AQFTM, Inc.v.Austinuts, Inc.

Trademark Trial and Appeal Board

Aug 6, 2009

No. 91166551 (T.T.A.B. Aug. 6, 2009)

Hearing: Mailed:
April 23, 2009 August 6, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

AQFTM, Inc.
v.
Austinuts, Inc.
_______

Opposition Nos. 91166551 and 91166552
_______

Patricia S. Smart of Smart & Bostjancich for AQFTM, Inc.

Orlesia A. Tucker of Graves Dougherty Hearon & Moody for
Austinuts, Inc.
_______

Before Walters, Bucher and Holtzman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

AQFTM, Inc. filed its oppositions, now consolidated, to
the applications of Austinuts, Inc. to register the marks
AUSTINUTS and the design mark shown below for “nuts, namely,
dry roasted nuts,” in International Class 29.1

THIS OPINION
IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91166551
2
As grounds for opposition in each application, opposer
asserts that applicant’s mark, when applied to applicant’s
goods so resembles opposer’s previously used and registered
marks shown below for cookies and crackers as to be likely
to cause confusion, under Section 2(d) of the Trademark Act.
Registration No. 12664612 [registered February 7, 1984;
renewed]. The mark includes the word AUSTIN.
Goods: Crackers, Crackers with Cheese, Cheese Flavored
Crackers, in International Class 30.
Mark:

Registration No. 1935987 [registered November 14,
1995; renewed]. The mark includes the words “AUSTIN
QUALITY. The registration includes a disclaimer of
QUALITY apart from the mark as a whole.
Goods: Cookies and crackers, in International Class
30.
Mark:

1 Application Serial Nos. 76485325 and 76485326, respectively, both of
which were filed January 27, 2003, based on use in commerce, alleging
first use and use in commerce as of September 15, 1993.

2 The registration as originally issued also specified goods in
International Class 29, including “roasted peanuts.” The goods in this
class were subsequently deleted from the registration.

Opposition No. 91166551
3
Registration No. 2929502 [registered March 1, 2005].
The mark includes a disclaimer of SINCE 1932 apart from
the mark as a whole.
Goods: Cookies, in International Class 30.
Mark: AUSTIN SINCE 1932 SNACKERZ

Registration No. 2931475 [registered March 8, 2005].
Goods: Cookies, in International Class 30
Mark: AUSTIN SNACKERZ

Registration No. 31292363 [registered August 15, 2006].
The mark includes a disclaimer of SINCE 1932 apart from
the mark as a whole.
Goods: Crackers, cracker sandwiches and cookies, in
International Class 30.
Mark:

Applicant, in its answers, admitted opposer’s ownership
of the four pleaded registrations and otherwise denied the
salient allegations of the claim.4

3 While this registration had not issued and, thus, was not pleaded in
the notice of opposition, applicant has not objected to its introduction
into evidence. Therefore, we consider the notice of opposition amended
to include a claim of this registration and we have considered it to be
properly of record.

