Annabelle’s Natural Ice Cream & Yogurt, Inc.

Trademark Trial and Appeal Board

Jun 14, 2012

No. 85152285 (T.T.A.B. Jun. 14, 2012)

Mailed: June 14, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Annabelle’s Natural Ice Cream & Yogurt, Inc.
________

Serial No. 85152285
_______

Robert E. Purcell of The Law Office of Robert E. Purcell,
PLLC for Annabelle’s Natural Ice Cream & Yogurt, Inc.

Benji Paradewelai, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Bergsman, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Annabelle's Natural Ice Cream & Yogurt, Inc.
filed, on October 14, 2010, an application to register the
mark shown below for “ice cream” in International Class 30.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 85152285
2
Applicant has disclaimed “NATURAL ICE CREAM” apart
from the mark as shown. Applicant asserts June 10, 1982,
as the date of first use of the mark in commerce.
The trademark examining attorney has refused
registration of applicant’s mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), having determined that
registration would lead to a likelihood of confusion in
view of Reg. No. 1579285 for the mark ANNABELLE’S for
“confectionery, namely candy” in International Class 30.1
When the refusal was made final, applicant appealed.
The appeal has been fully briefed. We affirm.
I. Evidentiary Issue
Initially, we note that the trademark examining
attorney has introduced copies of Internet web pages from
the following websites:
http://www.dovechocolate.com/products_chocolate_p1.html
http://www.m-ms.com/us/about/products/icecream/
http://www.m-ms.com/us/about/products/milkchocolatemms/
http://www.weightwatchers.com/shop/categoryshowcase.aspx?pa
geid=10564617navid-moreww

These websites (dovechocolate.com, m-ms.com, and
weightwatchers.com) display candy, chocolate and ice cream
food items. With respect to the first three websites,

1 Registered January 23, 1990; Section 8 (10-year) accepted;
Section 9 granted; renewed.
Serial No. 85152285
3
applicant argues that because the companies that sell these
goods--“Nestle” and “Mars”2--also sell goods that are
clearly unrelated to candy or ice cream (respectively,
“baby food, dog food, frozen pizzas, etc.” and “dog and cat
food, rice, tea, etc.”3) there is no basis for finding candy
and ice cream to be related. The trademark examining
attorney objects to applicant’s argument on the ground that
“this evidence…is not of record and cannot be verified.”4
Suffice it to say that assertions in briefs are not
recognized as evidence. In re Simulations Publications,
Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975); In re
Vesoyuzny Ordena Trudovogo Krasnogo Znameni, 219 USPQ 69,
70 (TTAB 1983). See also Spin Physics, Inc. v. Matsushita
Electric Co., 168 USPQ 605, 607 (TTAB 1970) (the arguments
and opinion of counsel are insufficient to overcome the
facts). We decline to strike applicant’s arguments, and
simply consider the facts as they are shown by the record
regarding the goods and/or services offered by Nestle and
Mars.
As for the evidence from weightwatchers.com, applicant
argues that “The ‘WeightWaters’ [sic] program offers just
about every edible thing known to the American consumer,

2 Applicant’s Brief, p. 5.
3 Id.
Serial No. 85152285
4
including such diverse products as chicken, rice, cakes,
(see for example the box in the upper left hand corner of
each website page).”5 Again, the trademark examining
attorney objects to this “evidence” as not being of record,
but it is merely argument to be accorded whatever weight it
deserves. In this case, we note that the “box in the upper
left hand corner” shows that Weight Watchers offers, at the
least, “sweet baked goods and candies,” “chilled ready
meals,” dairy products such as “ice cream bars,” “Smart
Ones,” “breads,” “scales,” and other “endorsed products.”
II. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay
Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering
the evidence of record on these factors, we keep in mind

