Cutlery and More, LLCv.Dasalla Trading Company1

Trademark Trial and Appeal Board

Oct 31, 2014

No. 91201666 (T.T.A.B. Oct. 31, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
October 31, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Cutlery and More, LLC
v.
Dasalla Trading Company1
_____
Opposition No. 91201666
_____
Charles C. Valauskas and Allison M. Corder of Valauskas Corder LLC for Cutlery
and More, LLC.

Matthew H. Swyers of The Trademark Company, PLLC for Dasalla Trading
Company.
_____

Before Quinn, Bergsman and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Dasalla Trading Company (“Applicant”) filed an application to register the
mark CUTLERYANDBEYOND in standard characters for “Retail store and on-line
retail store services featuring cutlery and kitchenware,” in International Class 35.2

1 Applicant is identified in the application as “Desalla Trading Company.” This is a
misspelling of Applicant’s actual name, which appears in correct form in the caption of this
decision.
2 Application Serial No. 85156141, filed on October 19, 2010 under Trademark Act § 1(a), 15
U.S.C. § 1051(a), stating August 2000 as the date of first use anywhere and first use in
commerce.
Opposition No. 91201666
2

Cutlery and More, LLC (“Opposer”) opposed registration of the mark on the
ground that the mark, as used in connection with the identified services, so
resembles Opposer’s earlier used marks CUTLERYANDMORE.COM and
CUTLERYANDMORE and Opposer’s registered mark shown below as to be likely to
cause confusion, mistake or deception, under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d).

Opposer pleaded ownership of Registration No. 3954102 for the mark shown
above for “On-line retail store services featuring cutlery, cookware, kitchen items
and accessories thereof,” in International Class 35.3 Color is not claimed as a
feature of the registered mark.4 Applicant, in its answer, denied the salient
allegations of the notice of opposition. The case has been fully briefed.
I. The record.
The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 C.F.R. § 2.122, the application file for the opposed mark. Opposer’s

3 Reg. No. 3954102 issued May 3, 2011.
4 Applicant also pleaded ownership of two pending applications, Serial No. 85345038 for the
mark CUTLERYANDMORE (in standard characters) and Serial No. 85345016 for the mark
CUTLERYAND (in standard characters). Both applications were filed on June 13, 2011 and
prosecution of both has been suspended to await the final disposition of the application that
is the subject of this proceeding.
Opposition No. 91201666
3

pleaded registration was made of record under a notice of reliance, in the form of a
current printout of information from the electronic database records of the USPTO
showing current status and title of the registration.5 The record also includes the
following testimony and evidence:
A. Opposer’s evidence.
1. Testimony deposition of Michael Beltrami, Opposer’s owner, dated December
19, 2013 (with exhibits). 17 TTABVUE 2-58.

2. Testimony deposition of Kristen Kohuch, Opposer’s customer service
manager, dated December 19, 2013 (with exhibits). 17 TTABVUE 59-94.

3. Notice of reliance (16 TTABVUE 1-70) on the following evidence:

- Information regarding various pending applications of Opposer.

- WHOIS data for the domain .

- Web pages of Opposer from .

- Web pages from .

- Web pages from .

- Applicant’s admissions in response to certain requests for admission.

- Applicant’s responses to interrogatories of Opposer.

- Definitions of the words “more” and “beyond.”

B. Applicant’s evidence.
1. Testimony deposition of Eddie Valdez Dasalla, Applicant’s founder, dated
February 10, 2014 (with exhibits). 23 TTABVUE 1-35.

2. Notice of reliance (18 TTABVUE 1-48) on the following evidence:

5 16 TTABVUE 6-9. Citations to the record will be to TTABVUE, the docket history system
for the Trademark Trial and Appeal Board.
Opposition No. 91201666
4

- Opposer’s responses to interrogatories of Applicant.

- Third-party registrations of marks that include the designation CUTLERY.

