BabyCakes NYC, Inc.

Trademark Trial and Appeal Board

Jul 23, 2013

No. 85214746 (T.T.A.B. Jul. 23, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re BabyCakes NYC, Inc.
_____

Serial No. 85214746
_____

John H. Barkley of Shustak & Partners, P.C.,
for BabyCakes NYC, Inc.
Ronald L. Fairbanks, Trademark Examining Attorney, Law Office 117,
Brett Golden, Managing Attorney).
_____

Before Bucher, Lykos and Masiello,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
BabyCakes NYC, Inc. (“applicant”) seeks registration on the Principal Register
of the following mark:

for services recited as “retail bakery shops,” in International Class 35.1

1 Application Serial No. 85214746 was filed on January 11, 2011, based upon applicant’s
claims of use anywhere at least as early as March 23, 2005, and use in commerce since at
least as early as April 13, 2005. No claim is made to the exclusive right to use the
Serial No. 85214746
2

The 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 the “staple foods,
namely, doughnuts and bakery goods” in International Class 30 identified in Reg.
No. 1722252 for the following mark:
2
After the examining attorney made the refusal final, applicant appealed to this
Board. We affirm the refusal to register.
Applicant argues that the examining attorney has misapplied the du Pont
factors as follows: that there are important differences between applicant’s and
registrant’s marks when viewed in their entireties; that consumers acquainted
with applicant’s bakery services would never believe that applicant sells
registrant’s type of processed, packaged doughnuts; that the significant differences
between applicant’s services and Lone Star’s involved product rebuts any
presumption that consumers would assume that registrant’s goods are connected to
applicant; that the cited mark has been weakened by widespread third-party usage;
that registrant’s (Lone Star’s) BABYCAKES mark is used in connection with a single

designation “NYC” apart from the mark as shown. The mark consists of the stylized letters
“babycakes NYC” in the color brown, and a small depiction of a pastry in the colors brown,
white, and pink. The colors brown, white, and pink are claimed as a feature of the mark.
2 Registration No. 1722252 issued to Lone Star Consolidated Foods, Inc. on October 6, 1992;
renewed.

Serial No. 85214746
3

product from a dozen frozen baked goods; that registrant is strongly associated with
the state of Texas while applicant’s mark reinforces its roots in New York City; that
the examining attorney has failed to consider applicant’s fame as an all-vegan, soy-
free, dairy-free, gluten-free, low- or no-sugar, kosher bakery; and that despite
applicant’s significant public, nationwide exposure, there has been no actual
confusion among consumers between these respective marks.
By contrast, the examining attorney relies primarily on the first three
du Pont factors, contending that the marks of applicant and the cited registrant
are highly similar, that the respective goods and services are closely related,
and that the established, likely-to-continue trade channels are so similar that on
balance, there exists a likelihood of confusion herein.
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 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).
Serial No. 85214746
4

A. Comparison of the Marks
Applicant has applied to register the following mark: .
Registrant’s mark is .
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
under the first du Pont factor, 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 impressions that confusion
as to the source of the goods offered under the respective marks is likely to result.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
On the other hand, different features may be analyzed to determine whether
the marks are similar. Price Candy Company v. Gold Medal Candy Corporation,
220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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. In re National Data Corp., 224 USPQ
at 751. The focus is on the recollection of the average purchaser, who normally
Serial No. 85214746
5

retains a general rather than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The two marks are set forth in differently-stylized lettering. However, this
visual distinction is offset by the fact that the primary literal elements of both
marks (i.e. the term BABYCAKES in each case) are identical in sound and
suggestive meaning. As to applicant’s addition of a diminutive design feature, it
is of little value in distinguishing these respective marks. To the extent this tiny
design is perceptible, the cupcake design in applicant’s composite mark actually
reinforces the fact that the service mark is used in connection with dessert cakes.
By contrast, the literal/word portion of applicant’s composite mark is more likely to
be impressed upon a purchaser’s memory and to be used in calling for the bakery
services, and hence, is normally accorded greater weight in determining whether
marks are confusingly similar. CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218
USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261,
1267-68 (TTAB 2011); and In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596
(TTAB 1999).
While applicant’s mark does add the literal element “NYC,” this term is
relatively small, sits in a decidedly subordinate position within the composite, and
applicant has correctly disclaimed this geographically-descriptive designation.
Apart from its smallish size and subordinate placement, disclaimed matter is
typically deemed to be less significant or less dominant when comparing marks. See
In re Dixie Rests., Inc., 41 USPQ2d at 1533-34; and In re Nat’l Data Corp., 224
USPQ at 752.
Serial No. 85214746
6

