To:
`
`Subject:
`
`Sent:
`Sent As:
`
`MAX MOSKOWITZ(tm@ostrolenk.com)
`U.S. Trademark Application Serial No. 97388141 - RÊVE LAB CREATED
`DIAMOND
`November 28, 2023 08:22:42 PM EST
`tmng.notices@uspto.gov
`
`Attachments
`
`screencapture-www-ahdictionary-com-word-search-html-17012204104451
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  97388141
`
`Mark:   RÊVE LAB CREATED DIAMOND
`
`Correspondence Address:  
`MAX MOSKOWITZ
`OSTROLENK FABER LLP
`845 THIRD AVENUE, 17TH FLOOR
`NEW YORK NY 10022
`UNITED STATES
`
`Applicant:   DHOLAKIA LAB GROWN DIAMONDS LLC
`
`Reference/Docket No.  N/A
`
`Correspondence Email Address:   tm@ostrolenk.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date:   November 28, 2023
`
`Applicant’s request for reconsideration is denied.   See 37 C.F.R. §2.63(b)(3).  The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1)
`raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence
`with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or
`shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`Accordingly, the following requirement(s) and/or refusal(s) made final in the Office action dated June
`9, 2023 are maintained and continued: 
`
`
`•
`
`Likelihood of confusion
`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`

`

`
`Applicant's mark is "RÊVE LAB CREATED DIAMOND" in stylized form, ("LAB CREATED
`DIAMOND" disclaimed), in International Class 14 for:  "Lab created diamonds."
`
`The registration subject to this refusal is "REVE" in standard character form in International Class 14
`for:  "Earrings; Jewelry; Jewellery; Jewellery chain of precious metal for bracelets; Jewellery chains;
`Jewellery charms; Jewellery foot chains; Jewellery made of precious metals; Jewellery plated with
`precious metals; Jewellery, precious and semi-precious stones; Jewelry made in whole or significant
`part of gold, silver, precious metals or alloys; Jewelry plated with gold, silver, rhodium; Women's
`jewelry; Bracelets; Costume jewelry; Gold jewelry; Rings"
`
`As to the marks, applicant's mark incorporates the whole of registrant's wording, places it in the first
`word position and adds highly descriptive wording later in word sequence.  "REVE" is dominant in
`applicant's mark.
`
`Mark Comparison Arguments
`
`Applicant argues that the doctrine of foreign equivalents should be applied in this mark comparison to
`yield consumers translating "REVE" to "DREAM" and that there are a number of "DREAM" formative
`marks for jewelry.  The argument is not persuasive for a number of reasons.  First and foremost, the
`marks subject to the refusal, and to pending appeal, share the same French term, "REVE," and
`therefore, there is no reason to apply the doctrine of foreign equivalents.  Non-French speaking U.S.
`consumers will recall the French term "REVE" when using their recollection upon encountering the
`marks in a normal manner, not the English word "DREAM."  French speakers will understand the
`definition of "REVE" and will conclude that they share the same connotation.  See Brown Shoe Co. Inc,
`v. Molly D. Robbins, 90 USPQ2d 1752 (TTAB 2009)(analyzing the mark from the standpoint of non-
`foreign language speaking consumers as well as those proficient in the applicable language).
`
`Given this, consumers are more likely to conclude, (correctly), that the shared terms are simply foreign
`words that are in fact spelled the same way, and likely mean the same thing.   Bottega Venetta, Inc. v.
`Volume Shoe Corp. et al, 226 USPQ 964, 970 (TTAB 1985)(Both marks are composed of two Italian or
`... Italian-sounding words...[C]onsidering the fallibility of purchasers in their ability to recall
`trademarks accurately, it seems to us that American purchasers especially those not versed in foreign
`languages in general, or Italian in particular, not having an opportunity to make a side-by-side
`comparison of opposer's and applicant's handbags, or of the marks, might easily be misled or mistaken
`on see "BORSA VENETO" handbags into believing that they were the same as or emanated from the
`same source as those previously seen advertised or on sale under the mark "BOTTEGA
`VENETA.");  Safeway Stores, Inc. v. Bel Canto Fancy Foods, Inc., 5 USPQ2d 1980, 1982 (TTAB
`1987)("this Board does not think it proper to take the French expression "bel air" and the Italian
`expression "bel aria" and then convert both into English and compare the English translations to
`determine whether there is similarity as to connotation, especially in this case").  "When both
`conflicting marks are in the same language, in some cases, the confusion may be judged on visual and
`phonetic similarity to the English-speaking customer."  See 4 McCarthy on Trademarks and Unfair
`Competition §23:40 (5th Ed. 2023).
`
`Secondly, as to the TESS lists of "DREAM" formative marks in Class 14 that applicant reproduced in
`the Request for Reconsideration, the examining attorney also objects as applicant has not made any of
`these third-party registrations of record.   TESS listings are insufficient to make the listed registrations,
`(or applications), part of the record.  See Edom Labs, Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB
`
` 
`

