Antonio F. Domingues and Kathy J. Bruzesse

Trademark Trial and Appeal Board

Nov 27, 2019

87553279 (T.T.A.B. Nov. 27, 2019)

Mailed: November 27, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Antonio F. Domingues and Kathy J. Bruzesse
_____
Serial Nos. 87553246 and 875532791
_____
Jonathan Charles Capp, Esq.,
for Antonio F. Domingues and Kathy J. Bruzesse.

John Salcido, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____
Before Cataldo, Wolfson, and English,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Antonio F. Domingues and Kathy J. Bruzesse (“Applicants”) seek registration on
the Principal Register of the mark FORTTUNA FOODS, in standard characters

1 Although the cases have not been consolidated, they present common questions of law and
fact. Accordingly, we have treated them in a single decision, but where appropriate, we have
taken into account any relevant factual differences in the cases.
This Opinion is Not a
Precedent of the TTAB
Serial Nos. 87553246 and 87553279
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(“FOODS” disclaimed) for “Cakes; Candy; Candy bars; Chocolate; Chocolate bars;
Chocolate confections” in International Class 30,2 and the mark depicted below:

(“FOODS” disclaimed), for the same goods.3
The Examining Attorney refused registration of Applicants’ marks under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a prior registration of the
mark depicted below:

for: “Candied fruit snacks, nut-based snack foods, sesame oil, quail eggs, powdered
milk for food purposes, dairy-based food beverages, fruit-based food beverages” in
International Class 29; and “Rice noodles, Food seasonings, chili sauce, edible spices,
Food package combinations consisting primarily of bread, crackers, and/or cookies,

2 Serial No. 87553246, filed on August 2, 2017, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), claiming August 22, 2001 as the date of first and date of first use in
commerce.
3 Serial No. 87553279, filed August 2, 2017, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), claiming August 22, 2001 as the date of first use and date of first use in
commerce. The description of the mark reads: “The mark consists of a solid oval with the
words ‘Forttuna Foods’ located within.” Color is not claimed as a feature of the mark.
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Tapioca Flour, Flour for food, Asian noodles, Grass-based food beverages, Herbal tea,
Grain-based food beverages” in International Class 30.4
After the Examining Attorney made the refusals final, Applicants filed a request
for reconsideration in each proceeding. When the requests for reconsideration were
denied, Applicants filed timely appeals. Both Applicants and the Examining Attorney
filed briefs. For the reasons discussed herein, we affirm the refusals to register.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis of
all the probative facts in evidence that are relevant to the factors set forth in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“DuPont”);
see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
However, “[n]ot all of the [DuPont] factors are relevant to every case, and only factors
of significance to the particular mark need be considered.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012)
(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir
2010)). “In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and services.”
In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited

4 Registration No. 4357206, issued June 25, 2013, Sections 8 and 15 combined declaration
accepted and acknowledged. The description of the mark reads: “The mark consists of the
stylized wording ‘FORTUNA’ outlined in the color red with the interior in the color white.”
The colors red and white are claimed as features of the mark.
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in Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, [*5] (TTAB
2019); see also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997). We consider the DuPont factors for which arguments or evidence have been
presented; all other factors we consider to be neutral.
A. Similarity of the Marks
We initially consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but
instead whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” In re i.am.symbolic, 123 USPQ2d at 1748; see also
Coach Servs., 101 USPQ2d at 1721; Double Coin Holdings Ltd. v. Tru Dev., 2019
USPQ2d 377409, [*6] (TTAB 2019); In re Am. Cruise Lines, Inc., 128 USPQ2d 1157,
1160 (TTAB 2018).
It is axiomatic that marks “must be considered as a whole in determining likelihood
of confusion.” Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233,
234 (CCPA 1981). That said, different features may be analyzed to determine whether
the marks are confusingly similar. In re Detroit Athletic Co., 903 F.3d 1297,
128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a
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conclusion on the issue 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 consideration of the marks in their
entireties.”)). We consider the term FORTTUNA to be the dominant portion of
Applicants’ marks for two reasons.
First, “foods” is generic for the goods and has properly been disclaimed. Disclaimed
matter that is descriptive of or generic for a party’s goods is typically less significant
in creating the mark’s commercial impression. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms,
this court has noted that the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of confusion.’”); In re Dixie Rests., 41
USPQ2d at 1533-34 (“DELTA,” not the disclaimed generic term “CAFE,” is the
dominant portion of the mark THE DELTA CAFE); Nat’l Data Corp., 224 USPQ at
751 (“That a particular feature is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for giving less weight to a portion
of a mark.”).
Second, consumers are generally inclined to focus on the first word of a mark, and
FORTTUNA is the first word in both of Applicants’ marks. See In re Detroit Athletic
Co., 128 USPQ2d at 1049 (“The identity of the marks’ initial two words is particularly
significant because consumers typically notice those words first.”); Palm Bay, 73
USPQ2d at 1692 (“VEUVE…remains a ‘prominent feature’ as the first word in the
mark and the first word to appear on the label”); In re Integrated Embedded, 120
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USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in Applicants’ mark
BARR GROUP is reinforced by its location as the first word in the mark.”); Presto
Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered” when making purchasing decisions). As for the design
features in Applicants’ design mark, we do not find the stylization of the term
FORTTUNA or the fact that the words FORTTUNA FOODS are placed within an oval
to lessen the significance of the literal elements. Moreover, the difference in size
between the term FORTTUNA and the much smaller depiction of the term FOODS
reinforces the conclusion that FORTTUNA is the dominant portion of the mark.
Similarly, the design features of Registrant’s mark are less significant in creating
its commercial impression than the term FORTUNA. The red outlining and the
stylization of the letters act as mere background carriers to the literal term; indeed
they are incapable of standing apart from the term itself. As has often been stated,
where a mark consists of a literal portion and a design feature, it is the literal portion
that will dominate the overall impression of the mark and most likely be remembered
and recalled. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (“In the case of a composite mark containing both words and a design, ‘the
verbal portion of the mark is the one most likely to indicate the origin of the goods to
which it is affixed.’”) (internal citation omitted); see also In re Appetito Provisions Co.,
3 USPQ2d 1553, 1554 (TTAB 1987) (“if one of the marks comprises both a word and a
design, then the word is normally accorded greater weight because it would be used
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by purchasers to request the goods or services”); Joel Gott Wines, LLC v. Rehoboth
Von Gott, Inc., 107 USPQ2d 1424, 1433 (TTAB 2013) (design features served
“primarily as background to carry the words”). Moreover, with respect to Applicants’
standard character mark, it could be displayed in red and white letters in a font style
comparable to that of the cited mark. See Trademark Rule 2.52(a); In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018) (“a ‘standard character
mark’…may be used in ‘any particular font style, size, or color.’”).
Applicants argue that the marks are distinguishable because the first word in their
mark is spelled FORTTUNA whereas the cited mark is FORTUNA. “By adding the
second T - to create FORTTUNA, applicant has distinguished the word and which [sic]
no longer has a literal meaning in any language. The addition[al] second T
significantly changes the word FORTUNA.” Appeal Brief, 22 TTABVUE 6. We
disagree. The term FORTTUNA will be perceived by consumers as an aberrant
spelling of “fortuna,” which as discussed below appears to have a meaning in Spanish.
Moreover, given that the double-T’s are positioned in the center of the mark, the
doubling may not even be noticed by consumers. As for any difference in
pronunciation, even if consumers pronounce FORTTUNA as “fort tuna,” this
meaningless phrase will not prevent consumers from recognizing its similarity with
the term FORTUNA, which could also be pronounced with an emphasis on “fort” as
the first “syllable.” There is no correct or certain pronunciation of a mark that is not
a common English word because it is impossible to predict how the public
will pronounce such a mark. See, e.g., Viterra, 101 USPQ2d at 1912 (upholding
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Board’s affirmance of refusal to register XCEED based on a likelihood of confusion
with the registered mark X-SEED and design); Centraz Indus. Inc. v. Spartan Chem.
Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that “there is no correct
pronunciation of a trademark” and finding ISHINE (stylized) and ICE SHINE
confusingly similar for identical goods).
Overall, Applicants’ marks are similar in appearance and pronunciation to the
mark in the cited registration due to the shared element FORT(T)UNA.
Turning to connotation and commercial impression of the marks, Applicants argue
that “FORTUNA means good luck or fortune in Spanish.” 22 TTABVUE 6. Applicants
have not submitted any evidence to support their position, but by taking judicial
notice of online dictionaries that exist in printed format, we accept Applicants’
argument.5 Nonetheless, to the extent consumers are aware that “fortuna” means
“fortune” or “good luck” in Spanish or otherwise,6 they are likely to ascribe the same
meaning to the unconventionally spelled term FORTTUNA in Applicants’ marks.