II. Standing.
Opposer has properly made of record its pleaded registration and has
presented testimony regarding its use of the service mark CUTLERY AND MORE
and the web address in connection with retail services.6
Opposer has thus shown that it is not a mere intermeddler and has established its
standing to oppose registration of Applicant’s mark. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
III. Opposer’s claim under Section 2(d).
Opposer brings its opposition under Trademark Act § 2(d) on the ground of
priority and likelihood of confusion. In view of Opposer’s ownership of a valid and
subsisting registration of its pleaded mark, priority is not in issue with respect to
the mark and the services identified in the registration. King Candy, Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).7
Our determination of likelihood of confusion is based on an analysis of all
probative facts in evidence that are relevant to the factors set forth in In re E. I. du

6 Beltrami 4:6-24; 6:20-7:2; 25:2-3, 17 TTABVUE 7; 9-10; and 28.
7 For purposes of this decision, we need not address Opposer’s claim of priority with respect
to its common law rights in the pleaded mark CUTLERY AND MORE.
Opposition No. 91201666
5

Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
A. The parties’ services.
Turning first to the similarity or dissimilarity of the services at issue, we find
that they are essentially identical. Both the application and the Opposer’s pleaded
registration identify “online retail store services featuring cutlery.” The application
also indicates that “kitchenware” is offered through Applicant’s online retail service.
We see little difference between this category of product and the “kitchen items” and
“cookware” that are listed in the registration as goods offered through Opposer’s
online retail services.
In the context of an opposition proceeding, the question of registrability of an
applicant's mark must be decided on the basis of the identifications of goods and
services set forth in the application and registration at issue. See Octocom Syst. Inc.
v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). Accordingly, the du Pont factor
regarding the similarity or dissimilarity of the services weighs heavily in favor of a
finding of likelihood of confusion.8
B. Channels of trade.
We next consider the parties’ established and likely to continue channels of
trade. Because the parties’ services are identical, we must presume that they move

8 We note, moreover, that Applicant has admitted that the parties’ services are identical.
(Applicant’s brief at 1, 24 TTABVUE 7).
Opposition No. 91201666
6

through the same channels of trade9 and are sold to the same classes of purchasers.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). As there are no limitations as to channels of
trade in the identifications of services in the registration and application, we
presume that the parties’ services move in all channels of trade that are normal for
such services. See Octocom, 16 USPQ2d at 1787; Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). The parties’ testimony shows that such
channels include the parties’ own internet websites; advertising on retail websites
of others, such as Amazon.com; placement of orders over the telephone; key word
advertising on search engines; print advertising; email advertisements; fliers; and
catalogues.10 As the parties actually share, or are presumed to share, these
channels, the du Pont factor of trade channels weighs heavily in favor of a finding of
likelihood of confusion.11

9 Moreover, Applicant has admitted that the “channels of trade and marketing” of the
parties’ services are identical. (Applicant’s brief at 1, 24 TTABVUE 7).
10 Beltrami 4:10-5:7, 17 TTABVUE 7-8; Dasalla 19:3-13; 26:15-27:14; 23 TTABVUE 22, 29.
11 We note Applicant’s comment that Opposer began to advertise its services on
Amazon.com only after it learned, during this proceeding, that Applicant was availing itself
of this trade channel. (Applicant’s brief at 7, 24 TTABVUE 13). Of course, there is no reason
why Opposer should consider itself foreclosed from offering its services on Amazon.com, as
it is a normal and highly suitable trade channel for purveyors of consumer goods. The
convergence of Applicant and Opposer in the trade channel of Amazon.com is a perfect
illustration of the validity of our presumption that identical services will move through
identical trade channels.
Opposition No. 91201666
7

C. The marks at issue.
We next consider the similarity or dissimilarity of the marks at issue in
terms of appearance, sound, meaning, and overall commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005). In doing so, we bear in mind that “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, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression of the marks.
Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In
comparing the marks, we are mindful that “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
We base our determination on a consideration of the marks in their entireties.
However, 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
Opposition No. 91201666
8

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).
Initially, we note that Opposer’s mark is registered in special form and
includes stylized lettering and a design element that are not present in Applicant’s
mark. Generally, the specific style of a registered mark cannot serve to distinguish
an applicant’s mark that is in standard character form. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012), citing In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). In the case of marks consisting
of words and a design, the words are normally given greater weight because they
would be used by consumers to request the goods or services. Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). In any
event, neither the stylization of the lettering in Opposer’s mark nor the line design
that underscores the words ANDMORE is particularly distinctive.
In appearance, both marks are relatively long strings of letters (16 in the case
of Applicant’s mark and 17 in the case of Registrant’s mark) presented as a unit.
Both marks begin with the letter string CUTLERYAND; the two marks differ in
their remaining letters, -BEYOND and -MORE.COM, respectively. However, we
note that it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered. Palm Bay Imports Inc., 73 USPQ2d
at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT
Opposition No. 91201666
9

