Rolex Watch U.S.A., Inc. v. DR GNP Holdings LLC and Jennoa R. Graham

OCR transcription for search; preserved printed pages are authoritative

This Opinion is Not a
Precedent of the TTAB

Mailed: May 1, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

Rolex Watch U.S.A., Inc.
v.

DR GNP Holdings LLC and Jennoa R. Graham

Opposition No. 91290853

Beth Frenchman of Gibney, Anthony & Flaherty, LLP for Rolex Watch U.S.A., Inc.

Anthony M. Verna III of Verna Law, P.C. for DR GNP Holdings LLC and Jennoa R.
Graham.

Before Larkin, Casagrande, and Brock,

Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

They say that nothing lasts forever, but the parties to this case disagree and claim
that they are known for goods that are perpetual.
DR GNP Holdings LLC and Jennoa R. Graham (jointly “Applicants”) seek

registration on the Principal Register of the mark shown below:

Opposition No. 91290853
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for “Necklace and earring combinations that can be worn separately or as one piece”
in International Class 14 and “Hatpins of precious metal, other than jewelery”1 in
International Class 26.2
Rolex Watch U.S.A., Inc. (“Opposer” or “Rolex”) opposes registration of Applicants’
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that the mark so resembles various PERPETUAL and PERPETUAL-formative
marks owned by Opposer, and used and registered in connection with watches, as to
be likely to cause confusion.
1 The use of the word “jewelery” in the Class 26 identification in a manner that is inconsistent
with the conventional spelling of the word as “jewelry” in American English is not a
typographical error by Applicants because the identification adopted the spelling then
appearing in the version of the Acceptable Identification of Goods and Services Manual (the
“ID Manual”) in effect at the time of prosecution of the application. We understand that the
ID Manual has since been changed to reflect the conventional American English spelling of
the word as “jewelry.”
2 The opposed application Serial No. 97906907 was filed on April 25, 2023 under Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicants’ allegation of a bona fide
intention to use the mark in commerce. Applicants disclaimed the exclusive right to use
GIFTS apart from mark as shown and described their mark as follows: “The mark consists
of the stylized wording ‘PERPETUAL GIFTS’; the words are separated by a stylized double
infinity symbol design.” Color is not claimed as a feature of the mark.

Opposition No. 91290853
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The case was tried and both parties submitted evidence, but only Opposer filed a
brief.3 We sustain the opposition with respect to the Class 14 goods in the application,
and dismiss the opposition with respect to the Class 26 goods in the application.
I. Record
The record consists of the pleadings,4 the file history of the opposed application,
by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1),5 and the
following materials submitted by the parties during their respective trial and rebuttal
periods:
Opposer
• First Notice of Reliance on Applicants’ Responses to Opposer’s First Set of
Interrogatories and excerpts from Opposer’s Notice of Opposition and
Applicants’ Answer, 11 TTABVUE 2-54;6
• Second Notice of Reliance on USPTO electronic records, 16 TTABVUE 2-
83;
3 Only Opposer was required to file a brief under Trademark Rule 2.128(a)(1), 37 C.F.R.
§ 2.128(a)(1). Opposer bears the burden of proving that Applicants are not entitled to the
registration they seek “even in the absence of contrary evidence or argument.” DC Comics v.
Cellular Nerd LLC, No. 91246950, 2022 WL 17832492, at *9 (TTAB 2022) (citation omitted).
Citations in this opinion to Opposer’s brief and other materials in the case docket refer to
TTABVUE, the Board’s online docketing system. The number preceding TTABVUE
corresponds to the docket entry number, and any numbers following TTABVUE refer to the
page(s) of the docket entry where the cited materials appear. Opposer’s redacted public brief
appears at 24 TTABVUE, and its unredacted confidential brief appears at 25 TTABVUE.
4 The pleadings are Opposer’s Notice of Opposition, 1 TTABVUE, and Applicants’ Answer, 5
TTABVUE. Applicants’ Answer denied the salient allegations of the Notice of Opposition,
and included some self-styled “Amplifications” of their denials.
5 Citations in this opinion to the application record are to pages in the downloadable .pdf
version of the Trademark Status & Document Retrieval (“TSDR”) database of the United
States Patent and Trademark Office (“USPTO”).
6 “The pleadings are automatically of record . . . and it was unnecessary for Opposer to file
them.” El Roblar Inv. Prop. LLC v. Roe, No. 91272200, 2025 WL 2718983, at *2 n.7 (TTAB
2025) (quotation and quotation marks omitted).

Opposition No. 91290853
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• Third Notice of Reliance on Internet materials, 12 TTABVUE 2-100;
• Fourth Notice of Reliance on printed publications, 18 TTABVUE 2-247;
• Fifth Notice of Reliance on USPTO electronic regarding Opposer’s
registrations and a third-party registration of a PERPERTUAL-formative
mark in Class 14, 17 TTABVUE 2-49;7
• Sixth Notice of Reliance on Internet evidence, 13 TTABVUE 2-33;
• Trial Testimony Declaration of Marc Esposito, Opposer’s Executive Vice
President, Service Operations, and Exhibits 1-10 thereto, 14 TTABVUE 2-
344;8 and
• Seventh Notice of Reliance on Internet evidence, filed during Opposer’s
rebuttal period, 23 TTABVUE 2-182.
Applicants
• Testimony Declaration of Dr. Jennoa R. Graham, and Exhibits A-D thereto,
19 TTABVUE 2-25;
• First Notice of Reliance on “Applications,” 20 TTABVUE 1-48;9 and
• Second Notice of Reliance on Internet materials consisting of pages from
Applicants’ Facebook account and website at perpetualgifts.co, 21
TTABVUE 1-39.10
7 Opposer made two of its pleaded registrations of record in each of the three ways permitted
under the Trademark Rules of Practice, first through attachment to its Notice of Opposition,
then under its Fifth Notice of Reliance, and finally through the Trial Testimony Declaration
of its Executive Vice President Marc Esposito. A party does not win a trifecta by doing so, but
merely inflates the record unnecessarily. Once is enough.
8 Certain exhibits to Mr. Esposito’s Declaration were designated as Confidential under the
Board’s Standard Protective Order and were filed under seal at 15 TTABVUE.
9 The referenced “Applications” are the file history of the opposed application, which is
automatically of record as noted above. It was unnecessary for Applicants to make it of record
separately.
10 Applicants filed their Second Notice of Reliance twice at 21 TTABVUE and at 22
TTABVUE. We will cite 21 TTABVUE.

Opposition No. 91290853
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II. The Parties and Their Marks
Opposer
Opposer sells luxury watches in the United States. Esposito Decl. ¶ 5 (14
TTABVUE 3). Opposer owns the ROLEX trademark for watches, but this case
involves some of Opposer’s other marks, including the following registered
PERPETUAL and PERPETUAL-formative marks in standard characters for
“watches and parts thereof”: (1) PERPETUAL, shown in Registration No. 6247647,
which issued on the Principal Register on January 12, 2021 and is subsisting, 17
TTABVUE 13-16; (2) OYSTER PERPETUAL (PERPETUAL disclaimed), shown in
Registration No. 394881, which issued on the Principal Register in 1942 and has been
renewed, id. at 31-40; (3) OYSTER PERPETUAL, shown in Registration No. 1105602,
which issued on the Principal Register in 1978 and has been renewed, id. at 21-30;
and (4) PERPETUAL 1908, shown in Registration No. 7707369, which issued on the
Principal Register on February 25, 2025. Id. at 10-12. Opposer also claims prior
common-law use of the OYSTER PERPETUAL and PERPETUAL marks for watches.
Esposito Decl. ¶¶ 6-10; Exs. 3-4 (14 TTABVUE 4-5, 163-99).
Applicants
Applicants are Dr. Jennoa R. Graham and DR GNP Holdings, LLC, which was
founded by Dr. Graham, an author, entrepreneur, and certified gemologist. Graham
Decl. ¶¶ 1-2; Ex. A (19 TTABVUE 2, 6-10); 21 TTABVUE 9. Applicants describe
themselves on their website as a “luxury jewelry company specializing in heirloom
pieces.” Id. at 20. Dr. Graham testified that Applicants’ goods “are made to be passed

