London Dairy Company Limited

Trademark Trial and Appeal Board

Dec 2, 2005

No. 76311561 (T.T.A.B. Dec. 2, 2005)

Mailed: December 2, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re London Dairy Company Limited
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Serial No. 76311561
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Dyann L. Kostello and Ariana G. Voigt of Michael Best &
Friedrich LLP for London Dairy Company Limited.

Elizabeth A. Hughitt, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
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Before Chapman, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
London Dairy Company Limited (a United Kingdom
company) filed on September 13, 2001, an application to
register on the Principal Register the mark shown below

for “ice creams” in International Class 30. The
application is based on (i) Section 1(b) of the Trademark
Act, 15 U.S.C. §1051(b), applicant’s assertion of a bona
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76311561
2
fide intention to use the mark in commerce, and (ii)
Section 44 of the Trademark Act, 15 U.S.C. §1126,
applicant’s ownership of United Kingdom Registration No.
2276382. Applicant disclaimed the term “dairy.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark shown below

for “dairy products, namely, packaged milk, cream and
cottage cheese” in International Class 29 and “ice cream”
in International Class 30.2
Applicant appealed, and briefs have been filed.
Applicant did not request an oral hearing.
Preliminarily, we address applicant’s strongly-urged
request that the Board reverse the Examining Attorney’s
refusal to register “because a prior Examining Attorney had
already approved this mark, rendering the new Examining

