Arcor S.A.I.C.v.“ROT FRONT” Open-Type Joint Stock Co.

Trademark Trial and Appeal Board

Aug 15, 2017

No. 91222153 (T.T.A.B. Aug. 15, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 15, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Arcor S.A.I.C.
v.
“ROT FRONT” Open-Type Joint Stock Co.
_____

Opposition No. 91222153
_____

Perla M. Kuhn and Barri A. Frankfurter of Fox Rothschild LLP for Arcor S.A.I.C.

Alexander Lazouski of Lazouski IP LLC for “ROT FRONT” Open-Type Stock Co.
_____

Before Cataldo, Kuczma and Pologeorgis,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

“ROT FRONT” Open-Type Stock Co. (Applicant) filed an application to register the
mark displayed below for “Confectionery made of sugar, namely, candy, sweets,
caramels” in International Class 30.1

1 Application Serial No. 79151042 was filed on June 6, 2014, based upon a request for an
extension of protection of International Registration No. 1213719 under Section 66(a) of the
Trademark Act.
Opposition No. 91222153

2

“The wording ‘BON BON’ is disclaimed apart from the mark as shown.”

“The mark consists of the words ‘BON BON’ in white, outlined in dark
purple and partially outlined in light purple set inside a jagged edged
purple square outlined in dark purple that is reminiscent of a candy
wrapper.”

“The color(s) purple, dark purple, light purple and white is/are claimed
as a feature of the mark.”
Arcor S.A.I.C. (Opposer) opposed registration of the mark on the ground of
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
Opposer alleges use and registration of the marks BON O BON (in standard
characters) for “Chocolates, pastries filled with sweet fillings, alfojores, and wafers”
in International Class 30;2 and the mark displayed below for “Chocolates, bonbons,
alfajores and filled obleas (wafers)” in International Class 30.3

“The mark consists of the words ‘BON O BON’ in yellow stylized letters
over a red circle on a yellow background. There is a white inner border

2 Registration No. 2779822 issued on November 4, 2003. Section 8 affidavit accepted; Section
15 affidavit acknowledged. First renewal.
3 Registration No. 4633325 issued on November 4, 2014.
Opposition No. 91222153

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inside the circle and the letter ‘O’ of ‘BON O BON’ is inside a white
heart.”

Applicant filed an answer denying the salient allegations in the notice of
opposition.4
On July 25, 2016, the Board denied the parties’ cross-motions for summary
judgment on Opposer’s claim of likelihood of confusion. In that order, the Board,
noting that the issues remaining to be resolved were relatively straightforward,
encouraged the parties to stipulate to the resolution of the proceeding by means of
the Board’s Accelerated Case Resolution (“ACR”) procedure.5
• ACR.
In an Interlocutory order issued on February 6, 2017,6 the Board approved the
parties’ ACR stipulations, filed on December 14, 20167 and February 6, 2017.8 See
Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016); Conolty v. Conolty O’Connor
NYC LLC, 111 USPQ2d 1302, 1304 (TTAB 2014). See also Trademark Board Manual
of Procedure (TBMP) § 528.05(a)(2) (June 2017) and authorities cited therein. A
summary of the procedural and factual stipulations approved by the Board is set forth
below:9

4 In an order issued July 25, 2016, the Board, inter alia, struck Applicant’s affirmative
defense nos. 1-6, 8 and construed affirmative defense no. 7 as an amplification of its denials
of the salient allegations of the notice of opposition. 14 TTABVUE 2-3, n 5.
5 Id. at 5-6.
6 20 TTABVUE.
7 18 TTABVUE.
8 19 TTABVUE.
9 18 TTABVUE 2-3; 19 TTABVUE 2-3; 20 TTABVUE 1-2.
Opposition No. 91222153

4

1. The Board may resolve any disputed issues of material fact in making a final
determination on the merits.

2. The parties will not conduct discovery.

3. The parties waive pre-trial disclosures.

4. The parties will submit their evidence and briefs at the same time as if
proceeding on summary judgment.

5. The parties may offer into evidence testimony by declaration or affidavit,
including testimony by expert witnesses.

6. The parties reserve the right to object to the admissibility of evidence offered
by declaration or affidavit on any grounds available under the Federal Rules
of Evidence, provided that such objections are made within fourteen days from
the service of a declaration or affidavit containing the evidence being objected
to by the party.