Opposition No. 91290853
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down through generations, and our infinity collection is symbolic of eternal love and
legacy, symbolized by the double-infinity logo,” Graham Decl. ¶ 12 (19 TTABVUE 3),
and she described Applicants’ business as a “Christ branded business standing on the
word of God, we provide high quality, solid and ethically sourced luxury heirlooms to
be enjoyed for many generations to come.” Graham Decl. ¶ 14 (19 TTABVUE 4).
III. Opposer’s Entitlement to a Statutory Cause of Action
“Entitlement to a statutory cause of action is an element of the plaintiff’s case in
every inter partes proceeding.” El Roblar, 2025 WL 2718983, at *18 (quotation
omitted). “Section 13 of the Trademark Act, 15 U.S.C. § 1063, ‘provides that ‘[a]ny
person who believes that he would be damaged by the registration of a mark . . . may
. . . file an opposition’ with the USPTO . . . .” Id. (quoting Curtin v. United Trademark
Holdings, Inc., 137 F.4th 1359, 1362 (Fed. Cir. 2025) (citation omitted), cert. denied,
2026 WL 1052056 (Apr. 20, 2026)).
“[A] plaintiff may oppose registration of a mark when (1) [its] interests are within
the zone of interests protected by the statute [(i.e., it has a ‘real interest’ in the
outcome of the proceeding)] and (2) [it] has a reasonable belief in damage that would
be proximately caused by registration of the mark in violation of the opposition
statute.” Id. (quoting Curtin, 137 F.4th at 1367 (citing Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 129-34 (2014)).
Opposer has established its entitlement to bring a statutory cause of action under
Section 2(d) of the Trademark Act by submitting USPTO electronic records regarding
its pleaded registrations of its PERPETUAL and PERPETUAL-formative marks

Opposition No. 91290853
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showing the current status and title of the registrations, which “demonstrate a
plausible Trademark Act Section 2(d) claim against the involved application for
[Applicants’] mark.” Heil Co. v. Tripleye GmbH, No. 91277359, 2024 WL 4925901, at
*15 (TTAB 2024).
IV. Opposer’s Likelihood of Confusion Claim
“Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits registration of
a mark that ‘[c]onsists of or comprises a mark which so resembles a mark registered
in the Patent or Trademark Office, or a mark or trade name previously used in the
United States by another and not abandoned, as to be likely, when used on or in
connection with the goods [or services] of the applicant, to cause confusion, or to cause
mistake, or to deceive.’” Sage Therapeutics, Inc. v. Sageforth Psych. Servs., LLC, No.
91270181, 2024 WL 1638376, at *4 (TTAB 2024). “To prevail on its Section 2(d) claim,
Opposer must show by a preponderance of the evidence that it has either a
registration of or priority in its [PERPETUAL and PERPETUAL-formative] mark[s],
and that Applicant[s’] use of [their] mark is likely to cause confusion, mistake, or
deception regarding the source of the [goods] identified in [their] Application.” Id.
(citation omitted).
A. Priority
Because Opposer properly made of record its registrations of its PERPETUAL and
PERPETUAL-formative marks for “watches and parts thereof,” and Applicants did
not counterclaim to cancel any of them, “priority is not at issue for the marks and

Opposition No. 91290853
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goods . . . identified therein.” Heil Co., 2024 WL 4925901, at *16 (citing King Candy,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1402-03 (CCPA 1974)).
B. Likelihood of Confusion
Our determination of the likelihood of confusion under Section 2(d) is based on an
analysis of the “facts in evidence that are relevant to the factors bearing on the issue
of likelihood of confusion.” DowntownDC Bus. Improvement Dist. v. Clarke,
No. 91275100, 2024 WL 4449409, at *18 (TTAB 2024) (citing In re E.I. DuPont de
Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”)). “We discuss the
DuPont factors for which there is relevant argument and evidence.” Id. (citing In re
Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019)).
“Because each class in Applicant[s’] multi-class application is, in effect, a separate
application, we consider each class separately, and determine whether Opposer has
shown a likelihood of confusion with respect to each.” N. Face Apparel Corp. v.
Sanyang Indus. Co., No. 91187593, 2015 WL 6467820, at *11 (TTAB 2015).11
“In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the [goods or] services.”
DowntownDC, 2024 WL 4449409, at *18 (citing Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 1103 (CCPA 1976) (“The fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”)).
11 We will not engage in a separate analysis by class of the first, fifth, and eighth DuPont
factors because the matters addressed by those factors are the same with respect to both
classes. We will consider the second, third, and fourth DuPont factors by class.

Opposition No. 91290853
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Opposer agrees that “[h]ere, the two key considerations are the first and second
DuPont factors, which focus on the similarities between the marks and relatedness
of the goods . . . .” 24 TTABVUE 22. Opposer argues, however, that “prior to
evaluating the similarities of the parties’ marks, the Board should consider the
strength of Rolex’s PERPETUAL Marks under the fifth DuPont factor to determine
the expanded scope of protection afforded to Rolex’s marks.” Id. at 23 (citing DuPont,
476 F.2d at 1361).12 Toward the end of its brief, Opposer also discusses the third and
fourth DuPont factors, the “similarity or dissimilarity of established, likely-to-
continue trade channels” and the “conditions under which and buyers to whom sales
are made, i. e. ‘impulse’ vs. careful, sophisticated purchasing,” respectively, DuPont,
476 F.2d at 1361, 24 TTABVUE 34-35, and the eighth DuPont factor, the “length of
time during and conditions under which there has been concurrent use without
evidence of actual confusion,” DuPont, 476 F.2d at 1361, 24 TTABVUE 35-36.
We will begin our analysis with the fifth DuPont factor, which considers “the fame
of the senior mark,” Fuente Mktg. Ltd. v. Vaporous Techs., LLC, ___ F.4th ___, 2026
WL 950251, at *6 (Fed. Cir. Apr. 8, 2026), because “[f]ame of an opposer’s mark or
marks, if it exists, plays a ‘dominant role in the process of balancing the DuPont
factors,’” Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002)
(quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000)), and famous
12 Opposer defines its PERPETUAL and PERPETUAL-formative marks collectively as its
“PERPETUAL Marks.” 24 TTABVUE 12.

Opposition No. 91290853
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marks “‘enjoy a wide latitude of legal protection.’” Id. (quoting Recot, 214 F.3d at
1327).
1. Fifth DuPont Factor
“Fame is ‘a matter of degree that varies along a spectrum from very strong to very
weak,’ and relevant factors include ‘sales, advertising, length of use of the mark,
market share, brand awareness, licensing activities, and variety of goods bearing the
mark.’” Fuente Mktg., 2026 WL 950251, at *6 (quoting Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1367 (Fed. Cir. 2012) (cleaned up)). Other relevant,
indirect evidence of fame includes “widespread critical assessments; notice by
independent sources of the goods or services identified by the mark[ ]; the general
reputation of the goods or services; and social media presence.” August Storck KG v.
Florend Industria A Comercio de Chocolates LTDA, No. 91277224, 2025 WL 4107480,
at *10 (TTAB 2025) (citation omitted). “Because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal protection it receives, and
the dominant role fame plays in the likelihood of confusion analysis,” it is the “duty
of the party asserting that its mark falls on the higher end of the commercial strength
of fame spectrum to clearly prove it.” Id. (citation omitted).
Opposer argues that although its “reputation and fame center on its ROLEX
trademark, [it] has likewise invested in and developed tremendous consumer
recognition in many of its model names, including one of the oldest and most iconic—
the OYSTER PERPETUAL.” 24 TTABVUE 7. Opposer also discusses the marks
PERPETUAL and PERPETUAL 1908, id. at 11-12, and, as noted above, defines the
three marks together as the “PERPETUAL Marks.” Id. at 12. Opposer refers to all

Opposition No. 91290853
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three “PERPETUAL Marks” in its argument under the fifth DuPont factor, id. at 23-
28, claiming that it “has submitted substantial evidence establishing that one or more
of its PERPETUAL Marks had attained significant commercial strength and fame
prior to 2023, when Applicants filed their application.” Id. at 24.
With respect to the PERPETUAL mark, Mr. Esposito testified in May 2025 that
“beginning in 2019 and continuing today, Rolex invested in a major advertising
campaign centered around the trademark PERPETUAL” and that “[t]he
PERPETUAL trademark was first used on a Rolex watch on July 15, 2020,” Esposito
Decl. ¶ 4 (14 TTABVUE 3),13 but he did not specify the extent of Opposer’s unit and
dollar sales since the first use of the PERPETUAL mark that involved that mark
rather than (or in addition to) the mark OYSTER PERPETUAL.14 Esposito Decl. ¶ 14;
Ex. 6 (14 TTABVUE 7, 15 TTABVUE 2-3). He also testified that “[b]eginning April
2019, Rolex’s advertising campaigns all include a reference to the mark
PEREPTUAL.” Esposito Decl. ¶ 16 (14 TTABVUE 7). Opposer’s advertising
expenditures are substantial, Esposito Decl. ¶ 16 (14 TTABVUE 7), but the nature of
the “reference to the mark PERPETUAL” is not specified, and Mr. Esposito did not
identify any exhibits to his Declaration that include them. We have examined those
13 Mr. Esposito specified that on July 15, 2020, Opposer “began to affix hangtags to a model
of Rolex watch identified through the mark PERPETUAL.” Esposito Decl. ¶ 11 (14
TTABVUE 6). He did not provide an example.
14 As discussed in detail below, there is an additional and very significant issue arising from
the fact that all of what Opposer calls its “PERPETUAL Marks” are used together with
Opposer’s famous ROLEX house mark, and Opposer must show that its “PERPETUAL
Marks” have achieved fame independent of the ROLEX mark with which the model marks
are used.

