Sovex Foods, Inc.

Trademark Trial and Appeal Board

Aug 18, 1999

No. 75090114 (T.T.A.B. Aug. 18, 1999)

Paper No. 12
JER
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 18,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sovex Foods, Inc.
________
Serial No. 75/090,114
_______
Donald A. Kaul and Stephen G. Janoski of Dorsey & Whitney
LLP for applicant.
Jennifer D. Richard, Trademark Examining Attorney, Law
Office 101 (Christopher Wells, Acting Managing Attorney).
_______
Before Rice, Cissel, and Hohein, Administrative Trademark
Judges.
Opinion by Rice, Administrative Trademark Judge:
An intent-to-use application has been filed by Sovex
Foods, Inc. to register the mark RICE MOO (RICE disclaimed)
for “non-dairy, rice based powdered food beverage mix used
as a milk alternative.”1

1 Application Serial No. 75/090,114, filed March 29, 1996 under
the provisions of Section 1(b) of the Trademark Act of 1946, 15
U.S.C. §1051(b), based on applicant’s assertion of a bona fide
intention to use the mark in commerce. The identification of
goods originally read: “non-dairy, vegetable based food beverage
used as a milk alternative.” However, in its response, filed May
Ser. No. 75/090,114
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to its specified
goods, so resembles the mark SOY MOO (SOY disclaimed),
registered for “vegetable based milk substitute made from
soy beans,”2 as to be likely to cause confusion, or to cause
mistake, or to deceive. Applicant has appealed.
In support of the refusal to register, the Examining
Attorney has made of record photographs of certain shelves
in the non-refrigerated area of a grocery store, showing
that soy and rice based milk substitutes or alternatives in
both powdered and liquid form, including applicant’s RICE
MOO rice based powdered food beverage, are displayed on
adjacent shelves, with applicant’s product being displayed
directly above, inter alia, two liquid non-dairy drinks
offered by a single manufacturer under the marks SOY
SUPREME and RICE SUPREME.
Applicant relies on certain third-party applications
and registrations. In addition, applicant has submitted
the declaration of Micheal K. Ahlfeld, Vice President,

