Votivo, Ltd.

Trademark Trial and Appeal Board

Sep 21, 2007

No. 76636181 (T.T.A.B. Sep. 21, 2007)

Mailed: September 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Votivo, Ltd.
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Serial No. 76636181
_______

Mark V. Jordan, Steven W. Edmiston and Nicholas R. Gunn of
Invicta Law Group, PLLC for Votivo, Ltd.

Julie A. Watson, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Holtzman, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Votivo, Ltd. (applicant) filed an application to register
the mark BLACKBERRY LEMONADE (in standard character format) on
the Principal Register, and as amended, under Section 2(f) of the
Trademark Act,1 for "candles" in Class 4.2

1 The application was amended to Section 2(f) in response to the
examining attorney's refusal to register the mark under Section 2(e)(1)
of the Act. Following this amendment, the refusal under Section
2(e)(1) was withdrawn.

2 Serial No. 76636181, filed April 18, 2005, based upon an allegation
of first use and first use in commerce on December 29, 2004.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Ser No. 76636181

2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the mark LEMONADE (in typed form) registered on the Principal
Register for "candles" in Class 4 as to be likely to cause
confusion.3
When the refusal was made final, applicant appealed. The
appeal has been fully briefed.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
The goods in this case are identical. They are both
"candles." Because the goods are identical and there are no
limitations in the application or registration, we must assume
that the goods are sold through all the normal channels of trade,
to all the usual purchasers for such goods. See Interstate

3 Registration No. 2633154, issued October 8, 2002.
Ser No. 76636181

3
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000);
and In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Applicant argues that its candles are sold in quality
boutiques and large national chains to purchasers of "high-end
home products" whereas, according to applicant, registrant's
goods are "unclear" and the trade channels for the goods are
"unknown." (Brief, p. 10, 15-16; Reply Brief, p. 2.) This
argument is unavailing.4 The authority is legion that the
question of likelihood of confusion in a Board proceeding must be
decided on the basis of the goods set forth in the application
and registration, without limitations as to the actual nature of
the goods, their channels of trade and/or classes of purchasers
that are not reflected therein. See J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991);
Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).

4 Applicant's arguments here, and throughout its briefs, that
registrant's mark may no longer be in use and/or that the mark is
descriptive amount to impermissible collateral attacks on the validity
of the registered mark and have not been considered. See Section 7(b)
of the Trademark Act ("A certificate of registration of a mark upon the
principal register ... shall be prima facie evidence of the validity of
the registered mark and of the registration of the mark, of the
registrant’s ownership of the mark, and of the registrant’s exclusive
right to use the registered mark in commerce on or in connection with
the goods..."). See also In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
Ser No. 76636181

4
In the absence of any specific restrictions in the
application or registration, it must be presumed that both
applicant's and registrant's candles would be of the same
quality; that applicant's candles would reach all classes of
customers, including registrant's customers; and that applicant's
candles are sold through all normal channels of trade, including
all the usual retail outlets for such goods.
Applicant's attempt to distinguish the goods on the basis of
price, arguing that its "high-end" candles which sell for $8-$12
are more expensive than other candles in the marketplace, must
also fail. We must presume that applicant's candles would be
sold at all the usual price points for such goods. In this
regard, we note that a Google search summary submitted by
applicant5 indicates that candles can sell for as little as
$1.50-$3.00. In any event, "high end" or not, candles are
relatively inexpensive, frequently replaceable goods. It has
often been stated that purchasers of such products are held to a
lesser standard of purchasing care and, thus, are more likely to
be confused as to the source of the goods. See Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ

5 Applicant has relied on this evidence for the purpose of showing the
asserted weakness of registrant's mark. This will be discussed later
in the opinion.
Ser No. 76636181

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1281 (Fed. Cir. 1984); and In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Turning to a consideration of the marks, we note, at the
outset, that when marks would appear on identical goods, the
degree of similarity between the marks necessary to support a
finding of likelihood of confusion declines. Century 21 Real
Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992).
We find that applicant's mark BLACKBERRY LEMONADE and
registrant's mark LEMONADE when considered in their entireties,
as applied to identical goods, are similar in sound, appearance,
meaning and commercial impression.
Applicant has taken registrant's entire mark LEMONADE and
merely added the admittedly descriptive word BLACKBERRY to it.6
Notwithstanding the addition of this term, the word LEMONADE
remains aurally and visually a significant component of
applicant's mark. Applicant argues that the word BLACKBERRY is
the dominant feature of its mark and that "a consumer will be
more likely to identify Applicant's candles with 'BLACKBERRY'