`

`2012).
`
`Conceptual Weakness Argument
`
`Applicant also makes an argument under the sixth Du Pont factor that "REVE" is conceptually weak
`for jewelry based on third-party registration evidence.  In support, again applicant references its TESS
`list of marks and also made of record three third-party registrations, and one third-party pending
`application.  
`
`As to the TESS list of "REVE" formative marks, the examining attorney again objects to the listed
`third-party marks therein that applicant has not made of record. 
`To make third party registrations part of the record, an applicant must submit copies of the
`registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to
`appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP
`§710.03. Accordingly, the registrations not made of record will not be considered.  
`
`As to the attached application for "RÊVE RICHE," (U.S. Serial No.: 88604350),  third-party
`applications are evidence only that the applications were filed; they are not evidence of use of the mark.
`In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); see In re Toshiba Med. Sys. Corp., 91
`USPQ2d 1266, 1270 n.8 (TTAB 2009); TBMP §1208.02; TMEP §710.03.   This evidence is not
`probative on the question of conceptual weakness.
`
`As to the remaining third-party "REVE" formative marks  to show that "REVE" in the cited registration
`is inherently or conceptually weak and should not be afforded a broad scope of protection.  See Jack
`Wolfskin Ausrustung Fur Draussen Gmbh v. New Millennium Sports, SLU, 797 F.3d 1363, 1374, 116
`USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339,
`115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at
`*22 (TTAB 2021) (quoting Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1057
`(TTAB 2017)); TMEP §1207.01(d)(iii).   
`
` A
`
` large number of active use-based third-party registrations including the same or similar term or mark
`segment for the same or similar goods may be relevant to prove, in the same way dictionaries are used,
`that a term or mark segment has “a normally understood and well-recognized descriptive or suggestive
`meaning, leading to the conclusion that that segment is relatively weak” and entitled to only a narrow
`scope of protection.  Jack Wolfskin Ausrustung Fur Draussen Gmbh v. New Millennium Sports, SLU,
`797 F.3d at 1374, 116 USPQ2d at 1136 (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d at
`1339, 115 USPQ2d at 1675); Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at *22 (citing Tao
`Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d at 1057).
`
`Of the third-party registrations applicant submitted, only three appear to be active and based on use in
`commerce.  Evidence comprising only a small number of active use-based third-party registrations
`including the same or similar component is generally entitled to little weight in determining the
`strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52
`(Fed. Cir. 2017); AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269
`(C.C.P.A. 1973).   These few registrations are “not evidence of what happens in the market place or that
`customers are familiar with them.”  Sock It To Me, Inc. v. Aiping Fan, 2020 USPQ2d 10611, at *9
`(TTAB 2020) (quoting AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269). 
`Thus, the few use-based third-party registrations submitted by applicant are insufficient to establish that
`the mark or portion of the mark is inherently or conceptually weak. 
`
`

