Wilbur Packing Co.

Trademark Trial and Appeal Board

Jun 24, 1997

EX (T.T.A.B. Jun. 24, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB June 24, 1997
Paper No.
BG/NSD
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Wilbur Packing Company
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Serial No. 74/567,447
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Michael J. Hughes of Law Offices of Michael J. Hughes for
Wilbur Packing Company
Zhaleh S. Delaney, Trademark Examining Attorney, Law Office
101 (Christopher Wells, Managing Attorney)
_______
Before Sams, Simms and Seeherman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Wilbur Packing Company (applicant), a California joint
venture, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark WILBUR for
dried fruits.1 The Examining Attorney has refused
registration under 2(d) of the Act, 15 USC Section 1052(d),
on the basis of three registrations held by Wilbur Chocolate
Company, Inc. The first of these registrations
(Registration No. 334,404, issued May 5, 1936) has now
expired as the result of registrant’s failure to renew in

1Application Serial Number 74/567,447, filed August 29, 1994,
claiming use since October 1, 1992.
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2
1996, and the arguments of the attorneys concerning the
similarities or lack thereof between the goods in this
registration and applicant’s dried fruit are therefore
disregarded. The remaining two registrations cover the
marks WILBUR BUDS (stylized) and WILBUR. These
registrations, respectively, issued for the following goods:
candy and chocolate (Registration No. 419,097, issued
February 5, 1946, second renewal); and chocolate coatings,
chocolate liquors, chocolate candy and chocolate-flavored
syrup for food beverages and other food purposes
(Registration No. 811,794, issued July 26, 1966, renewed).
It is the Examining Attorney's position that the marks
of applicant and registrant are very similar and that the
goods are closely related. The Examining Attorney argues
that the dominant origin-indicating feature of each mark is
the word "WILBUR." The Examining Attorney argues that
applicant's dried fruit and registrant's candy and chocolate
candy are related products in that they are all processed
snack food items traveling in the same channels of trade.
The Examining Attorney contends that dried fruits and a
variety of candies are often offered side-by-side in retail
stores and often eaten between meals as snacks. Further,
the Examining Attorney maintains that dried fruits and
chocolate candies may even be used together in making "trail
mix" or "gorp." (The Examining Attorney has attached
definitions of those terms to her appeal brief.) Finally,
the Examining Attorney has made of record numerous third-
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3
party registrations showing that the companies have
registered certain marks both for candy, including chocolate
candy, and dried fruit. For example, the mark "THE NUTTY
BAVARIAN" is registered for both dried fruit, candy and
chocolate raisins (Registration No. 1,830,450, issued April
12, 1994); the mark GROWERS' STORE is registered for dried
fruit and chocolate-covered raisins (Registration No.
1,755,569, issued March 2, 1993); while another mark has
been registered (Registration No. 1,551,148, issued August
8, 1989) for such goods as candy, chocolate and chocolate
candy, cocoa preparations for food beverages, snack bars
containing nuts, and dried fruit. An additional factor
creating a likelihood of confusion, according to the
Examining Attorney, is the fact that the respective goods
are purchased on impulse. Finally, the Examining Attorney
contends that, if there is any doubt, it should be resolved
in favor of the prior user and registrant.
It is applicant’s position, on the other hand, that
there is no per se rule that all foods products are related.
Here, applicant contends, registrant's chocolate products
are a "far cry" from applicant's dried fruit, and that these
goods are classified in different classes.2 Further,
applicant argues that the respective goods are sold in

2In this regard, the Examining Attorney correctly points out
that determinations concerning classification of goods and
services are purely administrative in nature and unrelated to
any determination of likelihood of confusion. National Football
League vs. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB
1990).
Ser No. 74/567,447
4
different sections of stores, dried fruit being sold near
the fresh produce section whereas chocolate products would
be sold in the candy section. While applicant concedes that
some entities may offer both candies and dried fruit, it is
applicant's contention that the third parties reflected in
the registrations of record are general candy and snack
companies and not manufacturers that specialize in chocolate
like registrant. According to applicant, any association by
consumers with the registered marks is with chocolate
products and not candies in general and the public will not
expect that the registrant is now offering dried fruit.
Applicant relies upon In re Mars, Inc., 222 USPQ 938 (Fed.
Cir. 1984), wherein the court found no likelihood of
confusion between CANYON for fresh citrus fruit and CANYON
for candy bars. In this regard, applicant maintains that
its product is fresh fruit which has been dried while
registrant's goods are highly processed food with a mixture
of ingredients. Finally, applicant maintains that, because
the registered marks allegedly include the surname WILBUR,
the scope of protection accorded the registrations should be
limited so as not to be "an unjustified and unnecessary
barrier to others sharing the surname." Applicant's brief,
8.
After careful consideration of this record and the
arguments of the attorneys, we believe that applicant's mark
WILBUR for dried fruit so resembles the registered marks for
candy and chocolate candy as to be likely to cause
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confusion. Applicant has not seriously disputed the
similarities of the marks in their entireties and we believe
that they are substantially similar in sound, appearance and
commercial impression. With respect to the goods, we agree
with the Examining Attorney that they are commercially
related and may be sold very near each other in the same
stores. Given these facts and the inexpensive nature of the
respective goods and the impulse nature of their purchase,
we believe that purchasers familiar with registrant's marks
WILBUR and WILBUR BUDS for various chocolate products who
then encounter applicant's WILBUR dried fruit are likely to
believe that all these products come from the same source.
Contrary to applicant's argument, we do not believe that the
average consumer will be so familiar with registrant and its
business that he or she will believe that registrant would
not have "expanded" into dried fruit. There is nothing in
this record to show that ordinary purchasers of these
inexpensive items often purchased on impulse would have that
knowledge. Finally, not only are the goods here--dried
fruit and candy--more closely related than the goods in the
Mars case (fresh citrus fruit and candy bars), but also here
there is evidence that producers offer both dried fruit and
candy under the same mark, making it more likely that
purchasers will believe that applicant’s goods come from the
same source that sells candy and chocolate candy under the
same mark.
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Decision: The refusal to register is affirmed.
J. D. Sams
R. L. Simms
E. J. Seeherman
Administrative Trademark Judges
Trademark Trial and Appeal Board
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