4 Applicant asserted acquiescence as an affirmative defense based on
communications between applicant and opposer during the pendency of the
applications. However this issue was clearly not tried as it was not
raised by the parties. Therefore, we consider this affirmative defense
to have been waived.
Opposition No. 91166551
4
Procedural Matters
Both opposer and applicant have filed motions to
strike, as well as registering objections to other evidence
in their briefs.
Considering, first, applicant’s motion to strike,
applicant contends that the third-party registrations
submitted by opposer under its rebuttal notice of reliance
of April 22, 2008, constitute improper rebuttal and should
be stricken. In the notice of reliance, opposer states that
the registrations are submitted “to show that nuts and
cookies and/or crackers are snack products that are sold by
the same party under the same mark.” The submission
includes numerous third-party use-based registrations that
include nuts and cookies and/or crackers. Applicant argues
that the facts herein are essentially the same as the facts
in Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629
(TTAB 2007), and that, because opposer’s evidence pertains
to whether the goods are related, it should have been
presented as part of opposer’s case-in-chief. Opposer
contends that the cited case is factually inapposite; that
opposer did offer evidence intended to show the relatedness
of the goods during its case-in-chief; that, during its
testimony period, applicant offered third-party
registrations as evidence intended to establish that the
Opposition No. 91166551
5
goods are not related; and that opposer’s third-party
registrations are proper rebuttal to applicant’s evidence.
In Wet Seal, opposer submitted third-party
registrations on rebuttal to show a relationship between
clothing and cosmetics, contending that the evidence was
intended to rebut applicant’s witness’s statements refusing
to concede on cross-examination that the goods are related.
The Board stated the following in granting the motion to
strike:
The motion to strike is well taken. This rebuttal
evidence was not submitted for the proper purpose
of denying, explaining or discrediting applicant's
case but instead was clearly an attempt by opposer
to strengthen its case-in-chief. See The Ritz
Hotel Limited v. Ritz Closet Seat Corp., 17USPQ2d
1466 (TTAB 1990). The burden is on opposer, in the
first instance, to come forward during its own
testimony period with proof of the essential
elements of its claim, one element of which is the
relatedness of the parties’ goods. Opposer should
not have even assumed that applicant would call
its own witness, let alone that the witness, if
called, would make an admission favorable to
opposer's case.

(82 USPQ2d at 1632.)
While the facts in this case are not identical to the
facts in Wet Seal, we agree with applicant that opposer’s
evidence of third-party registrations is improper on
rebuttal in this case and should have been submitted as part
of opposer’s case-in-chief. There is no question that
opposer did address the issue of the relatedness of the
goods during its case-in-chief. As one of the primary
Opposition No. 91166551
6
factors in determining likelihood of confusion, it is
reasonable that, as in this case, both parties would present
evidence and testimony on this issue unless it was admitted.
There is also no reason why this evidence could not have
also been submitted by opposer during its case-in-chief and
it would have been relevant and appropriate. Opposer has
not adequately explained how its rebuttal evidence is more
than mere supplementation of its record.
During its testimony period, applicant submitted copies
of six third-party registrations for the express purpose of
“demonstrating that other third-parties have registered
marks containing the term ‘AUSTIN’ used in connection with
food products.” [Applicant’s notice of reliance of February
28, 2008.] Opposer is mistaken if it is arguing that, in
view of applicant’s submission of third-party registrations,
opposer is entitled, on rebuttal, to also submit third-party
registrations. The third-party registrations submitted by
applicant were submitted in connection with the issue of the
strength or weakness of the mark AUSTIN, not in connection
with the relatedness of the goods.
Therefore, we conclude that opposer’s third-party
registrations are not proper rebuttal and this evidence has
not been considered in reaching our decision.
Considering, next, opposer’s motion to strike, opposer
contends that the transcript of the Ilai testimony
Opposition No. 91166551
7
deposition submitted by applicant is contrary to the
agreement of the parties and should be stricken. Opposer
contends that the parties and the court reporter entered
into a stipulation, which opposer submitted, and which
states in relevant part:
In the transcription of the [Ilai] deposition, the
Court Reporter transcribed the deposition
references to applicant’s name and trademark as
“Austinuts” from the context of the use of the
terminology, and not as an intended reference to
the phonetic pronunciation used by a speaker
during the deposition. The use of the term
“Austinuts was made in response to a speaker’s use
of terminology pronounced as “Austin” “nuts” with
varying amounts of pause between those words.

