Adams & Brooks, Inc.v.Morris National, Inc.

Trademark Trial and Appeal Board

Oct 2, 2013

No. 92052158re (T.T.A.B. Oct. 2, 2013)

Hearing: April 24, 2013 Mailed: October 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Adams & Brooks, Inc.
v.
Morris National, Inc.
_____

Cancellation No. 92052158
_____

Bassam N. Ibrahim and Bryce Maynard of Buchanan Ingersoll & Rooney PC
for Adams & Brooks, Inc.

Elliot B. Gipson of Fayer Gipson LLP for Morris National, Inc.
_____

Motion for Reconsideration
_______

Before Grendel, Zervas, and Shaw, Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
The Board, in a decision issued July 23, 2013, granted the petition to
cancel the registration of the mark NUTFFLES for chocolate and candy.”
Respondent has filed a timely motion for reconsideration and
petitioner timely filed a brief in response thereto. See Trademark Rule
2.129(c). Respondent also filed a reply brief. The Trademark Rules of
Practice make no provision for the filing of a reply brief on a request for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92052158
2

reconsideration of a decision issued after final hearing. See Id. Nevertheless
we have exercised our discretion and considered the reply brief. Trademark
Trial and Appeal Board Manual of Procedure (“TBMP”) § 543 (3d Ed., rev. 2
June 2013).
In its motion for reconsideration, respondent asserts that our decision
is in error for the following reasons:
1. The Board erred in failing to consider the marks in their
entireties in its analysis of the appearance and sound;
2. The Board erred in finding the connotations and commercial
impressions similar;
3. The Board erred by finding the goods and channels of trade
identical in the proposed description of respondent’s petition to
the amended registration; and
4. The Board erred in shifting the burden of proof onto the
respondent whose mark enjoys the presumption of validity.
The premise underlying a request for rehearing, reconsideration, or
modification under Trademark Rule 2.129(c) is that, based on the evidence of
record and the prevailing authorities, the Board erred in reaching the
decision it issued. See TBMP § 543 and the authorities cited therein. The
request may not be used to introduce additional evidence, nor should it be
devoted simply to a reargument of the points presented in the requesting
party's brief on the case. See Amoco Oil Co. v. Amerco, Inc., 201 USPQ 126
Cancellation No. 92052158
3

(TTAB 1978). Rather, the request normally should be limited to a
demonstration that based on the evidence properly of record and the
applicable law, the Board's ruling is in error and requires appropriate
change. See, Steiger Tractor Inc. v. Steiner Corp., 221 USPQ 165 (TTAB
1984), different results reached on reh’g, 3 USPQ2d 1708 (TTAB 1984). Cf. In
re Kroger Co., 177 USPQ 715, 717 (TTAB 1973). Although much of
respondent’s motion for reconsideration is nothing more than reargument, in
the interest of completeness, we will address each point in turn.
1. The Board erred in failing to consider the marks in their
entirety in its analysis of the appearance and sound.

Respondent first argues that the Board improperly dissected the
marks into their respective parts instead of considering the marks in their
entireties. Respondent argues that by focusing on “[c]omparing the
appearance and sound of the marks without the letter “P” changes the whole
dynamics of appearance and sound of the respective marks.”1 Respondent is
mistaken.
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 in determining the commercial impression created by the mark. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(“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

1 Respondent’s Motion for Reconsideration at 3.
Cancellation No. 92052158
4

ultimate conclusion rests on consideration of the marks in their entireties.
Indeed, this type of analysis appears to be unavoidable.”).
The Board gave more weight to the NUTTLES/NUTFFLES elements of
the marks because it found these elements sounded similar and also because
they suggested a product with a plurality of nuts. Contrary to respondent’s
argument, the Board recognized that the letter “P” in petitioner’s marks was
a significant difference, but discounted the overall impact relative to
NUTTLES and NUTFFLES inasmuch as all of the marks suggest that they
contain nuts. The Board then looked at the marks in their entireties:
When we view the marks in their entireties, we
find that the marks have a similar appearance,
similar elements of sound, and similar connotation
and commercial impression in that they suggest the
goods contain a plurality of nuts.

In view of the foregoing, we find that the Board did not improperly
dissect the parties’ marks.
2. The Board erred in finding the connotations and
commercial impressions similar.

Respondent next argues that the Board “failed to consider and give the
proper weight to Respondent’s evidence of the connotation and commercial
impression of the parties’ respective marks given petitioner’s . . . lack of
submission of any evidence on this point whatsoever.” In particular,
respondent argues that the Board ignored respondent’s evidence that its
“NUTFFLES mark was a combination of the words NUT and TRUFFLES”
Cancellation No. 92052158
5

which “creates a commercial impression suggesting truffles.”2 Respondent is
mistaken. The Board specifically stated that the “commercial impression
created by respondent’s mark suggests a plurality of nut truffles or a truffle
containing a plurality of nuts.”3 The Board, however, found that petitioner’s
marks also suggested a product containing a plurality of nuts and were
similar in sound to respondent’s mark.
It is not necessary that mark be similar in each of the du Pont
elements of “appearance, sound, connotation and commercial impression.”
Du Pont, 177 USPQ at 567. Similarity in sound alone may be sufficient for a
finding of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523 (CCPA 1968); Molenaar Inc. v. Happy Toys Inc.,
188 USPQ 469 (TTAB 1975). The fact that respondent’s mark suggests a
particular type of candy, i.e., chocolate truffles, is less significant inasmuch
as all three marks suggest a plurality of nuts, are used on candies, and are
similar in sound. Additionally, the fact that petitioner’s goods may be made
in kettles does not in any way reduce the similarity in sound of the marks.
In view of the foregoing, we find that respondent has failed to show
that the Board did not give proper weight to respondent’s evidence.

