The Art of Selecting Strong Marks

Widespread use of “Artistry” for jewelry tarnished jewelry wholesaler Artistry, Ltd.’s trademark infringement claim against the nation’s largest specialty jewelry retailer.

The Sixth Circuit affirmed the dismissal of Artistry’s trademark infringement claims on summary judgement against Sterling Jewelers, Inc. this week. Artistry accused the owner of the shopping-mall jewelry stores Kay Jewelers and Jared of infringing its ARTISTRY mark. The opinion noted evidence of at least 23 other jewelry companies using “Artistry” in some form, including 16 with the word in the company name.

Like “Bliss” for beauty, “Lean” for low-calorie food, and “Kick” for tabletop soccer games, Artistry could not assert exclusive rights in the ARTISTRY mark, the court reasoned.

“It is a weak mark, one that differs at most in modest degree but not in kind from like seen words and their derivatives in the jewelry business: precious, gorgeous, luxury, vintage, style, forever, creative, crafted, sparkly, exquisite, elegant, and so on,” the court wrote.  “It is difficult to sell jewelry without using words like ‘artistry,’ ‘artistic,’ or ‘artisan’ or for that matter any of the others listed above.”

The decision illustrates the difficulty of protecting popular terms as trademarks. When a mark like ARTISTRY is used by many others within the same field, a court will take that into account when considering if consumers are likely to be confused. When selecting a new mark, it is important to consider how many others in the industry are using similar terms as well as the conceptual strength of the mark for the product. A strong mark will ideally suggest a particular quality of the goods, but also be unique within an industry.

The court’s decision also distinguished Artistry’s customers from Sterling’s customers. Artistry, a wholesaler that sells to independent jewelers and high-end department stores, argued that “ultimate consumers might hesitate to purchase its jewelry in high-end retail stores if they think that Artistry, Ltd. is associated with Kay, a ‘mall brand.’” The court dismissed Artistry’s theory of confusion because “[u]ltimate consumers almost never know that they are buying Artistry, Ltd. products.”

The decision in Sterling Jewelers, Inc. v. Artistry, Ltd., (6th Cir. July 24, 2018), is reported here

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