1 Applicant agreed to disclaim the word “dairy” in its brief on
appeal (p. 6), and the Examining Attorney accepted the disclaimer
(brief, p. 2).
2 Registration No. 1387655, issued March 25, 1986 to London’s
Farm Dairy, Inc. (a Michigan corporation); Section 8 affidavit
accepted, Section 15 affidavit acknowledged.
Ser. No. 76311561
3
Attorney’s absolute refusal to register unfair and unduly
burdensome to Applicant.” (Applicant’s brief, pp. 1-3.)
The Examining Attorney asserts that applicant’s
position is understandable, but it is insufficient to
warrant a withdrawal of the refusal to register; and that
the previous handling of the application (including an
erroneous reference to a prior pending application,
apparent misunderstanding of applicant’s response to the
disclaimer requirement, overlooking the question of the
applicant’s entity and stippling on the drawing) warranted
a careful review of all issues in this application,
including the prior Examining Attorney’s withdrawal of the
Section 2(d) refusal.
TMEP §713.01 (4th ed. 2005) reads as follows: “When
assigned to act on an application that was previously
handled by a different examining attorney, the examining
attorney should not take an approach that is entirely
different from that of the previous examining attorney
unless it is clearly appropriate to do so.” (Emphasis
added.)
In the circumstances of this application, i.e.,
involving certain apparent errors in the examination by the
first Examining Attorney, and the nature of the marks
(particularly the word portions) and the identical and
Ser. No. 76311561
4
related goods, it was clearly appropriate for the current
Examining Attorney to reinstate the refusal to register the
mark under Section 2(d). Thus, applicant’s request that
the reinstated refusal to register under Section 2(d) be
reversed as it is “unfair” and “burdensome” to applicant is
denied.
We now consider the merits of the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the goods.
Applicant’s identified goods “ice creams” and the cited
registrant’s identified item “ice cream” are legally
identical. Moreover, the remainder of the cited
Ser. No. 76311561
5
registrant’s identified goods, “packaged milk, cream and
cottage cheese” are related to applicant’s “ice creams,” as
indicated by the third-party registrations, based on use in
commerce, made of record by the Examining Attorney. See,
for example, Registration No. 2066481 for, inter alia,
“milk,” “cottage cheese” and “ice cream”; Registration No.
2325294 for, inter alia, “milk,” “cottage cheese” and “ice
cream”; Registration No. 2387189 for, inter alia, “milk,”
“cottage cheese, “cream” and “ice cream”; and Registration
No. 2752039 for, inter alia, “milk” and “ice cream.” See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
Applicant did not argue the issue of the goods, and we
find that the identified goods are in part identical, and
are otherwise related. Likewise applicant did not argue,
and we do not find, any differences in the channels of
trade or purchasers. We must presume, given the
identifications (neither of which is limited), that the
goods are offered through the same channels of trade to the
same classes of purchasers. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). In addition, these products are neither
expensive nor purchased with a great degree of care.
Ser. No. 76311561
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Turning to the marks, our primary reviewing Court has
stated the following: “[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).
Applicant argues that the marks LONDON’S with a design
including a barn, and LONDON DAIRY with a design including
the London Bridge, are dissimilar in sound and appearance;
that the registered mark is a possessive term relating to
either a person named London or that the goods are owned by
the city of London, while applicant’s mark does not have
those connotations; that the design features of the two
marks create different commercial impressions with the
registered mark suggesting “straight-from-the-farm fresh”
and applicant’s design feature suggesting “the feel of a
city or urban environment” (brief, p. 4); that the unique
designs coupled with the differences in the word portions
of the marks renders confusion unlikely; and that the
Examining Attorney’s focus on the word LONDON and LONDON’S
constitutes an improper dissection of the marks.
The Examining Attorney argues that the words are the
dominant portions of both marks; that the minor differences
Ser. No. 76311561
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in the word portions are not sufficient to obviate a
likelihood of confusion; that the possessive form of a term
remains highly similar to the term itself; that the
addition of the highly descriptive, if not generic, term
“dairy” to applicant’s mark does not obviate the likelihood
of confusion; that registrant’s website includes a customer
e-mail in which the customer states “The members of our
team always stop here for ice cream after the tournament in
Port Huron. While we all know it fondly as ‘The London
Dairy’…”; that while the design features are not the same,
nonetheless, it is the word portion of a mark that is
generally used by consumers to call for the goods; that the
London Bridge design in applicant’s mark is particularly
small, and the farm scene in the registered mark is simply
suggestive in the context of dairy products; that, as
applicant acknowledges (brief, p. 3), LONDON’S could be
perceived by consumers as relating to the city of London,
and the London Bridge design in applicant’s mark would
likewise have consumers thinking of the city of London;
that, when considered as a whole, the marks are similar;
and that doubt on the issue of likelihood of confusion is
resolved in favor of registrant.
It is well settled that marks must be considered in
their entireties because the commercial impression of a
Ser. No. 76311561
8
mark on an ordinary consumer is created by the mark as a
whole, not by its component parts. This principle is based
on the common sense observation that the impression is
created by the purchaser’s cursory reaction to a mark in
the marketplace, not from a meticulous comparison of it to
others to assess possible legal differences or
similarities. See 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:41 (4th ed. 2005).
See also, Dassler KG v. Roller Derby Skate Corp., 206 USPQ
255 (TTAB 1980). The proper test in determining likelihood
of confusion does not involve a side-by-side comparison of
the marks, but rather must be based on the similarity of
the general commercial impressions engendered by the
involved marks.
In this case, applicant’s mark is LONDON DAIRY and
design and registrant’s mark is LONDON’S and design. The
marks are highly similar in sound, and it is the words or
literal portions of the marks (LONDON DAIRY and LONDON’S)
that would be utilized in calling for the goods. See In re
Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).
The design feature in applicant’s mark consists of a
curved carrier design and a small stylized design of a
bridge, while registrant’s design feature is that of a barn
with trees and silos appearing above a black banner
Ser. No. 76311561
9
carrying the word LONDON’S, all inside an oval or circle.
Obviously these are different designs, but we must keep in
mind, as stated previously, that the proper test in
determining likelihood of confusion is not on a side-by-
side comparison of the marks. Rather, the determination
must be based on the recollection of the purchasers, who
normally retain a general rather than specific impression
of the many trademarks encountered; that is, a purchaser’s
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
In connotation, both marks suggest the city of London.
Further, the Examining Attorney has made of record an on-
line dictionary definition of the word “dairy” as “1. A
commercial establishment for processing or selling milk and
milk products. 2. A place where milk and cream are stored
and processed 3. A dairy farm ….” Clearly, the term
“dairy” in applicant’s mark and the farm design in
registrant’s mark both connote a dairy and/or dairy farm,
particularly in the context of the involved goods.
When the marks are considered in their entireties, the
differences identified above are not sufficient to obviate
Ser. No. 76311561
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a likelihood of confusion between these marks, LONDON DAIRY
and design and LONDON’S and design. See In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed.
Cir. 2004); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993); and In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Considering all of the relevant du Pont factors in
this case, that is, identical and closely related goods,
identical trade channels and purchasers, low-cost impulse
purchasing, and similar marks, we conclude that consumers
familiar with registrant’s ice cream and other dairy
products offered under the mark LONDON’S and design would
be likely to believe, upon encountering the mark applicant
asserts it has an intention to use, LONDON DAIRY and design
for ice creams, that both originate with or are somehow
associated with or sponsored by the same entity.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.