6 Applicant's characterization of its mark as a "fanciful pairing" of
the two words is inaccurate. Applicant's mark is not fanciful; to the
contrary, the entire mark is descriptive and applicant admitted this by
seeking registration under Section 2(f). See Yamaha International
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005
(Fed. Cir. 1988) ("Where, as here, an applicant seeks a registration
based on acquired distinctiveness under Section 2(f), the statute
accepts a lack of inherent distinctiveness as an established fact.")
(Emphasis in original.)
Ser No. 76636181

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rather than 'LEMONADE.'" (Brief, p. 14.) In our view, however,
neither word in the mark is more dominant than the other. The
presence of BLACKBERRY does not change the commercial impression
created by LEMONADE, alone, in any significant way. Nor does
that term impart any new or different meaning to LEMONADE. The
mark is likely to be perceived simply as indicating that the
candle has a combination of two different scents, BLACKBERRY and
LEMONADE. Regardless of which, if any, part of applicant's mark
is dominant, the point is that LEMONADE is still a distinct and
separately recognizable element of applicant's mark. See, e.g.,
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002) (PACKARD TECHNOLOGIES and
HEWLITT PACKARD convey similar commercial impressions since
PACKARD, the dominant element of PACKARD TECHNOLOGIES, is
identical to the "prominent" portion of HEWLITT PACKARD); and In
re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY'S ACCU TUNE
for automotive service centers confusingly similar to ACCUTUNE
for automotive testing equipment; rejecting applicant's argument
that because RICHARD PETTY dominates the mark, it would be
sufficient to avoid confusion.)
Applicant argues, citing a number of cases and pointing to
a Google search summary allegedly showing use of "lemonade" for
candles, that registrant's mark LEMONADE is weak and entitled to
only a narrow scope of protection. Applicant's argument and
Ser No. 76636181

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evidence are unpersuasive. Many of the websites listed in the
summary are either duplicative, irrelevant, or so abbreviated
that the context of use of LEMONADE is unclear. Several of the
remaining listings are for retail websites selling candles where
"Lemonade" appears to be used as a trademark for the candles.
However, because there is no information regarding the source of
the candles or whether the candles come from the same or
different sources, these listings do not support applicant's
contention. The summary, at best, shows only a few instances of
use of "Lemonade" by other companies in connection with candles -
"Del's Lemonade" candle (onlyinrhodeisland.com); "SWCC Lemonade
Candles" (heathers-store.com); and "Yankee Candles Cherry
Lemonade" candles (just-candles.net). The listing also includes
three or four uses by consumers to refer to a scent or color of
the candle. This evidence is far from sufficient to show common
and widespread use of "Lemonade" by third parties or to reflect
any commonly understood meaning of the term by consumers in
general. Furthermore, without evidence as to the extent of the
third-party uses or the extent of public exposure to the sites,
the probative value of this evidence is minimal. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). In addition, the examining
attorney points out that there are no third-party registrations
of any marks containing the term LEMONADE in the field.
Ser No. 76636181

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Even if registrant's mark were "weak" it would not
automatically mean that these marks are not similar. None of the
cases cited by applicant compels a finding in this case that if
the shared term is weak the likelihood of confusion is removed by
the addition of other descriptive terms.7 See, e.g., The Frostie
Company v. Sun-Glo Packers, Inc., 315 F.2d 932, 137 USPQ 341, 342
(CCPA 1963) ("While we have, in certain cases, e.g., The Murray
Corporation of America v. Red Spot Paint and Varnish Co., 47 CCPA
1152, 280 F.2d 158, 126 USPQ 390 [1960]... treated the
suggestiveness of a mark as a factor to be considered in
determining the question of likelihood of confusion, each case
must be determined on its own particular facts and
circumstances.").
While the mark LEMONADE may be suggestive of registrant's
goods, and therefore not entitled to the broadest scope of
protection, the mark is at least entitled to protection from
registration of a similar mark for identical goods. See King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ

7 Applicant relies, in particular, on Jack Proust & Co., Inc. v. John
Gross & Co., 460 F.2d 1076, 174 USPQ 149 (CCPA 1972). However, that
case is not on point. The Court found that CHERRY JUBILEE and CHERRY
JULEP, both for wine, were not confusingly similar, not only because
CHERRY indicated the flavor of the wine, but also because "the second
words" in the marks were "distinctly different." In the present case,
LEMONADE is registrant's entire mark. The mark has no second word or
any other matter to distinguish it. Furthermore, the mark in this case
is not "lemon," it is LEMONADE, and LEMONADE is not a flavor it is a
drink. The term in registrant's mark suggests a scent or the color of
the candle.
Ser No. 76636181