7. Opposer has standing to bring this opposition.

8. Evidence may be marked as “Confidential” or “Attorney’s Eyes Only” and
such marked evidence (and any briefs containing such evidence) shall be
handled pursuant to the Board’s standard protective order which is deemed to
be entered in this case.

9. The parties will forego an oral hearing.

10. The Parties agree that the following fact stipulations are being made for
the purposes of the instant Opposition proceeding only and will not operate as
admissions outside of the Opposition context.

11. Opposer is the owner of U.S. Trademark Registration No. 2,779,822 (the
“822 Registration”) for the mark BON O BON in standard characters on the
Principal Register for “Chocolates, pastries filled with sweet fillings, alfojores,
and wafers” in Class 30.

12. The application that matured to the ‘822 Registration was filed on
November 17, 1999 and the registration issued November 4, 2003.

13. Opposer is the owner of the U.S. Trademark Reg. No. 4,633,325 (the “325
Registration”) for the mark BON O BON (and design) on the Principal Register
for “chocolates, bonbons, alfajores and filled obleas (wafers)” in Class 30
(collectively with the ‘822 Registration, the “BON O BON Registrations”).
Opposition No. 91222153

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14. The application that matured to the ‘325 Registration was filed on May 24,
2013 and the registration issued on November 4, 2014.

15. On June 6, 2016 Applicant filed Application Serial Number 79/151,042 (the
“042 Application”) for the mark BON BON.

16. The ‘042 Application is a request for extension of the International
Registration number 1213719 for use in connection with “confectionery made
of sugar, namely, candy, sweets, caramels.”

17. Opposer is the prior user and priority of use is not at issue in this
opposition.

18. The mark BON O BON is used by Opposer in connection with goods that
are closely related to the goods with which Applicant seeks to use the mark
BON BON.

19. The channels of trade through which Opposer's and Applicant's goods move
are similar.

20. The issues in contention in this Proceeding are the likelihood of confusion
between Opposer’s and Applicant’s marks and whether the terms “BON BON”
or “BONBON” are merely descriptive in connection with confectionery.

• The Record.

The record includes the pleadings, and by operation of Trademark Rule 2.122(b),
37 CFR § 2.122(b), the application file of the opposed application. In addition, the
following evidence was introduced by the parties with their ACR briefs:
Opposer’s evidence:
1. The declaration of Opposer’s counsel Perla Kuhn,
introducing as exhibits portions of the prosecution
history of the involved application, internet printouts of
third-party uses and registrations of marks featuring
purple backgrounds in connection with candy;10 and

10 21 TTABVUE 19-139.
Opposition No. 91222153

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2. The affidavit of Maria Paula Rodriguez, marketing
manager for Opposer, introducing as exhibits a chart
listing the stores in the United States that sell
Opposer’s goods under its BON O BON marks, and
advertisements for such goods.11
Applicant’s evidence:
1. The declaration of Applicant’s counsel, Alexander
Lazouski, introducing as exhibits portions of the
prosecution history of the involved application,
dictionary definitions of “bonbon,” third-party
registrations and Office actions from their underlying
applications, printouts from internet publications
discussing “bonbons;”12 and
2. The affidavit of the intellectual property department
deputy director for Applicant’s holding company, Sergey
Vladimirovich, introducing as an exhibit Applicant’s
accounting report from 1956 regarding its sales of BON
BON candies in the USSR.13
• Standing and Priority
The parties have stipulated to Opposer’s standing (stipulation no. 7) and priority of
use (stipulation nos. 11-14, 17).14
• Likelihood of confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see
also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396

