Wallace Farms, Inc.

Trademark Trial and Appeal Board

Jul 9, 2014

No. 85789283 (T.T.A.B. Jul. 9, 2014)

THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB

Mailed: July 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wallace Farms, Inc.
________

Serial No. 85789283
_______

Matthew H. Swyers of The Trademark Co. for Wallace Farms, Inc.

N. Gretchen Ulrich, Trademark Examining Attorney, Law Office 113 (Odette
Bonnet, Managing Attorney).
_______

Before Quinn, Cataldo and Masiello,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Wallace Farms, Inc. (“Applicant”) to
register on the Principal Register the mark NICK’S STICKS (standard
characters, “STICKS” disclaimed) for “grass-fed beef sticks, free-range turkey
sticks,” in International Class 29.1
The Trademark Examining Attorney refused registration under
Section 2(d) of the Trademark Act on the ground of likelihood of confusion

1 Application Serial No. 85789283 was filed on November 28, 2012 under Section
1(a) of the Trademark Act, based upon applicant’s assertion of November 1, 2011 as
a date of first use of the mark anywhere and in commerce.
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with the following three marks previously registered on the Principal
Register by HQM Ltd. (“Registrant”):
NICK’S (typed or standard characters)2 for “meatballs, spiral sliced
hams, Bavarian hams, hot dogs, scrapple, Italian sausage and canned
tomatoes,” in International Class 29;3
NICK’S SAUSAGE (standard characters, “SAUSAGE” disclaimed) for
“sausages,” in International Class 29;4 and
NICK’S SAUSAGE COMPANY (standard characters, “SAUSAGE
COMPANY” disclaimed) for “sausages,” in International Class 29.5
When the refusal was made final, Applicant appealed. Applicant and
the Examining Attorney filed main briefs on the matter under appeal.
Likelihood of Confusion
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 1357, 177
USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d

2 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended
to replace the term “typed” drawing with “standard character” drawing. A mark
depicted as a typed drawing is the legal equivalent of a standard character mark.

3 Registration No. 2009799 issued on October 22, 1996. Section 8 affidavit accepted;
Section 15 affidavit acknowledged. Renewed. The registration recites additional
goods in Class 30.

4 Registration No. 3355981 issued on December 18, 2007.

5 Registration No. 3355982 issued on December 18, 2007.

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1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key, though not exclusive, 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). See also In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
Registration No. 2009799
For purposes of our analysis of the du Pont factors as they apply to the
instant refusal to register, we will concentrate our discussion on cited
Registration No. 2009799 for the mark NICK’S (standard characters) for
“meatballs, spiral sliced hams, Bavarian hams, hot dogs, scrapple, Italian
sausage and canned tomatoes.” We find this registration to be the most
relevant for our du Pont analysis, and we proceed accordingly. Since this is
the most relevant registration, if we find a likelihood of confusion, we need
not find it as to the others. On the other hand, if we do not reach that
conclusion, we would not find it as to the other cited registrations either. See
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
The Goods
We begin by comparing Applicant’s goods with those of Registrant. In
making our determination under the second du Pont factor, we look to the
goods as identified in the involved application and cited registration. See
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
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USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis
of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of
goods are directed.”). See also Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be decided on the basis of
the respective descriptions of goods.”).
In this case, Applicant’s goods are identified as “grass-fed beef sticks,
free-range turkey sticks” and Registrant’s goods are identified as “meatballs,
spiral sliced hams, Bavarian hams, hot dogs, scrapple, Italian sausage and
canned tomatoes.” The Examining Attorney, in support of her contention
that the goods at issue are commercially related, has made of record
examples of web pages from third-party e-commerce sites offering goods
similar in nature to those of both Applicant and Registrant. Among these, we
note the following:
- the website at offers products including
smoked beef snack sticks, spiral sliced country ham and smoked
sausage.6

- the website at offers products including beef
sticks, summer sausage, smoked ham, cooked sausage and smoked
turkey.7

6 Office action of March 25, 2013 at 68-73.
7 Id. at 74-77.
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- the website at offers products including grass-
fed beef sticks, hot dogs and sausage.8

- the website at offers products including grass-
fed beef snacks, ham and sausage.9

- the website at offers products including
grass-fed beef snack sticks, hot dogs and Italian sausage.10

- the website at offers products including beef
snack sticks, beef frankfurters, ham and Italian sausage.11

- the website at offers products including grass-fed
beef sticks, hot dogs, ham and Italian sausage.12

- the website at offers products including turkey and
chicken franks, meatballs, Italian sausage, and turkey sticks.13

