Alconchel Investment Corp.

Trademark Trial and Appeal Board

Sep 12, 2014

No. 85445798 (T.T.A.B. Sep. 12, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Alconchel Investment Corp.
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Serial No. 85445798
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Samuel F. Pamias of Hoglund & Pamias, PSC,
for Alconchel Investment Corp.

Jason Malashevich, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Bucher, Bergsman and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Alconchel Investment Corp. (“Applicant”) seeks registration of the mark SENZ,
in standard characters, for “Fresh fruits.”1 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d),
on the ground that Applicant’s mark so resembles the previously-registered mark
shown below

1 Application Serial No. 85445798, filed October 12, 2011 based on an intent to use the
mark in commerce under Section 1(b) of the Trademark Act. The application includes the
following translation statement: “The wording ‘SENZ’ has no meaning in a foreign
language.”
Serial No. 85445798
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for
Cocoa, excluding cocoa beverages and preparations for
making such beverages; sugar, pastry and candy; flavored
ices, ice; chocolate goods, namely, chocolate, pralines and
biscuits; the foregoing excluding chocolate beverages and
preparations for making such beverages in International
Class 30; and

Business management; business administration;
providing office functions; sales promotion and
advertisement services, and consultancy services relating
thereto; business organization consultancy, namely,
assistance and advisory services related to establishing
retail and wholesale stores; administrative processing of
purchase orders; retail and wholesale store services
featuring food and chocolate; online retail and wholesale
store services featuring food and chocolate; the
aforementioned services excluding services in the clothing
industry in International Class 352

that use of Applicant’s mark in connection with Applicant’s goods is likely to cause
confusion or mistake or to deceive. After the refusal became final, Applicant
appealed and filed a motion for reconsideration which was denied. Applicant and
the Examining Attorney filed briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of

2 Registration No. 3612722, issued April 28, 2009. The description of the mark in the
registration is: “The mark consists of the stylized word ‘SENZ’ imposed on top of a flower
design.” The translation statement is: “‘SENZ’ appearing in the mark has no meaning in a
foreign language.”
Serial No. 85445798
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confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (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.”).
Turning first to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
Here, the marks are quite similar, as they share the arbitrary term SENZ which
has no meaning in any language. While the cited mark includes a design, the literal
portion of Registrant’s mark is its dominant element. In fact, the design element of
the cited mark merely consists of a non-distinctive black rectangular background,
having a nearly imperceptible “flower design” covering the entire carrier device. In
re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if
one of the marks comprises both a word and a design, then the word is normally
Serial No. 85445798
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accorded greater weight because it would be used by purchasers to request the
goods or services” and “because applicant’s mark shares with registrant’s mark that
element responsible for creating its overall commercial impression, the marks are
confusingly similar”); see also, In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1911 (Fed. Cir. 2012). It is settled that one feature of a mark may be more
significant than another, and it is not improper to give more weight to the dominant
feature of a mark in determining its commercial impression. In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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. Indeed, this type of analysis appears to be unavoidable.”).
Furthermore, because Applicant seeks registration of its mark in standard
characters, it would be entitled to display the term SENZ in the same stylized
manner as Registrant displays the identical term. Viterra, 101 USPQ2d at 1909.3
Finally, the test is not whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion as to the source of the
services offered under the respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA

3 Applicant’s argument that there is no likelihood of confusion as a result of the “packaging
and display” of Registrant’s goods in the marketplace is not relevant in this ex parte
proceeding. We are concerned here with Registrant’s mark as registered, not as displayed in
the real world or with any accompanying trade dress. See Trademark Rule 2.52 (A drawing
depicts the mark sought to be registered.”); Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000).
Serial No. 85445798
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1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). In
short, this factor weighs heavily in favor of finding a likelihood of confusion.4
Turning to the goods and services, they need not be identical or even competitive
in order to support a finding of likelihood of confusion. It is enough that the goods
and services are related in some manner or that the circumstances surrounding
their marketing are such that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the marks used, to a
mistaken belief that Applicant’s goods and Registrant’s goods or services originate
from or are in some way associated with the same source or that there is an
association between the sources of the goods and services. Hilson Research, Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In
re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza
Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros.
Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether purchasers would
confuse the goods and services, but rather whether there is a likelihood of confusion

4 Applicant’s contention that its mark should be registered as a result of the coexistence of
third-party registrations for various arguably similar marks (which have little or nothing in
common with the marks here) is misplaced. “Neither the Trademark Examining Attorney
nor the Board is bound to approve for registration an Applicant’s mark based solely upon
the registration of other assertedly similar marks for other goods or services having unique
evidentiary records.” In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); see also, In
re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board
must decide each case on its own merits … Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”).
Serial No. 85445798
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as to the source of the goods and services. In re Rexel Inc., 223 USPQ 830, 832
(TTAB 1984).
In this case, Registrant’s services include “retail and wholesale store services
featuring food and chocolate,” as well as “online retail and wholesale store services
featuring food and chocolate.” There is no limitation on the types of “food” offered
online or through Registrant’s retail and wholesale stores, and therefore
Registrant’s stores which use the SENZ & Design mark may offer “fresh fruits,”
which Applicant intends to offer under its SENZ mark.5 Applicant’s arguments to
the contrary notwithstanding, it is settled that goods and services may be related.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988)
(BIGGS for retail grocery and general merchandise store services likely to be
confused with BIGGS for furniture); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ
347 (CCPA 1961) (“a customer who attends a banquet which he knows is catered by
the appellant would, when he encounters a food product in the grocery store under
an almost identical mark, naturally assum[e] that it came from the catering firm”);
In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that consumers
would be likely to believe that jewelry on the one hand and retail stores selling
jewelry on the other emanate from or are sponsored by the same source if such
goods and services are sold under the same or similar marks.”); see also, In re
Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012) (affirming refusal to register

