Wells Enterprises, Inc.

Trademark Trial and Appeal BoardJul 13, 2012

No. 85120587 (T.T.A.B. Jul. 13, 2012)

Mailed: July 13, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Wells Enterprises, Inc. ________ Serial No. 85120587 _______ Christine Lebron Dykeman of McKee, Voorhees & Sease PLC for Wells Enterprises, Inc. Robert Clark, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Kuhlke, Taylor and Wolfson, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: On September 1, 2010, Wells Enterprises, Inc. applied to register the mark RED CARPET RED VELVET CAKE (in standard characters) on the Principal Register based on an allegation of an intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §1052(b), for goods identified as “frozen confections” in International Class 30. Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 85120587 2 applicant’s mark, when used with its identified goods, so resembles the registered mark RED CARPET CUPCAKE in standard characters for “bakery goods,” in International Class 30,1 as to be likely to cause confusion, mistake or deception.2 When there is a question of likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). 1 Registration No. 3437347, issued on May 27, 2008. 2 The examining attorney also refused registration pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), based on applicant’s failure to comply with the requirement to disclaim the wording RED VELVET CAKE on the ground that it is merely descriptive of applicant’s goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). In its response to the first Office Action and again in its reply brief, applicant stated that it “does not oppose the disclaimer” and “expressed a willingness to disclaim” the wording “red velvet cake.” In view of applicant’s agreement to comply with the disclaimer requirement, the disclaimer is entered and the refusal on this ground is moot. Serial No. 85120587 3 In determining the similarity between applicant’s mark RED CARPET RED VELVET CAKE and registrant’s mark RED CARPET CUPCAKE, we analyze “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 dominant element in both marks is the identical phrase RED CARPET. The phrase RED VELVET CAKE in applicant’s mark is merely descriptive of the flavor of the frozen confections. See, e.g., www.yelp.com and http://absentminddoracle.blogspot, attached to the December 15, 2012 Office action. Similarly, the word CUPCAKE in registrant’s mark is the generic term for certain goods encompassed by registrant’s bakery goods, namely, cupcakes. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (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 when evaluating the similarities of the marks.) Conversely, the phrase RED CARPET, in both marks, is arbitrary in connection with the respective goods and, as such, is conceptually strong. Further, although the additional terms CUPCAKE and RED VELVET CAKE connote Serial No. 85120587 4 different types of cake, the words nonetheless connote the same category i.e., cakes. While there are differences in appearance and sound between the marks, we find that the similarities outweigh the dissimilarities. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993). We turn to consider the du Pont factor of the relatedness of the goods. We base our evaluation on the goods as they are identified in the registration and application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not necessary that the respective goods be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, 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. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be sufficiently related that consumers would be likely to assume, upon encountering the goods under similar marks, that the goods originate from, are sponsored or authorized by, or are otherwise connected to the same source. See In re Martin’s Famous Pastry Shoppe, Serial No. 85120587 5 Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Finally, in making our determination we keep in mind that the greater the degree of similarity in the marks, the lesser the degree of similarity that is required of the goods on which they are being used in order to support a holding of likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993). The examining attorney argues that the goods are closely related because “[a] confection is defined as defined as [sic] a ‘sweet food’. Therefore applicant’s and registrant’s bakery goods are confections. Since both the Applicant’s and Registrant’s goods feature confections the goods are very closely related.”3 We reject this argument. First, to the extent the examining attorney is intimating that the identification “frozen confections” includes frozen bakery goods, we do not subscribe to that interpretation. The U.S. Acceptable Identification of Goods and Services Manual (ID Manual) includes entries for 3 Ex. Att. Br. pp. 9-10. See Merriam-Webster Online Dictionary (www.merriam-webster.com 2011), attached to April 18, 2011 Office Action. Serial No. 85120587 6 “frozen bread” and “frozen pie crust.”4 Thus, we presume that bakery goods sold in frozen form would be identified as “frozen bakery goods.” “Frozen confections” would include items such as ice cream or similar non-dairy frozen goods (e.g., freezer pops, cashew cream, coconut milk, etc.). Second, we are not persuaded by the argument that because the general definition of confections is “sweet food” and bakery goods are “sweet food” the goods are related or at a minimum that applicant’s goods are within the normal expansion of registrant’s goods, i.e., that registrant, a purveyor of baked goods, is likely to expand into selling frozen confections (e.g., ice cream). However, the record does show a relationship between these goods that goes beyond the mere fact that they are both dessert items. The web page excerpts submitted by the