- the website at offers products including ham,
hot dogs and turkey sticks.14

These websites demonstrate that the goods of both Applicant and Registrant
are marketed and sold together under the same marks. We find that
customers would readily perceive both types of goods as being within a single
category of goods.
In addition, the examining attorney has made of record numerous use-
based third-party registrations, of which the following show that various
entities have adopted a single mark for goods identified in the involved
application and cited registration:

8 Final Office action of October 16, 2013 at 10-14.
9 Id. at 15-17.
10 Id. at 17-25.
11 Id. at 26-29.
12 Id. at 30-37.
13 Id. at 38-39.
14 Id. at 40-45.
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Registration No. 0661990 for, inter alia, beef sticks, sausages;

Registration No. 2762736 for, inter alia, sausage, beef sticks,
Italian sausage, wieners;

Registration No. 3107246 for, inter alia, sausages and beef
sticks; and

Registration No. 4204631 for, inter alia, beef sticks and
sausages.

Third-party registrations which individually cover a number of different
items and which are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
Applicant argues15 that its goods are snack food items with a stable
shelf life as opposed to groceries and are exclusively made from beef and
chicken that is grass-fed, free-range, GMO-free and pesticide free, whereas
Registrant’s goods mainly are conventional meat products presumably
manufactured using such ingredients that are absent from Applicant’s goods.
However, while Applicant’s goods, as recited, clearly indicate that they are
grass-fed, the remaining limitations asserted by applicant, e.g., GMO- and
pesticide-free, are not reflected in its identification. More importantly,
Registrant’s goods do not recite any limitations as to whether they are made
using pesticides, GMOs, or whether the animals from which they are made
are grass-fed or free-range. Thus, we must presume that Registrant’s goods
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include meat products made from grass-fed animals and meat products that
are GMO- and pesticide-free. As noted above, in evaluating the similarities
between the goods, we must look to the goods as identified in the subject
application and cited registration. See Octocom, 16 USPQ2d at 1787. We
may not read limitations, such as those suggested by Applicant, into the
respective identifications that are not reflected by the wording thereof. As a
result, we must presume that Registrant’s broadly worded identification of
goods includes healthy meat products manufactured using the same
processes as those of Applicant.
The evidence of record indicates that the goods of Applicant and
Registrant are commercially related meat products that are marketed and
sold together, and thus may be encountered together by consumers. The
similarity of the goods is a factor that weighs in favor of a finding of
likelihood of confusion.
Channels of Trade and Classes of Consumers
In this case, neither Applicant’s nor Registrant’s identification of goods
recites any limitations on the channels of trade in which the goods may be
encountered or the classes of consumers to whom they may be marketed.
Thus, absent any restrictions in the identifications of goods, the goods of
Applicant and Registrant are presumed to move in all normal channels of
trade and be available to all classes of potential consumers of such goods. See

15 Brief, p. 12-13; Affidavit of Jason Wallace, submitted with Applicant’s September
24, 2013 communication, p. 34-38.
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In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In each case, the customers
would include ordinary consumers of food products; and the channels of trade
would include retail and wholesale food stores and other distribution
channels for meat products (including the online food stores discussed above).
As discussed above, because there are no trade channel limitations recited in
the respective identifications of goods, we do not find probative Applicant’s
arguments16 that its goods are marketed in separate trade channels to
customers that are distinct from those in which Registrant’s goods are
encountered.
The overlap in trade channels and classes of purchasers are factors
that further weigh in favor of a finding of likelihood of confusion.
Strength of Registrant’s Mark
Prior to our consideration of the involved marks, we will consider
Applicant’s arguments that Registrant’s NICK’S mark is weak as a result of
third-party registration of similar marks for related goods. In support of its
argument, Applicant has made of record17 copies of USPTO records
displaying ten third-party NICK-formative marks for various food products:
NICKS (stylized), Reg. No. 4383891, owned by Nick’s Chips LLC, for
“Pork rinds; Potato chips; Potato-based snack foods” in International Class
29 and “Cheese flavored puffed corn snacks; Cheese flavored snacks,
namely, cheese curls; Cheese flavored snacks, namely, puffed cheese
balls; Cheese-flavored corn snacks; Corn chips; Corn-based snack foods;
Extruded corn snacks; Flavor-coated popped popcorn; Puffed corn snacks;
Tortilla chips” in International Class 30;

16 Id. at 13-14; Id. at 35-37.
17 Applicant’s September 24, 2013 communication, Exhibits 6-15.
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N NICK'S PIZZA and design, Reg. No. 2,047,184, owned by Ascan Pizza
Corp., for “pizza” in International Class 30;