5 The Board may take judicial notice of definitions from dictionaries, including online
dictionaries that exist in printed format or have regular fixed editions. See In re S. Malhotra
& Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018); In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1747 n.15 (TTAB 2018); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1953 n.2
(TTAB 2018).
6 We judicially notice the definition of Fortuna as “the ancient Roman goddess of fortune” from
https://www.dictionary.com/browse/fortuna?s=t; the similar Collins English dictionary
definition “The goddess of fortune” from https://www.collinsdictionary.com/us/dictionary/
english/fortuna; and the entry for “audentes fortuna juvat” from https://www.merriam-
webster.com/dictionary/fortuna, meaning “fortune favors the brave.” Accessed November 11,
2019. We further note the translation of “fortune” into the Spanish “fortuna” meaning “luck”
at https://www.collinsdictionary.com/dictionary/english-spanish/fortune. Accessed November
11, 2019.
Serial Nos. 87553246 and 87553279
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Applicants argue that the cited mark is weak. There is no evidence of record
regarding its commercial strength. As to conceptual strength, the term FORTUNA
has no meaning with respect to foodstuffs, including candied fruit snacks and food
package combinations consisting primarily of bread, crackers, and/or cookies. 7
Applicants have provided copies of four third-party, use-based registrations for marks
containing the term FORTUNA,8 arguing that the coexistence of these registrations
demonstrates inherent weakness. Although third-party registrations may show that
a term has a significance within an industry, here none of the registered marks
identifies goods that are as closely related to the goods in the cited registration as are
those in the involved applications.9 See Nat’l Cable Television Ass’n, Inc. v. Am.
Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (“None
of the third party marks and uses of ACE made of record are nearly as closely related

7 That the term “fortuna” could possibly be translated as “fortune” or “good luck” by a
consumer does not reduce its inherent strength.
8 Applicants filed copies of six registrations, but two have been cancelled and have no
probative value. Action Temporary Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d
1307, 1309 (Fed. Cir. 1989) (cancelled registration does not provide constructive notice of
anything). Applicants also filed a TESS printout of 50 marks containing the term “fortuna.”
See May 4, 2018 Response to Office Action at TSDR 41. The list has minimal probative value.
See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (“[T]he list
does not include enough information to be probative. The list includes only the serial number,
registration number, mark, and status (live or dead) of the applications or registrations.
Because the goods are not listed, we do not know whether the listed registrations are
relevant.”). The same applies to the list submitted by Applicants.
9 The goods involved in the third-party registrations are “fruit and vegetable purees; instant
fruit beverages made from fruit concentrates and powder” (Reg. No. 5043803); “bar and
restaurant services” (Reg. No. 3189129); “annular knives” (Reg. No. 0086798) and “fruit and
vegetable juices” (Reg. No. 2169884). May 4, 2018 Response to Office Action at TSDR 40, 42,
44, and 41, respectively.
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to the activities of the parties as the virtually identical uses of the parties are to each
other.”). Even if the goods were related, a mere four registrations are too few in
number to rise to the level of widespread, significant and unrestrained use by third
parties so as to demonstrate that the cited mark is weak and should be afforded a
narrow scope of protection. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 n.2
(Fed. Cir. 2015) (“voluminous” and “extensive” evidence of at least fourteen relevant
third-party uses or registrations of record); Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1673 n.1 (Fed. Cir. 2015) (at least twenty-six
relevant third-party uses or registrations of record).
The marks in their entireties are more similar than dissimilar in sight, sound,
connotation, and commercial impression. The first DuPont factor weighs in favor of
finding a likelihood of confusion.
B. Relatedness of the Goods; Trade Channels; Classes of Consumers
We turn next to the second DuPont factor, which requires us to determine the
similarity or dissimilarity of the goods as identified in Applicants’ applications and
the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014) (“the question of registrability
of an applicant’s mark must be decided on the basis of the identification of goods set
forth in the application”); Octocom Sys., Inc. v. Houston Comps. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Hewlett-Packard Co., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002). The goods need not be identical or even
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competitive in order to support a finding of likelihood of confusion. See On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir.
2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000).
Rather, it is enough that they are related in some manner or that some circumstances
surrounding their marketing are such that they would be likely to be seen by the same
persons under circumstances which could give rise, because of the marks used or
intended to be used therewith, to a mistaken belief that they originate from or are in
some way associated with the same producer or that there is an association between
the producers of the parties’ goods or services. Coach Servs., 101 USPQ2d at 1722; In
re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Applicants’ goods are “cakes; candy; candy bars; chocolate; chocolate bars; [and]
chocolate confections.” Registrant’s goods include “candied fruit snacks” and “food
package combinations consisting primarily of bread, crackers, and/or cookies.”
Applicants argue that “candied fruit” identifies a specific type of fruit, namely fruit
that has been crystallized by being heated in sugar syrup to prolong its shelf life, and
that the Examining Attorney’s evidence is inadequate to show that candied fruit and
candy per se are related.10 To show that these goods are sold together by a single seller
under the same mark, the Examining Attorney provided copies of web pages from

