R.S.V.P. International, Inc.

Trademark Trial and Appeal Board

Feb 27, 2012

No. 77840784 (T.T.A.B. Feb. 27, 2012)

Mailed:
February 27, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re R.S.V.P. International, Inc.
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Serial No. 77840784
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John R. Benefiel of Law Offices of John R. Benefiel for
R.S.V.P. International, Inc.

Kim Saito, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Seeherman, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

R.S.V.P International, Inc. has appealed from the
final refusal of the trademark examining attorney to
register R.S.V.P INTERNATIONAL, INC., in standard
characters, for goods ultimately identified as
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77840784
2
“hand tools, namely, manually operated tools for inserting
stuffing into olives; scissors for cutting fruits and
vegetables; hand tools, namely, fruit and vegetable wedge
cutters, egg slicers, potato ricers; hand operated fruit
and vegetable peelers, strawberry hullers, tomato hullers,
pizza cutters, ice tongs, mortar and pestles, cheese
slicers; hand tools, namely, coffee tampers, crab crackers,
saute tweezers” in Class 8. Applicant has disclaimed the
exclusive right to use INC. apart from the mark as shown,
and has also made a claim, under Section 2(f), of acquired
distinctiveness with respect to the work INTERNATIONAL.
The application, which was filed on October 3, 2009, is
based on Section 1(a) of the Trademark Act, and asserts
first use and first use in commerce as early as May 13,
1986.
The examining attorney has refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark so resembles
the mark RSVP in standard characters, registered for
“flatware” in Class 8,1 that applicant’s use of its mark for

1 Registration No. 3597275, issued March 31, 2009. The
examining attorney initially refused registration on the basis of
this registration and two additional registrations, namely
Registration No. 2919304 for RSVP for dinnerware and beverage
glassware, and Registration No. 0807791 for R.S.V.P. for sterling
silver flatware. The latter registration is owned by the owner
of Registration No. 3597275 for RSVP for flatware. After
Ser No. 77840784
3
its identified goods is likely to cause confusion or
mistake or to deceive.
We must first address a procedural point. With its
appeal brief applicant has submitted exhibits that were not
made of record during the prosecution of the application,
namely, a response to an Office action that had been filed
during the prosecution of a third-party’s application that
issued as Registration No. 2919304 (Exhibit 4), and a
response filed during the prosecution of the application
which became the cited registration, No. 3597275 (Exhibit
5). Registration No. 2919304 had initially been cited by
the examining attorney as a bar to the registration of
applicant’s mark, but she subsequently withdrew that
refusal. The examining attorney has objected to our
consideration of these exhibits because they were not
timely filed. In its appeal brief applicant has requested
the Board to consider these exhibits “since they are
documents from the official file of the prior registrations
already of record.” Brief, p. 2. Applicant is not
correct. These documents are not of record. Although both
registrations had been cited against applicant’s