because “veuve” is the first word in the mark and the first word to appear on the
label); Century 21, 23 USPQ2d at 1700 (upon encountering the marks, consumers
will first notice the identical lead word). In this case, the lettering that would be
most capable of distinguishing the marks is visually less salient because it begins in
the middle of the string of letters that constitutes each mark.
In meaning, the two marks are quite similar. Although each is presented as a
single “word,” customers would readily perceive that they are, in fact, composed of
several common words, “cutlery and beyond” in the case of Applicant, and “cutlery
and more,” combined with the web address indicator “.com” in the case of Opposer.
The meanings of these component elements, which are all extremely common words
known to the general public, would be readily apprehended by customers. We give
very little distinctive weight to the designation “.com” in Opposer’s mark, because it
is a standard indicator of an online address, and both parties conduct their retail
sales online. See In re Oppedahl & Larson LP, 373 F.3d 1171, 71 USPQ2d 1370
(Fed. Cir. 2004). Of course, the words “beyond” and “more” are not the same, so we
must consider their respective meanings.
Opposer has made of record dictionary definitions for the purpose of showing
that “beyond” and “more” have similar meanings. It is clear that both words are
subtle in meaning. However, notably, one definition states that “Beyond also means
more than: I’ve got nothing to tell you beyond what I said earlier.”12 This definition
suggests that “beyond” and “more” are nearly identical in meaning.

12 Definition of “beyond” from CAMBRIDGE ACADEMIC CONTENT DICTIONARY at
, Opposer’s notice of reliance, 16 TTABVUE 70.
Opposition No. 91201666
10

Opposer has also submitted a definition of “beyond” stating that the word
means “To a degree or amount greater than” and “In addition to”; and a definition of
“more” from the same dictionary stating that the word means “Greater in size,
amount, extent, or degree” and “additional.”13 These definitions, too, suggest that
the two words are quite close in meaning.14 Overall, we conclude that in meaning
the two marks are similar but not identical.
In terms of sound, we note both similarities and differences between the
marks. They sound alike to the extent of their initial syllables, CUTLERYAND-;
and they differ phonetically as to their final syllables, -BEYOND and –MORE.COM.
We also note these final syllables are different in number (two versus three) and
rhythm in the way that they would be pronounced.
Applicant argues that, in considering the similarity or dissimilarity of the
marks, we should treat the words MORE and BEYOND, respectively, as the
dominant portions of the marks. Applicant argues that “additions or deletions to
marks are [ ] sufficient to avoid a likelihood of confusion when … the matter
common to the marks is not likely to be perceived as distinguishing source because
it is merely descriptive or diluted,”15 citing Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). Applicant

13 Definitions of “beyond” and “more” from WEBSTER’S II NEW COLLEGE DICTIONARY (1999),
pp. 106 and 712, 16 TTABVUE 68 and 67.
14 Applicant, in its brief, appears to admit that there is a similarity in meaning between
“more” and “beyond,” stating that MORE is “suggestive of additional items that may be
provided,” and that “BEYOND is suggestive of additional services that are provided….”
Applicant’s brief at 13, 24 TTABVUE 19.
15 Applicant’s brief at 13, 24 TTABVUE 19.
Opposition No. 91201666
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refers to the components –MORE and –BEYOND as “the only two terms that are
inherently distinctive in the respective marks.”16 We agree that the word CUTLERY
is very highly descriptive – and probably generic – with respect to the services of the
two parties and would not, alone, be perceived as a source indicator. On the other
hand, neither MORE nor BEYOND is a particularly distinctive term; as positioned
in the respective marks, these words are not visually salient; and in meaning they
project a much vaguer impression than the word CUTLERY. At most, one can say
that they are distinctive in sound. In view of the “run-on” nature of the two marks
before us, we see little reason to designate any component of the marks as a
“dominant” component or to give special weight to the words MORE and BEYOND.
Considering the overall commercial impressions that arise from the
appearance, sound and meaning of the two marks, we find that the similarities
outweigh the differences and, accordingly, we find that the du Pont factor of the
similarity or dissimilarity of the marks weighs in favor of a finding of likelihood of
confusion.
D. Third-party registrations.
Applicant has made of record copies of 25 third-party registrations of marks
that include the term CUTLERY.17 Applicant’s purpose is