11 Id. at 140-170.
12 22 TTABVUE 19-20, 22-130.
13 Id. at 21-22, 131-136.
14 19 TTABVUE 2-3.
Opposition No. 91222153

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F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). 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 (CCPA 1976); see also In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
For purposes of our likelihood of confusion determination, we focus on Opposer’s
pleaded Registration No. 2779822 for the mark BON O BON (in standard characters)
for “Chocolates, pastries filled with sweet fillings, alfojores, and wafers” inasmuch as
the mark in this registration is more similar to Applicant’s involved mark and the
goods in the two pleaded registrations are highly similar. Accordingly, when the mark
and goods in Registration No. 2779822 are considered vis-à-vis Applicant’s mark and
identified goods, it is that mark that is most likely to support a finding of likelihood
of confusion. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
1. Similarity or dissimilarity of the goods, channels of trade and
class of purchasers.

The parties have stipulated that the goods under Opposer’s registrations for its
BON O BON marks are closely related to the goods identified under Applicant’s
application for its BON BON mark (stipulation no. 18), and that the parties’ goods
move through similar channels of trade (stipulation no. 19). Accordingly, these du
Pont factors favor a finding of likelihood of confusion.
Opposition No. 91222153

8

2. The number and nature of similar marks in use on similar goods,
and weakness of the term “bonbon.”
Applicant argues that consumers are likely to distinguish the parties’ marks due to
the “extreme weakness of the term ‘BON BON.’”15 Applicant further argues that
“[t]he amount of evidence is truly overwhelming and strongly indicates genericness
of ‘bonbon’ for both parties’ goods, because the genus of goods at issue is candy or
sweets and the relevant public understands “bonbon” primarily refers to candy or
sweets.”16 We do not construe Applicant’s argument as a challenge to the validity of
Opposer’s pleaded registrations.17 Indeed, “Applicant acknowledges that ‘BON O
BON’ is not generic because it created a distinctive and commercial impression
different than ‘BON BON.’”18 We turn to Applicant’s evidence of the weakness of the
term “bonbon.”
Applicant has introduced numerous dictionary definitions of the term “bonbon,” of
which the following are representative:
A piece of candy, especially one covered with chocolate;19

15 22 TTABVUE 3.
16 Id. at 7.
17 Applicant has not filed a counterclaim for cancellation of either of Opposer’s pleaded
registrations on the ground of genericness or any other available ground. Cf. Fiserv, Inc. v.
Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1919 n.7 (TTAB 2015) (absent a
counterclaim, an applicant may not pursue an impermissible collateral attack on an opposer’s
registration). As a registration on the Principal Register, Opposer’s registration is treated as
valid and entitled to the statutory presumptions under Section 7(b) of the Trademark Act. In
re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997).
18 22 TTABVUE 6.
19 Oxforddictionaries.com/us, Id. at 27.
Opposition No. 91222153

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A candy that often has a center of fondant, fruit, or nuts and is coated
with chocolate or fondant;20

A piece of confectionary, candy.21

Applicant has also introduced the following French to English translations of the
term “bonbon” – candy.22 Applicant also made of record copies of third-party
registrations for marks that include a formative of the term “bonbon” (issued on the
Principal Register in standard characters unless otherwise noted) in connection with
candies and sweets:23
Reg. No. 3468795 for the mark BEDAZZLE MY BONBONS
(“BONBONS” disclaimed) for “candies, namely, chocolates and bonbons;

Reg. No. 2965225 for the mark GOLDEN BONBON (“BONBON”
disclaimed) for Confectionery, namely, candy, candy bars, candy chews,
chocolate, turron, torrone, divinity, nougat made with inclusions such as
fruits or flavorings or berries or citrus peel or nuts or grains; chocolate-
based ready-to-eat food bars; pastries; cookies; crackers; cakes;”

Reg. No. 4559807 for the mark BELLA BON BON (“BON BON”
disclaimed) for “chocolate.” “The foreign wording in the mark translates
into English as beautiful.”);

Reg. No. 0736876 for the mark LE BON BONBON NAPOLEON (“LE
BON BONBON” disclaimed) for “candies.” “The trademark in
translation means ‘the good Napoleon candy.’”);

