IP Law Daily, TRADEMARK—EVERBLAK for jewelry confusingly similar to FOREVER BLACK for clothing, (Sep 29, 2022)

By George Basharis, J.D.

Jewelry and clothing are often sold together and confusion as to source or sponsorship likely when those goods are sold under the similar FOREVER BLACK and EVERBLAK marks.

The standard-character mark EVERBLAK for wedding rings and wedding bands was confusingly similar to the registered mark FOREVER BLACK for clothing, the Trademark Trial and Appeal Board has decided. Affirming the Trademark Examining Attorney’s refusal to register the mark, the Board found that the marks were similar in sound, appearance, meaning, connotation, and commercial impression. Although the goods identified in the cited registration were not identical to the goods identified in the application, jewelry and clothing often originate from the same source and are marketed in the same channels of trade to the same class of consumers (In re Chulyakov, September 28, 2022, Larkin, C.).

A jewelry designer sought registration of EVERBLAK, in standard character form, for “jewelry, namely, wedding rings and wedding bands” in International Class 14. The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, on the ground that the proposed mark so closely resembled the standard-character mark FOREVER BLACK (BLACK disclaimed), registered for “clothing, namely, pants, jeans, skirts, shorts, dresses, jackets, coats and t-shirts” in International Class 25, as to be likely, when used in connection with goods identified in the application, to cause confusion. Applicant appealed.

On appeal, the Board conducted a likelihood of confusion analysis that focused on the similarity of the marks, goods, channels of trade, and classes of consumers; the sophistication of the relevant consumers; and the number and nature of third-party uses of similar marks.

Similarity of the marks. The FOREVER BLACK and EVERBLAK marks were both in standard characters, and neither mark had any distinguishing design elements or stylization, although the Board noted that the proper test of similarity was not a side-by-side comparison of the marks but instead the commercial impression of the marks on consumers. To show dissimilarity, applicant argued that EVER and FOREVER had very different meanings, the former meaning “for all future time” and the latter meaning “always.” Applicant also submitted evidence of coexisting third-party registrations using the terms EVER and FOREVER.

The Examining Attorney argued that slight differences in sound notwithstanding, the terms EVER and FOREVER both meant “always,” and the terms BLAK and BLACK were phonetic equivalent terms. Consequently, the commercial impression or idea being imparted by both marks was “always black,” according to the Examining Attorney, and, moreover, both marks conveyed the same idea, stimulated the same mental reaction, and conveyed the same overall meaning.

The Examining Attorney also argued that applicant’s third-party registrations were irrelevant because all of them conveyed very different commercial impressions from that of the proposed mark because the terms EVER or FOREVER were either presented alone in the samples or were used to modify completely different words.

The Board found that when compared side-by-side, the marks were in fact different, but, importantly, the difference would not be readily apparent to a consumer who encountered the marks separately. Consumers were unlikely to understand the subtle linguistic and dictionary differences between words “ever” and “forever” when the marks FOREVER BLACK for clothing and EVERBLAK for jewelry were separately encountered or considered in their entireties, the Board explained.

Turning its attention to third-party registrations, the Board noted that although applicant failed to submit any evidence that would show third-party use of similar marks on similar goods, he did submit many two-word marks that began with the word FOREVER, thus showing that the FOREVER BLACK mark was conceptually weak. He also submitted many examples of EVER-formative marks. However, even weak marks are entitled to protection, the Board said. Moreover, none of the third-party EVER-formative marks registered in Class 14 or the FOREVER-formative marks registered in Class 25 was as similar to either the cited FOREVER BLACK mark or applicant’s EVERBLAK mark as those two marks were to one another.

Similarity of the goods. Having found that modest differences in the appearance of the marks did not outweigh the marks’ strong similarities in sound and meaning, the Board considered the similarity of the goods. The Examining Attorney submitted internet evidence showing that jewelry and clothing were often sold under the same mark and were often marketed in the same channels to the same class of consumers. Applicant failed to rebut the Examining Attorney’s third-party registration and use evidence, and the Board found the similarity of the goods as evidenced in the record supported a finding of a likelihood of confusion.

Consumer sophistication. Finally, applicant argued that buyers of diamond rings, particularly wedding or engagement rings, were “discriminating” and made their purchases carefully and deliberately. The Board agreed that purchases of wedding rings, whether diamond or otherwise, are made in connection with major life milestones. However, the Board noted that wedding rings are offered at many different prices, some as low as $20, and millions of ordinary consumers get married and buy wedding rings in the process, sometimes more than once. Consequently, the Board rejected applicant’s unsupported assertions that consumers of its goods were sophisticated.

The Board concluded that although the FOREVER BLACK mark was conceptually weak for clothing, it was more similar to the EVERBLAK mark than any of the third-party marks in the record. The record showed that wedding rings and clothing often originated from the same source, and confusion as to source was likely if those goods were to be sold under the similar FOREVER BLACK and EVERBLAK marks.

The case is Serial No. 90032236.

Attorneys: Sean L. Sweeney (Tredecim LLC) for Aleksander Chulyakov. Marlene D. Bell for the USPTO.

Cases: Trademark USPTO