American Pie LLC

Trademark Trial and Appeal Board

Jun 14, 2002

No. 75519001 (T.T.A.B. Jun. 14, 2002)

6/14/02

Paper No. 15
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Pie LLC
________

Serial No. 75/519,001
_______

Myron Amer, P.C. for applicant.

Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______

Before Seeherman, Hohein and Hairston, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by American Pie LLC to
register the mark AMERICAN PIE for “pie shells.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to its goods, so

1 Serial No. 75/519,001, filed on July 15, 1998, which is based
on a bona fide intention to use the mark in commerce. The word
“PIE” has been disclaimed apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/519,001
2
resembles the mark RBI AMERICAN PIE, as shown below,

which is registered for “pies,”2 as to be likely to cause
confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested. We affirm the refusal to
register.
Our determination under Section 2(d) of the Trademark
Act is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between

2 Registration No. 2,012,994, issued November 5, 1996.
Ser No. 75/519,001
3
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Turning first to consideration of the respective
goods, it is the Examining Attorney’s position that pies
and pie shells are closely related goods. As noted by the
Examining Attorney, pie shells are used to prepare pies.
Also, pies and pie shells are sold in the same channels of
trade, namely grocery stores, food markets and the like, to
the same class of purchasers, namely ordinary consumers.
Further, in support of her position that pies and pie
shells are closely related goods, the Examining Attorney
made of record several use-based third-party registrations
which indicate that entities have registered a single mark
for pies, on the one hand, and pie shells, on the other
hand. These third-party registrations are probative to the
extent that they suggest that the involved goods are of
type, which may emanate from a single source under the same
mark.
Under the circumstances, we find that pies and pie
shells are sufficiently related that, if sold under the
same or substantially similar marks, confusion as to source
or sponsorship is likely to occur. We should point out
that applicant has not argued to the contrary. Rather,
applicant’s arguments focus on the respective marks.
Ser No. 75/519,001
4
Turning therefore to consideration of the marks,
applicant argues that given the presence of the letters
“RBI” and the design in the cited mark, the respective
marks are sufficiently distinguishable to avoid confusion.
Further, applicant argues that marks consisting of the term
AMERICAN PIE are weak marks and, therefore, entitled to a
limited scope of protection. In support of its argument,
applicant relies on two third-party applications and one
third-party registration for marks, which include the term
AMERICAN PIE.
In this case, we agree with the Examining Attorney
that the respective marks are highly similar in overall
commercial impression due to the shared term AMERICAN PIE.
While the marks must be considered in their
entireties, it is nevertheless appropriate, for rational
reasons, to regard certain features of the marks as being
more dominant or otherwise significant, and therefore to
give those features greater weight. In the case of marks,
which consist of words and a design, the words are normally
accorded greater weight because they would be used by
purchasers to request the goods. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Applying such principles to the cited mark, it is
clear that the term AMERICAN PIE is the dominant literal
Ser No. 75/519,001
5
and source-identifying element in this mark. We believe it
is fair to assume that the design element, which includes a
baseball pitcher and pie on a diamond background, and the
letters “RBI”, which in the context of the design element
would appear to stand for “Runs Batted In” in the game of
baseball, are intended to convey the idea that baseball is
as American as apple pie. Thus, the design element and
letters “RBI” suggest the association of pie with America,
and serve to reinforce the mark AMERICAN PIE.
There is no question that the letters “RBI” and the
design element in the cited mark are noticeable, and if we
were making a side-by-side comparison of the marks, the
differences in the marks would be obvious. This, however,
is not the proper test. Rather, it is the overall
commercial impression of the marks which will be recalled
over a period of time by the average consumer that must be
taken into account in determining likelihood of confusion.
In view of the foregoing, and while differences
admittedly exist between the respective marks, when
considered in their entireties, and according appropriate
weight to the dominant portions thereof, applicant’s mark
AMERICAN PIE is substantially similar in commercial
impression to the cited mark RBI AMERICAN PIE and design.
Ser No. 75/519,001
6
As to applicant’s argument that the cited mark is weak
and therefore entitled to a limited scope of protection, we
should point out that third-party registrations, in and of
themselves, are entitled to little weight in evaluating
whether there is a likelihood of confusion. See, e.g., AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177
USPQ 268, 269 (CCPA 1973); and In re Hub Distributing,
Inc., 218 USPQ 284, 285-86 (TTAB 1983). This is because
third-party registrations are not evidence of what happens
in the marketplace.3
In sum, we find that in view of the substantial
similarity in the overall commercial impression of
applicant’s mark and the cited mark, their contemporaneous
use on the closely related goods involved in this case is

3 In this case, applicant has submitted only one third-party
registration, namely, Registration No. 2,384,578 for the mark
AMERICAN PIE COUNCIL for “trade association services, namely,
promoting the interests of pie makers and pie-related companies.”
We cannot find that the cited registration for the mark RBI
AMERICAN PIE and design is weak based on this single
registration. As to the two third-party applications submitted
by applicant, we should point out that third-party applications
are evidence only of the fact that such applications were filed;
unlike registrations, they are not evidence of the weakness of
marks. Moreover, we note that the two applications have been
abandoned.
Ser No. 75/519,001
7
likely to cause confusion as to the source or sponsorship
of such goods.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.