16 Id.
17 Applicant’s notice of reliance, 18 TTABVUE 24-48. Opposer has objected to the admission
of this evidence (Opposer’s brief at 2, 21 TTABVUE 7) on the ground that it “is not evidence
of what happens in the marketplace.” Opposer’s objection goes not to the admissibility of
the evidence, but to the weight that the Board should assign to it. The objection is
overruled.
Opposition No. 91201666
12

to establish that the term CUTLERY is so widely used in
the parties’ industry that the public will look to other
elements beyond the term CUTLERY to distinguish the
source of the goods or services, namely the dominant
terms MORE and BEYOND. …
If the public can so distinguish as between marks
containing the merely descriptive term CUTLERY in
conjunction with other merely descriptive or merely
geographically descriptive terms such as CHICAGO, PRO,
COLORADO, NEW ENGLAND, KENNESAW, LAGUNA,
and SHEPHERD HILLS, then certainly these
registrations must be relevant to establish that the public
will also do so as between two terms, MORE and
BEYOND, that are, themselves, inherently distinctive
and the dominant portions of the service marks at issue.18
First, we must point out that third-party registrations cannot, alone,
demonstrate that a term “is so widely used in the parties’ industry” because they
are not evidence of actual use at all. Moreover, such registrations “provide no basis
for saying that the marks so registered have had, or may have, any effect at all on
the public mind so as to have a bearing on likelihood of confusion.” Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Productos
Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921,
1934 (TTAB 2011). We cannot interpret this evidence as establishing that “the
public can distinguish as between [such] marks,” because the issuance of a
registration by the USPTO gives us no insight into the minds of actual customers in
the marketplace. In sum, this evidence gives us no basis upon which to consider the
du Pont factor of “the number and nature of similar marks in use on similar
[services].” 177 USPQ at 567 (emphasis added).

18 Applicant’s brief at 17-18, 24 TTABVUE 23-24.
Opposition No. 91201666
13

The registrations do serve to confirm the significance of the term CUTLERY
in the field of cutting implements and the service of retailing such implements; and
we have given due consideration to this descriptive or generic significance in our
analysis. Beyond this, they have little relevance to the question of whether the
marks of Applicant and Opposer can be distinguished. The third-party marks do not
share the structure that is common to the marks of Applicant and Opposer.
Moreover, although they all include the word CUTLERY, the additional wording in
each mark has meaning that is distinct from the meaning of the additional wording
of the other marks. As we have discussed above, the additional wording in the
marks of Applicant and Opposer results in marks that are similar in meaning.
E. Actual confusion.
Opposer has submitted testimony and documentary evidence (primarily in
the form of copies of e-mails and transcripts of telephone calls) to demonstrate
several instances of alleged actual confusion of source as to the services of Applicant
and Opposer. Applicant has objected to the admission of such evidence on grounds
that it is inadmissible hearsay.19 On a substantive level, Applicant has also
criticized the reliability of such evidence and disputed Opposer’s interpretation of it.
The specific documents and materials at issue were initially offered as
records kept in the course of a regularly conducted business activity, within the
hearsay exception of Fed. R. Evid. 803(6). In response to Applicant’s objection that
those materials contained a second level of hearsay (i.e., statements of customers

