Rudi’s Organic Bakery, Inc.

Trademark Trial and Appeal Board

May 16, 2012

No. 85025734 (T.T.A.B. May. 16, 2012)

Mailed: May 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rudi’s Organic Bakery, Inc.
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Serial Nos. 85025722 and 850257341
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Lawrence A. Swain, Polsinelli Shughart PC, for Rudi’s
Organic Bakery, Inc.

Rebecca Smith, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Holtzman, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Rudi’s Organic Bakery, Inc. filed applications to
register the marks and RUDI’S GLUTEN-FREE BAKERY in
standard characters for goods identified as “bakery
products for the natural food, health food, food service
and retail markets” in International Class 30.2 Applicant

1 In view of the similar issues presented by these applications,
we consider the appeals in one decision.

2 Application Serial Nos. 85025722 and 85025734 respectively,
filed April 28, 2010, alleging a bona fide intention to use the
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 85025722 and 85025734
2
disclaimed the wording “GLUTEN-FREE BAKERY” in both
applications. In addition, applicant claims ownership of
prior Registration Nos. 3025366 for the standard character
mark RUDI’S ORGANIC BAKERY and 3077180 for the standard
character mark RUDI’S ORGANIC BAKERY RIGHT CHOICE for the
identical goods, namely, “bakery products for the natural
food, health food, food service and retail markets.” The
wording “ORGANIC BAKERY” is disclaimed in both prior
registrations.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s marks, when used on its identified goods, so
resemble each of the two registered marks as to be likely
to cause confusion, mistake or deception. The two
registered marks are 3 and the typed form mark
RUDI’S4 both for “bakery products” in International Class
30. Signature Breads, Inc. is the listed owner by
assignment of both of the registrations.

marks in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. §1051(b).

3 Registration No. 1735089, issued on November 24, 1992, Section
8 and 15 declaration accepted and acknowledged, renewed. The
lining is claimed as a feature of the mark and not to indicate
color.

4 Registration No. 1809406, issued on December 7, 1993, Section 8
and 15 declaration accepted and acknowledged, renewed.
Serial Nos. 85025722 and 85025734
3
When the refusals were made final, applicant appealed
and briefs have been filed. We affirm the refusals to
register as to each of the cited registrations.
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
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).
We find that registrant’s “bakery products” encompass
applicant’s more specifically identified goods “bakery
products for the natural food, health food, food service
and retail markets” and, as such, are legally identical.
Moreover, because the goods are legally identical, we must
presume that they travel in the same channels of trade and
are offered to the same classes of purchasers. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
Serial Nos. 85025722 and 85025734
4
1783 (Fed. Cir. 1987) (If the identification in an
application or a cited registration describes goods or
services broadly, and there is no limitation as to the
nature, type, channels of trade or class of purchasers, it
is presumed that the registration encompasses all goods or
services of the type described, that they move in all
channels of trade normal for these goods and services, and
that they are available to all classes of purchasers for
the described goods and services.) See also In re Smith
and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Thus, in view of
the absence of any restrictions in the cited registrations,
we presume that registrant’s goods include all bakery
products and all the normal trade channels for such
products, including the natural and health food markets.
Applicant’s arguments regarding registrant’s actual goods
and trade channels, i.e., partially baked frozen dinner
rolls sold at the wholesale level to restaurants, are not
relevant to our determination.
We also find that applicant’s identification is not
limited to the natural and health food trade channel
inasmuch as the wording “food service and retail markets”
are additional descriptors for the “bakery products” and
are themselves not limited by the preceding descriptors of
the “bakery products” namely “natural food, health food.”
Serial Nos. 85025722 and 85025734
5
Moreover, the natural and health food market could include
any conventional retail food store, as recognized by
applicant: “Applicant’s fully-baked, ready to eat products
are packaged for retail sale and primarily sold to natural
food distributors and then distributed for retail sale to
consumers through natural and conventional food stores.”
App. Br. p. 11.
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade, and classes
of purchasers favor a finding of likelihood of confusion as
to the cited registrations.
With regard to the conditions of sale, applicant
breaks down the potential purchasers into the wholesale
buyers and “health conscious individuals and/or those with
specific dietary restrictions.” Again, because the
respective identifications are not limited to the wholesale
market, we must consider all potential purchasers and we
must make our determination based on the least
sophisticated purchaser. As to the “health conscious”
consumers, while they may take more care in purchasing
their bakery goods, there is no evidence in the record to
support a finding that this factor would outweigh all the
other du Pont factors. This case does not present
circumstances similar to those wherein sophisticated
Serial Nos. 85025722 and 85025734
6
purchasing outweighs the other factors. See, e.g., Elec.
Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d
713, 21 USPQ2d 1388, 1402 (Fed. Cir. 1992).
We turn then to the du Pont factor of the similarity
of the marks, i.e., whether applicant’s marks and
RUDI’S GLUTEN-FREE BAKERY and registrant’s marks
and RUDI’S are similar or dissimilar when
compared in their entireties in terms of appearance, sound,
connotation and commercial impression. In making our
determination, we keep in mind that the more closely
related the goods are, “the degree of similarity [between
the marks] 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, 1701
(Fed. Cir. 1992).
It is well settled that marks must be considered in
their entireties, not dissected or split into component
parts and each part compared with other parts. It is the
impression created by the involved marks, each considered
as a whole, that is important. See Kangol Ltd. v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992). However, “[t]hat a particular feature is
Serial Nos. 85025722 and 85025734
7
descriptive [or otherwise lacking in distinctiveness] ...
with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a
portion of a mark...” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s marks incorporate the entirety of
registrant’s typed form mark and the dominant element of
registrant’s mark that includes a background design.
Moreover, the dominant element in both of applicant’s marks
is the word RUDI’S. It is the first word in both marks and
the additional disclaimed wording “GLUTEN-FREE BAKERY”
merely describes a significant feature of the bakery
products. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). In addition, with regard to the design
mark, the word RUDI’S dominates over the design. In re
Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987) (wording often dominates over design because it is
the wording that purchasers would use to refer to or
request the goods).
Thus, viewing the marks in their entireties,
applicant’s mark is very similar in sound, appearance,
connotation and commercial impression to each of the
registrant’s marks.
Serial Nos. 85025722 and 85025734
8
Applicant’s argument “that the extensive use of
‘RUDI’S’ and similar terms as a portion of third parties’
marks dictates that the Registered Marks are weak deserving
only weak protection,” is not supported by the record.
Applicant submitted search results from a trademark search
firm database showing third-party registrations for various
food items. However, absent evidence of actual use of
those marks, the third-party registrations are entitled to
little weight in our likelihood of confusion analysis. AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
1406, 177 USPQ 268, 269-70 (CCPA 1973) (existence of third-
party registrations not evidence of what happens in the
market place or that customers are familiar with term nor
should the existence on the register of confusingly similar
marks aid an applicant to register another likely to cause
confusion, mistake or to deceive). In addition, none of
the third-party registrations are for similar goods, i.e.,
bakery products.
Applicant also argues that its applied-for marks are
“substantially similar to [its] Organic Bakery Marks that
have been in use in commerce continuously since as early as
2001 ... Thus, there has been concurrent existence of the
parties and their marks for over nine years without
confusion.” App. Br. p. 17. First, the inquiry here is
Serial Nos. 85025722 and 85025734
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likelihood of confusion, not actual confusion. HRL
Associates Inc. v. Weiss Associates Inc., 12 USPQ2d 1819,
1824 (TTAB 1989) aff’d, 14 USPQ2d 1840 (Fed. Cir. 1990).
The Court of Appeals for the Federal Circuit has observed,
“A showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of
confusion. The opposite is not true, however. The lack of
evidence of actual confusion carries little weight, J.C.
Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 964, 144
USPQ 435, 438 (CCPA 1965), especially in an ex parte
context.” In re Majestic Distilling Co., Inc., 65 USPQ2d
at 1205. Thus, regardless of the evidence, an ex parte
proceeding is ill-equipped for a fair determination
inasmuch as the registrant does not have an opportunity to
defend its registration.
Further, lack of actual confusion with applicant’s
other marks does not establish lack of actual confusion or
no likelihood of confusion with the marks at issue in these
appeals. Moreover, even if that were so, based on
applicant’s statements that the registrant and applicant do
not offer their goods in the same trade channels, it
appears that there has not been a meaningful opportunity
for confusion to occur.
Serial Nos. 85025722 and 85025734
10
Finally, applicant presented a prior consent agreement
between applicant’s and registrant’s predecessors in
interest regarding their respective use and registration of
certain marks. This agreement allowed for the registration
of applicant’s prior registrations for the marks RUDI’S
ORGANIC BAKERY and RUDI’S ORGANIC BAKERY RIGHT CHOICE. The
pertinent parts of the agreement are set forth below:
Rudi’s Organic is the owner of an existing
federal trademark registration for the mark
RUDI’S BAKERY, Registration No. 1913592, and is
also the owner of a pending trademark application
for RUDI’S ORGANIC BAKERY, Serial No. 76/585452,
for “bakery products for the natural food, health
food, food service and retail markets” in
International Class 30, and a pending trademark
application for RUDI’S ORGANIC BAKERY RIGHT
CHOICE, Serial No. 76/585453, for “bakery
products for the natural food, health food, food
service and retail markets” in International
Class 30. ...

