The HMC Group Marketing, Inc.

Trademark Trial and Appeal Board

Jul 12, 2011

No. 77605955 (T.T.A.B. Jul. 12, 2011)

Mailed: July 12, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The HMC Group Marketing, Inc.
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Serial No. 77605955
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Marcia A. Tunheim of Law Offices of Marcia A. Tunheim for
HMC Group Marketing, Inc.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(K. Margret Le, Managing Attorney).
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Before Holtzman, Mermelstein, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

The HMC Group Marketing, Inc., applicant, seeks
registration on the Principal Register of the standard
character mark CHELSEA FARMS for goods ultimately
identified as “fresh fruits and vegetables” in
International Class 31.1 The term FARMS has been
disclaimed.

1 Application Serial No. 77605955, filed November 3, 2008, under
Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a); containing
allegations of first use anywhere on October 1, 2007, and in
commerce on May 5, 2008. At one point in the prosecution of the
application, applicant claimed the mark had acquired
distinctiveness under Section 2(f). The examining attorney then
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77605955

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Registration of applicant’s mark has been refused
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used on
its identified goods, so resembles the registered typed
character mark CHELSEA MARKET BASKETS for “processed
fruits, nuts and vegetables; fruit preserves, jams and
jellies; fish; milk, cream, cheese, and yogurt; olive oil;
nuts; potato chips,” in International Class 29,2 as to be
likely to cause confusion, mistake or deception. The
wording MARKET BASKETS has been disclaimed.
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. See

advised applicant that this claim was unnecessary because the
mark appears to be inherently distinctive and instructed
applicant that it may withdraw the claim. Applicant did not and
the Section 2(f) claim remains in the application record.
2 Registration No. 2780959 issued on November 11, 2003, Section 8
affidavit accepted and Section 15 affidavit acknowledged.

Serial No. 77605955

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Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We turn first to the marks at issue and, in doing so,
address applicant’s argument that the wording CHELSEA
MARKET is “geographically descriptive and [the registered
mark] is thus a weak mark.” Brief, p. 3. Applicant
contends that this wording “conveys a location where the
‘BASKETS’ originate,” namely, the Chelsea neighborhood of
Manhattan.3
As the examining attorney pointed out in his brief,
applicant’s assertion that the registered mark should be
afforded a narrower scope of protection because it is
“geographically descriptive” constitutes an impermissible
collateral attack on the cited registration. In an ex
parte setting, such as this proceeding, applicant cannot be
heard on matters such as this attack on the cited
registration. In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re Peebles Inc.,
23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP
§1207.01(d)(iv) (5th ed. 2007). And, while there is a
disclaimer of the wording MARKET BASKETS in the

3 Applicant points to language from the registrant’s web site
indicating that Registrant has a presence at the Chelsea Market
and its products are “inspired by the neighborhood in which we
call home.”