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108, 109 (CCPA 1974) (likelihood of confusion is to be avoided as
much between weak marks as between strong marks).
Applicant's argument that consumers will associate its
candles with applicant's company name, "Votivo" which, according
to applicant appears on the packaging for the candles, is not
relevant to the analysis, and applicant's reliance on
Heartsprings, Inc. v. Heartspring, Inc. 143 F.3d 550, 46 USPQ2d
1481 (10th Cir. 1998), an infringement case, to support its
contention is misplaced. It is well established that, in
proceedings before the Board, as distinguished from infringement
proceedings before the court, the question of likelihood of
confusion must be decided on the basis of the mark "exactly as
shown in the application" regardless of how the mark is actually
used. Jim Beam Brands Co. v. Beamish & Crawford, Ltd., 937 F.2d
729, 19 USPQ2d 1352, 1356 (2d Cir. 1991). See also Kimberly-
Clark Corp. v. H. Douglas Enterprises, 774 F.2d 1144, 227 USPQ
541 (Fed. Cir. 1985). The name "Votivo" is not part of the
applied-for mark, and applicant's arguments with respect to the
asserted use and goodwill of that term in connection with the
goods are entitled to no probative weight.
Applicant states that it is the owner of Registration No.
2841930 for the mark, BLACKBERRY BASIL (on the Supplemental
Register) for "candles and tapers" and Registration No. 3214165
(also on the Supplemental Register) for BLACKBERRY LEMONADE for
Ser No. 76636181

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"scented soap and incense." Applicant argues that the existence
of these marks "reinforces the applicant as the source of
products in the home fragrance business" and that purchasers
"would be just as likely to draw a connection between the Mark
and its prior registration." (Brief, pp. 9, 15.)
These registrations do not justify registration of the mark
in the current application. To begin with, registrations on the
Supplemental Register are not entitled to any of the statutory
presumptions of Section 7(b) of the Trademark Act. See In re The
Clorox Company, 578 F.2d 305, 198 USPQ 337 (CCPA 1978).
Furthermore, Registration No. 2841930 does not even include the
conflicting word LEMONADE, and Registration No. 3214165 is for
different goods. Applicant is now seeking to register BLACKBERRY
LEMONADE for goods that are identical to those in the cited
registration. Neither of applicant's registrations have any
bearing on the question of whether the marks as applied to the
identical goods in this case would be likely to cause confusion.
Our determination of likelihood of confusion must be based on the
facts and record before us. See In re Nett Designs, 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ("Even if some prior
registrations had some characteristics similar to [applicant's]
application, the PTO's allowance of such prior registrations does
not bind the Board or this court").
Ser No. 76636181

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We also point out that any asserted recognition by consumers
of applicant's mark or the term BLACKBERRY alone does not
diminish the likelihood of confusion in this case. The question
is whether purchasers will believe that the goods offered under
the respective marks come from the same source, not whether
purchasers can identify the source for the goods. The additional
descriptive term BLACKBERRY would do nothing to prevent consumers
from mistakenly assuming that BLACKBERRY LEMONADE candles come
from or are associated with the same source as the LEMONADE
candles. See, e.g., In re Riddle, supra at 632 (RICHARD PETTY'S
ACCU TUNE for automotive service centers confusingly similar to
ACCUTUNE for automotive testing equipment; noting that while the
name "Richard Petty" might well be a famous one in the field,
that fact does not diminish the likelihood of confusion because
those who encounter both marks "would likely believe that Richard
Petty endorsed or was in some way associated with both the goods
and the services, in that both marks contain the designation
'ACCUTUNE.'").
Finally, applicant's arguments concerning the absence of
actual confusion are unpersuasive, particularly since applicant's
mark has been in use for a relatively short period of time and
we have no information regarding the nature or extent of
registrant's use or whether a meaningful opportunity for actual
confusion has existed. See Gillette Canada Inc. v. Ranir Corp.,
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23 USPQ2d 1768 (TTAB 1992). Thus, contrary to applicant's
contention, the absence of evidence of actual confusion under
these circumstances is not a factor that weighs in applicant's
favor.
In view of the foregoing, we find that a likelihood of
confusion exists between applicant's BLACKBERRY LEMONADE mark and
registrant's LEMONADE mark for identical goods.
Decision: The refusal to register under Section 2(d) is
affirmed.