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Bottom line: The Board found METAMORPHOSIS QUARTZ is not similar to METAMORPHOSIS.

The applicant filed an application for METAMORPHOSIS QUARTZ designating personal ornaments [jewelry], unwrought and semi-wrought precious stones and their imitations in Class 14.  The examiner refused registration citing two prior registrations for METAMORPHOSIS designating various jewelry items and other goods in Class 14.  The examiner opined that METAMORPHOSIS will be extracted from the applied-for mark and is similar to the cited mark.

The applicant’s goods “personal ornaments [jewelry], semi-wrought precious stones and their imitations” are legally identical or similar to the goods of the cited mark.  So the question is whether the marks at issue are similar or not.

The Board noted that the applied-for mark METAMORPHOSIS QUARTZ is written in the same font and size, and unified as a whole.  The sound derived from the mark [me-ta-mo-fo:-si-su-ku-o:-tsu] can be pronounced in a breath.  Although “quartz” refers to mineral consisting of silicon dioxide, it will be buried in the applied-for mark as a whole in view of the composition of the mark, and will not be recognized as reference to the raw materials of goods when used in relation to the conflicting goods “personal ornaments [jewelry], semi-wrought precious stones and their imitations”.  The Board found no circumstance in the trade that QUARTZ should be disregarded and that METAMORPHOSIS alone functions as a source identifier.

Accordingly, the Board concluded the examiner’s analysis is not reasonable and that the applied-for mark, being indivisibly-united, is not confusingly similar to the cited mark.

And so the Board reversed the refusal.