Opposer contends that applicant agreed to submission of an
amended transcript of the deposition in which, on at least
pages 61-63, the word “Austinuts” would be replaced with
“Austin-nuts (phonetic)”; and that applicant sent to opposer
the transcript so modified, but submitted a different
version of the Ilai deposition transcript to the Board.5
Mr. Ilai’s pronunciation of applicant’s mark and the
court reporter’s transcription of the same is of little
probative value in determining whether the marks are
dissimilar or similar. Thus, the parties have wasted
valuable Board time and resources, to say nothing of the

5 Applicant objects to the exhibits submitted by opposer in connection
with its motion to strike on the ground of relevance and that the
exhibits should have been submitted during opposer’s testimony period.
The exhibits are relevant to the motion and, as such, are proper and
need not have been submitted during opposer’s testimony period. Except
for Exhibit A as noted herein, these documents have been considered only
for the purpose of deciding opposer’s motion to strike.
Opposition No. 91166551
8
parties’ resources, in arguing about the manner in which the
court reporter transcribed Mr. Ilai’s pronunciation of
applicant’s mark. Nonetheless, opposer, applicant and the
court reporter entered into the noted stipulation, which is
of record, and applicant, in fact, served on opposer a
transcript of the Ilai deposition in a form consistent with
the stipulation.
It is clearly inappropriate for applicant to submit a
transcript of the Ilai deposition to the Board that is
different from the one served on opposer. The fact, as
argued by applicant, that it was concerned about opposer’s
arguments in connection with Mr. Ilai’s pronunciation of
applicant’s mark based on the stipulated transcript is a
matter for discussion in the parties’ briefs, not for
applicant’s unilateral changes to the stipulated transcript.
Therefore, the Ilai deposition transcript submitted by
applicant on August 4, 2008 is stricken, except for the
exhibits thereto. The Board has considered, instead, the
Ilai deposition transcript sent to opposer and accompanying
opposer’s motion to be the operative transcript, along with
the Ilai deposition exhibits submitted by applicant.
Finally, we consider the respective objections of the
parties to other evidence. Opposer objects to exhibit 18
(AT&T telephone directory white pages for Greater Austin) to
the deposition of Mr. Ilai on the ground of lack of
Opposition No. 91166551
9
foundation, relevance and hearsay; and to applicant’s third-
party registrations (for the mark AUSTIN BLUES for meat
products; and for the marks AUSTIN GRILL and SOUTH AUSTIN
GRILL for restaurant services) on the ground of relevance.
Opposer’s objections are denied and the evidence has been
considered for whatever probative value it may have.
The Record
The record in this consolidated proceeding consists in
part of the pleadings and the files of the involved
applications. Opposer made of record by notices of reliance
certified status and title copies of its pleaded
registrations; various specified responses by applicant to
opposer’s interrogatories and requests for admissions; and
submitted the testimony deposition by opposer of David
Rhoades, brand manager of marketing for opposer’s parent,
along with accompanying exhibits.
Applicant made of record by notice of reliance third-
party registrations and various specified responses by
opposer to applicant’s interrogatories and requests for
admissions; and the deposition, as discussed above, of Doron
Ilai, applicant’s vice president, with accompanying
exhibits. Both parties filed briefs on the cases.
Factual Findings
Opposer began its business in 1932 in Baltimore,
Maryland. It was subsequently acquired by Keebler and it is
Opposition No. 91166551
10
now a wholly-owned subsidiary of Kellogg Corporation.
Opposer manufactures and sells cookies and crackers as snack
foods. For example, under its marks, it sells packages of
sandwich crackers identified as “toasty peanut butter,”
“peanut butter and jelly,” “cheese on cheese” and “wheat and
cheddar,” and it is continually bringing new varieties of
its crackers to market. Opposer sells its goods to the
general public through mass retailers such as Wal-Mart and
Kmart, grocery stores such as Stop and Shop, club stores
such as Costco, via the Internet at www.Amazon.com, and
through vending machines and convenience stores. A multi-
pack of its crackers/cookies costs less than one dollar
retail; and a single pack costs about fifty cents. Opposer
does not use its marks in connection with nuts and it does
not sell nuts; however, some of its goods have nuts as an
ingredient.
Opposer promotes its goods primarily through in-store
displays and on its own website; and it conducts packaging
promotions with, for example, NASCAR. Opposer’s goods are
