Toymax Inc.

Trademark Trial and Appeal Board

Jan 17, 2002

No. 75596667 (T.T.A.B. Jan. 17, 2002)

1/17/02

Paper No. 11
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Toymax Inc.
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Serial No. 75/596,667
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Frank J. DeRosa and Monica B. Richman of Brown Raysman
Millstein Felder & Steiner LLP for Toymax Inc.

Zhaleh Delaney, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______

Before Seeherman, Hanak and Wendel, Administrative
Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:

Toymax Inc. has filed an application to register the
mark CANDY PLANET for a “house mark for a full line of
candy, ice cream and frozen confections sold separately and
as a unit with toys.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of

1 Serial No. 75/596,667, filed November 24, 1998, based on an
allegation of a bona fide intention to use the mark in commerce.
A disclaimer has been made of the word CANDY.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/596,667
2
confusion with the mark COOKIE PLANET which is registered
for “bakery products, namely, cakes, cookies, pastries,
breads, brownies, blondies and muffins; confectioneries,
namely, fudge.”2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs.3 An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont4 factors that are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used, or are intended to be used. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976); In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999).
Looking first to the respective marks, we are guided
by the well-established principle that although the marks
must be considered in their entireties, there is nothing

2 Registration No. 2,171,615, issued July 7, 1998. A disclaimer
has been made of the word COOKIE.
3 The Examining Attorney’s request for a continuance and the
acceptance of her brief, which was filed late because of a mix-up
in Office procedure, is granted.
4 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/596,667
3
improper, under appropriate circumstances, in giving more
or less weight to a particular portion of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Moreover, although descriptive or disclaimed
matter cannot be ignored in comparing the marks, it is also
a fact that consumers are more likely to rely on the non-
descriptive portion of a mark as an indication of source.
See Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993).
We are in agreement with the Examining Attorney that
the dominant feature of both applicant’s and registrant’s
marks is the term PLANET. The additional term in each is
no more than the generic term for the goods with which the
mark is being used, or is intended to be used, and as such
has little source-indicating significance. While the
presence of the additional term, COOKIE or CANDY, in the
marks leads to obvious differences in the appearance and
sound of the marks as a whole, the overall commercial
impressions created by the marks are very similar. Both
consist of the generic term for the goods followed by the
term PLANET. Moreover, and as discussed further below,
there is even a similarity in the generic terms, in that
both are for sweet items which bear a relationship to each
other.
Ser No. 75/596,667
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Applicant’s contention is that the term PLANET has
been used frequently in marks in connection with food
products, making registrant’s mark COOKIE PLANET a weak
mark which is entitled to only a narrow scope of
protection. On this basis, applicant argues that the
overall differences in the respective marks are sufficient
to render confusion unlikely. To support its argument that
the PLANET portion of the mark is weak, applicant has made
of record seven third-party registrations for marks
including the term PLANET for baked goods, confectionary
items or closely related food products.
The third-party registrations may well show that in
the past PLANET has appealed to others in the foodstuffs
field as a desirable term for adoption as part of a mark.
These third-party registrations, however, are not evidence
of the use of the marks shown therein or of the extent to
which consumers are familiar with the marks so as to be
accustomed to the existence of PLANET-containing marks in
the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); Hilson
Research Inc. v. Society for Human Resource Management,
supra. Thus, the third-party registrations in themselves
are of little weight in determining likelihood of
confusion.
Ser No. 75/596,667
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Furthermore, upon reviewing the third-party
registrations, we find that there is no other mark which
follows the format of applicant’s and registrant’s marks,
namely, the generic term for the food product followed by
the term PLANET. In only two of these marks is PLANET
preceded by another term (COOL PLANET and CRAZY PLANET) and
neither of these is the generic term (or a recognized name)
for the goods. The remaining five (PLANET LUNCH, PLANET
ONE, PLANET C, PLANET SWEETS AND PLANET BAGEL) all follow a
different word order and even those containing a generic
term for the goods create different commercial impressions
from applicant’s mark because of this word order.