NIKI (stylized), Reg. No. 2,026,507, owned by Akari International, Inc.,
for “dehydrated fruit and vegetable food snacks” in International Class 29;

NICK’S GREEK LIFE (standard characters), Reg. No. 3359,019, owned
by John Nicholas Graub, III, for “Salsa” in International Class 30;

LITTLE NICKY'S AMOGUE (standard characters), Reg. No. 3,511,797,
owned by Nicky's Family Recipes, for “Dipping sauces; Ready-made
sauces; Sauces; Steak sauce” in International Class 30;

NICK CANDY (standard characters), U.S. Reg. No. 2,902,341, owned by
Viacom International Inc., for “bread, bread sticks, bubble gum, candy
cake decorations, edible cake decorations, cake mixes, cakes, chocolate
based fillings for pies and cakes, candy, candy coated popcorn, caramel
popcorn, caramels, cereal based snack food, cheese flavored corn puffed
snacks, chewing gum, chocolate chips, corn chips, flour based chips,
chocolate, chocolate covered nuts, chocolate powder, chocolate syrup,
chocolate topping, cocoa mixes, cones for ice cream, cookies, corn curls,
cracker and cheese combinations, crackers, ready to eat cereal derived
food bars, frosting, fruit pies, flavored and sweetened gelatins, granola
based snack bars, hot chocolate, popped popcorn, pretzels, puddings,
waffles; ice cream, ice milk, flavored ices, frozen confections, frozen
yogurt, frozen custard” in International Class 30;

NICK’S ORIGINAL CONEY ISLAND HOTDOG SAUCE and design,
U.S. Reg. No. 3,113,032, owned by Sandstone Foods, Inc., for “Hot dog
sauce made of spices and ground beef” in International Class 30;

PAPA NICK’S (standard characters), U.S. Reg. No. 4,168,850, owned by
Napco, Inc., for “instant cocoa mix for making hot chocolate and cocoa
drinks” in International Class 30

NICK-A-MILLION’S (standard characters), U.S. Reg. No. 4,095,815,
owned by Nicholas Rushing DBA Nickamillion, for “Barbecue sauce” in
International Class 30; and

NICK THE GREEK and design, U.S. Reg. No. 2,042,379, owned by
NTM, Inc., for “gourmet cooking sauces and marinades.” in International
Class 30.