Both parties believe there is no likelihood of
confusion or conflict between the marks and their
respective uses as described in the Recitals
above. ...

Rudi’s Organic agrees not to use or seek to
register RUDI’S standing alone in connection with
bakery products. Rudi’s Organic agrees not to
renew its registration for RUDI’S BAKERY,
Registration No. 1913592 which expires on August
22, 2005. ...

Each party agrees not to oppose or seek to cancel
any application or registration of the other, so
long as said application or registration is
consistent with the terms of this Agreement, and
Pillsbury hereby consents to the use and
registration of RUDI’S ORGANIC BAKERY, ... and
RUDI’S ORGANIC BAKERY RIGHT CHOICE, ... .
Serial Nos. 85025722 and 85025734
11
Pillsbury also consents to the use and
registration of any other marks by Rudi’s Organic
that include the words “RUDI’S ORGANIC BAKERY,”
so long as such other marks do not include
additional words that infringe on the other
trademarks of Pillsbury.

Request for Reconsideration (March 15, 2011) (emphasis
added).
A consent agreement is “one factor to be taken into
account with all of the other relevant circumstances
bearing on the likelihood of confusion referred to in
§2(d).” In re N.A.D. Inc., 754 F.2d 996, 224 USPQ2d 969,
971 (Fed. Cir. 1985). In addition, depending on the
circumstances, consent agreements carry great weight. In
re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071,
1072 (Fed. Cir. 1993) citing Bongrain Int’l (Am.) Corp. v.
Delice De France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1778
(Fed. Cir. 1987).
In this case, the agreement does not extend to
applicant’s marks that do not include the wording “RUDI’S
ORGANIC BAKERY.” Thus, based on the circumstances
presented here the consent agreement does not outweigh the
other du Pont factors.
In balancing the relevant du Pont factors in this
case, we find that because the marks are very similar, the
goods are legally identical, the channels of trade and
Serial Nos. 85025722 and 85025734
12
classes of consumers are the same, confusion is likely
between applicant’s mark and the marks in the cited
registrations. To the extent there are any doubts, we
resolve them, as we must, in favor of the registrant. In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.