Opposition No. 91290853
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exhibits and there is some use of the #Perpetual hashtag in print advertising for
Opposer’s watches sold under the ROLEX house mark, the OYSTER PERPETUAL
mark, and other model marks, and on YouTube, Esposito Decl. Ex. 5 (14 TTABVUE
201-11, 214-25, 227-38),15 but a hashtag generally does not function as a trademark
“because it merely facilitate[s] categorization and searching within online social
media.” In re DePorter, No. 87229711, 2019 WL 460492, at *7 (TTAB 2019) (internal
quotation and quotation marks omitted).
The record thus shows that as of the time of trial in 2025, the PERPETUAL mark
for watches had been exposed to the purchasing public in some manner for only five
to six years, and there is no evidence that those uses caused the mark PERPETUAL
alone to achieve any significant commercial strength separate and apart from the
famous ROLEX house mark.16
We turn now to what Opposer calls its “oldest and most iconic” model name,
OYSTER PERPETUAL. 24 TTABVUE 7. Mr. Esposito testified that “[d]ating back to
the late 1930’s, Rolex began to develop a collection of watches under the trademark
OYSTER PERPETUAL. The design of these early models emphasized precision and
15 Some of these uses in advertising are shown below in connection with our discussion of the
OYSTER PERPETUAL mark.
16 The mark PERPETUAL 1908 is of even more recent vintage. Mr. Esposito testified that
“on March 14, 2023, Rolex also filed a trademark application for PERPETUAL 1908 which
identifies a new model of Rolex watch and a hangtag bearing the mark PERPETUAL 1908 is
affixed to this model watch.” Esposito Decl. ¶ 11 (14 TTABVUE 6). He did not specify when
the mark was first used, but Opposer’s registration of the mark claims first use dates of July
23, 2024. Esposito Decl. ¶ 4; Ex. 1 (14 TTABVUE 3, 27). There is no record evidence
supporting a finding that the PERPETUAL 1908 mark has achieved any significant
commercial strength separate and apart from the famous ROLEX house mark.

Opposition No. 91290853
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practicality.” Esposito Decl. ¶ 6 (14 TTABVUE 4). He further testified that “[t]he
OYSTER PERPETUAL trademark first appeared on the dial in 1938 and identified
Rolex watches that included the first automatic self-winding mechanisms and was
[sic] also waterproof.” Esposito Decl. ¶ 6 (14 TTABVUE 4). We reproduce below a
photograph of what Mr. Esposito described as “one of the earliest models”:
Esposito Decl. ¶ 6 (14 TTABVUE 4).
Over 90% of all Rolex watches sold in the United States bear the OYSTER
PERPETUAL mark, Esposito Decl. ¶ 7 (14 TTABVUE 4), and Mr. Esposito provided
another example “from the early 2000s,” which we reproduce below:
Esposito Decl. ¶ 7 (14 TTABVUE 4-5).

Opposition No. 91290853
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Beginning in the early 1950’s, Opposer promoted and advertised watches bearing
the OYSTER PERPETUAL mark, which was first registered in 1942. Esposito Decl.
¶ 8 (14 TTABVUE 5). Mr. Esposito authenticated what he described as “vintage
advertisements and brochures displaying the OYSTER PERPETUAL trademark that
appeared in U.S. publications.” Esposito Decl. ¶ 8; Ex. 3 (14 TTABVUE 5, 163-75).
We reproduce below some examples in which the OYSTER PERPETUAL mark is
visible:
Esposito Decl. Ex. 3 (14 TTABVUE 165).

Opposition No. 91290853
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Esposito Decl. Ex. 3 (14 TTABVUE 167).
Esposito Decl. Ex. 3 (14 TTABVUE 168).
Mr. Esposito further testified that “[s]ince the 1950’s, the OYSTER PERPETUAL
trademark has continued to be used and heavily advertised by Rolex” and that
“[w]ithin Rolex’s advertising, the OYSTER PERPETUAL trademark appears as a
focal point of the Rolex advertisement and/or on the watch advertised.” Esposito Decl.

Opposition No. 91290853
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¶ 9 (14 TTABVUE 5).17 He authenticated “[s]ample advertisements and screenshots
of Rolex’s online brochure that advertise the OYSTER PERPETUAL mark,” Esposito
Decl. ¶ 9; Ex. 4 (14 TTABVUE 5, 176-99), representative examples of which we
reproduce below:
Esposito Decl. Ex. 4 (14 TTABVUE 177).
Esposito Decl. Ex. 4 (14 TTABVUE 180).
17 Mr. Esposito testified that “for over 60 years Rolex has been using the registered trademark
OYSTER PERPETUAL on the dial of nearly all of the watches it sells.” Esposito Decl. ¶ 4 (14
TTABVUE 3).

Opposition No. 91290853
= Mona
Q Search
O Store locador
Favourites
+ Rolex watches | Oyster Perpetual .
OYSTER PERPETUAL
Timeless form and function
ROLEX00085
Oyster Perpetual Y
11
ROLEX OYSTER PERPETUAL
SUPERLARIN | CHRONOMETER
ROLEX00086
Esposito Decl. Ex. 4 (14 TTABVUE 186).
Oyster Perpetual
ROLEX00097
Esposito Decl. Ex. 4 (14 TTABVUE 192).
- 17 -

Opposition No. 91290853
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Esposito Decl. Ex. 4 (14 TTABVUE 198).
The OYSTER PERPETUAL mark has appeared in Opposer’s advertising, on
billboards, and in brochures and catalogs since the early 1950’s. Esposito Decl. ¶ 13
(14 TTABVUE 6). Mr. Esposito authenticated what he described as “samples of
Rolex’s advertising and screenshots of online use,” Esposito Decl. ¶ 13; Ex. 5 (14
TTABVUE 6, 200-37), representative examples of which we reproduce below:

Opposition No. 91290853

RESOUNDING
PRECISION

The difficulty

#Perpetual

OYSTER PERPETUAL DAY-DATE 40

W

ROLEX

Esposito Decl. Ex. 5 (14 TTABVUE 208).

THE DATEJUSi

The ultimate Rolex classic, the Datejust was the first self-winding
waterproof chronometer wristwatch to display the date in a window, and continues
to be the quintessential watch, reflecting the essence of timeless style.

#Perpetual

RETAILER
SPACE
SINGLE LOGO

-19-

Opposition No. 91290853
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Esposito Decl. Ex. 5 (14 TTABVUE 308).
Esposito Decl. Ex. 5 (14 TTABVUE 238).
Esposito Decl. Ex. 5 (14 TTABVUE 230).
Mr. Esposito testified that over 90% of all Rolex watches sold annually in the
United States bear the OYSTER PERPETUAL or PERPETUAL trademarks, that for

Opposition No. 91290853
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the past five years, Opposer’s annual unit sales have well exceeded 100,000 watches,
and that Opposer’s revenue from these sales exceeds $1,000,000,000 annually.
Esposito Decl. ¶ 14 (14 TTABVUE 7).18
With respect to advertising, Mr. Esposito testified that well before and after 2019,
“most or many” of Opposer’s advertising campaigns have included and featured
OYSTER PERPETUAL model watches, and that over the past ten years, Opposer has
spent over $500,000,000 promoting and advertising its watches in the United States.
Esposito Decl. ¶ 16 (14 TTABVUE 7-8). Opposer’s advertisements appear in a broad
range of publications, including The New York Times, Forbes, USA Today, The Wall
Street Journal, Vanity Fair, Vogue, GQ, Road & Track, Equestrian, Tennis Magazine,
Opera News, Sailing World, Conde Nast Traveler, and National Geographic, among
many others. Opposer also advertises in several different mediums such as print,
billboards, digital (online), radio, TV, and by sponsoring live events. Esposito Decl.
¶ 17 (14 TTABVUE 8).
Mr. Esposito testified that Opposer’s watches are also advertised “through social
media such as Pinterest, Facebook, Instagram, Twitter and YouTube on which
Opposer promotes and displays use of the PERPETUAL and OYSTER PERPETUAL
marks” and that nearly all of the watches promoted and advertised on these social
media sites include the OYSTER PERPETUAL mark on the dial. Esposito Decl. ¶ 19
(14 TTABVUE 8-9). Opposer has 199,600 followers and over 4.7 million monthly
18 Mr. Esposito testified that within the past five years, sales of Rolex watches have
dominated the market and have been estimated to account for over 30% of all luxury watches
sold in the United States. Esposito Decl. ¶ 5 (14 TTABVUE 3).