Serial No. 77605955

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registration, there is a presumption that the mark, as
whole, is distinctive. Accordingly, no further
consideration has been given to applicant’s arguments
regarding geographical descriptiveness.
As to the similarity or dissimilarity of the marks at
issue, we compare the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005).
The examining attorney argues that the marks are
similar because they both begin with CHELSEA and that this
term dominates both marks. He points out that the
additional terms that follow, namely, FARMS in applicant’s
mark and MARKET BASKETS in the cited registration, are
disclaimed because they are descriptive of the respective
goods. Accordingly, the examining attorney argues more
emphasis should be placed on the common element, CHELSEA.
As to connotation, the examining attorney argues that both
marks “convey a ‘country feel,’ [because] MARKET BASKETS
and FARMS suggest close relationship between fresh fruits
and vegetables and prepared fruits and vegetables and that
part of the mark.” Brief, (un-numbered) p. 5. Applicant,
on the other hand, argues that “the two word term (a
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‘place’), Chelsea Market, is the dominant portion of
Registrant’s mark, and not just the initial term,
‘Chelsea,’ alone as the [examining attorney] contends.”
Brief, p. 4.
We find that CHELSEA is the dominant element in the
parties’ two marks. The examining attorney is correct that
the remaining wording in each mark is descriptive (or
generic) for the respective identified goods and,
accordingly, less emphasis is placed on those terms in
determining the overall commercial impression of the marks.
CHELSEA, appearing first in both marks, is the term that
consumers will likely remember after encountering the marks
in connection with the identified goods. It is the element
with the strongest source-identifying capability in both
applicant and registrant’s marks. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
And, while some consumers may associate the term CHELSEA in
registrant’s mark with the neighborhood of Manhattan, the
primary significance of the mark is not geographic. The
registered mark may be used nationally, including parts of
the country where the Manhattan neighborhood will not be
called into the consumer’s mind. Most consumers are likely
to attribute the term CHELSEA in both registrant’s and
applicant’s marks as an arbitrary reference to something
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else, e.g., a girl’s given name, the neighborhood in
London, England, etc. With this in mind and given that the
marks are similar in overall appearance and sound, the
similarity of the marks factor weighs in favor of a
likelihood of confusion.
We have also considered the sixth du Pont factor that
requires us to consider any evidence pertaining to the
number and nature of similar marks in use on the same or
similar goods. In this regard, applicant submitted copies
of four registrations for marks containing the term CHELSEA
and, based thereon, argues that the examining attorney “is
mistaken in just focusing on the first term CHELSEA when
the rest of the elements are disclaimed and is mistaken in
finding the marks confusingly similar.” Brief, p. 7.
“The purpose of a defendant introducing third party
uses is to show that customers have become so conditioned
by a plethora of such similar marks that customers have
been educated to distinguish between different such marks
on the bases of minute distinctions.” Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1694 (quoting
Board opinion). However, applicant here has submitted
evidence of third-party registration, not use.
Registrations by themselves do not demonstrate actual use
of the marks or that consumers have even been exposed to
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said marks in connection with the goods and services
recited therein. And, perhaps more importantly, none of
the third-party registrations submitted by applicant covers
the same or even similar types of goods as those in the
subject application and cited registration. Consequently,
we cannot conclude that consumers have become “conditioned”
to distinguish between marks containing the term CHELSEA
when used on the fresh or processed fruit and vegetables at
issue here.
We now turn to the du Pont factors involving the
relatedness of the goods, channels of trade and classes of
consumers. As to the goods themselves, they need not be
identical or directly competitive in order for there to be
a likelihood of confusion. Rather, the respective goods
need only be related in some manner or the conditions
surrounding their marketing are such that they could be
encountered by the same purchasers under circumstances that
could give rise to the mistaken belief that the goods come
from a common source. In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Registrant’s “processed fruits...and vegetables; fruit
preserves, jams and jellies” and applicant’s “fresh fruit
and vegetables” are related in that they both comprise
potentially the same fruits and vegetables, albeit
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processed versus fresh. The eleven use-based third-party
registrations submitted by the examining attorney support
this finding because suggest that both fresh and processed
fruits and vegetables are likely to emanate from the same
source and be sold under the same mark. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). We further
note that neither registrant nor applicant has limited its
goods to any specific type of fruit or vegetables, and we
must therefore assume that while registrant’s goods are
“processed” and applicant’s are “fresh,” they will sell the
same fruits and vegetables. Likewise, the goods can be
found in the same channels of trade, e.g., grocery stores,
and purchased by the same consumers, including the general
public. Moreover, both processed and fresh fruit and
vegetables are products that are neither expensive or
require significant care by consumers when purchasing.
These factors all weigh in favor of a likelihood of
confusion.
Upon balancing all the relevant du Pont factors, and
giving each its appropriate weight, we find that consumers
already familiar with registrant’s CHELSEA MARKET BASKETS
in connection with processed fruit and vegetables are
likely to be confused as to source upon encountering
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applicant’s CHELSEA FARMS mark on fresh fruit and
vegetables.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.