Dunkin’ Donuts USA, Inc.v.Jerry Ucci

Trademark Trial and Appeal Board

Jun 25, 2002

No. 91121364 (T.T.A.B. Jun. 25, 2002)

6/25/02

Greenbaum

Opposition No. 121,364

Dunkin’ Donuts USA, Inc.

v.

Jerry Ucci

Before Simms, Bottorff and Rogers, Administrative
Trademark Judges.

By the Board.
Jerry Ucci has applied to register the mark U-DUNK-
IT-DONUTS-PLUS for use in connection with restaurant and
carry-out food services.1 Dunkin’ Donuts USA,
Inc. (“Dunkin’ Donuts”) has opposed registration on the
grounds that applicant’s mark, when used on the
identified services, is likely to cause confusion with
opposer’s previously registered and used DUNKIN’ DONUTS
marks for restaurant services, doughnuts, doughnut flour,
fruit fillings for doughnuts, cookies, cakes and pies,
vegetable oil, shortening and coffee.2 As the second
ground for opposition, opposer claims that applicant’s

1 Serial No. 75/867,239, filed December 9, 1999, alleging a bona
fide intent to use the mark in commerce.
2 See Attachment “A” hereto for the complete list of opposer’s
relied-upon marks.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 121,364
2
mark, when used on the identified services, dilutes
opposer’s famous, earlier-used, DUNKIN’ DONUTS marks.
In his answer, applicant denied the salient
allegations of the notice of opposition.
This case now comes up on opposer’s motion for
summary judgment on the Section 2(d) issues of priority
and likelihood of confusion, and on the dilution claim
under Sections 13(a) and 43(c). The parties have fully
briefed the issues, and we have considered opposer’s
reply brief. See Trademark Rule 2.127(c)(1).
As an initial point, we note that opposer’s motion
for summary judgment largely rests on applicant’s
effective admissions. In this regard, we note that
opposer served on applicant opposer’s first requests for
admissions on August 24, 2001, and that applicant’s
responses thereto were untimely. Applicant did not file
a motion to withdraw the effective admissions, or explain
why his responses were late. Therefore, opposer’s
requests for admissions stand admitted by operation of
Fed. R. Civ. P. 36(a).
We now turn to opposer’s summary judgment motion. A
party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material facts, and that it is entitled to judgment as a
Opposition No. 121,364
3
matter of law. Fed. R. Civ. P. 56(c). The evidence must be
viewed in a light favorable to the nonmoving party, and all
justifiable inferences are to be drawn in the nonmovant’s
favor. Opryland USA Inc. v. The Great American Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Inasmuch as opposer submitted with its summary judgment
motion status and title copies of 10 of its relied-upon
registrations, priority is not an issue.3 See King Candy
Company v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). In any event, the record shows that
opposer has used the mark DUNKIN’ DONUTS in connection with
the sale of coffee and donuts since at least 1950, which
precedes the December 9, 1999 constructive use and filing
date of applicant’s intent-to-use application. This
evidence also suffices to establish opposer’s standing to
bring this opposition proceeding.
In addition, applicant has admitted the fame of
opposer’s mark. Specifically, in response to opposer’s
interrogatories, applicant stated that “the mark DUNKIN
DONUTS is ubiquitous” and that he “has been aware of the
mark for many years.” Further, by failing to timely
respond to opposer’s requests for admission, applicant
Opposition No. 121,364
4
admitted that the mark DUNKIN’ DONUTS is well-known and
famous in the United States in connection with the
manufacture and sale of coffee and donuts, and that the
DUNKIN’ DONUTS mark is used throughout the United
States. See Opposer’s Requests for Admissions Nos. 4-7.
In further support of the fame of opposer’s mark,
opposer submitted the affidavit of Maura Rearden,
opposer’s Director of Advertising, which establishes
that: today, there are over 5000 Dunkin’ Donuts shops
worldwide, making opposer the largest donut, bagel and
coffee shop in the world; opposer largely attributes the
huge success of its marks to the extensive advertising
campaign opposer runs through various media, including
the “Fred the Baker” campaign; opposer has a very large
advertising budget, and spent more than $60 million in
advertising its mark in the most recent fiscal year; in
the United States alone, opposer sells approximately 2.3
billion donuts each year, and approximately 20 cups of
coffee every second; opposer’s sales revenues in fiscal
year 2000 were approximately $2.4 billion; and opposer
owns nine incontestable marks and a pending application.4

3 We note that in the notice of opposition, opposer also relied
on Registration No. 692,491, but opposer did not submit status
and title copies of that registration.
4 Serial No. 76/035,918, which matured into Registration No.
2,465,531. See footnote 2 herein.
Opposition No. 121,364
5
Our primary reviewing court, the Court of Appeals
for the Federal Circuit, recently reaffirmed the
importance of fame as a DuPont factor in the likelihood
of confusion analysis.5 See Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000).
Specifically, the Court in Recot stated that “[t]he
fifth DuPont factor, fame of the prior mark, when
present, plays a ‘dominant’ role in the process of
balancing the DuPont factors,” that “the fame of the
mark must always be accorded full weight when
determining the likelihood of confusion,” and that
“[w]hen a famous mark is at issue, a competitor must
pause to consider carefully whether the fame of the
mark, accorded its full weight, casts a ‘long shadow
which competitors must avoid,’” citing Kenner Parker
Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353,
22 USPQ2d 1453, 1457 (Fed. Cir. 1992).
The weight of the evidence persuades us that opposer
has established the fame of its DUNKIN’ DONUTS marks for
purposes of its Section 2(d) claim in this proceeding.
In addition, because applicant failed to timely
respond to opposer’s requests for admissions, applicant