Opposition No. 91290853
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views on Pinterest, over 8 million followers and likes on Facebook, almost 1 million
followers on X, 17.2 million followers on Instagram, and over 2 million subscribers
with 250 million total video views on YouTube. Esposito Decl. ¶ 19 (14 TTABVUE 9).
On their face, Opposer’s sales, advertising, and social media figures are very
impressive, even absent any context vis-à-vis Opposer’s competitors beyond Mr.
Esposito’s testimony that it is estimated that Opposer commands over 30% of the
United States market for luxury watches. Esposito Decl. ¶ 5 (14 TTABVUE 3). But
the assessment of the degree of fame of the OYSTER PERPETUAL mark (and the
other “PERPETUAL Marks”) is complicated here by the fact that Opposer’s
“reputation and fame center on its ROLEX trademark,” 24 TTABVUE 7, which the
Board found about 15 years ago “has become a ‘household name’ and is famous for
dilution purposes.” Rolex Watch U.S.A., Inc. v. AFP Imaging Corp., No. 91188993,
2012 WL 6780738, at *6 (TTAB 2011), vacated on other grounds, 2013 WL 1881615,
at *3 (TTAB 2013).19 As noted above, Mr. Esposito testified that over 90% of all Rolex
watches sold annually in the United States bear the OYSTER PERPETUAL or
PERPETUAL trademarks, and 100% of those watches also bear the famous ROLEX
house mark.
19 Here, of course, Opposer does not seek to prove dilution fame of its asserted marks, which
“is an either/or proposition—fame either does or does not exist,” but rather “likelihood of
confusion fame,” which “‘varies along a spectrum from very strong to very weak.’” Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir. 2017)
(quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d
1369, 1375 (Fed. Cir. 2005) (internal quotation omitted)). In that regard, Opposer submitted
evidence “regarding Rolex’s strong brand identity and ranking Rolex as one of the most
notable watch companies in the U.S. and the world,” Esposito Decl. ¶ 5; Ex. 2 (14 TTABVUE
4, 34-162), but it is directed to the famous ROLEX mark and does not mention the OYSTER
PERPETUAL mark or Opposer’s other “PERPETUAL Marks.”

Opposition No. 91290853
- 23 -
At first blush, the fact that the OYSTER PERPETUAL mark always appears on
products together with the famous ROLEX mark might appear to benefit Opposer
because the OYSTER PERPETUAL mark figuratively basks in the glow of the famous
ROLEX mark. But in Bose, which considered the issue of the fame of the opposer’s
WAVE and ACOUSTIC WAVE product marks against the backdrop of the use of its
famous BOSE house mark, the Federal Circuit addressed “the issue of fame for
product marks that travel with famous house marks,” Bose, 293 F.3d at 1374,20 and
held that the fame of product marks must be assessed separately from the famous
house mark.
In Bose, the Board had concluded that “[a]bsent additional evidence regarding the
nature and extent of promotion or consumer perception of the marks WAVE and
ACOUSTIC WAVE apart from the admittedly famous BOSE mark, we cannot
conclude that this evidence establishes the fame of these pleaded [product] marks.”
Id. The Federal Circuit held that “[b]ecause fame plays such a dominant role in the
confusion analysis, we think that those who claim fame for product marks that are
used in tandem with a famous house mark can properly be put to tests to assure their
entitlement to the benefits of fame for the product marks.” Id.21
20 The ACOUSTIC WAVE mark was used on “a table-top loudspeaker music system with
amplifier and radio tuner and either tape cassette deck or compact disc player,” Bose, 293
F.3d at 1372, while the WAVE mark was used on “a table-top radio, which is available with
a built-in compact disc player.” Id. at 1373.
21 The Federal Circuit stated that Professor McCarthy “puts the question correctly: ‘Whether
or not a product mark always used with a house mark possesses a separate trademark
significance depends on the manner of use and the commercial impression engendered by
that use.’ Although McCarthy poses the question, he does not answer it.” Bose, 293 F.3d at

Opposition No. 91290853
- 24 -
The Federal Circuit reviewed the record evidence regarding the use of the
ACOUSTIC WAVE and WAVE product marks in the sales, advertising, and
promotion of those lines of products, id. at 1372, and concluded that the court was
not faced with a record on which substantially every
reference to the marked product is joined with reference to
the famous house mark. Instead, the consumer is
presented through advertising and other promotional
material with frequent references to the marked product
standing alone and apart from the famous house mark. The
distinction between uniform coupling of the famous house
mark with the product marks and communication to
consumers that typically gives significant independent
reference to the product apart from the house mark is
important, because in the latter instance the consumer has
a basis on which to disassociate the product mark from the
house mark.
Id.
The court stated that the Board had been correct “in creating tests to assure that
product marks do not acquire fame simply as a matter of the long shadow cast by the
accompanying famous house mark,” id., and held that
[i]f a product mark used in tandem with a famous house
mark (in today’s world, examples abound: INTEL
PREMIUM, FORD MUSTANG, APPLE MACINTOSH,
“KELLOGG’S FROOT LOOPS”) has independent
trademark significance, it should not be a great burden to
substantiate the point. As the Board indicated in this case,
consumer awareness of the product mark apart from the
fame of the associated house mark, whether demonstrated
directly or indirectly, is a reliable test of the independence
of the product mark from its parent house mark. The
nature and context of promotion is an equally reliable
measure of mark independence, as is the strength of the
public recognition of the product mark.
1374 (quoting J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 7.5 (4th ed.1999)).

Opposition No. 91290853
- 25 -
Id. at 1374.
The Federal Circuit did “not fault the Board for its insistence that Bose produce
evidence that the product marks can properly be seen as independent of the famous
house mark,” id., but did “fault the Board for its conclusion that there is no evidence
in the record to show that the Bose product marks stand independently from its
famous house mark.” Id. at 1374-75. The court noted that the “record is replete with
evidence of the critical attention that has been showered upon the products since
their inception,” and that the “critical notice given to the products specifically notes
the ACOUSTIC WAVE and WAVE marks separate from the Bose marks, and there
is considerable record evidence of advertising and sales literature that also decouples
the product marks from the famous house mark.” Id. at 1375. The court held that
“[t]his constitutes overwhelming evidence of the independent trademark significance
of the product marks” and that “[t]he Bose product marks stand apart from their
house mark and are thus entitled to be assessed independently for their possible
fame.” Id. The court ultimately determined that “[w]hen the full record is considered,
only one conclusion can be reached regarding the fame of the Bose product marks:
they are famous and thus entitled to broad protection.” Id. at 1376.
Here, unlike in Bose, we are “faced with a record on which substantially every
reference to the marked product is joined with reference to the famous house mark,”
there are only very “[in]frequent references to the marked product standing alone and

Opposition No. 91290853
- 26 -
apart from the famous house mark,”22 and the consumer does not have “a basis on
which to disassociate the [model] mark from the house mark.” Id. at 1372. The record
shows that when the OYSTER PERPETUAL mark appears beneath the ROLEX
mark on the faces of 90% of Opposer’s watches, the OYSTER PERPETUAL mark
appears in somewhat smaller lettering.23 We reproduce below a page from the record
showing an enlarged picture of the dial of a Rolex watch, which illustrates the relative
sizes of the marks:
Esposito Decl. Ex. 4 (14 TTABVUE 179). As shown above and below, when Opposer’s
watch faces are shown in their normal sizes in advertisements and other materials,
the model name is even less visible than the house mark.
22 The record shows that Opposer uses several marks that are in the nature of what the
Federal Circuit called “products marks” in Bose, including OYSTER PERPETUAL, THE
MILGAUSS, THE DATE-JUST, THE DAY-DATE, THE LADY DATE-JUST, THE SKY-
DWELLER, THE COSMOGRAPH DAYTONA, and THE SUBMARINER. Esposito Decl. Exs.
3-5 (14 TTABVUE 164-65, 177, 193, 198, 207-10, 213, 218, 222). Opposer identifies the
“PERPETUAL Marks” as “model marks” because they do not identify different types of
products, as did the ACOUSTIC WAVE and WAVE marks in Bose, but rather different
models of watches in Opposer’s line. The OYSTER PERPETUAL mark usually appears
beneath the ROLEX mark and above these other model marks on the faces of the watches.
23 Opposer states in its brief that its “advertisements always display a Rolex watch (usually
an OYSTER PERPETUAL model) . . . .” 24 TTABVUE 25.