inexpensive items consumed as snacks throughout the day.
While opposer’s sales figures are confidential, suffice it
to say that its overall sales are substantial. Opposer
experiences greater brand loyalty than its closest
competitor, Lance, and its goods have significant household
penetration.
Opposition No. 91166551
11
Applicant is a relatively small family-owned and
operated business in the greater Austin, Texas, area.
Applicant has a dry-roasting facility for the nuts it
purchases. Applicant packages its nuts under its marks
herein for sale in its retail store in Austin, Texas, on its
website, and in grocery stores, liquor stores, hotels,
resorts, cafes and country clubs. Applicant also sells its
nuts, unmarked, wholesale in bulk from its roasting
facility.
In its retail store and on its website, applicant
offers various third-party “gourmet” food items that are
identified by third-party trademarks, including cookies and
crackers. Applicant itself sells gift baskets that include
its nuts identified by applicant’s marks and third-party
goods identified by different marks. The baskets are not
separately identified by any mark.
Applicant’s sales of its nuts have grown each year
since its inception and applicant has enjoyed increasing and
significant annual sales for a relatively small regional
company. Applicant advertises its nuts through direct
solicitation, in local and state publications aimed at the
general public, such as Texas Monthly, at community events,
via its website, and in trade magazines and at trade shows.
Applicant admits that some of its gift baskets include
nuts and cookies and/or crackers; but that only the nuts are
Opposition No. 91166551
12
identified by applicant’s marks. [Admission no. 1.]
Applicant also admits that nuts may be an impulse purchase.
[Id.]
Applicant’s evidence establishes that Austin is the
capital city of Texas; and that there are numerous
businesses listed in the Austin metropolitan area AT&T White
Pages telephone book with the term AUSTIN in their business
names.
Neither party is aware of any actual confusion and
there is no evidence of any intent on applicant’s part to
trade on opposer’s good will. The record includes six
third-party registrations owned by two different entities
for the marks AUSTIN BLUES, variously, for beef, pork,
poultry and sausage; and AUSTIN GRILL and SOUTH AUSTIN GRILL
for restaurant services.
Analysis
Standing
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s marks. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Opposition No. 91166551
13
Priority
In view of opposer’s ownership of valid and subsisting
registrations, there is no issue regarding opposer’s
priority. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Thus, the only
issue to decide herein is likelihood of confusion.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence.
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
Opposition No. 91166551
14
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein. The relevant
du Pont factors in the proceeding now before us are
discussed below.
The Goods
Opposer contends that the goods are related, noting the
fact that opposer’s predecessor-in-interest originally
registered its marks in connection with nuts, cookies and
crackers, and the fact that some of opposer’s products
contain nuts as an ingredient.
Applicant discusses the specific differences between
nuts and cookies and crackers, although the parties do not
dispute that the goods are not the same. Applicant also
emphasizes that its nuts are of high quality and that it
sells its nuts primarily through its gourmet specialty
store, noting, however, that it also sells its nuts to
grocery stores, cafes, liquor stores, country clubs and
hotels. Applicant argues that, as such, its nuts are
distinct from opposer’s snack foods, which are sold through
grocery stores, convenience stores, vending machines and
club stores.
It is well established that the goods of the parties
need not be similar or competitive, or even offered through
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient that the
Opposition No. 91166551
15
respective goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether there
is a likelihood of confusion as to the source of the goods
and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB
1984). The question of likelihood of confusion must be
determined based on an analysis of the goods as recited in
applicant’s application vis-à-vis the goods identified in
opposer’s pleaded registration(s). Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992.
We take judicial notice of the definition in Webster’s
New World Collegiate Dictionary (2005) of “snack” as “a
small quantity of food; light meal or refreshment taken
between regular meals.” It is clear that both applicant’s
nuts and opposer’s cookies and various crackers are snack
foods. While this is insufficient alone to conclude that
