Vepe Industria Alimentica Ltda.

Trademark Trial and Appeal Board

Oct 21, 1999

No. 75106443 (T.T.A.B. Oct. 21, 1999)

Paper No. 14
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 21, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Vepe Industria Alimentica Ltda.
________
Serial No. 75/106,443
_______
Robert C. Faber and Marc A. Lieberstein of Ostrolenk, Faber, Gerb
& Soffen, LLP for Vepe Industria Alimentica Ltda.
Jennifer D. Richard, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
_______
Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Vepe Industria Alimentica Ltda has filed an application
to register the mark NO "NO SUGAR, in the stylized format shown
below,
for "dietetic foods, namely candies without added sugar".1

1 Ser. No. 75/106,443, filed on May 20, 1996, which alleges a bona fide
intention to use the mark in commerce. The words "NO SUGAR" are
Ser. No. 75/106,443
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 goods, so resembles the
mark NO-NO, which is registered for "cookies,"2 as to be likely
to cause confusion, mistake or deception.3
Applicant has appealed. Briefs have been filed,4 but
an oral hearing was not requested. We reverse the refusal to
register.
Turning first to consideration of the respective goods
applicant argues that its dietetic candies "are distinct from
those sold under the cited registration in that they are sold for

disclaimed, and the lining is a feature of the mark and is not
intended to indicate color.
2 Reg. No. 1,664,286, issued on November 12, 1991, which sets forth
dates of first use of January 1980; combined affidavit §§8 and 15.
3 Although registration was also finally refused, pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that
applicant's mark is merely descriptive of its goods, such refusal was
withdrawn in view of applicant's submission of a disclaimer of the
words "NO SUGAR".
4 Although applicant, with its brief, submitted copies of several
third-party registrations for "marks which incorporate the 'NO'
designation" to show that such a designation "serves to suggest a
characteristic of the goods being sold," the Examining Attorney in her
brief has properly objected to consideration of such evidence as
untimely under Trademark Rule 2.142(d). Moreover, it should be
pointed out that a mere listing, from a commercial database, of
information concerning third-party registrations is insufficient to
make such registrations of record. See, e.g., In re Duofold Inc., 184
USPQ 638, 640 (TTAB 1974). The proper procedure, instead, is to
submit either copies of the actual registrations or the electronic
equivalents thereof, i.e., printouts of the registrations which have
been taken from the Patent and Trademark Office's own computerized
database. See, e.g., In re Consolidated Cigar Corp., 35 USPQ2d 1290,
1292 (TTAB 1995) at n. 3; In re Smith & Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) at n. 3 and In re Melville Corp., 18 USPQ2d 1386, 1388-89
(TTAB 1991) at n. 2. In any event, we hasten to add that even if such
evidence properly formed part of the record, it would make no
difference in the disposition of this appeal inasmuch as none of the
registrations is for a mark which consists of or includes the term
"NO-NO".
Ser. No. 75/106,443
3
a specified use and marketed to a special type of consumer." In
particular, applicant contends that customers for its goods
typically are persons "with diabetes or [those] having some other
dietary food requirement" and, as such, its customers "are
sophisticated and usually they are careful to examine the source
for their food purchases."5
We agree with the Examining Attorney, however, that the
respective goods are closely related. Not only are applicant’s
dietetic candies without added sugar and registrant’s cookies
(including dietetic cookies)6 both "snacks that will be sold to
the same customers in the same stores," but the Examining
Attorney has made of record over a dozen use-based third-party
registrations for marks which, in each instance, are registered

5 Applicant also raises the meritless argument that because the goods
set forth in the cited registration are identified only as "cookies,"
the "identification is unclear and indefinite as to the type and
nature of cookie being sold under the registered mark." Applicant
therefore maintains that it is "improper to extend the identification
of the goods to include dietetic candies," citing In re Trackmobile
Inc., 15 USPQ2d 1152, 1154 (TTAB 1990). However, as the Examining
Attorney correctly points out in her brief, the term "cookies," which
is set forth in numerous third-party registrations which are of
record, "is not an indefinite identification of goods" and thus
applicant’s reliance on Trackmobile, supra, "is inapposite."
Moreover, as the Examining Attorney further notes, "[t]he question is
whether cookies are sufficiently related to candies with no added
sugar [as] to create a likelihood of confusion when the respective
marks are used" and not whether the goods listed in the cited
registration are the same goods as those of applicant.
6 As the Examining Attorney properly observes, it is well established
that the issue of likelihood of confusion must be determined on the
basis of the goods as they are set forth in the involved application
and cited registration. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne Products Co.
v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Here, because registrant’s goods are broadly described, they
would encompass dietetic cookies as well as cookies for persons
without limited sugar or other dietary restrictions.
Ser. No. 75/106,443
4
for both "candy" and "cookies". In addition, four other use-
based third-party registrations list "dietetic candy" or "reduced
calorie candy," on the one hand, and "cookies" or "dietetic
cookies," on the other. While such registrations are not
evidence that the different marks shown therein are in use or
that the public is familiar with them, they nevertheless have
some probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may emanate
from a single source. See, e.g., In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6. In
view thereof, we find that applicant’s and registrant’s products
are closely related goods which would generally be sold through
the same channels of trade to the identical classes of
purchasers. If such products, therefore, were to be offered
under the same or substantially similar marks, confusion as to
the source or sponsorship thereof would be likely to occur.
Turning, then, to consideration of the marks at issue,
applicant asserts that, when considered in their entireties, its
stylized NO "NO SUGAR mark and registrant's NO-NO mark are
different in sound, appearance and connotation and create
distinctly different commercial impressions. Specifically,
applicant contends that "the presence of the term 'no no' alone,
which is the only common feature of the respective marks, is an
insufficient basis [on which] to predicate a holding of a

