Cron

Trademark Trial and Appeal BoardApr 22, 2009

No. 76690407 (T.T.A.B. Apr. 22, 2009)

Mailed: April 22, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Cron ________ Serial No. 76690407 _______ Myron Amer of Myron Amer, P.C. for Lisa Cron. Laurie Mayes, Trademark Examining Attorney, Law Office 101 (Ronald Sussman, Managing Attorney). _______ Before Rogers, Zervas and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Lisa Cron (“applicant”) filed an intent-to-use application to register the mark THUMBPRINT DELIGHTS, in standard character form, for “cookies,” in Class 30. Applicant disclaimed the exclusive right to use the word “Thumbprint.” The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76690407 2 mark is likely to cause confusion with the mark THUMB PRINT, in typed drawing form, for “cookies” in Class 30.1 Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of 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 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”). A. The similarity or dissimilarity and nature of the goods described in the application and registration. The goods in the application and registration are identical: cookies. 1 Registration No. 2254409, issued June 15, 1999. Sections 8 and 15 affidavits accepted and acknowledged. Serial No. 76690407 3 B. The similarity or dissimilarity of likely-to-continue trade channels and classes of consumers. Because the goods described in the application and the cited registration are identical, we must presume that the channels of trade and classes of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). C. The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. Because there are no limitations as to channels of trade or classes of purchasers in the either the application or registration, it is presumed that the cookies described in the application and registration move in all channels of trade normal for those products, and that they are available to all classes of purchasers for the listed goods. See In re Linkvest S.A., 24 USPQ2d 1716, Serial No. 76690407 4 1716 (TTAB 1992). In this regard, we note that cookies area ubiquitous snack, often purchased on impulse. E. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). The marks are similar in appearance, sound, meaning and commercial impression because they share the word “Thumbprint” or “Thumb print.” Applicant argues that the word “Thumbprint” is descriptive when used in connection with cookies and that, therefore, the mark in the cited registration is weak and entitled to only a narrow scope of protection. Accordingly, applicant contends that the addition of the word “Delights” is sufficient to distinguish applicant’s mark from the registered mark. Specifically, applicant asserts that the word “Delights” is the dominant element of Serial No. 76690407 5 applicant’s mark. In support of her argument that “Thumbprint” is descriptive, applicant referenced the three websites included in the first Office Action that the Examining Attorney used to support her requirement that applicant disclaim the exclusive right to use the word “Thumbprint.” 1. Joyofbaking.com “Thumbprint Cookies Recipe” (title) Thumbprint Cookies . . . are a popular holiday cookie made with shortbread- like dough that is formed into balls and then each ball of dough is rolled in either coconut or chopped nuts. The name “thumbprint” comes from the fact that you use your “thumb” to make an indentation into each ball of dough, which is then filled with the jam. 2. About.com “Thumbprint Cookies” (a recipe) 3. Smuckers.com Smucker’s Desserts Recipe SMUCKER’S® THUMBPRINT COOKIES On the other hand, the Examining Attorney contends that “the term ‘delight’ or its phonetic equivalents is an extremely common term in marks used in connection with ‘cookies,’” the inclusion of which in applicant’s mark fails to distinguish it from the registered mark. The Examining Attorney submitted copies of 34 use-based Serial No. 76690407 6 registrations incorporating the word “delight” or a variation thereof and one registration issued under Section 44 of the Trademark Act of 1946 to demonstrate that the word “delight” or variations thereof have a well-understood meaning. See In re Hamilton Bank, 222 USPQ 174, 177 (TTAB 1984) (third-party registrations are competent evidence to show that “the term or feature common to the marks has a normally understood meaning or suggestiveness in the trade and that marks containing the term or feature have been registered for the same or closely related goods or services because the remaining portions of the marks are sufficient to distinguish the marks as a whole from one another”); Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (1983) (“The existence of these third-party registrations also suggests that purchasers would be reasonably likely, upon encountering these marks, to attribute to ‘PLUS’ its ordinary dictionary meaning”); American Hospital Supply v. Air Products and Chemicals, 194 USPQ 340, 343 (TTAB 1977). In this case, the third-party registrations serve a function akin to that of dictionary definitions and corroborate the suggestive meaning of the word “delight” which is defined as “a high degree of Serial No. 76690407 7 pleasure or enjoyment” or “something that gives great pleasure.”2 However, applicant argues that the third-party registrations prove just the opposite because the word “Delight” is not disclaimed in any of the registrations. Accordingly, applicant asserts that the lack of a disclaimer of the word “Delight” means that “Delights,” not “Thumbprint,” is the dominant element of applicant’s mark. We find that the word “Delights” in applicant’s mark is highly suggestive denoting a product that provides great pleasure. Generally, one may not appropriate another’s entire mark and avoid likelihood of confusion by adding descriptive or otherwise subordinate matter. Bellbrook Dairies, Inc. v. Hawthorn-Mellody Dairy, Inc., 253 F.2d 431, 117 USPQ 213, 214 (CCPA 1958) (VITA-SLIM is likely to cause confusion with SLIM both for milk); S. Gumpert Co., Inc. v. ITT Continental Baking Co., 191 USPQ 409, 411 (TTAB 1976) (FLAV-O-BAKE for seasoned coating mix is likely to cause confusion with FLAVO for cake icing flavoring); Signal Cos., Inc. v. Southwestern Petroleum Corp., 181 USPQ 599, 601 (TTAB 1973) (POLISIGNAL R29 and design for 2 Random House Dictionary of the English Language (Unabridged) p. 527 (2nd ed. 1987). The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 76690407 8 activating unpolymerized acrylic or polyester resins and paint is likely to cause confusion with SIGNAL for rust preventatives and paint thinners). In this case, while “Delights” may not be subject to refusal as descriptive, it is nonetheless highly suggestive and subordinate to the first word in the mark “Thumbprint.” As such, the word “Delights” offers little to distinguish applicant’s mark from the registered mark. For example, consumers familiar with registrant’s THUMB PRINT cookies may believe that applicant’s THUMBPRINT DELIGHTS are a variation of the first product. Accordingly, we find that the addition of the word “Delights” is not a significant difference between the marks and it does not alter the similarity of the marks in terms of appearance, sound, meaning and commercial impression. As to applicant’s argument that the term “Thumb Print” is descriptive and therefore a weak term, we note that because applicant’s mark is registered on the Principal Register it is entitled to a presumption of validity in accordance with Section 7(b) of the Trademark Act of 1946, 15 U.S.C. §1057(b)(a certificate of registration is prima facie evidence of the validity of the registered mark). Furthermore, based on the limited evidence of record, we cannot conclude that the word “Thumbprint” is so weak as to Serial No. 76690407 9 allow the registration of applicant’s mark. Moreover, it is well-settled that the likelihood of confusion is to be avoided as much between weak marks as between strong marks; and as between a weak and strong mark. King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). E. Balancing the factors. In view of the facts that the marks are similar, the goods are the same, and because we must presume that the goods move in the same channels of trade and are available to the same classes of consumers, we find that applicant’s registration of the mark THUMBPRINT DELIGHTS for “cookies” is likely to cause confusion with the mark THUMB PRINT for “cookies.” Decision: The refusal to register is affirmed.