9, 1997, to the first Office action, applicant amended its
identification to read as indicated above. On July 31, 1997,
applicant filed an amendment to allege use asserting first use of
its mark, and first use of the mark in interstate commerce, on
May 13, 1996.
2 Registration No. 1,131,436 issued February 26, 1980; affidavit
Sec. 8 accepted; affidavit Sec. 9 received.
Ser. No. 75/090,114
3
Secretary, and Treasurer of applicant. Mr. Ahlfeld states
that applicant adopted the mark RICE MOO on May 13, 1996;
that applicant has used the mark continuously and very
extensively since that date; that sales of applicant’s RICE
MOO products exceeded $189,000 for the period between May
13, 1996 and July 29, 1997 (the date of the declaration);
that applicant has promoted its mark extensively,
particularly through print media; that applicant does not
segregate its advertising and promotional expenditures
among its product lines, but advertising expenditures for
applicant’s entire product line, including the RICE MOO
products, were in excess of $447,000 for the May 13, 1996-
July 29, 1997 period; that applicant’s RICE MOO products
and registrant’s SOY MOO products are clearly not
identical, nor are they sold or marketed together in any
manner which may potentially lead to possible purchaser
mistake or confusion; that the main ingredient of
applicant’s RICE MOO products is brown rice; that they
contain no soy; that the term MOO is in common use in the
food industry; that during the time that applicant has been
using the mark RICE MOO, it has never encountered any
instance of any confusion between the marks RICE MOO and
SOY MOO, or any instance in which someone indicated a
belief that applicant and registrant were related,
Ser. No. 75/090,114
4
connected, affiliated, or otherwise associated; and that
there is no reasonable likelihood of confusion in this
case.
Turning first to the goods, applicant contends that
they differ in that applicant’s RICE MOO products are rice
based while registrant’s SOY MOO product is soy based. It
appears that applicant also takes the position that
registrant's product is sold in liquid form from
refrigerated store shelving, while applicant’s product is
sold in powdered form from store shelves in the non-
refrigerated area.
It is well settled that the issue of likelihood of
confusion in a proceeding such as this must be determined
on the basis of the identification of goods set forth in
the application and in the cited registration. See, for
example, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997); Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); and Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In the present case, applicant’s identification specifies
that its goods are rice based and in powdered form, and
registrant’s identification specifies that its goods are
vegetable based and made from soy beans. However,
Ser. No. 75/090,114
5
registrant’s identification contains no limitation as to
form or as to the need for refrigeration. Under the
circumstances, we must presume for purposes herein that
registrant’s SOY MOO vegetable based milk substitute made
from soy beans is available in both liquid and powdered,
and both refrigerated and non-refrigerated, form, and thus
that applicant’s and registrant’s respective products may
be displayed on grocery store shelves in close proximity to
each other.
It is true that the involved goods of applicant and
registrant, as described in their respective
identifications, specifically differ in that one is rice
based and the other is soy based. However, the issue to be
determined under Section 2(d) of the Act is not whether the
goods are likely to be confused, but rather whether
purchasers are likely to be confused as to the source of
the goods. For this reason, it is not necessary that the
goods be similar or even competitive in order to support a
finding of likelihood of confusion. It is sufficient for
the purpose that the goods 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 could, because of the
marks used thereon, give rise to the mistaken belief that
Ser. No. 75/090,114
6
they originate from or are in some way associated with the
same source. See Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993). Here, we
have no doubt that the goods of applicant and registrant,
as identified in the application and registration, are so
closely related in nature that their contemporaneous
marketing under the same or similar marks would be likely
to cause confusion as to source.
Turning then to the marks, applicant has submitted
copies of four third-party registrations3 and three third-
party intent-to-use applications4 for marks that include the
term MOO for dairy or dairy substitute products.5 According
to applicant, the third-party registrations “support the
irrefutable fact that the word MOO is in wide use in the
food and beverages industry as a suggestive or highly
suggestive identifier of ‘dairy and dairy substitute

3 The registrations cover the mark NEW MOO for non-dairy, grain
based food beverage used as a milk substitute; MOO MILK (MILK
disclaimed) for milk; MOO-MANIA for flavored milk based food
beverages and mix for same; and CLUB MOO and cow design for
dairy-based food beverage consisting of yogurt and fruit juice.
4 The third-party applications cover the marks MOO KOOLER
ORANGESLIDE for orange flavored milk; FROSTY MOO for flavored
milk; and POWER MOO for milk-based beverages (application
abandoned). These applications constitute evidence only of the
fact that they were filed. As such, they have little probative
value herein.
5 Applicant also submitted copies of a number of third-party
applications and registrations for marks containing the word
CRUNCH for breakfast cereals. These applications and
registrations for different marks and goods than those involved
in this case have no real bearing on the issue before us.
Ser. No. 75/090,114
7
products’” and also “demonstrate that the trademark
significance attributable to the word MOO is clearly
diluted” in connection with such products.6 It is
essentially applicant’s contention that SOY MOO is an
inherently weak mark which is not entitled to a wide
latitude of protection, and that the mere presence in the
two marks here of the common, highly suggestive word MOO is
an insufficient basis on which to find a likelihood of
confusion.
The four third-party registrations are insufficient to
show that the term MOO is highly suggestive, commonly used,
and/or diluted as a trademark for non-dairy milk substitute
or alternative products. We note in this regard that the
registrations are not competent to establish, in and of
themselves, that the marks shown therein are in use, or
that purchasers are familiar with them. See AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268 (CCPA 1973). While Mr. Ahlfeld has stated in his
declaration that the term MOO is in common use in the food
industry, his broad conclusory statement is unsupported by
any specifics as to particular marks and goods, and/or by
examples thereof such as labels or advertisements. For all
we know, Mr. Ahlfeld’s statement may be based on the

