INTERNATIONAL CLASS 14

(Jewelry)

GENERAL SCOPE OF CLASS 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

1. SEARCHING:

Searching by coordinated class –

014[cc] - 025, 026, 035, 037, 040, 042, A, B, 200

2. IDENTIFICATION ISSUES:

Some general wording is allowed in Class 14. The following wording is acceptable:

· Chronometers

· Clocks

· Diamonds

· Earrings

· Emeralds

· Jewelry

· Pearls

· Pendants

· Precious metals and their alloys sold in bulk

· Watches

Indefinite and unacceptable wording includes the following:

· Pins (unless the applicant specifies the type of pin, such as lapel pin, tie pins, pins in the nature of brooches)

· Stones (unless the applicant specifies that the goods are “precious stones,” “semi-precious stones,” or “gemstones”)

· Synthetic stones (unless the applicant specifies that the goods are “precious synthetic stones,” “semi-precious synthetic stones,” or “synthetic gemstones”)

· Horological and chronometric instruments: this is part of the class heading and is too broad. Applicant must list the specific items, e.g. clocks, watches and chronometers.

· Articles made in whole or in part of precious metals: the applicant must specify every item, e.g. clocks, rings, tombstones, trophies, all made in whole or part of precious metal.

More on Terminology in ID’s

· Goods made of precious metal: items normally in other classes, such as cigarette lighters [Class 34], will be in Class 14 if they are made or coated with precious metals. The Class 14 identification should read: cigarette lighters made from precious metal. The exceptions to this rule are flatware and cutlery, which are in Class 8 regardless of material; dental gold, which is in Class 5; pen nibs made of gold, which are in Class 16.

· Timing devices” or “time keeping devices” are both examples of indefinite language. Furthermore, most timing items are in Class 9.

· The identification of goods should accurately reflect the nature of gemstones. A synthetic gemstone is man-made and is identical in molecular structure to the natural gemstone it mimics. An imitation gemstone is man-made but is identical to the natural gemstone in appearance only.

· Watches and jewelry: if the mark contains the name of a precious metal or gemstone, the identification must be amended to indicate that the goods are made wholly or partially of the metal or gemstone named. An acceptable identification would be: watches made in part of platinum, jewelry made in part of diamonds. If the goods do not contain the metal or stone indicated by the mark, then registration must be refused under Section 2(a) of the Trademark Act [see form paragraph Q22-2] and 2(e)(1) as deceptively misdescriptive [see form paragraph Q31 and Q31-1 to 3]. This applies equally to foreign words that identify precious metals and gemstones.

3. DESCRIPTIVE WORDING, THIS WORDING SHOULD BE DISCLAIMED:

· Brilliant or trilliant

· Creations

· Original

· Collection

· Ideal

4. MATERIAL CONTENT AND DECEPTIVE WORDING:

If a mark contains any of the above wording, then the identification of goods must be amended to indicate that the goods are made wholly or substantially in part of the material named. An acceptable identification would be: watches made in substantial part of gold; platinum rings; earrings made substantially of silver. If the term is a separable element of the mark, then the word must be disclaimed. If the goods are not made at least in part of the material named in the mark, then registration must be refused under Section 2(a) of the Trademark Act [see form paragraph Q22-2] and 2(e)(1) as deceptively misdescriptive [see form paragraphs Q31 and Q31-1 to 3]. This applies equally to foreign words that identify the material named.

5. GEOGRAPHIC WORDING:

· Swiss – clocks or watches

· Germany – clocks or watches

· Names of famous Swiss cities, i.e. Geneva – clocks or watches

· Majorca – pearls

· Columbia – emeralds

· Australia – opals

· 833AL or similar number and letter combinations – the letters are abbreviations for the Italian province of origin and should be disclaimed in marks filed by Italian applicants or those having a commercial establishment in Italy. This could rise to a deceptiveness issue for applicants having no association with Italy.

If a mark contains the name of a well-known jewelry or watch producing area and there is no connection between applicant’s goods and the place so named, then registration should be refused under Section 2(a) of the Trademark Act on the basis that the mark is deceptive. [See form paragraphs Q22 and Q22-1] In addition, refusal of registration should be made under Section 2(e)(3) as geographically deceptively misdescriptive. [See form paragraphs Q32-5 et seq]

In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO held deceptively misdescriptive of jewelry).

RESOURCE: There are many terms that are descriptive of jewelry. Many of these are surprising. An excellent resource is “An Illustrated Dictionary of Jewelry,” by Harold Newman, containing over 2500 defined terms.

6. SPECIMEN ISSUES:

Since the markings are often very tiny, stamping them on a piece of paper or metal for submission as a specimen is acceptable.

7. Gold Stamping Act and Stamping Plated Articles (15 USCS Section 297)

[Rare issue] This section of the U.S. Code forbids the words “sterling” or “coin” to be used in conjunction with any word or mark usually employed to indicate the fineness of gold, unless it is accompanied by language clearly indicating that the article or part thereof is made of an inferior metal.

Further, before any article of merchandise which is marked or stamped to indicate that it is made in whole or in part of gold or silver or of an alloy of either is placed in commerce or imported in to the United States, a trademark for that article must have been applied for with the U.S. Patent and Trademark Office. Since the only requirement is that an application be filed, these applications frequently abandon.

8. Section 2(d) refusals:

In Class 14, the Office has traditionally been more “lenient” with respect to 1, 2 or 3 letter or number marks for jewelry. For example, if you were to search the letter G in Class 14, you will find 42 registrations – all for stylized “G”s for jewelry or watches.

The reason behind this more “lenient” application of Section 2(d) for 1, 2 or 3 letter or number marks is because it is the industry practice for jewelers to stamp the trademark onto the goods in very minute spaces, such as the inside of a ring or the clasp of a necklace. Since there are only so many 1, 2 or 3 letter combinations available, we generally accept the industry’s view that the marks will be distinguished from one another based on stylization.

However, this does not mean that registration of a typed mark over one or more stylized versions for the same mark is acceptable. This rule applies only to stylized letter or number marks.