19 Applicant’s brief at 2-5, 24 TTABVUE 8-11.
Opposition No. 91201666
14

offered for the truth of the matter asserted therein), Opposer argues that those
statements are admissible as “present sense impressions of the declarants” and that
they “fall under Fed. R. Evid. 803(3) ‘state of mind’ exception to the hearsay rule.”20
We have reviewed Opposer’s evidence of confusion with a critical eye as to its
evidentiary value. Most of what Applicant characterizes as hearsay is, in fact, not
offered for the truth of the matter asserted and, as such, is not subject to the rule
excluding hearsay. Fed. R. Evid. 801(c). In any event, we note that evidence of the
type offered by Opposer has been accepted by the Board and the courts under the
“state of mind” exception, even when offered for the truth of an out-of-court
declarant’s assertion. Armco Inc. v. Armco Burglar Alarm Co., Inc., 217 USPQ 145,
149, fn.10 (5th Cir. 1982); Fun-Damental Too Ltd. v. Gemmy Industries Corp., 42
USPQ2d 1348, 1356 (2d Cir. 1997); National Rural Electric Cooperative Ass’n v.
Suzlon Wind Energy Corp., 78 USPQ2d 1881, 1887 (TTAB 2006).
We give consideration to the following evidence:
(1) In an email exchange of January 29-31, 2012 between Michael Martin
and Opposer’s customer service personnel,21 Mr. Martin described an
order he had placed with Amazon for a product that “will ship from you
[Opposer.]” When Opposer’s personnel asked him for a copy of the
order, he sent, as an attachment to another email, an order record
stating “Sold by: CutleryAndBeyond.”

(2) The following exchange of three e-mails22 transpired in October 2012
between an Amazon customer and Opposer’s owner:

20 Opposer’s reply brief at 12, fn.4, 21 TTABVUE 18.
21 Kohuch Dep., Ex. 9, 17 TTABVUE 87-89.
22 Beltrami Dep. Ex. 3, 17 TTABVUE 48-49.
Opposition No. 91201666
15

CUSTOMER: I received my order just fine. This may be a stupid
question but do you have directions on the correct way to use the
sharpener?

Also, I found it strange that there was no packing slip in the box. …

OPPOSER’S OWNER: I might be able to help you with locating
directions for the sharpener, but what sharpener are you referring to?

Did you purchase the item from us, Cutlery and More? We always
include packing slip in our packages.

CUSTOMER: Maybe not. I bought it from CutleryandBeyond. I see
that my email went to CutleryandMore. I’m sorry for bothering you. I
will try again.

(3) In a 2011 email exchange,23 a customer sent an inquiry to Opposer’s
customer service personnel regarding an order. When Opposer’s
personnel requested information from the customer’s credit card
statement, he replied, via email:

11/14/2011 Pending DASALLA TRADING CO. $279.85

Please see above for the copied line from my credit card
statement.

(4) In testimony, Opposer’s owner described an incident involving a
vendor from whom Opposer obtained some of its products. “I noticed on
that day that when we went to our vendor’s website StaubUSA.com
and did a store search which shows places to buy their product that
they had linked the Cutlery and Beyond logo that they put on their
website inadvertently to our website cutleryandmore.com.”24

(5) The transcript of an audio recording of a telephone call between a
customer and Opposer’s customer service personnel,25 shows the
following exchange:

23 Beltrami Dep. Ex. 4, 17 TTABVUE 50-52.
24 Beltrami Dep. 15:5-20, 17 TTABVUE 18. We give no weight to Mr. Beltrami’s
characterization of the incident having occurred “inadvertently.” Mr. Beltrami’s
instructions to the vendor to correct the error are at Beltrami Dep. Ex. 5, 17 TTABVUE 53-
54.
25 Beltrami Dep., Ex. 7, 17 TTABVUE 54-56. The audio recording was also played at the
deposition and was transcribed by the court reporter.
Opposition No. 91201666
16

OPPOSER’S PERSONNEL: Cutlery and More, this is Amy. How can I
help you?

CUSTOMER: Amy, last night I placed an order through Amazon with
you, and I’d like to cancel that order.

OPPOSER’S PERSONNEL: OK, … The order number?

CUSTOMER: Ok, it is, um, 1020082891946.

OPPOSER’S PERSONNEL: Oh, um, that’s not… are you trying to call
Cutlery and More?

CUSTOMER: No, Cutlery and Beyond.

(6) In the transcript of an audio recording of a telephone call between a
customer and Opposer’s customer service personnel,26 the customer
stated, “I just placed an order through Amazon but through your
store.” Following a discussion of the order number, which Opposer’s
personnel did not recognize, the following dialogue ensued:

OPPOSER’S PERSONNEL: “This is Cutlery and More. Did you place
the order with us?”

CUSTOMER: “Oh, I guess I didn’t. I have got Cutlery and Beyond. I
thought I placed it with you all. …I thought I ordered the Wusthof
Gourmet 12 piece knife set with block and I thought it was through
you all but I guess it isn’t.”

