Sterling loses bid to protect its ‘Hearts Desire’
April 14, 2014
Alexandria, Va.--The Trademark Trial and Appeal Board has shot down Sterling Jewelers’ objection to the registration of a trademark the retailer claimed could cause confusion with “Hearts Desire,” a line of ideal-cut diamonds sold at Jared.
According to court document filed in the case, Romance & Co. Inc. filed an application to register the mark “What Your Heart Desires” for jewelry in January 2012. Court documents show Romance & Co. having headquarters in New York’s Diamond District.
In October 2012, Akron, Ohio-based Sterling Jewelers Inc. filed a notice opposing the trademark on the grounds that it likely would be confused with its already-in-use and registered “Hearts Desire” mark for fine jewelry.
The registration for that mark was issued in 2007, according to court papers. It references “Hearts Desire,” a collection of ideal-cut diamonds that has been sold at Jared the Galleria of Jewelry only since 2006.
In its ruling issued March 27, the Trademark Trial and Appeal Board noted that the testimony period for Sterling ended on Sept. 9 without the company having submitted any evidence or taken any testimony, only attaching a photocopy of its pleaded registration for the mark to its notice of opposition.
This was not enough to prove its case, the board said. Sterling Jewelers, “has failed to demonstrate [the mark’s] standing or that it is entitled to any relief under its asserted claim of likelihood of confusion,” court documents state.
Sterling said it is “disappointed” in the board’s decision and is considering its options.
“Sterling values its intellectual property and will take appropriate steps to protect it should anyone offer jewelry under a confusingly similar mark,” the company said.
Romance & Co. could not be reached for comment on the ruling.
Based in Alexandria, the Trademark Trial and Appeal Board hears and decides cases involving oppositions to trademarks, petitions to cancel trademark registrations and proceedings involving applications for the concurrent use registrations of trademarks.