10 See entry from Wikipedia, attached to Applicants’ Request for Reconsideration, describing
“candied fruit” as fruit that has been saturated with sugar, “preventing the growth of spoilage
microorganisms….[F]ruits that are commonly candied include dates, cherries, pineapple, and
a root, ginger.” 4 TTABVUE 12.
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vendors selling both candied fruit and other types of candy, chocolate, or cakes. For
example:
• Pittman & Davis sells candied fruits, cakes, and candies under the mark
.11

• San Andres sells candied fruit, candy, and assorted chocolates under the
mark .12

11 At https://www.pittmandavis.com. Denial of Request for Reconsideration, 7 TTABVUE 6-
10.
12 At http://www.turronsanandres.com. Denial of Request for Reconsideration, 7 TTABVUE
11-12.
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• The Swiss Colony sells packaged cookies, candy, and chocolate-covered
cherries under the mark .13

13 At https://www.swisscolony.com and https://bakery-cheese.swisscolony.com. November 7,
2017 Office Action at TSDR 30-39.
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• Zabar’s sells chocolate bars, gourmet dried fruit and nut gifts, cookie
assortments and dried fruit under the mark ZABAR’S.14

14 At https://www.zabars.com. Denial of Request for Reconsideration, 19 TTABVUE 5-12 and
20 TTABVUE 1-7.
Serial Nos. 87553246 and 87553279
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The Examining Attorney also submitted copies of approximately 40 third-party,
use-based registrations showing that Applicants’ and Registrant’s goods are of a kind
that may emanate from a single source under a single mark 15 Third-party
registrations which individually cover a number of different items and which are
based on use in commerce may have some probative value to the extent that they serve
to suggest that the listed goods and/or services are of a type which may emanate from
a single source. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In
re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001)); In re Aquamar, Inc.,
115 USPQ2d 1122, 1126 n.6 (TTAB 2015); In re RiseSmart Inc., 104 USPQ2d 1931,
1934-1935 (TTAB 2012).
Applicants argue that they sell in different markets from Registrant, which “clearly
operates as a specialist importer of certain Chinese and Vietnamese food products not
otherwise available in the US.” 22 TTABVUE 9. Even if, as Applicants contend, the