5 In In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973), the court enumerated factors that may
be considered when relevant evidence is of record.
Opposition No. 121,364
6
also has admitted that the parties’ respective marks are
visually and phonetically similar, and the parties’
respective goods will be sold through identical
channels, will be advertised through the same channels,
and will directly compete with each other. See
Opposer’s Requests for Admissions Nos. 13-30.
In response to the summary judgment motion,
applicant argues there is no likelihood of confusion.
However, applicant has failed to identify any genuine
issue which would require resolution at trial. As noted
above, applicant has admitted the most pertinent factors
in the likelihood of confusion analysis, and opposer has
provided independent evidence regarding the fame of its
DUNKIN’ DONUTS marks.
In short, given opposer’s clear priority of use of
its DUNKIN’ DONUTS marks, the undisputed similarities
between the parties’ marks, the obviously similar nature
of the goods and services, and because opposer
established the fame of its pleaded marks for purposes
of this proceeding, we believe that there is no genuine
issue of material fact which would require a trial for
its resolution. We further believe that opposer has
shown that it is entitled to judgment as a matter of
law. Accordingly, opposer’s motion for summary judgment
Opposition No. 121,364
7
is granted, judgment is entered against applicant, the
opposition is sustained, and registration to applicant
is refused.
Finally, inasmuch as we find in favor of opposer on
the issues of priority and likelihood of confusion, and
because the application accordingly will be abandoned,
opposer’s dilution claim is moot.
Opposition No. 121,364
8
Attachment “A”
1. Registration No. 748,901 for DUNKIN’DONUTS for
restaurant services, registered April 30, 1963,
claiming May 15, 1950 as the date of first use and
July 7, 1956 as the first use in commerce, renewed
April 30, 1983, Section 8 & 15 affidavits accepted and
acknowledged, respectively.

2. Registration 976,137 for DUNKIN’ DONUTS and Design for
restaurant services, registered January 1, 1974,
claiming January 9, 1967 as the date of first use and
March 9, 1967 as the date of first use in commerce,
renewed January 1, 1994, Section 8 & 15 affidavits
accepted and acknowledged, respectively.

3. Registration 976,136 for DUNKIN’ DONUTS (stylized) for
restaurant services, registered January 1, 1974,
claiming January 9, 1967 as the date of first use and
March 9, 1967 as the date of first use in commerce,
renewed January 1, 1994, Section 8 & 15 affidavits
accepted and acknowledged, respectively.

4. Registration 907,303 for DUNKIN’ DONUTS (stylized) and
Design, for restaurant services, registered February
2, 1971, claiming January 9, 1967 as the date first
use and first use in commerce, second renewal February
2, 2001, Section 8 & 15 affidavits accepted and
acknowledged, respectively.

5. 897,088 for DUNKIN’ DONUTS and Design, for restaurant
services, registered August 18, 1970, claiming January
9, 1967 as the date of first use and March 9, 1967 as
the date of first use in commerce, second renewal
August 18, 2000, Section 8 & 15 affidavits accepted
and acknowledged, respectively.

6. Registration 888,360 for DUNKIN’ DONUTS (stylized) and
Design for doughnuts and doughnut flour, fruit
fillings for doughnuts, cookies, cakes and pies,
vegetable oil, shortening, and coffee, registered
March 24, 1970, claiming January 9, 1967 as the date
of first use and March 9, 1967 as the date of first
use in commerce, second renewal March 24, 2000,
Section 8 & 15 affidavits accepted and acknowledged,
respectively.

Opposition No. 121,364
9
7. Registration 1,159,354 for DUNKIN’ DONUTS for plain,
glazed, coated and filled fried cakes, muffins and
coffee for consumption on or off the premises,
registered June 30, 1981, claiming June 20, 1976 as
the date of first use and August 15, 1976 as the date
of first use in commerce, renewed June 30, 2001,
Section 8 & 15 affidavits accepted and acknowledged,
respectively.

8. Registration 1,567,400 for DUNKINS for filled pastry,
namely, hot-dog-shaped pastry with apple filling for
consumption on or off the premises, registered
November 21, 1989, claiming March 26, 1974 as the date
of first use and first use in commerce, renewed
November 21, 1999, Section 8 & 15 affidavits accepted
and acknowledged, respectively.

9. Registration 1,154,129 for DUNKIN’ for fruit-flavored
non-carbonated punches for consumption on or off the
premises, registered May 12, 1981, claiming June 17,
1977 as the date of first use and first use in
commerce, Section 8 & 15 affidavits accepted and
acknowledged, respectively.

10. Registration 2,465,531 for DUNKIN’ DONUTS for bakery
goods and desserts, doughnuts, cookies, cakes and
pies, registered July 3, 2001, claiming November 1999
as the date of first use and first use in commerce.

11.Registration 692,491 for DUNKIN’ DONUTS for doughnuts
and doughnut flour, fruit fillings for doughnuts,
cookies, cakes and pies, vegetable oil, shortening and
coffee, registered February 2, 1960, claiming May 1952
as the date of first use and first use in commerce.
Office records show that this registration was cancelled
on February 17, 2001.