Applicant’s arguments with respect to the co-allowance by
the Office of these various third-party marks on the
register is irrelevant to the issue at hand. The question
is whether confusion is likely between applicant’s mark
CANDY PLANET and registrant’s mark COOKIE PLANET. We find
no evidence of record to support applicant’s conclusion
that the public has been exposed to so many PLANET-
containing marks for various food products that it is
capable of distinguishing these marks, even if as similar
in commercial impression as applicant’s and registrant’s
marks.
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Turning to the goods involved, we note that as a
general principle, the issue of likelihood of confusion
must be determined on the basis of the goods as identified
in the application and the cited registration. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). It is not necessary
that the goods of registrant and applicant be similar or
even competitive to support a holding of likelihood of
confusion. It is sufficient if the respective goods are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used thereon,
give rise to the mistaken belief that they emanate, or are
associated with, the same source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993) and the cases cited
therein. If there are no restrictions in the application
or registration as to channels of trade, the parties’ goods
must be assumed to travel in all the normal channels of
trade for goods of this nature. See Kangol Ltd. v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992).
As pointed out by the Examining Attorney, the
respective goods are in part identical, in that
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registrant’s goods include the confection fudge, which, as
shown by evidence made of record by the Examining Attorney
and as commonly recognized, is a type of candy. As
identified, applicant’s candies may be sold separately or
as a unit with toys; there is no prerequisite that a toy be
part of the goods. Furthermore, applicant’s arguments that
its candies are sculpted and/or are used to fill toys in
the form of animated characters or human action stars are
to no avail, inasmuch as the identification of goods simply
lists the goods as “candy.”
Insofar as other goods of registrant are concerned,
registrant’s “cookies” cannot be limited, as applicant
attempts, to premium gift cookies with gourmet ingredients.
The identification of goods in the registration includes
“cookies,” without limitation as to type or content. The
question is whether a sufficient relationship exists
between the goods of applicant, which include candy, and
those of registrant, which include cookies, that customers
would be likely to believe that both originate from a
single source if similar marks are used thereon. We find
the copies of numerous third-party registrations made of
record by the Examining Attorney showing registration of
the same mark by a single entity for both candy and
cookies, and in many instances other bakery products as
Ser No. 75/596,667
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well, fully adequate to establish such a relationship.
While these registrations are admittedly not evidence of
use of the marks in commerce, they are sufficient to
suggest that these goods are ones which may be produced by
a single entity and marketed under the same mark. See In
re Albert Trostel & Sons Co., supra, In re Mucky Duck
Mustard Co., 6 USPQ2d 1467 (TTAB 1988). Accordingly, if
marks as similar in commercial impression as CANDY PLANET
and COOKIE PLANET are used on candy and cookies,
respectively, it may reasonably be presumed that customers
will mistakenly believe that the goods emanate from the
same source.
Applicant’s arguments with respect to differences in
the channels of trade can be given no weight. Regardless
of whether registrant presently offers its goods over an
Internet website for order by telephone or mail, there are
no restrictions in the identification of goods in the
registration limiting the channels of trade to this manner
of sale. Instead we must assume that registrant’s products
travel in all the normal channels of trade for goods of
this nature. This would include the same supermarkets or
retail outlets at which customers would find the candy and
frozen goods of applicant. No distinction can be drawn on
the basis of channels of trade.
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Moreover, the Examining Attorney has established that
a greater relationship exists between the goods of
applicant and registrant than that they are simply food
items which might be sold in the same markets. We are not
following any “per se” rule for food products in general.
Instead, it has been shown that these are the type of food
products which have been marketed by a single entity under
the same mark and thus may readily be assumed by customers
to emanate from a single source, a much closer relationship
than merely being food products found in the same stores.
Finally, we note that these are inexpensive food items
which would be purchased without any great degree of care
in their selection, making confusion more likely by the use
of similar marks thereon.
Accordingly, we find that confusion is likely.
Decision: The refusal to register under Section 2(d)
is affirmed.
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