Similar Trademarks Matter In The Dilution Analysis

The dilution analysis requires evaluating  search results for more than just trademarks sharing a similar element. It requires finding similar trademarks. This issue was on display in a recent Trademark Trial and Appeal Board decision.

Don Vintache Inc. filed a trademark application to register the mark DIAMONDS ON THE ROCKS (in standard characters) for “jewelry, namely, diamond jewelry.” The Trademark Office refused registration of Don Vintache’s mark on the ground that it was likely to cause confusion with the prior registered mark SILVER ON THE ROCKS (in standard characters) for “jewelry made in whole or significant part of silver.”

It was easy for the Board to find that the goods at issue were related. “Diamond jewelry” was broad enough to include silver settings. When it came to the similarity of the marks, the Board found, without identifying much, if any, support, that ON THE ROCKS was a unitary phrase. A unitary phrase has observable characteristics that render the elements inseparable. This finding would prove to be the downfall for Don Vintache’s dilution argument.

Don Vintache identified several third-party registrations that contained the term ROCKS for various jewelry items. However, the Board found that in all the examples offered, the meaning of “rocks” was different from the meaning of “on the rocks.” The clear meaning in the third-party registrations was “to be extremely enjoyable, pleasing, or effective.” The meaning of “on the rocks” is “served undiluted and with ice cubes; experiencing difficulties and likely to fail.” These different meanings rendered the third-party registrations and unitary phrase ON THE ROCKS dissimilar. Therefore, because the dilution analysis requires similar marks the Board gave no weight to the third-party registrations offered by Don Vintache.

In addition to the third-party registrations, Don Vintache offered five third-party online jewelry store websites that use ON THE ROCKS. Unfortunately, this was five examples short of the ten example minimum generally required by the Board. Accordingly, Don Vintache’s dilution argument failed, and the Board found that DIAMONDS ON THE ROCKS and SILVER ON THE ROCKS are similar trademarks.

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