6 Applicant’s appeal brief, pages 3 and 6.
Ser. No. 75/090,114
8
existence of the third-party registrations made of record
by applicant. We therefore find Mr. Ahlfeld’s declaration
inadequate to establish that the term MOO is commonly used
and/or diluted as a trademark for non-dairy milk substitute
or alternative products.
Nor do we find persuasive applicant’s argument that
the term MOO is highly suggestive, and thus very weak in
trademark significance, when used in connection with non-
dairy milk substitute or alternative products. A term is
considered suggestive if, when the goods or services in
question are encountered bearing the term, the potential
purchaser must use thought, imagination, perception, and/or
a multi-stage reasoning process to reach a conclusion as to
the nature thereof. See In re Mayer Beaton Corp., 223 USPQ
1347 (TTAB 1984), and In re Tennis in the Round Inc., 199
USPQ 496 (TTAB 1978). Here, we have no doubt that the
potential purchaser who encounters the term MOO used in
connection with non-dairy milk substitute or alternative
products must exercise imagination, thought, perception,
and a multi-stage reasoning process to reach a conclusion
concerning a characteristic of the goods. As noted by the
Examining Attorney, at page 5 of her brief:
MOO evokes thoughts of cows, because it is the
sound a cow makes. The goods, however, have
nothing to do with the sound a cow makes. Indeed,
Ser. No. 75/090,114
9
the goods do not even come from cows, but instead
are alternatives to dairy milk. This incongruity
about the term MOO when considered in the context
of the goods requires the use of imagination and
a multi-step reasoning process to determine what
characteristics the mark indicates.
Because of the incongruity involved in the term MOO as
applied to non-dairy milk substitute or alternative
products, we conclude that it is suggestive, not highly
suggestive, when used in registrant’s mark SOY MOO. As
such, it is a strong mark entitled to protection against
the registration of confusingly similar marks. See Maytag
Co. v. Luskin’s, Inc., 228 USPQ 747 (TTAB 1986), and In re
Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985).
Comparing applicant’s mark RICE MOO with registrant’s
mark SOY MOO, there are, of course, specific differences
between them in sound and appearance because of their
differing first words. Nevertheless, these marks are very
similar due to the fact that they (unlike any of the marks
in the third-party registrations made of record by
applicant) are similarly constructed. In each case the
term MOO, which is quite memorable and sets the tone for
the commercial impression created by the mark, is modified
by a descriptive term which names a primary ingredient of
the goods to which the mark is applied. Considering the
similarity between the marks, combined with the strength of
Ser. No. 75/090,114
10
registrant’s mark, the closely related nature of the goods,
and their similar channels of trade and classes of
purchasers, we fully agree with the Examining Attorney’s
conclusion (at page 4 of her brief) that “consumers are
likely to view the applicant’s and registrant’s marks as
indicating a single source for the goods and to ascribe the
differences in the marks to the different ingredients of
the goods, rather than the differences in the sources of
the goods.” Under the circumstances, we conclude that
there is, in this case, a likelihood of confusion. Cf. In
re Carnation Co., 196 USPQ 716 (TTAB 1977).
The fact that applicant has not encountered any
instances of actual confusion arising from the
contemporaneous use of the marks is not persuasive of a
different result. Although applicant has given us
information concerning the extent of its use, we do not
have any information concerning the nature and extent of
registrant’s use, and thus we cannot tell whether there has
been sufficient opportunity for confusion to occur if it
were going to. We also note, in this regard, that
applicant’s mark had only been in use for a little more
than a year at the time of Mr. Ahlfeld’s declaration, and
that there has been no opportunity herein for registrant to
be heard from as to whether it has experienced any
Ser. No. 75/090,114
11
instances of actual confusion. These factors materially
reduce the probative value of applicant’s declaration
evidence on the matter of actual confusion. Moreover, the
test under Section 2(d) of the Act is likelihood of
confusion, not actual confusion.
For the foregoing reasons, we find that the refusal to
register is well taken.
Decision: The refusal to register is affirmed.
J. E. Rice
R. F. Cissel
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
And Appeal Board
Ser. No. 75/090,114
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