Opposition No. 91166551
16
the goods are related, we find ample evidence, particularly
in light of the fact that applicant’s own gift baskets
contain, among other items, nuts, cookies and crackers.
Thus, applicant’s own evidence indicates that these items
are sold together. The fact that applicant’s baskets
contain cookies and crackers identified by different marks
does not change the implication that opposer’s goods could
also be sold in such gift baskets. The fact that applicant
considers its identified goods to be gourmet items and its
baskets to contain gourmet items, and it considers opposer’s
goods to be at the opposite end of the spectrum, is
immaterial. Neither party’s identifications of goods is so
limited.
Thus, we conclude that the goods of the parties are
sufficiently related that, if identified by confusingly
similar marks, confusion as to source is likely. This
du Pont factor weighs in favor of opposer.
Trade Channels, Purchasers and Purchasing Care
Both opposer’s and applicant’s identifications of goods
are broadly worded, without any limitations as to channels
of trade or classes of purchasers. We must presume that the
goods of the applicant and opposer are sold in all of the
normal channels of trade to all of the usual purchasers for
goods and services of the type identified. See Canadian
Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813
Opposition No. 91166551
17
(Fed. Cir. 1987). Thus, while applicant considers its
product a gourmet item sold only to discerning purchasers,
the identification of goods is not so limited.
As indicated above, opposer’s cookies and crackers and
applicant’s nuts may travel mostly in different trade
channels, but, as the record establishes, there is some
overlap, at least in connection with grocery stores.
Moreover, the parties’ goods end up in the hands of the same
consumers. In other words, the class of purchasers is
identical, namely ordinary consumers. The record contains
no evidence that such consumers would exercise more than
only ordinary care when purchasing nuts, crackers or
cookies. Additionally these are not expensive items.
The du Pont factors of the trade channels, purchasers
and purchasing care all weigh in favor of opposer.
The Marks
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692. 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 their entireties that confusion as to the source
of the goods offered under the respective marks is likely to
Opposition No. 91166551
18
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Additionally,
while the marks must be considered in their entireties,
“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
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Opposer’s design marks consist of the highly stylized
word AUSTIN, with disclaimed merely descriptive language in
smaller letters below the word AUSTIN, and with various
forms of a picture of a mill nestled above the word AUSTIN.
First, we note that the word AUSTIN is likely to be used by
purchasers to call for opposer’s goods. Thus, this wording
would make a greater impression on purchasers and is the
portion that is more likely to be remembered as the dominant
and source-signifying portion of the registered mark. In re
Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words
are normally accorded greater weight because they would be
used by purchasers to request the goods”). See also, e.g.,
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Opposition No. 91166551
19
Clearly, the word AUSTIN is the dominant portion of these
composite word and design marks.
Opposer also owns and established herein two
registrations for word marks, AUSTIN SINCE 1932 SNACKERZ and
AUSTIN SNACKERZ. In the first-noted word mark, SINCE 1932
is disclaimed and is merely descriptive wording that is of
less significance in the overall commercial impression of
the mark. While SNACKERZ is a made-up word, it is an
obvious play on the word “snack,” which is highly
suggestive, if not merely descriptive, of the nature of
opposer’s goods. Thus, we find that SNACKERZ is secondary
to the first word in each mark, AUSTIN, which we find to be
the dominant term.
AUSTIN is the name of the capital city in Texas;
however, there is no suggestion in the record of any
material connection between the word AUSTIN and opposer’s
goods. The record shows that a number of businesses are
listed in the Austin area phone directory with the word
AUSTIN in their names, but this does not establish that
AUSTIN is primarily geographically descriptive and, hence,
weak in connection with opposer’s identified goods.
Opposer did not argue that its mark is a famous mark
and the record does not support such a finding. However,
the record does show use of its AUSTIN marks in various
forms in connection with cookies and crackers since at least
Opposition No. 91166551
20
