the notation “Perlas Amante (Sweetheart Pearls) from the Isle of Majorca, Spain.1’ It advertises its pearls through cooperative mailing pieces with retailers including Yons and Shopping Bag Markets.. An advertisement shows the mark sought to be registered and the notation “Perlas Amante Pearls (’Sweetheart Pearls).”
The board noted that priority of use of MA JONICA and the crest design resided with appellants (opposers); however, it was of the view that appellee was using the'term MAJONCA to inform the public that its simulated pearls came from the island of Majorca, Spain and that appellants’ registered mark MA JONICA was an “obvious play on this geographic designation.” Additionally, the 'board concluded that: ' ■ •
* * * regarding applicant’s mark and. the crest mark shown in Indnstria’s registration, it is our opinion that while both marks embody a crest design they áre readily distinguishable in their essential characteristics.
We are persuaded that the concurrent use of marks MA JORICA and MAJORCA as applied to, in part, identical goods, such as manufactured pearls and imitation pearls and imitation pearl necklaces, would be likely to cause confusion inasmuch as the two marks are all but phonetically and visually indistinguishable. It is clearly apparent that the two words have ocular similarity. Even a discerning purchaser viewing the marks separately in the market place would be likely to confuse one with the other. In an audio sense, MAJORICA and MAJORCA are all but identical. We think it not at all unlikely that confusion would occur when those interested in simulated pearls discussed, as we think they would, these products as MAJORICA and MAJORCA pearls.
With reference to the disclaimer of the term MAJORCA in National’s application, we are not persuaded that from the standpoint of assessing the commercial impact in the market place the disclaimer bears any relevancy. This view was recognized and succinctly stated in Ex parte Maya de Mexico, 103 USPQ 158 (Com. Pat. 1954):
* * * it is the unit which creates the commercial impression upon potential purchasers. They neither know nor care whether or not a part of the mark is disclaimed. * * * Disclaimers have no effect upon purchasers. They do not know about “disclaimers,” “dominant portions” or “distinguishing features”. They are impressed by the mark as they see it or hear it, and they do not ordinarily stop to analyze it. [Emphasis added.]
It is well settled that the question of likelihood of confusion is to be resolved upon a consideration of the marks in their entireties. Disclaimed material forming part of a trademark cannot be ignored in determining whether the marks are confusingly similar. Schwarzkopf v. John H. Breck, Inc., 52 CCPA 957, 340 F. 2d 978, 144 USPQ 433 (1965).
The record here, in our view, supports the conclusion that a likelihood of confusion would result from the concurrent use of appel
We, therefore, reverse the decision of the board.
163 USPQ 482 (1969).
No. 713,498, registered April 4, 1961, for unstrung imitation pearls, imitation pearl necklaces, earrings, bracelets, pins and brooches.
No. 713,499, registered April 4,1961, for goods same as in footnote 2.
No. 807,795, registered May 3,1968, also for goods same as in footnote 2.