`

`
`Consumer Sophistication Argument
`
`Applicant also addresses the relatedness of the goods and makes the argument that lab-created
`diamonds are relatively new in the jewelry marketplace and can cost hundreds of thousands of dollars,
`requiring careful thought by consumers before purchasing.  This argument is not persuasive.  The
`evidence in the record shows that both diamonds, and jewelry containing such diamonds can be very
`expensive.  Registrant's identification contains no limitations and its goods are assumed to travel in all
`normal trade channels and encompass applicant's target consuming class.  Packard Press, Inc. v.
`Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000); Squirtco v. Tomy
`Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983).  The scope of registrant's identification
`includes expensive items. 
`
`Additionally, the fact that purchasers are sophisticated or knowledgeable in a particular field does not
`necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune
`from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion
`Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v.
`N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of
`both professionals and the public, the standard of care for purchasing the goods is that of the least
`sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing
`Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d
`per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).   The evidence of record suggests
`strongly that consumers who are going to purchase a piece of jewelry that will include a diamond of
`their choosing will carefully scrutinize the stone as well as other aspects of the piece, such as the
`setting, setting materials, etc.  The argument is not persuasive.
`
`Applicant's Other Arguments
`
`Lastly, applicant notes that the Office has approved its co-pending application for "RÊVELATION
`LAB CREATED DIAMONDS" in stylized form, and contends that this should be grounds for passing
`the instant application to publication.  However, this is not persuasive as the dominant term in the co-
`pending application is not the French word "REVE" but the English word "revelation" which is an
`English word
`that
`refers
`to
`the act of unveiling or uncovering
`something. 
`( See,
`e.g.: https://www.ahdictionary.com/word/search.html?q=revelation).   
`
`
`
`***
`
`
`For these reasons, the refusal to register applicant's mark based on Section 2(d) of the Trademark Act is
`maintained and continues to be made FINAL.
`
`
`The Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.   See
`TMEP §715.04(a).  
`
`
`

`

`
`
`/Robert Cohen/
`Robert Cohen
`Examining Attorney
`LO103--LAW OFFICE 103
`(571) 270-1389
`Robert.Cohen@USPTO.GOV
`
`
`
`

`

`PEea aTae aT Peea
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`The
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`°
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`A
`
`of the
`nglis
`
`wrya ve
`
`
`
`
`
`rev-e-la‘tion)) (rév’s-la’shon)
`
`
`
`@. The act ofrevealing or disclosing.
`b, Something revealed, especially a dramatic disclosure of something not previously
`known or realized.
`¢, A sudden insightor idea:“I'd hadtheidea to dig up Dad's coffin ... Iwas lying in
`bed and I had the revelation, like a simple solution to an impossibleproblem”
`(Jonathan Safran Foer).
`2. Theology A manifestation of divine will or truth.
`%. Revelation See Table at Bible.
`
`
`[Middle English revelacion, from Old French revelation, from Latin revélatid, revélation-, from
`revélatus, past participle of revéldre, to reveal; see reveat!.]
`The American Heritage® Dictionary ofthe English Language,Fifth Edition copyright ©2022 by
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`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on November 28, 2023 for
`U.S. Trademark Application Serial No.  97388141
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You must respond to this Office action to avoid your application abandoning.  Follow
`the steps below.  
`
`(1)   Read the Office action.  This email is NOT the Office action.  
`
`(2)  Respond to the Office action by the deadline using the Trademark Electronic Application
`System (TEAS) or the Electronic System for Trademark Trials and Appeals (ESTTA), as
`appropriate.  Your response and/or appeal must be received by the USPTO on or before 11:59
`p.m. Eastern Time of the last day of the response deadline.  Otherwise, your application will
`be abandoned.  See the Office action itself regarding how to respond.  
`
`(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).  
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.  
`
`GENERAL GUIDANCE
`Check the status of your application periodically in the Trademark Status &
`•
`Document Retrieval (TSDR) database to avoid missing critical deadlines.  
`
`•
`
`•
`
`Update your correspondence email address to ensure you receive important USPTO
`notices about your application.  
`
`Beware of trademark-related scams .  Protect yourself from people and companies that
`may try to take financial advantage of you.  Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you.  We will never request your credit card number or social security
`number over the phone.  Verify the correspondence originated from us by using your
`serial number in our database, TSDR, to confirm that it appears under the “Documents”
`tab, or contact the Trademark Assistance Center.  
`
`

`

`•
`
`Hiring a U.S.-licensed attorney .   If you do not have an attorney and are not required to
`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process.  The
`USPTO examining attorney is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.  
`
` 
`