A Sixth Circuit decision, Sterling Jewelers, Inc. v. Artistry Ltd. (2018), demonstrates the importance of (1) legal guidance in picking a trademark and avoiding weak marks that will only provide a narrow scope of protection and (2) proper foundational work to secure trademark rights.
The plaintiff in the case failed to do both, and learned the hard way that the rights it thought it had were far less effective than expected.
Artistry is a small jewelry wholesaler, which sells jewelry only to retailers, specifically “up-market” jewelry stores and department stores. It uses the term ARTISTRY to identify its goods, but never applied to register the mark.
Sterling Jewelers operates about 1,300 jewelry stores throughout the United States, including Kay Jewelers. In 2012, Sterling began advertising the “Artistry Diamond Collection.” Artistry objected not only because of the use of the name itself, but because it perceived Sterling’s business as mass market, less upscale than its customers, and worried about the cheapening of its brand. Artistry filed a proceeding in the Trademark Office to cancel Sterling’s registrations that contained the term ARTISTRY. Sterling responded by filing suit for a declaration of non-infringement. The district court granted summary judgment, which the Sixth Circuit affirmed.
The biggest problem that Artistry faced was that its mark, ARTISTRY, is weak both inherently and commercially.
The word “artistry,” like the word “artisan,” is not an innovation when it comes to craft goods, craft food, craft drink—craft anything. It is a run-of-the-mine description, one not likely to distinguish one product from another. The less distinctive a mark, the less likely it will breed confusion when used by others.
There was evidence that at least twenty-three (23) other jewelry companies use the word in some way to promote their products, including sixteen (16) who use it in their company name.
Other factors also cut against any confusion: (1) the companies operate in different markets – Sterling operates a retail jewelry chain, while Artistry is solely a wholesaler whose customers are jewelry retailers themselves; (2) Artistry’s main complaint was cheapening of its brand among its customer base – but that base is a sophisticated market much less likely to be confused; and (3) the marks differed in that Sterling added more words and used different fonts.
Artistry’s loss is a lesson to trademark owners. The biggest lesson, of course, is that in selecting a mark, one should avoid descriptions in favor of more distinctive marks. Artistry’s mark, though arguably valid, was very weak, and hence had at best a narrow scope. Had it picked a stronger mark, the result may have been different.
The importance of foundational work is another lesson. Artistry did not register its mark it had been using for some time. That failure allowed Sterling to obtain multiple registrations for a family of “Artistry” trademarks, since the Trademark Office generally only checks for possible prior registered trademark rights, and does not research unregistered users. It is possible that had Artistry obtained registration(s), then the Trademark Office might not have allowed Sterling’s registrations, and perhaps Sterling would have proceeded differently.