4 Trademark Examining Attorney’s Brief, p. 5 (unnumbered).
5 Applicant’s Brief, p. 6.
Serial No. 85152285
5
that “[t]he fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also
In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB
1999).
III. Discussion
A. Similarity or Dissimilarity of the Marks in Their
Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. In comparing the marks, the test 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 so that confusion as to the source of those
goods or services offered under the respective marks is
likely to result. Coach Services Inc. v. Triumph Learning
LLC, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The focus is
on the recollection of the average purchaser who normally
retains a general rather than specific impression of
trademarks. L'Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
Serial No. 85152285
6
(TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). In this case, the average purchaser
is a general consumer who purchases ice cream and/or candy.
Applicant’s mark ANNABELLE’S NATURAL ICE CREAM and
design incorporates registrant’s entire mark ANNABELLE’S.
While the mere fact that the marks share this common
element does not compel us to find that the marks are
similar, it is a factor in comparing the overall commercial
impressions engendered by the marks as perceived by
consumers. Likelihood of confusion has frequently been
found where one mark incorporates the entirety of another
mark. Coca-Cola Bottling Co. of Memphis, Tennessee, Inc.
v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ
105, 106 (CCPA 1975) (BENGAL for gin and BENGAL LANCER for
nonalcoholic club soda, quinine water and ginger ale);
Johnson Publishing Co. v. International Development Ltd.,
221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and
EBONY DRUM for hairdressing and conditioner); In re South
Bend Toy Manufacturing Company, Inc., 218 USPQ 479, 480
(TTAB 1983) (LIL’ LADY BUG for toy doll carriages and
LITTLE LADY for doll clothing).
The term “Annabelle’s” is the dominant portion of
applicant’s mark because the words “ice cream” and
“natural” are descriptive, if not generic, when used in
Serial No. 85152285
7
connection with ice cream, and the design, being of a girl,
an ice cream cone, and a cow, reinforces the impression of
ice cream made by a person (real or fictional) named
“Annabelle.” It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, 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
ultimate conclusion rests on a consideration of the marks
in their entireties. See In re Chatam International Inc.,
380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Further, as ice cream is a consumer product that is
often ordered at specialty stores where the consumer
selects the particular flavor he or she desires, it is the
name ANNABELLE’S by which applicant’s natural ice cream
will be called for and referred to, and it is therefore the
name ANNABELLE’S which has the stronger source-identifying
significance and will be most likely remembered. See In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987)(“[I] f one of the marks comprises both a word and a
design, then the word is normally accorded greater weight
because it would be used by purchasers to request the goods
Serial No. 85152285
8
or services.”). Consumers are likely to sound out
applicant’s mark as ANNABELLE’S.
Applicant argues that the design of the cow in
applicant’s mark is incongruous with candy, and that the
words “ice cream” in applicant’s mark helps consumers to
distinguish the goods, unlike “a descriptive term such as
‘yummy’, which may be equally applicable to both candy and
ice cream.”6 As to any perceived incongruity in the design,
we disagree with applicant’s conclusion. The cow depicted
in the design suggests milk, an ingredient used in both ice
cream and confectionery such as caramel, a “chewy candy
made from milk, butter, and sugar”.7
Applicant cites to In re Farmfresh Catfish Co., 231
USPQ 495 (TTAB 1986), in support of its argument that the
presence of the words “ice cream” overcomes a likelihood of
confusion. In that case, the applicant successfully
registered the mark CATFISH BOBBERS for “fish” over the
mark BOBBER for “restaurant services.” However, the Board
did not base its reversal on the presence of the word

6 Applicant’s Brief, p. 8.
7 Academic Press Dictionary of Science and Technology (1992).
Retrieved from http://www.credoreference.com/entry/apdst/caramel.
The Board may take judicial notice of dictionary definitions,
including definitions or entries from references that are the
electronic equivalent of a print reference work. See University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Serial No. 85152285
9
“catfish” in that mark but rather on the fact that “catfish
bobber” was suggestive of the nugget, bob-like shape of the
applicant’s goods (a “bob” is a type of fishing float),
while “bobber” was arbitrary with respect to restaurant
services. Likewise, applicant’s reliance on Steve’s Ice
Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477 (TTAB 1987)
is misplaced. In that case, applicant successfully
registered STEVE’S and design (of dancing hot dogs) for
“restaurant services” over a registration for the mark
STEVE’S for “ice cream for consumption on or off the
premises.” While acknowledging that the marks were
distinguishable because of the design portion of
applicant’s mark, the Board also relied upon the fact that
numerous third-party businesses used “Steve’s” or a related
term as all or part of their trade names in related fields,
resulting in a purchasing public that was conditioned to
distinguish between these businesses based on small
distinctions between the marks. Here, we have no such
evidence.
Applicant’s mark ANNABELLE’S NATURAL ICE CREAM and
design is substantially similar to registrant’s mark
ANNABELLE’S because consumers will not place any source-

Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334
n.1 (TTAB 2009); see also TBMP § 1208.04 (3d ed. 2011).
Serial No. 85152285
10
indicating value on the terms “natural” or “ice cream”;
they will associate the design with the name “Annabelle’s”;
and ANNABELLE’S is the dominant portion of the mark.
Consumers are likely to perceive ANNABELLE’S NATURAL ICE
CREAM and design as the ice cream line of ANNABELLE’S
products. This du Pont factor favors a finding of
likelihood of confusion.
B. Similarity or Dissimilarity of the Parties’ Goods