The following registrations issued to the same entity: Reg. No. 2175919
for the mark BON BON BUM (“BON BON” disclaimed) for “candy;

20 Thefreedictionary.com, Id. at 46.
21 Dictionary.com, based on the Random House Dictionary (2017), Id. at 81.
22 Collins French – English online dictionary, Id. at 76; Reverso Dictionary, Id. at 78;
en.bab.la/dictionary/English-French, Id. at 80
23 Id. at 30-40, 92-3,113-126. We note that third-party Reg. No. 3522477 was cancelled in
2015. Expired registrations have very limited probative value. See Action Temporary Services
Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled
registration does not provide constructive notice of anything”).
Opposition No. 91222153

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confectionery, namely, toffees, caramels, mints, suckers, lollipops,
bubble gum, chocolates and cookies;” Reg. No. 2888955 for the mark
BON BON BOOM (“BONBON” disclaimed) for “candy, lollipops, bubble
gum, filled and without;” and Reg. No. 4327067 for the mark displayed
below (“BON BON” disclaimed) for “confectionery, especially lollipops
with gum or unfilled;”

Reg. No. 4640832 for the mark SOPHIE BONOBON SWEETS AND
SUCH (“BONBON SWEETS” disclaimed) for “bakery products, namely,
sweet bakery goods, candies, gum sweets, peppermint sweets, sugar free
sweets, sugarless sweets, sweets;”

Reg. No. 4833208 for the mark CHEZ BON BON (“BON BON”
disclaimed) for, inter alia, various dessert goods;

Reg. No. 4797084 issued on the Supplemental Register for the mark
BON BON BON (“BON BON” disclaimed) for “chocolates and chocolate
based ready to eat candies and snacks;” “the English translation of the
French wording “BON BON BON” in the mark is “good good good.”).

Applicant further introduced internet screenshots, excerpted below, from webpages
advertising for sale various candies identified as “bonbons” or “bon bons.”24

24 Id. at 94-102.
Opposition No. 91222153

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Opposer, for its part, introduced evidence in the form of internet screenshots of
third-party use and registrations that feature purple-colored backgrounds in
packaging and advertisements for candies.25 The following examples are illustrative:

25 21 TTABVUE 79-138.
Opposition No. 91222153

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Reg. No. 4885578 for the mark displayed below for
“bakery goods and dessert items, namely, cakes, cookies, pastries,
candies, and frozen confections for retail and wholesale distribution and
consumption on or off the premises.”

Opposition No. 91222153

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No claim is made to the exclusive right to use “GOURMET DESSERTS”
apart from the mark as shown.

The color(s) white, purple and gold is/are claimed as a feature of the
mark. The mark consists of “Applicious” written in a stylized manner in
white lettering with gold highlights and underneath “Applicious
Gourmet Desserts” is written in stylized block lettering in white and all
lettering is in front of a shaded purple block with shaded gold bands on
either side and the “A” and “S” of “Applicious” is partially outside the
shaded purple block.

Reg. No. 4307603 for the mark displayed below for “candy.”
No claim is made to the exclusive right to use “MILK CHOCOLATE”
and “SMOOTH & CREAMY” apart from the mark as shown.

The color(s) purple, gold, cream, brown and dark maroonish-brown
is/are claimed as a feature of the mark. The mark consists of a rectangle
with the first third (approximate) of the mark containing one purple
wrapped square-domed candy piece with the word “BLISS” written on it
in a cream color, and one unwrapped square-domed candy piece,
propped upon the first, both on a dark maroonish-brown background
and appearing in a highlight. The wording “MILK CHOCOLATE,” a row
of dots and the wording “SMOOTH & CREAMY” appear in gold directly
below the candies. The next two thirds (approximate) of the mark
consists of a purple background with the words “HERSHEY’S” written
and framed in gold on a brown background and the word “BLISS”
directly below in cream. The two sections are divided by a cream colored,
curved line. The dotted lines along the outside of the mark indicate the
positioning of the mark, and are not part of the mark.