With regard to these third-party registrations, we first note that such
registrations are not evidence of use of the marks shown therein and,
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therefore, are not proof that consumers are familiar with said marks so as to
be accustomed to the existence of similar marks in the marketplace. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA
1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989
(TTAB 1982). Second, while these registrations identify food products, they
do not identify meat products and thus are not as closely related to those in
the cited registration as Applicant’s “grass-fed beef sticks, free-range turkey
sticks.” As such, they have limited probative value for purposes of
demonstrating the asserted weakness of Registrant’s NICK’S mark for
“meatballs, spiral sliced hams, Bavarian hams, hot dogs, scrapple, Italian
sausage and canned tomatoes.”
On the record in this case, we find insufficient support for Applicant’s
argument that the NICK’S mark in the cited registration is weak in the field
of meat products and entitled to only a narrow scope of protection. See
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB
1991), aff’d unpublished., (No. 92-1086 Fed. Cir. (June 5, 1992). Cf. In re
Broadway Chicken, Inc., 38 USPQ2d at 1565.
The Marks
We turn then to the first du Pont factor, i.e., whether Applicant’s
NICK’S STICKS mark and Registrant’s NICK’S mark are similar or
dissimilar when viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression. See Palm Bay Imports, Inc.
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v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). We note initially that 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 or services 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).
In comparing Applicant’s mark and Registrant’s mark, we first note
that Applicant has incorporated the registered mark, NICK’S, in its entirety.
In cases such as this, a likelihood of confusion has frequently been found.
“When one incorporates the entire arbitrary mark of another into a composite
mark, the inclusion of a significant, nonsuggestive element will not
necessarily preclude a likelihood of confusion. [Internal citations omitted].
An inclusion of a merely suggestive or descriptive element, of course, is of
much less significance in avoiding a likelihood of confusion.” The Wella Corp.
v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design is similar to the mark
CONCEPT). See also Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526
F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal
Lancer soldier design is similar to the mark BENGAL); In re Bissett-Berman
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Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (E-CELL is similar to
the mark E).
Thus, the importance of Applicant’s incorporation of Registrant’s mark
depends greatly on the degree of suggestiveness of that mark as well as
elements of the marks that are not shared. As discussed above, we do not
find probative Applicant’s third-party registration evidence that NICK’S is
weak in connection with the recited goods in the subject application and cited
registration. While it stands to reason that the term “NICK’S” is a given
name, we find no specific meaning of the term in connection with the
identified goods in either the subject application or cited registration. Even
allowing for any suggestive nature of the term NICK’S, the fact that
Applicant has incorporated the registered mark greatly increases the level of
similarity between the marks.
Furthermore, the significance of the word “NICK’S” is reinforced by its
location as the first word in Applicant’s mark. 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 in the mind of a
purchaser and remembered”). See also Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (upon encountering the marks, consumers must first notice the
identical lead word). We also observe that “STICKS” is disclaimed in
Applicant’s mark and appears to be descriptive of the goods recited in the
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application. As a result, when the marks NICK’S and NICK’S STICKS are
viewed in their entireties, they are more similar than dissimilar in
appearance and convey a similar connotation, namely, that Applicant’s
NICK’S STICKS grass-fed beef and free-range turkey sticks are a subset of
Registrant’s NICK’S meat products. In other words, we find that consumers
are likely to view the marks as variations on each other, but pointing to a
common source. Similarity in any one of the elements of sound, appearance,
meaning, or commercial impression is sufficient to support a determination of
likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d
728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion”); and In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases,
a finding of similarity as to any one factor (sight, sound or meaning) alone
‘may be sufficient to support a holding that the marks are confusingly
similar’”) (citations omitted).
In view of the foregoing, we find that the similarities in the marks
outweigh the differences, and that this du Pont factor also weighs in favor of
a finding of likelihood of confusion.
Conditions of Sale
The next du Pont factor discussed by Applicant is that of the conditions
of sale. Applicant argues that its goods “attract a very specific consumer,
namely, health conscious consumers who purchase food that is ‘organic’ or
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‘local’ or ‘natural.’”18 Applicant further argues “it can only be assumed that
the HQM, Ltd. marks were used to attract individuals seeking sausages,
meatballs, sliced hams, scrapple, and other non-health food snack items
made from conventional meat products, and mainly pork.”19 Applicant
acknowledges that it is unaware of the price point for Registrant’s goods but
assumes they are marketed at a lower price point than those of Applicant.
Applicant concludes that consumers of its goods as well as those of Registrant
would exercise a high degree of care and sophistication in distinguishing
between them.
However, given the evidence of record that Applicant’s goods and those
of Registrant are marketed and sold together, even sophisticated consumers
may not realize that Applicant’s recited goods do not emanate from the same
source as those of Registrant. Furthermore, even if some degree of care were
exhibited in making the purchasing decision, because of the similarities
between the marks, even careful purchasers are not likely to distinguish
between them. As a result, we also find this du Pont factor to weigh in favor
of a finding of likelihood of confusion.
Actual Confusion
The final du Pont factor discussed by Applicant and the Examining
Attorney is that of the lack of instances of actual confusion. Applicant

18 Brief, p. 14.
19 Id.
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asserts20 that the absence of actual confusion since October 2011 suggests no
likelihood of confusion. However, as pointed out by the Examining Attorney,
it is not necessary to show actual confusion in order to establish likelihood of
confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546,
223 USPQ 1025 (Fed. Cir. 1990). Particularly in an ex parte proceeding,
Applicant’s assertion of the absence of actual confusion is of little probative
value in our determination on the issue of likelihood of confusion because the
Board cannot readily determine whether there has been a significant
opportunity for actual confusion to have occurred, such that the absence of
confusion is meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-7 (TTAB 1984).
In those situations where the Board has recognized the absence of actual
confusion as probative in an ex parte setting, there existed a “confluence of
facts” which together strongly suggested that the absence of confusion was
meaningful and should be given probative weight. See In re Opus One Inc.,
60 USPQ2d at 1817. There is no evidence that such a “confluence of facts” is
present in this record.
Moreover, the test under Section 2(d) is not actual confusion but
likelihood of confusion. See In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003) (“uncorroborated statements of no known

20 Id. at 15-16.
Serial No. 85789283

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instances of actual confusion are of little evidentiary value.”). See also In re
General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
Summary
Neither Applicant nor the Examining Attorney has discussed any of
the remaining du Pont factors. We note, nonetheless, that none seem to be
applicable, inasmuch as we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers familiar with
Registrant’s goods sold under its above-referenced NICK’S mark would be
likely to believe, upon encountering Applicant’s goods offered under its mark
that the goods originated with or are associated with or sponsored by the
same entity.
Decision: The refusal to register is affirmed as to Registration No.
2009799.21

21 In view thereof, we need not consider the Examining Attorney’s refusal to register
as to the remaining two cited registrations.