examining attorney show other ice cream companies selling ice cream with red velvet cake pieces folded into the ice cream. See, www.theimpulsivebuy.com (Ben & Jerry’s red velvet cake ice cream) attached to the April 14, 2011 Office action. In addition, the record contains a blog discussion that includes references to what appears to be registrant’s red velvet cupcakes and Baskin Robbin’s red 4 The Board may take judicial notice of entries from the ID Manual. Serial No. 85120587 7 velvet cake-flavored ice cream. See, http://absentmindedoracle.blogspot. This evidence supports a finding that cake, encompassed within “bakery goods,” and ice cream, encompassed within “frozen confections,” are complementary and even, in at least one instance, combined as a single product. Martin’s Famous Pastry, 223 USPQ at 1290. With regard to the channels of trade, while both goods would certainly be found in grocery stores, that alone is not necessarily sufficient to find marketing circumstances that could allow for likely confusion. Federated Foods, 192 USPQ 24. However, the examining attorney submitted web pages advertising dessert cafes offering both bakery goods and ice cream.5 For example, the record includes the web page for a listing of cafes in Austin, Texas that offer 5 The examining attorney also submitted three third-party registrations that include both bakery goods and frozen confections. However, each of these registrations issued under Section 66(a) of the Trademark Act and, as such, are of no probative value. Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 (TTAB 2011); In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). Given this long-standing principle, it is inexplicable that the examining attorney submitted these third-party registrations as evidence in the first place and then doggedly kept referring to them throughout prosecution, including in his brief. We further note that one of the third-party registrations does not include both goods inasmuch as the various frozen confections appear in brackets which indicates that they have been deleted from the registration. Serial No. 85120587 8 bakery goods and ice cream (www.urbanspoon.com), a bakery cafe in Philadelphia that offers baked goods and ice cream (www.bredenbecks.com), and an ice cream cafe in Hawaii that offers ice cream and baked goods (www.lappertshawaii.com), all attached to the April 18, 2011 final Office action. In addition, the record includes examples of entities that both produce and sell baked goods and ice cream. See Weber’s Farm (www.weberscidermillfarm.com) and Bergy’s Breadbasket (www.bergeysbreadbasket.com).6 This evidence both supports a finding that the channels of trade and classes of customers overlap and corroborates the other evidence that bakery goods and frozen confections, and in particular cake and ice cream, are complementary. Martin’s Famous Pastry, 223 USPQ at 1290 (“[T]here is an extensive pattern of complementary interests; the channels of trade, the types of stores, the commonality of purchasers, and the conjoint use.”) 6 Citing to an inter partes case, applicant argues that the probative value of the third-party websites is limited because there is no evidence of whether the public is aware of the businesses identified by the websites. We note, however, that in the context of an ex parte proceeding we review the evidence with a broader perspective given the limited resources available to the examining attorney. In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed. Cir. 2003). See also In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir. 1985) (“The practicalities of the limited resources available to the PTO are routinely taken into account in reviewing its administrative action.”) Serial No. 85120587 9 Applicant’s arguments regarding the need for the examining attorney to present evidence of “something more” to establish relatedness of the goods is misplaced. The “something more” element is applied in analyzing the relationship between goods and services. Jacobs v. International Multifoods Corp, 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982) (something more needed to establish relatedness between food products and restaurant services); In re Giovanni Food Co., 97 USPQ2d 1990 (TTAB 2011) (something more needed to establish relatedness of catering services and barbecue sauce) (for example, restaurants and ice cream). Similarly, applicant’s arguments relying on In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) are misplaced because that case also involved the issue of the relationship between goods (beer) and restaurant services. In addition, applicant’s arguments regarding registrant’s actual channels of trade and “niche” customers, are not persuasive. Given the absence of any limitations in their respective identifications of goods, we must presume that they travel in all ordinary channels of trade for those goods and are offered to all relevant consumers. Hewlett-Packard, 62 USPQ2d 1001. We cannot limit registrant’s goods, channels of trade or classes of Serial No. 85120587 10 customers to what any evidence shows them to be. In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986) (“It is well settled that in a proceeding such as this, the question of likelihood of confusion must be determined by an analysis of the marks applied to the goods as identified in the application vis-à-vis those recited in the registration, rather than what extrinsic evidence shows those goods to be.”) In conclusion, we find that because the marks are conceptually strong and highly similar, the goods are related, and the channels of trade and classes of purchasers are the same, confusion is likely between applicant’s mark and the mark in the cited registration. To the extent there are any doubts, we resolve them, as we must, in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.