receiving the first Office action, applicant amended its
identification as listed above, “deleting those goods which
arguably overlap the goods of the cited registrations.” Response
filed June 18, 2010. The refusals based on Registration Nos.
0807791 and 2919304 were then withdrawn.
Ser No. 77840784
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application, that does not make the files of those
registrations, i.e., the papers in those files, of record.
Applicant also asks that, “if the Board considers such
exhibits to not be of record, suspension of the Appeal and
remand to the Examining Attorney for further examination is
respectfully requested.” Brief, p. 2. First, “burying” a
request for remand within a brief is not the appropriate
way to make such a request. Rather, a request for remand
should be filed by a separate paper captioned “Request for
Remand” so that Board staff will be made aware of the
request. In re HerbalScience Group LLC, 96 USPQ2d 1321
(TTAB 2010). Here, it was not until briefing had been
completed, including the filing of the examining attorney’s
brief and applicant’s reply brief, that applicant’s request
for remand has come to the Board’s attention. Second, a
request for remand must be supported by a showing of good
cause. See TBMP § 1209.04. Applicant has not made such a
showing. Accordingly, applicant’s request for remand is
denied. Further, because the examining attorney’s
objection is well taken, Exhibits 4 and 5 attached to
applicant’s brief have not been considered.
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
Ser No. 77840784
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forth in In re E. I. du 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). 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).
Turning first to the goods, we repeat the oft-cited
proposition that it is not necessary that the goods or
services be identical or even competitive in nature in
order to support a finding of likelihood of confusion, it
being sufficient that the goods or services are related in
some manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under circumstances that
would give rise, because of the marks employed thereon, to
the mistaken belief that they originate from or are in some
way associated with the same producer. In re Home Builders
Assn. of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990).
The examining attorney has submitted third-party
registrations to show that parties have adopted a single
Ser No. 77840784
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mark for the same types of goods as those of applicant and
the registrant. See, for example, Registration No. 3426485
for CHOISONS for, inter alia, fruit peelers, vegetable
peelers, egg slicers, cheese slicers, pizza slicers, and
tableware, namely knives, forks and spoons; Registration
No. 3785337 for TTU TABLETOPS UNLIMITED for, inter alia,
flatware, namely forks, knives and spoons, pizza cutters,
scissors, cheese slicers, cooking tongs; Registration No.
3865282 for KITCHEN LIVING for, inter alia, stainless steel
and plastic handled flatware, and pizza cutters;
Registration No. 3797348 for WE ALL LOVE TO EAT! for, inter
alia, cheese slicers, flatware, egg slicers, tongs, multi-
purpose shears, vegetable peelers and pizza cutters; and
Registration No. 3840242 for SERVING ELEBANCE for, inter
alia, cheese slicers and flatware. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In addition, the examining attorney has made of record
Internet webpages showing that the same companies sell
flatware and kitchen hand tools such as those offered by
applicant. The Cuisinart website, wwww.cuisinart.com,
Ser No. 77840784
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features flatware, various cooking tongs, vegetable
peelers, an egg slicer and a pizza cutter, all sold under
the same mark. Other websites show that these goods are
sold through the same channels of trade. For example, the
Sur La Table website, www.surlatable.com, features
flatware, “Food Mills & Mashers,” “Fruit & Vegetable Tools”
and vegetable peelers; the Bed Bath & Beyond website,
www.bedbathandbeyond.com, features mortar and pestles, egg
slicers, pizza cutters/wheels, and flatware; and the
Crate&Barrel website, www.crateandbarrel.com, features
pizza wheels, vegetable peelers, a cherry-olive pitter, a
strawberry huller, seafood scissors, an egg slicer, mortar
and pestle, and flatware.
The foregoing evidence persuades us that both
applicant’s and the registrant’s goods can be sold by the
same entities under a single mark, and that consumers can
encounter both types of products together. Moreover,
because applicant’s products are used for cooking,
preparing and serving food (in particular, in connection
with serving, cheese slicers, ice tongs and pizza wheels),
and flatware is also used in connection with serving and
eating food, we find that the goods are sufficiently
related that, if they were sold under similar marks,
confusion is likely to occur.
Ser No. 77840784
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Applicant has argued that the registrant’s goods are
“precious metal cutlery”, brief, p. 3, because “flatware in
class 08 is defined as being made of precious metal,” p. 2,
and that consumers would therefore not consider kitchen
tools and flatware to be related. However, applicant’s
argument is based on a flawed assumption. All flatware,
including flatware not made from or coated with precious
metal, is classified in Class 8. See Trademark Acceptable
Identification of Goods & Services. Thus, we must assume
that the cited registration encompasses all types of
flatware, including flatware made of base metal or
stainless steel. The du Pont factors of the similarity of
the goods and channels of trade favors a finding of
likelihood of confusion.
Similarly, because the identified “flatware” must be
deemed to include flatware not made of precious metal, we
cannot treat the customers for such goods to be
particularly careful or discriminating. Moreover, since
the kitchen tools and gadgets identified in applicant’s
application are inexpensive (for example, a Cuisinart
vegetable peeler is advertised at $7.99, and a pizza wheel
is listed on the Bed Bath and Beyond website for $4.99), a
purchaser of applicant’s goods cannot be assumed to be
particularly careful or sophisticated. Instead, a customer
Ser No. 77840784
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for these goods is not likely to deliberate over such
inexpensive items, and might buy them on impulse. The du
Pont factor of the conditions of purchase favors a finding
of likelihood of confusion.
We turn next to a consideration of the marks, keeping
in mind the well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, 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, we
find R.S.V.P. to be the dominant element in applicant’s
mark R.S.V.P. INTERNATIONAL, INC. The element INC., which
applicant has disclaimed, is simply a corporate entity
designator. The word INTERNATIONAL, although applicant has
claimed that this portion of the mark has acquired
distinctiveness through five years of substantially
exclusive and continuous use, still plays a subsidiary role
to R.S.V.P. As used in the mark R.S.V.P. INTERNATIONAL,
INC., INTERNATIONAL suggests that applicant is a company
that has an international presence. R.S.V.P. is the first
word in applicant’s mark, thereby being the portion that
Ser No. 77840784
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consumers are most likely to notice. See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondees En 1772,
396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered”). R.S.V.P. is also the portion
of the mark with the strongest source-indicating role.
Comparing applicant’s mark, R.S.V.P. INTERNATIONAL,
INC., with the cited mark, RSVP, the R.S.V.P and RSVP
portions are essentially equivalent. But for the fact that
there are periods in one mark and not in the other, they
are identical in appearance. They are also identical in
pronunciation and connotation. The definition of “RSVP”
made of record by the examining attorney states “Also,
R.S.V.P.,” showing that “RSVP” and “R.S.V.P.” are alternate
spellings.2 Further, as noted above, the additional
elements in applicant’s mark, INTERNATIONAL and INC., are
not sufficient to distinguish applicant’s mark from the
cited mark. They do not change the meaning or commercial
impression of applicant’s mark from RSVP, in the way that

2 Definition from Dictionary.com Unabridged, based on the Random
House Dictionary, 2009, http://dictionary.reference.com,
submitted with January 9, 2010 Office action.