2 Respondent’s Motion for Reconsideration at 5-6.
3 Board’s Opinion at 10.
Cancellation No. 92052158
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3. The Board erred by finding the goods and channels of trade
identical in the proposed description of respondent’s
petition to the amended registration.

Respondent next argues that “the amended description [chocolate,
namely premium Belgian chocolate truffles] does not fall within Petitioner’s
‘nut candies’ and therefore the goods are not identical.”4 This is simply a re-
argument of the points already addressed in the board’s original decision.
Additionally, respondent’s argument flies in the face of the dictionary
definition of a truffle noted by the Board, as well as the very nature of
respondent’s goods. A truffle is defined as “a candy made of chocolate, butter,
sugar, and sometimes liqueur shaped into balls and often coated with cocoa.”5
Respondent’s mark begins with the word “NUTS” and respondent’s goods
obviously contain nuts. Respondent’s attempt to characterize its goods as
anything but candy containing nuts must fail. For purposes of likelihood of
confusion, the fact that respondent’s goods may be a particular kind of nut
candy does not mean that the goods are outside of petitioner’s broadly worded
description of goods. In re Elbaum, 211 USPQ 639 (TTAB 1981) (“[W]here
the goods in a cited registration are broadly described and there are no
limitations in the identification of goods as to their nature, type, channels of
trade or classes of purchasers it is presumed that the scope of the registration
encompasses all goods of the nature and type described. . . .”).

4 Respondent’s Motion for Reconsideration at 8.
5 Merriam-Webster.com.
Cancellation No. 92052158
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In view of the foregoing, we find that respondent has failed to show
that the Board erred in finding respondent’s narrowly described goods are
encompassed by petitioner’s broadly described goods.
4. The Board erred in shifting the burden of proof onto the
respondent whose mark enjoys the presumption of validity.

Respondent lastly argues that the Board, in stating that it would
resolve any doubt in favor of petitioner, “lost sight of the fact that the
Respondent is entitled to the presumption that its registration is valid by
statute.”6 We disagree. It is well settled that “if there is any doubt as to the
likelihood of confusion, that doubt must be resolved against the newcomer.”
Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir.).
Section 14 of the Trademark Act provides for the cancellation of
registered marks, notwithstanding a presumption of validity of the
registration. 15 U.S.C. § 1064. It is precisely because a registration has a
presumption of validity that a petitioner must prove its case by a
preponderance of the evidence. See Cerveceria Centroamericana S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309-1310 (Fed. Cir.
1989) (“[T]he petitioner’s burden is to establish the case for cancellation by a
preponderance of the evidence” and “[T]he registrant benefits from a
presumption of validity.”). The Board specifically recognized in its opinion

6 Respondent’s Motion for Reconsideration at 11.
Cancellation No. 92052158
8

that “petitioner has the burden to establish that there is a likelihood of
confusion by a preponderance of the evidence.”7
Determination of a likelihood of confusion under Section 2(d) is decided
by examining all of the relevant evidence made of record. Du Pont, 177
USPQ at 567. Thus, some evidence may favor a respondent, while other
evidence may favor a petitioner. Moreover, “[r]easonable men may differ as
to the weight to give specific evidentiary elements in a particular case.” Id.
It is the duty of the Board to weigh the evidence for and against a likelihood
of confusion and to decide whether the evidence compels a finding of
likelihood of confusion, or not. In so deciding, the Board must give more
weight to some evidence while giving less weight to other evidence.
The Board found that the marks are similar, the goods are legally
identical, and the channels of trade and consumers are presumed to overlap,
and therefore, petitioner had met its burden of proof to show that there is a
likelihood of confusion between the marks, when used on the identified goods.
The Board did not find that respondent’s arguments, for example, regarding
the strength of the marks or the presence of actual confusion, outweighed
petitioner’s showing of a likelihood of confusion.
Once petitioner has proven its case by a preponderance of the evidence,
there is nothing improper in stating that any doubt as to remaining
arguments may be resolved in favor of the senior user, especially where a
newcomer has adopted a mark similar to one already in use. It is well settled

7 Board Opinion at 6.
Cancellation No. 92052158
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that a newcomer has an obligation to avoid confusion with established marks
in the same market. See Bridgestone Americas Tire Operations LLC v.
Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1063 (Fed. Cir. 2012), citing
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d
1001 (Fed. Cir. 2002) (“This court resolves doubts about the likelihood of
confusion against the newcomer because the newcomer has the opportunity
and the obligation to avoid confusion with existing marks.”); and Planters
Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 924-25, 134 USPQ 504
(CCPA 1962) (“[A]ll doubt as to whether confusion, mistake, or deception is
likely is to be resolved against the newcomer.”).
After due consideration of all the issues raised in respondent’s motion
for reconsideration and in its reply brief, including those not specifically
addressed herein, respondent’s request for reconsideration is denied and the
Board adheres to its decision of July 23, 2013 granting the petition for
cancellation.