5 We do not and may not read Registrant’s retail store services as limited by Registrant’s
identified goods. See, In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163,
1166-67 (TTAB 2013).
Serial No. 85445798
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COLOMBIANO COFFEE HOUSE for “providing food and drink” based on
registered certification mark COLOMBIAN for “coffee”); In re Opus One, Inc., 60
USPQ2d 1812, 1815 (TTAB 2001) (affirming refusal to register OPUS ONE for
restaurant services based on a likelihood of confusion with the same mark for wine).
Furthermore, the Examining Attorney has established that the same sources
offer under the same mark products of the type Applicant intends to offer and retail
store services featuring such products. For example, the following registrations are
based on use and owned by different entities:
TREASURED HARVEST & Design (Reg. No. 4048603) is
registered for “dried fruits” on the one hand and “on-line
wholesale and retail store services featuring … dried
fruits” on the other.

PANDIA SEEDS (Reg. No. 4163203) is registered for
“fresh, raw and unprocessed fruits and vegetables” on the
one hand and “wholesale and retail stores services and
on-line retail and wholesale stores services featuring
fruits …” on the other.

Ecopia (Reg. No. 4176527) is registered for “agricultural
products, namely, fresh fruits and vegetables …” on the
one hand and “retail store services featuring foods and
produce” on the other.

CAPAY ORGANIC & Design (Reg. No. 3917191) is
registered for “organic fresh fruits and vegetables” on the
one hand and “retail store services featuring organic
foods, fruits and vegetables” on the other.

THE CHEF’S GARDEN (Reg. No. 3062313) is registered
for “fresh vegetables, fruits, plants, herbs, and edible
flowers” on the one hand and “telephone order retail
services, on-line retail store services, and retail services
by direct solicitation by sales agents in the field of fresh
vegetables, fruits, herbs and edible plants” on the other.

Serial No. 85445798
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SEEDBASE & Design (Reg. No. 3875015) is registered for
“fresh fruits and vegetables” on the one hand and
“wholesale and retail stores services in the field of …
agricultural products” on the other.

ELEVEN RIVERS (Reg. No. 3933641) is registered for
“dried fruit and vegetables; frozen fruits” on the one hand
and “wholesale and retail store services and on-line retail
and wholesale store services featuring fresh, frozen,
cooked, preserved and dried fruits and vegetables …” on
the other.

PRIZE & Design (Reg. No. 3941603) is registered for
“fresh fruits and vegetables” on the one hand and “retail
store services featuring fresh fruits and vegetables” on the
other.

KATCHKIE FARM & Design (Reg. No. 3778034) is
registered for “fresh organic produce, namely, fruits and
vegetables” and “fresh produce, namely, fruits and
vegetables” on the one hand and “retail store services
featuring fruits and vegetables” on the other.

GARDEN FRESH PRODUCE NOW THAT’S FRESH &
Design (Reg. No. 2540369) is registered for “”fresh fruits
and vegetables” on the one hand and “retail store services
featuring fresh fruits and vegetables” on the other.

Office Action of August 9, 2012. “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See, In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92
Serial No. 85445798
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USPQ2d 1198, 1203 (TTAB 2009). This factor also weighs in favor of finding a
likelihood of confusion.6
As for channels of trade, because Applicant’s and Registrant’s identifications of
goods and services contain no trade channel limitations, their goods and services
are presumed to move in all normal channels of trade and to be available to all
classes of consumers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Because
Applicant’s “fresh fruits” are food, and Registrant’s identification of services
includes “retail and wholesale store services featuring food,” the trade channels are
the same. While Applicant argues and relies on evidence that Registrant in fact
offers chocolate and similar products, that is not relevant in this ex parte
proceeding. Indeed, we are bound by Registrant’s identification of services and
simply cannot limit the services or channels of trade or classes of customers to what
Applicant’s evidence shows them to be. Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“It was
proper, however, for the Board to focus on the application and registrations rather
than on real-world conditions, because ‘the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth

6 Applicant’s argument that confusion is unlikely because Applicant’s and Registrant’s
goods and services are in different classes is unavailing. Jean Patou Inc. v. Theon Inc., 9
F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993) (“The benefits of a Principal Register
registration apply with respect to the goods named in the registration without regard to the
class or classes named in the registration.”).
Serial No. 85445798
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in the application.’”); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB
1986) (“It is well settled that in a proceeding such as this, the question of likelihood
of confusion must be determined by an analysis of the marks as applied to the goods
identified in the application vis-à-vis the goods recited in the registration, rather
than what extrinsic evidence shows those goods to be.”); see also, Tuxedo Monopoly,
Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); In re Thor Tech Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009) (“we must also
analyze the similarity or dissimilarity and nature of the goods based on the
description of the goods set forth in the application and the registration at issue …
we may not limit or restrict the trailers listed in the cited registration based on
extrinsic evidence”). This factor weighs in favor of a finding of likelihood of
confusion.
There is no relevant evidence or argument concerning the remaining likelihood
of confusion factors, and we therefore treat them as neutral.
Conclusion
After considering all of the evidence of record as it pertains to the relevant
du Pont factors, including all of Applicant’s arguments and evidence, even if not
specifically discussed herein, we find that confusion is likely because the marks are
similar, the goods and services are related and the channels of trade overlap.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.