Ser No. 77840784
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ALL and ALL CLEAR were found to have different meanings and
commercial impressions, Lever Brothers Co. v. Barcolene
Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972), or TIC TAC
and TIC TAC TOE, In re Ferrero, 479 F.2d 1395, 178 USPQ 167
(CCPA 1973). When the marks R.S.V.P INTERNATIONAL, INC.
and RSVP are considered as a whole, they are similar in
appearance, pronunciation, connotation and commercial
impression. This du Pont factor favors a finding of
likelihood of confusion.
In its reply brief applicant argues that the cited
registration is entitled to a narrow scope of protection,
basing this argument on the claim that there are two third-
party registrations for RSVP, Registration No. 2919304 for
flatware and No. 3597275 for dinnerware,3 and that the files
of those registrations show that the parties mutually
acquiesced in the respective uses by each other. Reply
brief, p. 1. As we have previously stated, the evidence
submitted by applicant with its appeal brief is not of
record. However, we feel compelled to comment on this
argument, which is so much the focus of applicant’s briefs,
although we will not discuss the underlying documents. We

3 As noted infra, applicant has misidentified these
registrations. Registration No. 2919304 is for dinnerware and
glassware, and Registration No. 3597275, which is the cited
registration, not a third-party registration, is for flatware.

Ser No. 77840784
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note that there seems to be some confusion in the facts
asserted by applicant, in that Registration No. 3507275 is
not a registration by a third party, but is the
registration cited against applicant’s mark. Moreover, the
registration is for flatware, not dinnerware. Given these
obvious misstatements by applicant, and the lack of any
evidence in support of its argument, we have difficulty in
giving applicant’s argument any weight at all. In its
appeal brief applicant asserts somewhat different facts,
stating that during the course of examination of the
application that resulted in Registration No 2919304 (which
the evidence of record shows is for RSVP for dinnerware and
beverage glassware), the owner of Registration No. 0807791
for R.S.V.P. for sterling silver flatware (which
registration is also owned by the owner of the registration
cited herein) provided a consent to the registration of
RSVP for dinnerware and beverage glassware.
Even if we accept that the owner of the cited
registration consented to the registration by a third party
for RSVP for dinnerware and beverage glassware, in no way
can this be considered a consent to the registration of
applicant’s mark for various kitchen tools. Thus, we are
not persuaded by applicant’s argument that “since the
parties in those applications agreed that there would be no
Ser No. 77840784
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confusion resulting from concurrent use of RSVP on their
respective goods, the Board should not find a likelihood of
confusion here as well since kitchen tools and gadgets and
flatware would likewise not thought to be related and
should not ‘second guess’ the conclusions of those most
familiar with the market.” Brief, p. 2. There has been no
conclusion by the registrant that applicant’s use of its
mark for its goods is not likely to cause confusion. As to
the registrant’s asserted consent to the registration by a
third party of RSVP for dinnerware and glassware, that does
not make the cited registration weak and entitled to a
limited scope of protection. It indicates only that, given
the particular marketing activities of that third party and
the registrant, the registrant concluded that confusion was
not likely to result. It does not show that this single
third-party use of RSVP affects the scope of protection to
which registrant’s registration is entitled.
Finally, applicant argues that it has been using its
mark since 1986 “with no difficulties with these other
parties.” Brief, p. 3. We assume that applicant is
relying on the du Pont factor of “the length of time during
and conditions under which there has been concurrent use
without evidence of actual confusion.” However, as the
Court stated in In re Majestic Distilling Co., 65 USPQ2d at
Ser No. 77840784
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1205, “the lack of evidence of actual confusion carries
little weight, especially in an ex parte context.”
(internal citation omitted). Here, although applicant
asserts use of its mark since 1986, and the cited
registration has a claimed used date of 2001, we have no
information about the manner in which applicant’s and the
registrant’s goods are marketed, or the extent of sales and
advertising, from which we could conclude that there has
been an opportunity for confusion to occur. This du Pont
factor, to the extent it favors applicant, is deserving of
lesser weight in the overall analysis.
Applicant and the examining attorney have not
presented argument or evidence on any other du Pont
factors. To the extent that any are relevant, we treat
them as neutral.
After weighing all of the arguments and evidence, we
find that the Office has met its burden in proving that
applicant’s mark R.S.V.P. INTERNATIONAL, INC. for various
kitchen tools is likely to cause confusion with RSVP for
flatware.
Decision: The refusal of registration is affirmed.