Opposition No. 91222153

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Reg. No. 4129557 for the mark displayed below for “chocolate candies.”
No claim is made to the exclusive right to use “BOERNE” and
“CHOCOLATE FACTORY” apart from the mark as shown.

The color(s) purple, light purple and gold is/are claimed as a feature of
the mark. The mark consists of a purple square box with a smaller
purple box outlined in a gold double line; the top portion of the smaller
box includes a lighter purple section that has a bottom edge of decorative
swirling and swash-work in gold; the word “Boerne” in gold is centered
in the top portion; the bottom portion of the smaller box has light purple
triangular portion with a top edge of decorative swirling and swash-
work in gold; the center of the smaller box is purple and includes the
word “Chocolate” in gold centered over the word “Factory” in gold; below
the smaller box and the edge of the square box, are the words “Treat
Thyself” in gold.

The evidence of record leaves no doubt that the term “bonbon” or “bon bon” is, at
best, highly descriptive of Applicant’s goods and Opposer’s goods, if not generic
therefor. The dictionary definitions and evidence of third-party use clearly establish
that “bonbon” or “bon bon” has a recognized meaning as applied to candies. Similarly,
the third-party registrations indicate that the United States Patent and Trademark
Office consistently treats “bonbon” or “bon bon” as, at best, a merely descriptive term
as applied to candies and sweets. Such treatment is consistent with the examination
of Applicant’s involved application in which the wording “BON BON” is disclaimed
apart from the mark as shown.
Opposition No. 91222153

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Opposer is correct that disclaimer of a term apart from a mark as shown does not
remove the disclaimed wording either from the mark or from consideration in a
likelihood of confusion determination. See In re Shell Oil Co., 26 USPQ2d 1687, 1689
(Fed. Cir. 1993); Giant Food Inc. v. Nation’s Foodservice, Inc., 218 USPQ 390, 395
(Fed. Cir. 1983). However, the wording “BON BON” in Applicant’s mark is at best
highly descriptive of Applicant’s goods, and thus has little, if any, source-identifying
value. With regard to the purple background in Applicant’s mark, the evidence of
record shows that a number of third parties have used and registered trademarks
and trade names incorporating backgrounds that include various shades of purple.
We note that Applicant does not claim any particular shade of purple as its mark, but
merely as a feature thereof. This evidence tends to support a finding that Applicant’s
mark, consisting of the highly descriptive term BON BON and purple background
that is not uncommon in the field of candy, is quite weak.
On this same record, Opposer’s BON O BON mark has no recognized meaning other
than a suggestion of “good oh good” or simply “good” as translated from the French
language. As excerpted above, Applicant has made of record examples of ten third-
party registrations and numerous third-party uses of “BON BON” in connection with
various candies and sweets, suggesting that Applicant’s involved mark exists in a
crowded field. Particularly the mark BON BON BON for chocolates in third-party
Reg. No. 4797084, is quite similar to the marks at issue herein. We note nonetheless
that none of the third-party uses or registrations include Opposer’s BON O BON
mark.
Opposition No. 91222153

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In summary, the evidence of record establishes the weakness of Applicant’s mark,
particularly with regard to the term “BON BON,” and that such mark exists in a
crowded field therefor. Furthermore, the evidence indicates that Opposer’s BON O
BON mark suggests candies and sweets that are “good.” “[T]he strength of a mark is
not a binary factor” and “varies along a spectrum from very strong to very weak.”
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76
(Fed. Cir. 2015) (internal citations omitted). On this record, Opposer’s BON O BON
mark is entitled to a somewhat narrower scope of protection than would be accorded
an arbitrary mark.
Accordingly, we find the sixth du Pont factor to be neutral or to slightly favor a
finding of no likelihood of confusion.
3. Similarity or dissimilarity of the marks.
We continue our analysis with the first du Pont factor, the similarity or
dissimilarity of the marks and BON O BON (in standard characters)
and compare them “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691. “The proper test is not
a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs., Inc. v. Triumph Learning, LLC, 101 USPQ2d 1713, 1721 (Fed. Cir.
Opposition No. 91222153