Opposition No. 91290853
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As shown above and below, Opposer sometimes advertises and promotes its
watches online by reference to the OYSTER PERPETUAL mark without an
immediately adjacent use of the ROLEX mark:
Esposito Decl. Exs. 4-5 (14 TTABVUE 183, 192).
Much more commonly, however, Opposer and its resellers display the ROLEX
mark in some manner in close proximity to the OYSTER PERPETUAL mark:

Opposition No. 91290853
- 28 -
Esposito Decl. Ex. 7 (14 TTABVUE 241).
Opposer also relies on media coverage of its watches to establish the commercial
strength of the OYSTER PERPETUAL mark.24 24 TTABVUE 18, 27. The articles
make numerous references to the ROLEX mark as well as the OYSTER PERPETUAL
mark, and all of them show multiple examples of the faces of Opposer’s watches,
which display both marks. 18 TTABVUE 5-209.25
Opposer further relies on what it describes in its Fourth Notice of Reliance as
“third-party forum discussions about Rolex’s OYSTER PERPETUAL watches” to
24 Opposer’s Fourth Notice of Reliance covers what Opposer claims to be “evidence of third-
party articles referring to Rolex’s trademarks to show consumer recognition and strength of
the association between use of the OYSTER PERPETUAL trademark and [Opposer].” 18
TTABVUE 2.
25 One of the articles explains that the “PERPETUAL” part of Opposer’s OYSTER
PERPETUAL mark refers to “Rolex’s self-winding mechanism with a ‘Perpetual’ rotor, which
was capable of automatically winding the movement so that no manual intervention was
required – something we almost take for granted 90 years later. Even to this day, you will
find the words ‘Oyster Perpetual’ on all Rolex watches except for the Cellini collection (which
rated to only 50m water resistance whereas all others are rated to at least 100m), a testament
to the significance of these innovations.” 18 TTABVUE 14. Another article refers to the
“automatic self-winding movement” identified by the word “Perpetual.” Id. at 28. A third
article refers to Opposer’s “trademark perpetual self-winding movement.” Id. at 175.

Opposition No. 91290853
- 29 -
“show the strength, consumer recognition and reputation of Rolex’s OYSTER
PERPETUAL trademark.” Id. at 2. These forum discussions similarly repeatedly
refer to the ROLEX mark and contain displays of the faces of Opposer’s watches. Id.
at 209-47.
Because the record shows that the famous ROLEX mark is always associated with
the OYSTER PERPETUAL mark on Opposer’s watches, and is almost invariably
associated textually and visually with the OYSTER PERPETUAL mark in Opposer’s
advertising and promotion of the watches, and in other materials, the record here is
dissimilar in that respect to the record in Bose and much more akin to the record in
Promark Brands Inc. v. GFA Brands, Inc., No. 91194974, 2015 WL 1646447 (TTAB
2015), where the opposers’ “SMART ONES mark always appear[ed] in conjunction
with the[ir] WEIGHT WATCHERS trademark.” Id. at *12.
In Promark, the Board explained that “[l]ogically, moneys spent to support the
SMART ONES mark promote the WEIGHT WATCHERS mark at the same time, and
sales of SMART ONES products are, by definition, sales of WEIGHT WATCHERS
SMART ONES products.” Id. As a result, the Board was “unable to attribute either
promotional expenditures or resulting sales to the SMART ONES mark as opposed
to either the WEIGHT WATCHERS mark alone or to some combination of the two,”
and the Board held that “[i]t is well-settled that, where, as here, a party’s advertising
and sales data is based on materials and packaging in which the mark at issue is
almost always displayed with another mark, such data does not prove that the mark
at issue possesses the requisite degree of consumer recognition.” Id. (citing In re

Opposition No. 91290853
- 30 -
Bongrain Int’l Am. Corp., 894 F.2d 1316, 1318 (Fed. Cir. 1990); In re Soccer Sport
Supply Co., 507 F.2d 1400, 1403 (CCPA 1975); In re Mogen David Wine Corp., 372
F.2d 539, 541 (CCPA 1967)).
The Board distinguished Bose on the ground that “the evidence in this case
discloses that the SMART ONES and WEIGHT WATCHERS marks are consistently
coupled in the marketplace, which counsels against a finding of fame, based upon
advertising and sales figures for Opposers’ frozen meals, of the mark SMART ONES
alone.” Promark, 2015 WL 1646447, at *13. After finding that two independent
research studies and an independent consumer survey did not support a finding of
fame of the SMART ONES mark, id., the Board concluded that “[w]hile the evidence
of record points to some commercial strength attached to the SMART ONES mark,
the evidence falls short of ‘clear proof’ of fame of the mark and, therefore, we find that
this factor is neutral and does not support a conclusion of likelihood of confusion.” Id.
at *14.26
As in Promark, Opposer’s sales and advertising evidence here shows that the
OYSTER PERPETUAL mark is invariably used in some manner in connection with
the famous ROLEX house mark. As the Federal Circuit explained in Bose, “[b]ecause
fame plays such a dominant role in the confusion analysis, we think that those who
claim fame for product marks that are used in tandem with a famous house mark can
properly be put to tests to assure their entitlement to the benefits of fame for the
26 Here, unlike in Promark, Opposer offers no survey evidence regarding the fame of the
OYSTER PERPETUAL mark alone.

Opposition No. 91290853
- 31 -
product marks.” Bose, 293 F.3d at 1394. The evidence here “falls short of ‘clear proof’
of fame of the [OYSTER PERPETUAL] mark and, therefore, we find that this factor
is neutral and does not support a conclusion of likelihood of confusion,” Promark, 2015
WL 1646447, at *14, with respect to either class in the application.
Each of Opposer’s “PERPERTUAL Marks” was registered on the Principal
Register without a requirement of a showing of acquired distinctiveness, and we thus
“presume [that they are] inherently distinctive, i.e., that [they are] at worst
suggestive of the goods.” Heil Co., 2024 WL 4925901, at *15 (citations omitted).27 On
this record, which does not show that any of the “PERPETUAL Marks” have
significant commercial strength independent of the famous ROLEX mark, we will
accord the OYSTER PERPETUAL, PERPETUAL, and PERPETUAL 1908 marks the
“normal scope of protection to which inherently distinctive marks are entitled.” Iron
Balls Int’l Ltd. v. Bull Creek Brewing, LLC, No. 92079099, 2024 WL 2844425, at *15
(TTAB 2024) (citation omitted).
27 The sixth DuPont factor “allows [an applicant] to contract [the] scope of protection [of an
opposer’s mark] by adducing evidence of ‘[t]he number and nature of similar marks in use on
similar goods.’” Made in Nature, LLC v. Pharmavite, LLC, No. 91223352, 2022 WL 2188890,
at *11 (TTAB 2022) (quoting DuPont, 476 F.2d at 1361). Applicants did not introduce such
evidence, but Opposer surprisingly made of record USPTO electronic records regarding a
third-party registration, Registration No. 6881892 of the mark LANGEMATIK PERPETUAL
(PERPETUAL disclaimed) for various Class 14 goods including watches, to show that
Opposer “is nearly the exclusive registrant of trademarks in IC 014 that incorporate the term
PERPETUAL . . . .” 17 TTABVUE 2, 41-43. This registration issued without proof of use of
the registered mark, and lacks probative value with respect to the conceptual weakness of
Opposer’s mark. Made in Nature, 2022 WL 2188890, at *14.

Opposition No. 91290853
- 32 -
2. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, “[w]e consider the marks in their entireties as to
appearance, sound, connotation and commercial impression.” Sage Therapeutics,
2024 WL 1638376, at *5 (citation omitted). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” Id. (quoting In re Inn at St.
John’s LLC, No. 87075988, 2018 WL 2734893, at *5 (TTAB 2018) (citation
omitted), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019)); accord Krim-Ko Corp. v.
Coca-Cola Bottling Co., 390 F.2d 728, 732 (CCPA 1968) (“It is sufficient if the
similarity in either form, spelling or sound alone is likely to cause confusion.”)
(citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Sage Therapeutics, 2024 WL 1638376, at *5 (quoting Coach
Servs., 668 F.3d at 1368). “The focus is on the recollection of the average purchaser,
who normally ‘retains a general rather than a specific impression of marks.’” Id.
(quoting In re i.am.symbolic, llc, No. 85916778, 2018 WL 3993582, at *4 (TTAB 2018)
(citations omitted)). Under Opposer’s forward confusion theory, the average
purchasers here are consumers of “Necklace and earring combinations that can be
worn separately or as one piece” and “Hatpins of precious metal, other than jewelery.”
We will focus the remainder of our Section 2(d) analysis on Opposer’s
PERPETUAL mark, which is registered for the same goods as Opposer’s OYSTER
PERPETUAL and PERPETUAL 1908 marks, and is the mark within Opposer’s trio

