Universal Rice Company Limited

Trademark Trial and Appeal BoardMar 6, 2012

No. 77760488 (T.T.A.B. Mar. 6, 2012)

Mailed: 3/6/12 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Universal Rice Company Limited ________ Serial No. 77760488 _______ John P. Murtaugh of Pearne & Gordon for Universal Rice Company Limited. Jeri Fickes, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Quinn, Zervas and Cataldo, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Universal Rice Company Limited filed, on June 16, 2009, an intent-to-use application to register the mark shown below THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser. No. 77760488 2 (“HEALTHY GRAIN” disclaimed) for “rice” (in International Class 30). The application includes the following statement: “The English translation of ‘SAWAT-D’ in the mark is HELLO.” The mark is described in the application as follows: Color is not claimed as a feature of the mark. The mark consists of the stylized words “SAWAT-D” in a tilted rounded corner triangle above the stylized words “HEALTHY GRAIN,” one on top of the other, with the “R” in “GRAIN” resembling a leaf. Emerging from the top of the “WA” in “SAWAT” is a design appearing to be a pair of cupped hands or a stylized staff of wheat. The dark rectangle against which the mark appears is background and is not intended to be part of the mark. The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when applied to applicant’s goods, so resembles the previously registered mark SAWATDEE BRAND (in standard characters) (“BRAND” disclaimed) for “dried fruit and vegetables” (in International Class 29)1 as to be likely to cause confusion. The registration includes the following statement: “The English translation of ‘SAWATDEE’ in the mark is Hello.” 1 Registration No. 3752875, issued February 23, 2010. Ser. No. 77760488 3 When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs. Applicant argues that the marks are “very dissimilar and distinct,” with applicant’s mark dominated by the words HEALTHY GRAIN. Applicant also points to the different spellings of SAWATDEE in the cited mark compared to SAWAT-D in its mark, and the presence of design features in its mark. Applicant further contends that the goods are not related. The examining attorney maintains that the marks are dominated by SAWAT-D and SAWATDEE, respectively, and that that this similarity outweighs the differences between the marks. As to the goods, the examining attorney asserts that dried fruits and vegetables, and rice are related food items; both types of items are sold by the same source under the same mark, and are sold through the same trade channels. In connection with these assertions about the goods, the examining attorney submitted copies of “representative” third-party registrations, and excerpts from “representative” third-party websites. 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 Ser. No. 77760488 4 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, however, 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 first focus our consideration on the du Pont factor of the similarity/dissimilarity between the marks. We must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Ser. No. 77760488 5 It is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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 consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). Where both words and a design comprise the mark (as in applicant’s mark), then the words are normally accorded greater weight because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a design and words, the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See also Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 Ser. No. 77760488 6 (Fed. Cir. 1983). In applicant’s mark, the literal portion of the mark, namely SAWAT-D HEALTHY GRAIN, is the dominant portion, and is accorded greater weight over the design features when comparing this mark with the cited mark. Further, with respect to this word portion of applicant’s mark, we give less weigh to the highly descriptive words HEALTHY GRAIN that have been properly disclaimed. In re Chatam Int’l. Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); and In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009). We say this recognizing, of course, the prominent size of the words HEALTHY GRAIN. In the case of applicant’s mark, however, the only distinctive literal portion of the mark is SAWAT-D. Insofar as registrant’s mark SAWATDEE BRAND is concerned, the word BRAND is disclaimed. Clearly, this word has no source-identifying function, and the cited mark is dominated by SAWATDEE. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed word “café” is less significant when comparing marks). Accordingly, the dominant portions, SAWAT-D and SAWATDEE, of the respective marks are identical in sound and, as evidenced by the translations, are identical in meaning (i.e., “hello”). The minimal difference in Ser. No. 77760488 7 appearance, due to spelling and the presence of a hyphen, is outweighed by the similarities. The hyphen in applicant’s SAWAT-D portion does not serve to distinguish this portion from registrant’s SAWATDEE portion of the cited mark. See Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042 (TTAB 1989) (PRO-PRINT is similar to PROPRINT); and Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.1 (TTAB 1978) (FAST-FINDER with hyphen is in legal contemplation substantially identical to FASTFINDER without hyphen). In discussing the dominant portion of the marks, we recognize, of course, that the marks ultimately must be compared in their entireties. When this comparison is made, we find that the marks are similar in sound, appearance and meaning. Because of the similarities between the marks, the marks engender similar overall commercial impressions. The similarity between the marks weighs in favor of a finding of likelihood of confusion. We next turn to consider the second du Pont factor regarding the similarity/dissimilarity between the goods. It is not necessary that the respective goods be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods are related in some Ser. No. 77760488 8 manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originated from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). We recognize that there is no per se rule requiring a finding of likelihood of confusion when both types of goods are food items. Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 927, 198 USPQ 151 (CCPA 1978). Contrary to the gist of applicant’s argument that a consumer intending to buy dried fruit and vegetables would not be misled by applicant’s mark to buy rice instead, the issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. There is an inherent relationship between rice and dried vegetables and fruit inasmuch as they may be used in the same dishes. Further, these complementary food items may be purchased at the same time during a single shopping trip by a consumer who is making such a dish. With respect to the relatedness of the goods, the examining attorney introduced twenty use-based third-party registrations, each showing a single mark registered for Ser. No. 77760488 9 both types of goods involved herein. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785- 86 (TTAB 1993). The examining attorney also submitted printouts of excerpts from three third-party websites showing that the same online retailer sold both types of goods, namely dried fruits and/or vegetables, as well as rice, under the same mark. A fourth third-party website of a supplier to the food-processing and catering industries shows the supplier claiming expertise in both the rice and dried vegetable processing industries. Insofar as the trade channels and classes of purchasers are concerned, we note that there are no limitations in either applicant’s or registrant’s identification of goods. Accordingly, we must presume that Ser. No. 77760488 10 the goods, as identified, are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). Thus, given the similarity between rice and dried fruits and vegetables, as shown by the examining attorney’s evidence, the goods would move through the same trade channels (e.g., grocery stores, online retailers, and the like) and would be purchased by the same classes of purchasers, including ordinary consumers. Because of the relatively inexpensive nature of rice, and dried fruits and vegetables, and the fact that such staples may be subject to frequent replacement and impulse purchase, the likelihood of confusion is increased. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.”). We find that the du Pont factors of similarity between the goods, identical trade channels and purchasers, and conditions of sale all weigh in favor of a finding of likelihood of confusion. Applicant’s argument that the different Office classification of the goods is “strong evidence that the Ser. No. 77760488 11 goods are not related” is ill founded. The determination regarding the proper classification of goods is a purely administrative determination unrelated to the likelihood of confusion analysis. Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993). See TMEP § 1207.01 (d)(v) (8th ed. 2011). In sum, the relevant du Pont factors weigh in favor of affirming the refusal. We conclude that consumers familiar with registrant’s dried fruits and vegetables sold under the mark SAWATDEE BRAND would be likely to believe, upon encountering applicant’s mark SAWAT-D HEALTHY GRAIN and design for rice, that the goods originate with or are somehow associated with or sponsored by the same entity. Lastly, to the extent that any of the points raised by applicant raise a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Decision: The refusal to register is affirmed.