The evidence discussed above can be considered without regard to the truth
of any assertion made therein, with the exception of the statement in item (6), “I
thought I placed it with you all. …I thought I ordered the Wusthof Gourmet 12
piece knife set with block and I thought it was through you all.” It is clear from the
context that the customer, at that moment, was awakening to the realization of her
error. We therefore find that this statement is admissible within the exception for

26 Kohuch Dep., Ex. 10 17 TTABVUE 90-94. The audio recording was also played at the
deposition and was transcribed by the court reporter.
Opposition No. 91201666
17

“[a] statement of the declarant’s then-existing state of mind” under Fed. R. Evid.
803(3). The customer’s realization of her error follows so immediately upon the state
of mind that she describes that her statement should not be disqualified as “a
statement of memory.” Id. However, even if we exclude these statements, the
remaining statements, which are not offered for their truth (“I just placed an order
… through your store”; “Oh, I guess I didn’t.”) are admissible evidence of the
customer’s confusion, as it does not matter which of these inconsistent statements is
true.
We find the incidents described above in items (1), (2), (3), (5) and (6) to be
probative of actual confusion as to source among the ultimate customers of
Applicant and Registrant. The incident described in item (4) is probative of actual
confusion within Opposer’s trade. Applicant contends that this incident has no
probative value because it does not show consumer confusion. However, we find that
the nature of the confusion shown (i.e., confusion as between the websites of the
parties) is relevant to the issue of likelihood of confusion in this case, because both
parties provide their retail services through websites, and online contacts with
customers are an important factor in the parties’ businesses.27
Applicant argues that the amount of confusion shown by Opposer is de
minimis; and argues that so little confusion, over the course of nine years of co-
existence in an environment in which “the opportunity for actual confusion to exist
… is high,” should be taken as “evidence that confusion itself is not likely to occur in

27 We have given no consideration to the incident described in Beltrami Dep. Ex. 6, 17
TTABVUE 55-56.
Opposition No. 91201666
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the future….”28 We are not persuaded to interpret the evidence as Applicant
suggests. Section 2(d) does not require a showing of actual confusion, but only
likelihood of confusion. In that connection, we have often noted that “[i]n general,
evidence of actual confusion is notoriously difficult to come by.” General Mills Inc. v.
Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1604 (TTAB 2011).
Moreover, the Federal Circuit has said that “A showing of actual confusion would of
course be highly probative, if not conclusive, of a high likelihood of confusion.”
Majestic Distilling Co., 65 USPQ2d at 1205. Accordingly, we find that the factor of
actual confusion favors a finding of likelihood of confusion.
F. Applicant’s good faith adoption of its mark.
Finally, we note Applicant’s argument that it “did not set out to register a
service mark that is similar to [Opposer’s] registered mark” and that “[t]here is no
evidence of record of a malicious intent on the part of [Applicant].”29 Applicant’s
good faith “does very little to obviate a finding of likelihood of confusion because it is
expected that applicants are acting in good faith.” Mag Instrument Inc. v.
Brinkmann Corp., 96 USPQ2d 1701, 1713 (TTAB 2010). See also J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991)
(“Whether there is evidence of intent to trade on the goodwill of another is a factor
to be considered, but the absence of such evidence does not avoid a ruling of
likelihood of confusion.”) Accordingly, Applicant’s good faith is a neutral factor in
our analysis.

28 Applicant’s brief at 23-24, 24 TTABVUE 29-30.
29 Applicant’s brief at 19, 24 TTABVUE 25.
Opposition No. 91201666
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IV. Conclusion.
We have considered all of the evidence of record relevant to the du Pont
factors and all arguments of the parties, including those not specifically discussed
herein. The parties’ services are identical and would travel through the same
channels to the same classes of customers. Their marks are similar in structure and
meaning. The marks are partly similar in sound, and the differences that have the
potential to distinguish the marks are not visually salient. There is no evidence that
customers have been exposed to similar marks in use in the marketplace. Finally,
there is credible evidence of actual confusion relating to the parties’ marks. We
therefore find that Applicant’s mark so resembles Opposer’s registered mark as to
be likely to give rise to confusion, mistake or deception as to the source of
Applicant’s services. We do not reach Opposer’s claims insofar as they are based on
Opposer’s pleaded common law rights in the mark CUTLERY AND MORE.
Decision: The opposition is sustained.