Opposition No. 91290853
- 33 -
of “PERPETUAL Marks” that is the most similar to Applicants’ mark. If we find a
likelihood of confusion as to the PERPETUAL mark, we need not find it as Opposer’s
other marks. Conversely, if we do not find a likelihood of confusion as to Opposer’s
PERPETUAL mark, we would not find it as to Opposer’s other marks, which contain
elements in addition to the word PERPETUAL. New Era Cap Co. v. Pro Era, LLC,
No. 91216455, 2020 WL 2853282, at *11 (TTAB 2020).
Marks must be considered in their entireties, but “in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on consideration of the marks in
their entireties.” In re Detroit Athletic Co., 903 F.3d 1297, 1305 (Fed. Cir. 2018)
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)). Opposer argues
that “Applicants admit the ‘dominant and substantive portion of Applicants’ mark is
PERPETUAL’, which is identical, in whole or in part, to each of Rolex’s PERPETUAL
Marks.” 24 TTABVUE 28 (citing Not. of Opp. ¶ 15 (1 TTABVUE 9) (alleging that
“Applicant [sic] has disclaimed the word GIFTS in its [sic] PERPETUAL GIFTS Mark
and therefore the dominant and substantive portion of Applicant’s [sic] mark is
PERPETUAL”); Answ. ¶ 15 (5 TTABVUE 3) (“Applicant [sic] admits the averments
of this paragraph.”)).
We acknowledge Applicants’ admission in their answer regarding the issue of the
dominant portion of their mark, and the record shows, consistent with their
admission, that the word “Perpetual” is the dominant portion of their mark. The word

Opposition No. 91290853
- 34 -
“Perpetual” is the first word in the mark; the second word in the mark, “Gifts,” has
been disclaimed and has no source-identifying significance in connection with the
Class 14 or Class 26 goods identified in the application;28 and the design elements
consist of a black square background “carrier” for the other elements and what
Applicants described as “a stylized double infinity symbol design,” all of which
reinforces the meaning and significance of the lead word “Perpetual.”29 See generally
Look Cycle Int’l v. Kunshan Qiyue Outdoor Sports Goods Co., No. 92079409, 2024 WL
3739358, *9 (TTAB 2024); Sabhnani v. Mirage Brands, LLC, No. 92068086, 2021 WL
6072822, at *16 (TTAB 2021). We find that the lead word “Perpetual” is the dominant
portion of Applicants’ mark. We turn now to the required comparison of the marks in
their entireties, giving greater weight in that comparison to the word “Perpetual” in
Applicants’ mark than to the other elements of the mark.
“To state the obvious, Applicant[s’] . . . mark is similar to Opposer’s [PERPETUAL]
mark in that it incorporates the entirety of Opposer’s mark.” Anheuser-Busch, Inc. v.
Innvopak Sys. Pty Ltd., No. 91194148, 2015 WL 5316485, at *8 (TTAB 2015). “While
28 The examining attorney assigned to Applicants’ application required a disclaimer of the
word GIFTS apart from the mark as shown because it “is merely descriptive of an ingredient,
quality, characteristic, function, feature, purpose, or use of applicant’s [sic] goods,”
specifically, that “the goods applicant [sic] is manufacturing are often given as GIFTS and
are found in GIFT shops,” based on a dictionary definition of the word “gift” as “something
voluntarily transferred by one person to another without compensation.” January 29, 2024
Office Action at TSDR 2 (citing MERRIAM-WEBSTER DICTIONARY).
29 The Federal Circuit has held that “in the case of a composite mark containing both words
and a design, ‘the verbal portion of the mark is the one most likely to indicate the origin of
the goods to which it is affixed.’” In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012)
(quoting CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983)). We note in that regard
that Applicants use the words “Perpetual Gifts” alone to identify themselves on their social
media pages and website, 21 TTABVUE 4, 6-9, 24, 30-32, and that the copyright notice on
their website does so as well. Id. at 25.

Opposition No. 91290853
- 35 -
there is no explicit rule that the marks are automatically similar because
[Applicants’] junior mark contains [Opposer’s] entire mark [PERPETUAL],
‘[l]ikelihood of confusion often has been found where the entirety of one mark is
incorporated within another.’” Double Coin Holdings Ltd. v. Tru Dev., No. 92063808,
2019 WL 4877349, at *8 (TTAB 2019) (quoting Hunter Indus., Inc. v. Toro Co., No.
91203612, 2014 WL 1649332, at *11 (TTAB 2014) (citations omitted)).
With respect to appearance, Opposer’s PERPETUAL mark is a standard-
character mark and, as such, “‘may be presented in any font style, size or color,
including the same font, size and color as the literal portion of [Applicants’] mark,”
Sabhnani, 2021 WL 6072822, at *17 (quoting In re Aquitaine Wine USA, LLC, No.
86928469, 2018 WL 1620989, at *5 (TTAB 2018)), and “‘in the same stylization
actually used or intended to be used by [Applicants], or one that minimizes the
differences or emphasizes the similarities between the marks.’” Id. (quoting
Anheuser-Busch, 2015 WL 5316485, at *8 (citing Citigroup Inc. v. Cap. City Bank Grp.
Inc., 637 F.3d 1344, 1353 (Fed. Cir. 2011) (“the registrant is entitled to depictions of
the standard character mark regardless of font style, size, or color . . . .”)). We thus
must assume that Opposer could display its PERPETUAL mark in the same font and
size as the word “Perpetual” in Applicants’ mark.
Opposer’s PERPETUAL mark is quite similar to Applicants’ composite mark in
appearance from the perspective of a consumer who is familiar with Opposer’s mark
and who separately encounters Applicants’ composite mark, which is dominated by
the word “Perpetual” that comprises Opposer’s mark. The visual similarity is

Opposition No. 91290853
- 36 -
especially pronounced when taking into account the hypothesized depiction of
Opposer’s mark in the same font and size as the word “Perpetual” in Applicants’ mark
discussed immediately above.
Opposer’s mark is also quite similar to Applicants’ composite mark in sound
because the word “Perpetual” that is common to the marks is a known word in
English, and will sound identical when the marks are verbalized.
Finally, the marks are similar in meaning because the word “Perpetual” that is
common to the marks means “continuing forever: everlasting,”30 and it is likely to
connote that same temporal impression in both marks.31 Dr. Graham testified that
Applicants’ products were intended to “be passed down through generations.”
Graham Decl. ¶ 12 (19 TTABVUE 3). Mr. Esposito testified regarding the market for
pre-owned Rolex watches bearing one of the “PERPETUAL Marks,” Esposito Decl.
¶ 20 (14 TTABVUE 9), and he referenced Internet evidence displaying what are
described as “Pre-Owned Rolex” watches, Esposito Decl. ¶ 20 (14 TTABVUE 9); 13
TTABVUE 4-33, reflecting that Opposer’s watches have a product life expectancy
beyond their original ownership. Opposer also submitted Internet evidence during its
30 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed on April 27, 2026).
The Board may take judicial notice of dictionary definitions, including definitions from
online dictionaries that exist in printed format or have fixed regular editions. See, e.g., In re
Nursecon, LLC, No. 88052194, 2024 WL 5265079, at *10 n.64 (TTAB 2024) (citation omitted).
31 As discussed above, some of the articles submitted by Opposer to show recognition of its
“PERPETUAL Marks” identify the word “Perpetual” used with Opposer’s watches as a
reference to the “self-winding movement” of Opposer’s watches. The USPTO required a
disclaimer of the exclusive right to use PERPETUAL apart from the OYSTER PERPETUAL
mark when it issued Opposer’s Registration No. 394881 of that mark in 1942, but did not
require a disclaimer of PERPETUAL when it issued Opposer’s Registration No. 1105602 of
that mark in 1978. The USPTO also issued Opposer’s Registration No. 6247647 of
PERPETUAL in 2021 without a requirement of a showing of acquired distinctiveness.

Opposition No. 91290853
- 37 -
rebuttal period showing that the public has been exposed to articles discussing
passing luxury watches from generation to generation as heirlooms, which show and
describe various watches, including Opposer’s watches bearing its “PERPETUAL
Marks.” 23 TTABVUE 59-182.32
We find that the marks are similar in all means of comparison, and the first
DuPont factor supports a conclusion that confusion is likely with respect to both
classes in the application.
3. Similarity or Dissimilarity of the Goods, Channels of
Trade, and Classes of Consumers
“The second DuPont factor considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration or in connection
with which a prior mark is in use.’” Detroit Athletic Co., 903 F.3d at 1306 (quoting
DuPont, 476 F.2d at 1361). “This factor considers whether ‘the consuming public may
perceive [the goods or services] as related enough to cause confusion about the source
or origin of the goods or services.’” In re St. Helena Hosp., 774 F.3d 747, 752 (Fed. Cir.
2014) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267 (Fed.
Cir. 2002)).
The goods need not be identical or even competitive to find a likelihood of
confusion. On-line Careline, Inc. v. Am. Online Inc., 281 F.3d 1261, 1267 (Fed. Cir.
2002); Recot, 214 F.3d at 1329. They need only be “related in some manner and/or if
32 We consider this evidence and the Internet evidence attached to Opposer’s Sixth Notice of
Reliance only for what is shown on its face, not for the truth of its contents. See WeaponX
Performance Prods. Ltd. v. Weapon X Motorsports, Inc., No. 91221553, 2018 WL 1326374, at
*6 n.18 (TTAB 2018) (considering Internet evidence offered by the opposer under notice of
reliance only for what is shown on its face “whether there is an objection or not.”).