Ser. No. 75/106,443
5
likelihood of confusion ...." In this regard, applicant insists
that:
The differences in the meanings of the
respective marks are significant. A "no-no"
is colloquial for something one should not
do, as in "that’s a no-no." It is not a term
related to food, cookies or candies, but its
use is broader based. Some people warn you
that a particular food is a "no-no", but its
being dietetic or non-dietetic are perhaps
only two possible reasons for the warning.
NO "NO SUGAR, in contrast, is not
written to say that the product is a "no-no",
a warning to avoid the product. Nor is it a
description "no sugar". It is instead a
phrase suggesting something as to "sugar",
maybe its absence, maybe one should avoid
sugar as a "no-no", and even then the "
(quotation) symbol calls any perceived
meaning into question. This is what makes
the NO "NO SUGAR mark arbitrary, or at least
suggestive .... NO "NO SUGAR is simply not
the same warning to avoid something, like the
colloquial "no-no" as set forth in the cited
registration. Rather, the Applicant’s NO "NO
SUGAR mark conveys a different connotation
and commercial impression than the cited NO-
NO registration.
The cited NO-NO mark conjures up an
image of a cookie that one should not want to
eat because it is fattening, e.g., "no, no
don’t eat that." Indeed, the phrase "no, no"
is quite commonly used by parents ... to
convey a sense of fear about an object or
desire. To the contrary, Applicant’s NO "NO
SUGAR mark suggests the opposite to the
purchaser, i.e., that the food may be
dietetic and/or perhaps appropriate for
maintaining a diet.
The Examining Attorney, on the other hand, urges that
the respective marks "are similar in commercial impression
because both evoke thoughts of the admonition ’that’s a ’no-no.’"
According to the Examining Attorney, "applicant’s mark
incorporates the registrant’s mark and adds the [descriptive]
Ser. No. 75/106,443
6
term SUGAR," which term "is not sufficient to overcome a
likelihood of confusion". Specifically, the Examining Attorney
maintains that:
Any difference in pronunciation or length of
the [applicant’s] mark caused by the use of
the word SUGAR is negated by the fact that
consumers are likely to view the term SUGAR
in the mark not as a source indicator but as
informational. The term SUGAR ... merely
tells consumers that there is no sugar in the
candy. In determining that the [respective]
marks are so similar as to cause a likelihood
of confusion, there is nothing improper, for
rational reasons, in giving more or less
weight to a particular feature of a mark, as
long as the ultimate conclusion is based on
consideration of the marks in their
entireties. [Citations omitted.] Thus, less
weight may be given to the term SUGAR without
improperly dissecting the [applicant’s] mark.
In addition, the presence of the term
SUGAR in the applicant’s mark is insufficient
to change the commercial impression of the
mark because it stands to reason that
purchasers who are familiar with the
registrant’s NO-NO mark would assume that the
mark NO "NO SUGAR simply reflected a new or
special food variety from the same source--
i.e., foods without sugar. In re Compania
Pesquera Vikingos de Colombia, S.A., 221 USPQ
557 (TTAB 1984). Thus, the marks are similar
in commercial impression.
We agree with applicant, however, that its NO "NO SUGAR
mark projects a distinctly different overall commercial
impression from registrant’s NO-NO mark, thereby precluding any
likelihood of confusion. As the Examining Attorney concedes in
her brief, "[i]f the applicant’s mark contained two quotation
marks, one between the NO’s and one after SUGAR--i.e., NO "NO
SUGAR"--the quotation marks might serve to change the commercial
impression of the mark sufficiently because the term NO SUGAR
Ser. No. 75/106,443
7
would be set off from the word NO." Contrary to the Examining
Attorney’s assertion that "the quotation mark in the applicant’s
mark merely joins the two ’no’s in the mark, just as the dash
joins the ’no’s in the registrant’s mark," we find that the
single quotation mark in applicant’s mark--which we view as
unusual if not unique--serves to dictate that applicant’s mark
would be pronounced and understood as if it were the two terms
"NO" and "NO SUGAR" rather than the term "NO NO" with the added
descriptive word "SUGAR". As such, the significant differences,
particularly in connotation and overall commercial impression,
conveyed by applicant’s NO "NO SUGAR mark are sufficient to
distinguish such mark from registrant’s NO-NO mark, which
suggestively conveys the impression that its cookies are so rich
or tasty as to otherwise constitute a "no-no". Applicant’s mark,
in short, simply does not engender the same admonition of its
dietetic candies with no added sugar being a "no-no," given the
unusual or unique placement of a single quotation mark between
the words "NO" and "NO" in its NO "NO SUGAR mark. Confusion as
to source or sponsorship of the respective goods, even though
such are closely related products, is therefore not likely to
occur.
Decision: The refusal under Section 2(d) is reversed.
E. J. Seeherman
T. J. Quinn
Ser. No. 75/106,443
8
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board