Applicant uses its mark on “ice cream.”
Registrant’s mark ANNABELLE’S has been registered for
“confectionery, namely candy.”
Consumers have come to recognize that these types of
foods are often sold together under a single mark. To
illustrate, the examining attorney provided copies of web
pages from the following websites:
1. At www.wegmans.com, a visitor to the website will see
an advertisement for ice cream bars sold under the
mark SNICKERS as well as candy bars sold under the
same mark; and an advertisement for vanilla ice cream
sandwiches sold under the mark NESTLE as well as bell-
shaped chocolates sold under the mark NESTLE CRUNCH
JINGLES.
Serial No. 85152285
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2. At www.dovechocolate.com, a visitor to the website
will see “DOVE® PRODUCTS” followed by pictures of
chocolate bars sold under the mark DOVE as well as ice
cream containers and ice cream bars sold under the
mark DOVE.
3. At www.m-ms.com, a visitor to the website will see
“M&M’S BRAND ICE CREAM PRODUCTS” followed by pictures
of the packaging for ice cream sandwiches, ice cream
cones, and ice cream cake, as well as “M&M’S MILK
CHOCOLATE” brand candies.
In addition, the trademark examining attorney has
submitted copies of five third-party registrations that
identify both “ice cream” and “candy” in the identification
of goods. Copies of use-based, third-party registrations
may serve to suggest that the goods are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
Applicant argues that the small number of
registrations found by the trademark examining attorney
shows that these goods are rarely the subject of a single
registration. However, while the number is small, they
nonetheless tend to demonstrate the relatedness of the
goods. Applicant further argues that the goods included in
the registrations are not limited to candy and ice cream,
Serial No. 85152285
12
but include other goods that bear no relation to either
candy or ice cream. Applicant also makes this argument
with respect to the webpages submitted by the trademark
examining attorney; applicant argues that the trademark
examining attorney’s “selective” copying of the website
pages does not reveal the fact that Wegmans, on whose
website the SNICKERS products were found, is a large,
multi-dimensional grocery store that offers “literally tens
of thousands of different products,”8 or that “Nestle” and
“M&M’s” offer goods other than ice cream and candy that are
entirely unrelated thereto, such as dog food. Applicant’s
argument misses the point. The Wegmans website shows that
SNICKERS sells both ice cream and candy under the SNICKERS
mark. Moreover, that “Nestle” and “M&M’s” may sell a wide
variety of products does not negate the fact that those
companies sell both ice cream and candy under the NESTLE
and M&M marks.
Applicant’s contention that ice cream or candy are
unrelated goods is not supported by the record. The
court’s decision in Interstate Brands Corp. v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978),
cited by applicant for the holding that the mark ZINGERS
for cakes is not confusingly similar to the mark RED ZINGER

8 Appeal Brief, p. 4.
Serial No. 85152285
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for herb tea, turned as much on the court’s finding that
the term “zinger” was weak and that the marks were not
confusingly similar, as it did on its finding that the
Board had not committed reversible error in deciding that
no “per se” rule exists that all food items are related
goods. Interstate Brands, 198 USPQ at 152. In sum, the
registrations and website evidence are probative to the
extent they show consumers may encounter ice cream and
candy under the same mark.
Based on the cited registrations and the evidence of
record suggesting that both candy and ice cream may emanate
from a single source, we find that applicant’s ice cream is
closely related to the goods “confectionery, namely candy,”
recited in the cited registration. This du Pont factor
favors a finding of likelihood of confusion.
III. Applicant’s Prior Registration
Applicant contends that the Office has already
determined that there is no likelihood of confusion between
its mark and the mark in the cited registration, because
applicant owned a registration for the exact mark and goods
that has since expired due to applicant’s inadvertent
failure to file a Section 8 affidavit or declaration.
Applicant contends that the Office must show the presence
of changed circumstances in order to deny registration to
Serial No. 85152285
14
its mark at this time. The Office bears no such burden.
Each case presents its own facts, and on this record we
find confusion likely. While it is unfortunate that
applicant’s prior registration was not maintained, our
precedent is clear; a cancelled or expired registration has
no probative value other than to show that it once issued
and is not entitled to any of the statutory presumptions of
Section 7(b) of the Trademark Act. In Re Ginc UK Limited,
90 USPQ2d 1472, 1480 (TTAB 2007); see also, In re Hunter
Publishing Company, 204 USPQ 957, 963 (TTAB 1979)
(cancellation “destroys the Section [7(b)] presumptions and
makes the question of registrability ‘a new ball game’
which must be predicated on current thought.”); Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563,
10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“a cancelled
registration does not provide constructive notice of
anything.”). Moreover, to the extent the cited
registration was issued in error, we will not repeat the
error by permitting a confusingly similar mark to register
again. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“The Board must decide each
case on its own merits”).
Serial No. 85152285
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IV. Conclusion
We have carefully considered the entire record,
including all arguments and the evidence submitted. We
find that the marks are similar and the goods are closely
related. Use of applicant’s mark in association with “ice
cream” is likely to cause confusion with the mark in the
cited registration.
Decision: The refusal to register under Trademark Act
§ 2(d) is affirmed.