Opposition No. 91290853
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the circumstances surrounding their marketing are such that they could give rise to
the mistaken belief that they emanate from the same source.” Coach Servs., 668 F.3d
at 1369.
The relatedness of goods or services may be established based on (1) the language
of the involved identifications of goods or services, which may show, on the face of the
identifications, that the goods or services are literally or legally identical, or otherwise
intrinsically related, and (2) evidence of third-party trademarks, which may show
that the identified goods or services are commonly offered by the same entity under
the same mark.
Evidence of relatedness may include news articles or
evidence from computer databases showing that the
relevant goods [or services] are used together or used by
the same purchasers; advertisements showing that the
relevant goods [or services] are advertised together or sold
by the same manufacturer or dealer; or copies of prior use-
based registrations of the same mark for both applicant’s
goods [or services] and the goods [or services] listed in the
cited registration [and] [t]he application and registration
themselves may provide evidence of the relationship
between the [goods or] services.
In re OSF Healthcare Sys., No. 88706809, 2023 WL 6140427, at *4 (TTAB 2023)
(quotations and citations omitted)).
The goods identified in Opposer’s registrations are “Watches and parts thereof,”
while the goods identified in the application are “Necklace and earring combinations
that can be worn separately or as one piece” in Class 14 and “Hatpins of precious
metal, other than jewelery” in Class 26. Likelihood of confusion may be found as to
the entirety of Class 14 if it exists as to either good in that class. Sabhnani, 2021 WL
6072822, at *9 n.17.

Opposition No. 91290853
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Opposer does not discuss the relatedness of the parties’ goods under the second
DuPont factor on a class-by-class basis, but instead conflates what it calls “jewelry
(necklaces and earrings)” with “hat pins,” arguing that those goods and watches are
“all highly similar in that they are all fashion accessories meant to be worn.” 24
TTABVUE 31. Opposer cites a non-precedential decision, In re Charlene Corp., No.
87937460, 2020 WL 5991304 (TTAB Sept. 15, 2020), and two precedential decisions
cited in Charlene Corp.: Monocraft, Inc. v. Leading Jewelers Guild, No.
91050372, 1972 WL 17991 (TTAB 1972) and Gruen Indus., Inc. v. Ray Curran & Co.,
No. 92008526, 1967 WL 7536 (TTAB 1967), and argues that watches and men’s
jewelry are clearly related. 24 TTABVUE 31-32.33
We have noted “the limited utility of reliance, in lieu of supporting evidence, on
past decisions in which the Board has or has not found various clothing items to be
related,” In re Embiid, No. 88202890, 2021 WL 2285576, at *12 (TTAB 2021), and the
same principle applies in the context of the goods here.34 Because the relatedness of
the goods is not self-evident based on the respective identifications alone, “[w]e must
examine the record in this case to determine whether the particular [goods] at issue
are related.” Id.
33 Opposer also cites Clinton Diamond Corp. v. Gen. Time Corp., 1962 WL 8650 (TTAB 1962),
which found that rings and clocks were related. 24 TTABVUE 32.
34 Moreover, the cited precedential decisions are old ones and, as the Board noted in Embiid,
marketing practices and marketplace conditions are constantly evolving. Embiid, 2021 WL
2285576, at *15 n.47.

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a. Class 14
The Class 14 goods are “Necklace and earring combinations that can be worn
separately or as one piece.” Applicants’ website displays the goods as follows:
21 TTABVUE 20. “It is proper to construe [A]pplicant[s’] description of [their] goods
in the manner most favorable to [O]pposer.” CBS, 708 F.2d at 1581 n.3 (citing CTS
Corp. v. Cronstoms Mfg., Inc., 515 F.2d 780, 782 (CCPA 1975)). Applicants’ website
makes clear that the “necklaces” and the “earrings” described in the Class 14
identification of goods are separate products, and we will treat them as such for
purposes of the second DuPont factor.
Opposer argues that it “has submitted evidence that shows third-party fashion
brands have registered trademarks that cover both watches and many types of
jewelry,” id. at 22, and “has also submitted evidence that third parties offer watches
and jewelry side by side [that] are advertised together on the same websites.” Id. at
23.
Opposer submitted USPTO electronic records regarding 13 third-party use-based
registrations, 11 of which were subsisting at the time of trial for both watches and

Opposition No. 91290853
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some relevant form of jewelry.35 We summarize their respective identifications of
goods below:
• Registration No. 4178047 of the stylized mark CARTIER covers “watches”
and “jewelry,” 16 TTABVUE 6-11;36
• Registration No. 4927782 of the stylized mark GUESS covers “watches” and
“jewelry,” as well as “necklaces” and “earrings,” id. at 12-15;
• Registration No. 4164766 of the mark ROCAWEAR covers “watches” and
“jewelry,” id. at 16-20;
• Registration No. 3373898 of the stylized mark RED SOX covers, inter alia,
“jewelry, namely, bracelets, charms, earrings, rings, necklaces, pendants,
watches,” id. at 21-23;37
• Registration No. 3403036 of the mark ANDY WARHOL covers “watches”
and “jewelry,” id. at 40-42;
• Registration No. 2936247 of the mark VAN CLEEF & ARPELS covers
“watches” and “jewelry,” id. at 43-48;
• Registration No. 3237882 of the stylized mark ESPRIT covers “watches”
and “jewelry,” id. at 49-51;
• Registration No. 4042815 of the mark DISNEY covers “watches” and
“jewelry,” id. at 52-55;
• Registration No. 3361415 of the mark AEROPOSTALE covers “watches”
and “jewelry,” id. at 56-66;
35 Registration No. 2236428 originally covered “watches” as well as various forms of jewelry,
but “watches” have been deleted from the Class 14 identification of goods. 16 TTABVUE 24-
25. Registration No. 3967242 covers goods identified as “Jewelry watches.” Id. at 31.
36 “Just as we must consider the full scope of the goods and services as set forth in the
application and registration[s] under consideration, we must consider the full scope of the
goods and services described in a third-party registration.” In re Country Oven, Inc., No.
87354443, 2019 WL 6170483, at *5 (TTAB 2019). We construe the goods identified as
“jewelry” in this third-party registrations and the others in the record to encompass the Class
14 goods identified in the opposed application as “Necklace and earring combinations that
can be worn separately or as one piece.”
37 This registration expressly identifies “watches” as a form of “jewelry.” Applicants’ Facebook
page also contains a listing of “Jewelry/watches.” 21 TTABVUE 4.

Opposition No. 91290853
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• Registration No. 2577652 of the mark SOTHEBY’S covers “watches” and
“jewelry, namely, necklaces [and] earrings . . . .,” id. at 67-75; and
• Registration No. 2170135 of the mark KENNETH COLE covers “watches”
and “jewelry.” Id. at 76-83.
“As a general proposition, third-party registrations that cover goods . . . from both
[a] registration and an . . . application are relevant to show that the goods . . . are of
a type that may emanate from a single source under one mark.” Country Oven, 2019
WL 6170483, at *5. The 11 registrations here are sufficient in both quantity and
quality to show prima facie that “watches,” and “earrings” and “necklaces,” are
related, and to “shift the burden to Applicant[s] to rebut the evidence with competent
evidence of [their] own.” Id. Applicants did not submit such evidence.
Opposer also submitted screenshots of ten third-party websites on which watches
and various forms of jewelry are sold. 12 TTABVUE 2-100.38 These are the websites
of Cartier, id. at 6-13 (displaying watches, necklaces, and earrings); Michael Kors, id.
at 14-22 (displaying watches and earrings); Guess, id. at 28-36 (displaying watches,
necklaces, and earrings); Zales, id. at 37-45 (displaying necklaces and earrings sold
under the Zales mark and watches sold under the Bulova and Citizen marks); Jared,
id. at 46-55 (displaying necklaces sold under the Juliet Maison and Diamond Infinity
marks, earrings sold under the Diamond Infinity mark, and watches sold under the
Casio, Bulova, Tag Heuer, and Tissot marks); Macy’s, id. at 56-64 (displaying
earrings sold under the Honora mark, necklaces sold under the Effy mark, and
38 The Armani Exchange website displays watches, but neither of the goods identified in Class
14 in the application. 12 TTABVUE 23-27.