1984 (the earliest registration date in this record), and
substantial sales, advertising and market saturation.
Therefore, we find that opposer’s AUSTIN marks are very
strong, if not well known, in connection with cookies and
crackers.
Additionally, the record includes two third-party
entities with registrations of marks that include the word
AUSTIN. However, not only is this an exceedingly small
number of registrations from which to draw any conclusions
about the strength or weakness of the term AUSTIN in
general, but the third-party registrations are not evidence
of use and the goods and services listed in those
registrations are quite different from the goods herein.
Turning to applicant’s marks, one application is for
the word mark AUSTINUTS and the other application is for a
design mark consisting of the word AUSTINUTS in slightly
stylized lettering within an outline that applicant
describes as a roasting peanut. The design essentially
outlines the word AUSTINUTS and to the extent that the
design would be perceived by purchasers as a roasting
peanut, it merely describes applicant’s goods and reinforces
the descriptive nature of the “nuts” portion of the mark.
It is well established that there is no correct
pronunciation of a trademark when the trademark is not a
recognized word. In re Teradata Corporation, 223 USPQ 361,
Opposition No. 91166551
21
362 (TTAB 1984) (“as we have said many times, there is no
‘correct’ pronunciation of a trademark”}. The parties have
argued a great deal about the pronunciation of applicant’s
mark, and applicant characterizes its mark AUSTINUTS as a
made-up word; however, it is clearly a telescoped form of
the two words AUSTIN and NUTS and is likely to be so
perceived and pronounced by purchasers. It is essentially
insignificant whether purchasers pronounce the words
distinctly as “Austin Nuts” or slur the double letter “N” to
enunciate a single word, “Austinuts.” In this regard, the
“nuts” portion of the marks is generic in connection with
applicant’s identified goods and the “Austin” portion is
dominant within the telescoped word.
Comparing the marks, we note that both parties’ marks
are dominated by the word AUSTIN and the record establishes
that opposer’s AUSTIN marks are very strong in connection
with cookies and crackers. It is also clear that the marks
have differences, for example the difference in the stylized
lettering and designs, the addition of different merely
descriptive wording, and the telescoping of applicant’s term
AUSTINUTS.
As discussed above, the design elements in the
respective design marks are of lesser significance than the
word portions. Nor do we find the stylization of either
party’s marks to be distinguishing factors. Applicant seeks
Opposition No. 91166551
22
to register a mark in standard character format and, thus,
applicant could conceivably display its mark in any
lettering style, including that of the word AUSTIN in
opposer’s composite word and design marks. And since
opposer also owns registered marks in standard character
format, opposer could conceivably display its standard
character marks in any lettering style, including that of
the word AUSTINUTS in applicant’s design mark. 37 C.F.R. §
2.52(a); In re Pollio Dairy Products Corp., 8 USPQ2d 2012,
2015 (TTAB 1988) (when registering mark in block letters,
registrant remains free to change the display of its mark at
any time). Consequently, applicant’s argument that opposer
“ignored” the stylization of applicant’s mark is
unpersuasive. See e.g., Sunnen Products Co. v. Sunex Int’l
Inc., 1 USPQ2d 1744 (TTAB 1987) (styling of letters is
irrelevant to the issue of confusion where applicant seeks
to register mark without any special form of lettering or
design).
Thus, although the marks have differences, when we
compare them in their entireties we find that on the whole
they are similar in appearance, connotation and commercial
impression, and that the telescoping of the words “Austin”
and “nuts”, and the design elements in both parties’ design
marks, are not sufficient to distinguish them when used on
related goods. We remind applicant that the test is not
Opposition No. 91166551
23
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as
to the source of the goods offered under the respective
marks is likely to result.
This du Pont factor weighs in favor of opposer.
Conclusion
We find that the du Pont factors weigh in favor of a
finding of likelihood of confusion in connection with both
applications.
We conclude that consumers familiar with opposer’s
cookies and various crackers sold under its AUSTIN marks
would be likely to believe, upon encountering applicant’s
AUSTINUTS marks for nuts, that the goods originate from or
are associated with or sponsored by the same entity.
Decision: The oppositions are sustained on the ground
of likelihood of confusion, and registration to applicant is
refused in each application.