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2012) (emphasis added). While “the similarity or dissimilarity of the marks is
determined based on the marks 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 a consideration of the
marks in their entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985).
In this case, Applicant’s mark is a composite, consisting of a verbal or literal
portion and a design. When evaluating a composite mark containing both words and
designs, the verbal portion of the mark often is the one most likely to indicate the
origin of the goods to which it is affixed because it is the portion of the mark that
consumers would use to refer to or request the goods or services. In re Viterra, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Appetito Provisions Co. Inc., 3 USPQ2d
1553, 1554 (TTAB 1987) (“if one of the marks comprises both a word and a design,
then the word is normally accorded greater weight because it would be used by
purchasers to request the goods or services.”). In this case, however, the evidence of
record clearly indicates that the wording BON BON in Applicant’s mark is, at best,
highly descriptive of the identified goods. Thus, we find that consumers are likely to
look to the stylized font and purple background as the more distinguishing features
thereof. See, e.g., In re Covalinski, 113 USPQ2d 1166 (TTAB 2014).
Opposition No. 91222153

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Applicant’s mark is similar in sound to Opposer’s BON O BON mark
inasmuch as the wording in the two marks is likely to be pronounced in a similar
fashion. Furthermore, because Opposer’s mark is registered in standard characters,
it may be displayed in any font or size, including a font identical to that in which the
wording in Applicant’s mark is displayed. As a result, the marks are similar in
appearance. However, the wording in Applicant’s mark consists in its entirety of the
highly descriptive, if not generic, term for chocolate-covered candy. This wording
indicates a type of candy offered under Applicant’s mark rather than indicating the
source thereof. While the term BON O BON comprising Opposer’s mark has no known
meaning on this record, it suggests that the sweets identified thereby are “good.” The
marks thus differ in connotation, Applicant’s mark describing candies and sweets
known as “bon bons” and Opposer’s mark suggesting sweets that are “good.”26
As such, while there are similarities between the marks, differences in
appearance and connotation leads the marks to convey overall commercial

26 We further observe that to the extent a casual observer may mistake Opposer’s mark as
comprising the term “bon bon,” it would not be perceived as a mark so much as the descriptive
or generic name for certain of the identified goods.
Opposition No. 91222153

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impressions that are more dissimilar than similar. Accordingly, we find that the first
du Pont factor favors a finding of no likelihood of confusion.27
4. No actual confusion.
Applicant’s argument that there has been no actual confusion is not persuasive.
The lack of evidence of actual confusion carries little weight. Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395-96 (Fed. Cir. 1983);
J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965).
Insofar as the absence of actual confusion is concerned, there is little in the record
regarding the extent of use, if any, of Applicant’s mark in the United States. “Thus,
we are unable to determine if there has been any meaningful opportunity for
confusion to occur in the marketplace. In any event, the test is likelihood of confusion,
not actual confusion, and, as often stated, it is unnecessary to show actual confusion
in establishing likelihood of confusion.” In re Big Pig Inc., 81 USPQ2d 1436, 1439-40
(TTAB 2006); see also Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990), and Giant Food, supra. Thus, we find the seventh du
Pont factor to be neutral.
• Conclusion.
Having considered all the evidence and arguments on the relevant du Pont
factors, whether specifically discussed herein or not, we conclude that, as stipulated

27 The additional design element in the mark in Opposer’s Registration No. 4633325
results in that mark being even less similar to Applicant’s mark in appearance and overall
connotation.
Opposition No. 91222153

20

by the parties, Opposer has standing and priority of use, and that the parties’ goods
are related and will move in common trade channels. However, we find that due to
the weakness of the term “BON BON” in Applicant’s mark, the parties’ marks are
more dissimilar than similar, and that registration of Applicant’s mark for
“Confectionery made of sugar, namely, candy, sweets, caramels” is not likely to cause
confusion with Opposer’s mark BON O BON for “Chocolates, pastries filled with
sweet fillings, alfojores, and wafers.”
Decision: The opposition is dismissed.