Opposition No. 91290853
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watches sold under the Longines, Gavril, Bulova, Gucci, Movado, Tory Burch, and
Michael Kors marks); Tiffany & Co., id. at 65-73 (displaying necklaces and watches);
Kay Jewelers, id. at 74-83 (displaying necklaces, and watches sold under the Movado,
Tissot, and Citizen marks); Kenneth Cole, id. at 84-92 (displaying earrings,
necklaces, and watches); and Van Cleef & Arpels, id. at 93-100 (displaying necklaces
and watches). The third-party Internet evidence thus shows use of the Cartier,
Michael Kors, Guess, Tiffany, Kenneth Cole, and Van Cleef & Arpels marks in
connection with both watches, and earrings or necklaces.
Taken together, Opposer’s third-party use and registration evidence is sufficient
to show that watches, and earrings and necklaces, commonly emanate from the same
source under the same mark. The second DuPont factor supports a conclusion that
confusion is likely with respect to the goods in Class 14.39
b. Class 26
Applicant’s Class 26 goods are a different matter entirely. Opposer’s only mention
of Class 26 in its brief is in its argument that “Applicants’ application seeks to register
this mark in IC 026 for ‘hat pins of precious metal, other than jewelry,’” but
39 As discussed above, Opposer briefly argues that the third and fourth DuPont factors
support a conclusion that confusion is likely because the channels of trade and classes of
consumers are the same. 24 TTABVUE 34. According to Opposer, “[w]atches and other
articles of jewelry are sold in the same stores, in the same sections of the same stores, on the
same websites - often side by side and sometimes even under the same trademarks.” Id.
(record citations omitted). We agree with respect to the Class 14 goods because the record
evidence discussed above shows that watches, and earrings and necklaces, are sold through
the online and brick-and-mortar stores of jewelers, as well as in the jewelry sections of
department stores, and Mr. Esposito testified that “in most cases,” Official Rolex Jewelers
who carry new watches sold by Opposer “also offer other watch brands and jewelry for sale.”
Esposito Decl. ¶ 15 (14 TTABVUE 7). The common channels of trade and classes of consumers
also support a conclusion that confusion is likely with respect to the goods in Class 14.

Opposition No. 91290853
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“Applicants have not provided any evidence of use or intent to use the mark for hat
pins and/or how the ‘hat pins’ will not be decorative and/or ornamental – which would
be necessary in order to distinguish it from jewelry and watches.” 24 TTABVUE 31
n.3. Opposer offers no third-party use or registration evidence that watches and “hat
pins of precious metal, other than jewelery” are sold under the same mark, or are
otherwise related, and “[a]ttorney argument is no substitute for evidence.” Enzo
Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005). The second
DuPont factor supports a conclusion that confusion is not likely with respect to the
goods in Class 26.
There is no evidence regarding the channels of trade and classes of consumers for
“hat pins of precious metal, other than jewelery,” and Opposer thus did not show that
the channels of trade and classes of consumers for those goods overlap with the
channels of trade and classes of consumers for watches. These DuPont factors thus
support a conclusion that confusion is not likely with respect to the goods in Class 26.
4. Consumer Sophistication and Degree of Care in
Purchasing
The fourth DuPont factor considers the “conditions under which . . . sales are
made, i. e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 476 F.2d at 1361.
Opposer argues that “[n]either Applicants’ application nor Rolex’s registrations limit
its target consumer. Therefore, the cost of either parties’ goods is of little relevance
to the evaluation of consumers’ purchasing care.” 24 TTABVUE 35. Opposer argues
alternatively that “[e]ven if the Board were to find that consumers of the parties’
goods are sophisticated and would exercise some care before purchasing the products,

Opposition No. 91290853
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consumers will likely still be confused, because the parties’ marks are nearly identical
and the goods are similar.” Id. Opposer concludes that “this factor also supports a
finding of likelihood of confusion.” Id.
We disagree with Opposer’s conclusion. Under Opposer’s forward confusion
theory, it is the sophistication and degree of care of the consumers of Applicant’s
goods that matter. The Class 14 goods identified in the application as “earrings” and
“necklaces” are purchased for the purpose of personal adornment, which implicates
the wearer’s aesthetic tastes and suggests that the goods would be purchased by both
wearers and gift-givers alike with at least some degree of care even at low price
points.40 There is no record evidence that consumers are likely to purchase these
goods on impulse. The consumer sophistication and purchaser care factor is neutral
in our analysis of the likelihood of confusion with respect to the Class 14 goods in the
application.
As discussed above, there is no record evidence regarding the Class 26 goods
identified in the application as “hat pins of precious metal, other than jewelery.” In
the absence of any evidence regarding the prices of these goods or the conditions of
their purchase, the consumer sophistication and purchaser care factor is also neutral
40 There appear to be huge ranges of prices for earrings and necklaces. Applicants’ website
offers gold earrings, necklaces, and earring-necklace sets for several thousand dollars, 21
TTABVUE 32, and silver and wood versions of the goods for several hundred dollars. Id. at
20, 22-23, 30. Opposer made of record third-party webpages that display earrings and
necklaces offered for several hundred dollars and, in many instances, several thousand
dollars. 12 TTABVUE 8-9, 18, 38-39, 47-51, 59, 75-76, 87, 93-94. The lowest-priced earrings
on display were offered for $23.40, id. at 31, and the lowest-priced necklace was offered for
$35. Id. at 29.

Opposition No. 91290853
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in our analysis of the likelihood of confusion with respect to the Class 26 goods in the
application.
5. The Eighth DuPont Factor
The eighth DuPont factor addresses the “length of time during and conditions
under which there has been concurrent use without evidence of actual confusion.”
DuPont, 476 F.2d at 1361. Unlike with the first, second, third, and fourth factors,
where we operate within the four corners of the registrations and application at issue,
under the eighth factor, we must “look at actual market conditions, to the extent
there is evidence of such conditions of record.” In re Guild Mortg. Co., No. 86709944,
2020 WL 1639916, at *8 (TTAB 2020) (emphasis in original).
Opposer argues that “[h]ere, there has been no opportunity for actual confusion,
because Applicants only recently began to sell their jewelry (and have not yet sold
hat pins) and what little evidence there is shows no real use of the trademark in
association with its minimal sales.” 24 TTABVUE 36. We agree, and find that the
eighth factor is neutral in our analysis of the likelihood of confusion with respect to
both classes in the application.
6. Balancing the DuPont Factors
“The likelihood of confusion analysis is a balancing test,” Fuente Mktg., 2026 WL
64 F.4th 1375, at *7, and the final step in that analysis is to “weigh the DuPont factors
used in [our] analysis and explain the results of that weighing.” In re Charger
Ventures, 64 F.4th 1375, 1384 (Fed. Cir. 2023) (emphasis in bold here in italics in
Charger Ventures). “No mechanical rule determines likelihood of confusion, and each
case requires weighing of the facts and circumstances of the particular mark.” In re

Opposition No. 91290853
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Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010); see also Stratus Networks, Inc.
v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998 (Fed. Cir. 2020) (“[T]he weight
afforded to each factor depends on the circumstances” and “[a]ny single factor may
control a particular case.”).41
The marks are similar and the key first factor thus supports a conclusion of a
likelihood of confusion with respect to both classes in the application. The similarities
between the marks “go a long way toward causing confusion among consumers,”
Detroit Athletic Co., 903 F.3d 1303, but we must take into account the other relevant
non-neutral factors.
The key second factor regarding the similarity of the goods, and the similarity of
their channels of trade and classes of consumers, also support a conclusion of a
likelihood of confusion with respect to Class 14 because there is evidence that
“watches,” and “necklaces” and “earrings,” are commonly sold under the same marks
and in the same channels of trade. We thus conclude that a consumer who is familiar
with Opposer’s PERPETUAL mark for watches who separately encounters necklaces
or earrings sold under Applicant’s mark, which is dominated by the word “Perpetual,”
is likely to believe mistakenly that the goods have a common source.
With respect to Class 26, confusion is not likely because the record is devoid of
evidence that “watches,” and “hat pins of precious metal, other than jewelery,” are
related or are likely to be encountered in the same or overlapping channels of trade.
41 As discussed above, the consumer sophistication and purchaser care factor, as well as the
fifth and eighth factors, are neutral.

Opposition No. 91290853
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We conclude that the differences in the goods and the lack of evidence of similar
channels of trade outweigh the similarities of the mark with respect to Class 26, and
that a consumer familiar with Opposer’s PERPETUAL mark for watches who
separately encounters “hat pins of precious metal, other than jewelery” sold under
Applicant’s mark is unlikely to believe that the goods have a common source.
C. Conclusion
Opposer proved its entitlement to a statutory cause of action under Section 2(d) of
the Trademark Act against both classes in the application. Opposer proved that it
has priority in the use of its PERPETUAL mark and proved, by a preponderance of
the evidence, that there is a likelihood of confusion with respect to the goods identified
in Class 14 in the application. Opposer did not prove, by a preponderance of the
evidence, that there is a likelihood of confusion with respect to the goods identified in
Class 26 in the application.
Decision: The opposition is sustained with respect to Class 14 in the application.
The opposition is dismissed with respect to Class 26 in the application.