VWF Imports Inc. Joey's Home Bakery Gluten Free

Trademark Trial and Appeal BoardJun 8, 2016

No. 86239575 (T.T.A.B. Jun. 8, 2016)

This Opinion is not a Precedent of the TTAB Mailed: June 8, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re VWF Imports Inc. Joey's Home Bakery Gluten Free _____ Serial No. 86239575 _____ VWF Imports Inc., Joey's Home Bakery Gluten Free, pro se. Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110, Chris A. F. Pederson, Managing Attorney. _____ Before Cataldo, Gorowitz and Goodman, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: VWF Imports Inc., Joey's Home Bakery Gluten Free (“Applicant”) seeks registration on the Principal Register of the mark depicted below for “gluten free retail and wholesale bakery shops” in International Class 35. 1 1 Application Serial No. 86239575 was filed on April 2, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as September 15, 2012. The application includes the following description of the mark: “The mark consists of the stylized words ‘joey's Home bakey-Gluten Free [sic]’ next to a caricature of a woman in a baking apron, waving a baking mitt with a happy face. ‘Joey’s’ is written on the front of the apron. The wording of ‘joey's Home bakery - Gluten Free [sic]’ is about head high. Looking at Serial No. 86239575 - 2 - Applicant has disclaimed the exclusive right to use the wording “Home Bakery” and “Gluten Free” apart from the mark as shown. The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s mark, when used in connection with the identified services in the application, is likely to cause confusion with the mark the mark, the wording is on the right side of the caricature’s head, above her extended mitt.” Color is not claimed as a feature of the mark. The stippling is for shading purposes only. The application also includes the following consent: “The name(s), portrait(s), and/or signature(s) shown in the mark identifies a caricature of Ms joey weiss a living individual whose consent is of record [sic].” Serial No. 86239575 - 3 - for “bakery products, namely muffins, Danish, cakes, brownies, corn bread and donuts” in International Class 30.2 When the refusal was made final, Applicant requested reconsideration and then appealed. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. 3 We affirm the refusal to register. I. Evidentiary Issue Before proceeding to the merits of the refusal, we address an evidentiary matter. Applicant submitted with its appeal brief “examples of our logo in our advertising, in our store sign, in our newspaper advertising and in our flyer advertising.”4 The record in the application should be complete prior to the filing of an appeal. See Trademark Rule 2.142(d), 37 CFR § 2.142(d). The exhibits attached to Applicant’s main brief were not made of record during examination and are untimely. Accordingly, we have not considered these exhibits in reaching our decision. See e.g., In re HSB Solomon Associates LLC, 102 USPQ2d 1269, 1274 (TTAB 2012).5 2 Registration No. 1913594; issued August 22, 1995; second renewal. 3 Applicant filed its brief after the deadline. The Board accepted Applicant’s late-filed appeal brief on January 19, 2016. 12 TTABVUE. The citations to “TTABVUE” throughout the decision are to the Board’s public online database that contains the proceeding file, available on the USPTO website, www.USPTO.gov. The first number represents the prosecution history number listed in the electronic case file and the second represents the page number(s). 4 9 TTABVUE 2. 5 We add that even if we were to consider the untimely evidence, it would not change the result herein. Serial No. 86239575 - 4 - II. Applicable Law 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 likelihood of confusion. 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, 1204 (Fed. Cir. 2003). In any likelihood of confusion analysis, 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). These factors, along with other relevant du Pont factors, are discussed below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (“we need to consider only the [du Pont] factors that are relevant and of record”). To the extent that any other du Pont factors for which no evidence or argument was presented may nonetheless be applicable, we treat them as neutral. III. Discussion A. Similarity or Dissimilarity of the Goods and Services and Channels of Trade We first consider the relatedness of the goods and services. We compare the services as identified in Applicant's application with the goods as identified in the registration. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s services are identified in the application as “gluten free retail and wholesale bakery shops,” while Registrant’s Serial No. 86239575 - 5 - goods are “bakery products, namely muffins, Danish, cakes, brownies, corn bread and donuts.” As to Registrant’s goods, the identification is read broadly to include all types of muffins, Danish, cakes, brownies, corn bread and donuts, which must be presumed to include traditional bakery products as well as gluten-free bakery products. For purposes of determining whether there is a likelihood of confusion, it is recognized that goods on the one hand and services on the other may be related. See, e.g., In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG'S for retail grocery store and general merchandise store services is confusingly similar to BIGGS for furniture). In such a context, likelihood of confusion can be found if the respective goods and services are related in some manner or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). To demonstrate the relatedness of Applicant’s services and Registrant’s goods, the Examining Attorney included a print-out of Applicant’s website to show that Applicant “sells muffins and cakes, which are the identical goods of the registrant.”6 The website print-out indicates that Applicant offers cookies, muffins, cakes, and breads. The Examining Attorney also submitted third-party registrations to show that “it is common for providers of bakery goods to also provide retail and wholesale 6 January 29, 2015 Office Action; July 14, 2014 Office Action. Serial No. 86239575 - 6 - bakery services under the same mark.”7 Although third-party registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them, third-party registrations which individually cover a number of different items and which are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Representative of the third-party registrations are, for example, Registration No. 4595426 for VIKTOR BENÊS, Registration No. 4520649 for NUFLOURS, Registration No. 4465527 for WILLIAM GREENBURG, and Registration No. 4425059 for IT’S LOVE AT FIRST BITE, all for baked goods or bakery products and retail bakery shops. Lastly, as further evidence of the relatedness of bakery products and retail bakery services, the Examining Attorney provided third-party webpages of full-service bakeries Harrison Home Bakery, Davison Home Bakery, Manderfield’s Home Bakery, and Mountain Home Bakery, all of which offer baked goods such as donuts, cookies, pies, cakes, pastries and breads in connection with retail bakery services.8 To address Applicant’s argument that traditional bakery goods and gluten-free bakery services are unrelated, the Examining Attorney provided third-party webpages to show that “it is entirely common for providers of retail bakery services 7 Id. 8 Id. Serial No. 86239575 - 7 - featuring gluten-free goods to also provide traditional, non-gluten-free, baked goods under the same channels of trade” and to offer these goods “under the same mark.”9 The following are representative excerpts from the third-party webpages: Welcome to the Flour Uprising, Mid-Michigan’s only full- service bakery, serving traditional, vegan, and gluten-free baked treats and breads. (theflouruprising.com) Buttercelli Bakeshop. We offer a large and incomparable assortment of sweet and savory baked goods in traditional wheat & dairy, wheat vegan, gluten-free, gluten-free vegan and our exclusive Paleo-diet based baked goods. (buttercelli.com) Welcome to Red Barn Bakery Online. An Artisanal Bakery Offering Traditional, Gluten Free and Vegan Baked Goods. … Our seasonally appropriate baked goods, gluten-free selection and vegan selection are available in our store in Irvington NY, in select markets and now online! (redbarn- bakery.com) Since 1963 Rheinlander Bakery has been dedicated to offering customers a wide variety of hard to find specialties and unique creative pastries and cakes. … Our alternative lines are as delicious as our traditional but feature sugar free sweeteners and gluten free flours. You will be enthralled with the bakery’s blend of traditional and alternative offerings. (rehinlanderbakery.com). On appeal, Applicant argues that Registrant’s goods and Applicant’s services are unrelated: We sell only gluten free baked goods which is totally different from a wheat flour bakery. …We cater to vegan gluten free and dairy free customers that are allergic to Gluten [.]..They would and could not go into a bakery using wheat flour. And there is no bakery that would sell and 9 January 29, 2015 Office Action; Request for Reconsideration, 5 TTABVUE 3. Serial No. 86239575 - 8 - produce gluten free breads and baked goods in the same bakery using wheat flour.10 However, the evidence discussed above indicates that the same entities may provide both bakery products or baked goods and retail bakery services, and that bakeries offering traditional baked goods may also offer gluten-free, dairy free, and vegan items. See In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1266 (TTAB 2011) (third-party registration evidence and website evidence amply demonstrated relatedness of goods). In re Iolo Technologies LLC, 95 USPQ2d 1498, 1500-01 (TTAB 2010) (third-party registrations and website evidence supports a finding that the computer-related goods and computer-related services would be perceived by consumers as deriving from the same source). Therefore, we find Registrant’s bakery products and Applicant’s retail and wholesale bakery services are related. We next consider the channels of trade. Applicant’s identification of services explicitly includes both retail and wholesale trade channels, while Registrant’s identification of goods contains no limitations or specification as to trade channels. In the absence of any restrictions or limitations in the registration, we must presume Registrant’s goods are sold in all normal trade channels and to all the usual purchasers of such goods. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). As such, Registrant’s goods could be sold through both wholesale and retail trade channels. 10 9 TTABVUE 2-3. Serial No. 86239575 - 9 - B. Similarity of the Marks We now turn to consider “the similarity or dissimilarity of the marks in their entireties as to 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, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., 101 USPQ2d at 1721. The focus is on the recollection of the average purchaser, who retains a general rather than specific impression of the marks. In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009) citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Our analysis cannot be predicated on dissection of the involved marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Rather, we consider the marks in their entireties. Id at 750. Nonetheless, 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 a consideration of the marks in their entireties. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). For instance, merely descriptive matter that is disclaimed has been accorded subordinate status relative to the more distinctive portions of a mark. National Data, 224 USPQ at 751 (“That a particular feature is descriptive … with respect to the relevant goods or Serial No. 86239575 - 10 - services is one commonly accepted rationale for giving less weight to a portion of the mark.”). It also has frequently been recognized that where a mark consists of a word and a design, the words generally play a dominant role. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“In the case of a composite mark containing both words and a design, ‘the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.’”) quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Dakin's Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are normally accorded greater weight because they would be used by purchasers to request the goods”). In Registrant’s mark the wording JOEY’S appears in large and prominent lettering. The other wording in the mark, LUV IN EVERY BITE, appears in much smaller lettering than does the wording JOEY’S. Moreover, we find that the slogan LUV IN EVERY BITE is a mere secondary tag-line to the primary and dominant source-indicator in Registrant’s mark, which is the term JOEY’S. Serial No. 86239575 - 11 - Applicant’s mark is a composite mark consisting of a verbal or literal portion and a design. Applicant argues that “[t]he most prominent [and dominant] part of Applicant’s mark is the caricature.”11 We do not agree. Although the design portion of Applicant's mark is visually prominent, the design merely reinforces the wording JOEY’S in the literal portion of the mark, as the term JOEY’S is emblazoned on the caricature’s apron. In addition, those who refer to the mark orally will not articulate the design portion of Applicant’s mark. As to the wording HOME BAKERY and GLUTEN FREE, Applicant argues that these are the most important words in its mark, which also indicate that Applicant is a gluten-free bakery. However, as Applicant itself has essentially acknowledged, these terms describe Applicant’s services; they are disclaimed, and, while not ignored, are accorded less weight in the likelihood of confusion analysis. Consumers are more likely to rely on the non-descriptive literal portion, the term JOEY’S, as an indication of source. While Applicant contends that JOEY’S is not the dominant element in its mark because the term is the same size and font as the terms HOME BAKERY GLUTEN FREE, the position of JOEY’S as the first word of the 11 9 TTABVUE 2. Serial No. 86239575 - 12 - literal portion of the mark further reinforces the significance of the word JOEY’S as the dominant element of Applicant’s mark. See Palm Bay Imports, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). As discussed above, the prominence of the term “JOEY’S” in Applicant’s mark is also reinforced by its additional placement on the apron of the baker in the mark’s stylized design. The dominant portion of both marks is the term JOEY’S which is identical in sound and appearance. The term JOEY’S also conveys the same connotation and commercial impression in both marks, that of the name of a person. Although we have focused on the dominant portion of the marks, which, as indicated, are identical, we also have considered the marks in their entireties. In doing so, we find that, when viewed as a whole, they are more similar than dissimilar and engender similar overall commercial impressions. IV. Conclusion In view of the foregoing, we find that the du Pont factors relating to similarity of the marks, the relatedness of the goods and services and similarity of the channels of trade favor a finding of likelihood of confusion. Considering all of the arguments and evidence of record as it pertains to the relevant du Pont factors in this case, including any which we have not specifically Serial No. 86239575 - 13 - discussed, we conclude that a likelihood of confusion exists because the marks are similar, the goods and services are related, and the trade channels are the same or overlapping. Decision: The refusal to register applicant’s mark under Trademark Act Section 2(d) is hereby affirmed.