15 June 4, 2018 Office Action at TSDR 2 - 126.
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Registrant “only distribute[s] niche Asian products,” 22 TTABVUE 8, the cited
registration describes the goods “candied fruit snacks and food package combinations
consisting primarily of bread, crackers, and/or cookies” broadly and does not limit
them to Asian-style foods, food imported from a foreign country, or food targeted to a
niche market. Although Applicants and Registrant may not in fact market their
products in the same commercial space, given the broad identification of goods in its
registration, Registrant is entitled to operate in all normal and usual trade channels
for such goods, including those in which cookie packs and candied fruit are normally
sold, and we must presume that it does so, selling to all the usual purchasers of such
goods. “Evidence of actual marketplace usages that seeks to limit or alter the usages
encompassed by the marks, goods and services, or usages listed in the application and
registration are not considered in assessing likelihood-of-confusion in the registration
context.” In re FCA US LLC, 126 USPQ2d 1214, 1217 (TTAB 2018) (citing B & B
Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2054 (2015);
see also Stone Lion Capital Partners, 110 USPQ2d at 1162 (“the [goods and] services
recited in the application determine the scope of the post-grant benefit of
registration”). The benefits of the Registrant’s exclusive right to use its mark is
commensurate with the scope of the goods recited in the registration regardless of
whether extrinsic evidence may suggest otherwise.
Likelihood of confusion must be found with respect to a class of goods or services in
an application if there is likely to be confusion with respect to any item that comes
within the identification of the goods or services in that class. Tuxedo Monopoly, Inc.
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v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). We find
Applicants’ cakes, candy, candy bars, chocolate, chocolate bars, and chocolate
confections to be related to Registrant’s candied fruit snacks and food package
combinations consisting primarily of bread, crackers, and/or cookies, and to be likely
to travel in the same trade channels to the same classes of consumers.
The second and third DuPont factors favor a finding of likelihood of confusion.
C. Actual Confusion
Under the seventh and eighth DuPont factors, i.e., the nature and extent of any
actual confusion and the length of time during and condition under which there has
been concurrent use without evidence of confusion, Applicants argue that confusion is
unlikely because there has been no actual confusion although the marks have been in
concurrent use since 2001. 22 TTABVUE 12. Applicants point to Kathy J. Bruzzese’s
declaration wherein she states that “At no time have we become aware of any
confusion between our products and those of the registered mark.” 4 TTABVUE 39.
First, no documentary evidence supporting Applicants’ claim of concurrent use has
been made of record. Second, the fact that an applicant in an ex parte case is unaware
of any instances of actual confusion is generally entitled to little probative weight in
the likelihood of confusion analysis inasmuch as the Board has no way to know
whether the registrant likewise is unaware of any instances of actual confusion, nor
is it usually possible to determine that there has been any significant opportunity for
actual confusion to have occurred. Uncorroborated statements of no known instances
of actual confusion are of little evidentiary value, “especially in an ex parte context.”
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Majestic Distilling Co., 65 USPQ2d at 1205 (citing In re Bissett-Berman Corp., 476
F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (self-serving testimony of appellant’s
corporate president’s unawareness of instances of actual confusion was not conclusive
that actual confusion did not exist or that there was no likelihood of confusion).
DuPont factors seven and eight are neutral.
D. Additional Consideration
Applicants argue that consistency in examination being a goal of the Office, “the
USPTO should permit concurrent registration of FORTUNA and FORTTUNA just as
it [has] done so in the past.” 22 TTABVUE 6. Applicants filed copies from the
Trademark Electronic Search System (TESS) database showing their prior ownership
of now cancelled registrations (Reg. No. 3457636 for the mark FORTTUNA FOODS
and Reg. No. 3453453 for the mark FORTTUNA FOODS and design). Response to
Office Action dated May 4, 2018 at TSDR 36-39.
The problem with Applicants’ argument regarding their now-cancelled registrations
is that a cancelled registration is “not evidence of anything except that the registration
issued; it is not evidence of any presently existing rights in the mark shown in the
registration, or that the mark was ever used.” TRADEMARK BOARD MANUAL OF
PROCEDURE (TBMP) §704.03(b)(1)(A) (2019); see also Frito-Lay N. Am., Inc. v.
Princeton Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB 2014) (cancelled
registrations are not probative), vacated and remanded on other grounds, 786 F.3d
960, 114 USPQ2d 1827 (Fed. Cir. 2015), original decision aff’d, Frito-Lay N. Am., Inc.
v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017), civil action filed sub
Serial Nos. 87553246 and 87553279
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nom Snyder’s Lance, Inc. v. Frito-Lay N. Am., Inc., No. 3:17-CV-00652 (W.D.N.C. Nov.
6, 2017); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1606 (TTAB 2018) (a
cancelled registration is not evidence of use of the mark at any time); In re Pedersen,
109 USPQ2d 1185, 1197 (TTAB 2013) (citing Anderson, Clayton & Co. v. Krier, 478
F.2d 1246, 1248, 178 USPQ 46, 47 (CCPA 1973) (statutory benefits of registration
disappear when the registration is cancelled)). Applicants’ cancelled registrations
simply do not justify registration of its current applications. See, e.g., In re Hunter
Publ’g Co., 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.”).
Furthermore, our determination of likelihood of confusion must be based on the
facts and record before us. We are not bound by a previous examining attorney’s
determination that the cited mark was entitled to register, and 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.”).
This DuPont factor is also neutral.
II. Conclusion
After considering all of the arguments and evidence of record as they pertain to the
relevant DuPont factors, we find that Applicants’ marks are substantially similar in
sight, sound, connotation and commercial impression to the registered mark. We
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further find the goods are related, as are the channels of trade and classes of
consumers. The remaining factors are neutral.
Accordingly, we find that there is a likelihood of confusion between Applicants’
marks FORTTUNA FOODS and and the cited mark
, for the goods as identified.
Decision: The Section 2(d) refusals to register Applicants’ marks are affirmed.