Based on all of these considerations, consumers are likely to use the term
“Babycakes” alone to call on both registrant’s goods and applicant’s services. If
potential consumers even perceive these minor differences in the marks, we find
that the similarities far outweigh the differences.
Applicant argues that the marks “contain different locational identifiers and
look different in their appearance in part because of those identifiers.” However,
the alleged “locational identifier” “Lone Star” is not a part of registrant’s cited
mark. Hence, we agree with the examining attorney that registrant’s alleged use
of its house mark on the involved “Babycakes” products, or registrant’s use of a
variety of other product marks on other closely-related, non-doughnut bakery
products does nothing to obviate the likelihood of confusion in the case at bar.
Accordingly, we find that this du Pont factor favors a finding of a likelihood of
confusion.
B. Strength of the Mark of the Cited Registration
Applicant included in the record the following Internet website screen-prints
and examples of trade name usage to demonstrate that a number of third
parties scattered around the country have adopted marks including variations
on the term “Babycakes” (e.g., also “BabyCakes,” “Baby Cakes,” “babycakes,” etc.)
in connection with bakeries, bakery products, and other somewhat-related
products:
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Serial No. 85214746
8

weakness of registrant’s mark because most of the evidence shows use of the
designation for services similar to those of applicant. Such evidence does not
demonstrate the weakness of registrant’s mark and is insufficient to obviate the
likelihood of confusion when the respective marks are substantially the same, as is
the case herein.
Moreover, to the extent one could read applicant’s allegations as suggesting the
term “Babycakes” is not inherently distinctive, we reject this argument. Such
would amount to an impermissible collateral attack on the nature of the mark in
the registration. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), provides
that a certificate of registration on the Principal Register shall be prima facie
evidence of the validity of the registration and of registrant’s ownership of the
mark See Dixie Rests., 41 USPQ2d at 1534-35; In re Fiesta Palms, LLC, 85
USPQ2d 1360, 1363 (TTAB 2007); In re Peebles Inc. 23 USPQ2d 1795, 1797 n.5
(TTAB 1992); and In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB
1988).
C. Relationship of the Goods/Services
We next turn our attention to an evaluation of the relationship of the goods in
the cited registration to the services recited in the application. Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002). Retail bakery shop services are recited in the
application. By comparison, registrant’s goods are doughnuts and bakery goods.
Serial No. 85214746
9

As noted by the examining attorney, food products and food-related services have
been considered related goods and services under Trademark Act Section 2(d). See In
re H. J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) (with both marks
consisting of the surname, SEILER’S, in script formats, a likelihood of confusion
exists when applied to applicant’s catering services and registrant’s smoked and
cured meats); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB
1990) (holding GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services likely
to be confused with GOLDEN GRIDDLE for table syrup); In re Best W. Family Steak
House, Inc., 222 USPQ 827 (TTAB 1984) (holding BEEFMASTER used on
restaurant services likely to be confused with BEEF MASTER used on frankfurters
and bologna); In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988), aff’d,

864 F.2d 149 (Fed. Cir. 1988) (holding mark at
left, when used on mustard, likely to be
confused with the mark at right used for
restaurant services); In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987) (holding the mark at left, when used on Italian

sausage, was likely
to be confused with
the marks at right,
and
used in connection with restaurant services).
Certainly it is not necessary that the respective goods or services be competitive
in order to find that they are related for purposes of our likelihood of confusion
analysis. The issue is whether consumers would be confused as to the source of the
Serial No. 85214746
10

goods or services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods and
services need only be sufficiently related that consumers would be likely to assume,
upon encountering the goods and services under similar marks, that the goods
originate from, are sponsored or authorized by, or are otherwise connected to the
same source as offers the services. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
In order to demonstrate that applicant’s services and registrant’s goods are
related, the examining attorney has submitted the following third-party
registrations. Copies of use-based, third-party registrations may serve to suggest
that the goods or services are of types which may emanate from a single source.
Mucky Duck, 6 USPQ2d at 1470 n.6 (TTAB 1988). See also In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993):
Big Buns Bakery for “bakery desserts; bakery goods; bakery products” in
International Class 30;
“retail bakery shops” in International Class 35;11
CUPCAKE STATION for “apple fritters; bagels; bakery products; banana
fritters; biscuits; bread; bread doughs; bread mixes; bread
rolls; bread sticks; brownies; buns; cake doughs; cake
mixes; cakes; calzones; candy; candy cake decorations;
cookie mixes; cookies; corn fritters; croissants; crumpets;
Danish pastries; donuts; éclairs; fruit pies; mixes for
bakery goods; muffin mixes; muffins; pies; pineapple
fritters; sandwiches” in International Class 30; and
“retail bakery shops; retail shops featuring bakery goods”
in International Class 35.12

11 Registration No. 3533484 issued on November 18, 2008. No claim is made to the exclusive
right to use the word “Bakery” apart from the mark as shown.
12 Registration No. 3552007 issued on December 23, 2008. No claim is made to the exclusive
right to use the word “Cupcake” apart from the mark as shown.
Serial No. 85214746
11

NATICAKES for “cupcakes; bakery goods; bakery desserts; bakery
products; bakery products, namely, sweet bakery goods”
in International Class 30;
“retail bakery shops” in International Class 35;13
Saint Cupcake for “bakery products, namely, sweet bakery goods” in
International Class 30;
“retail bakery shops” in International Class 35;14

for “bakery goods” in International Class 30;
“retail bakery shops” in International Class 35;15
BINI BAKERY for “bakery desserts; bakery goods; bakery products;
bakery products, namely, sweet bakery goods” in
International Class 30;
“retail bakery shops; take-out bakery services; retail store
services featuring bakery products” in Int. Class 35;
“bakery services, namely, the manufacture of bakery
products to order and/or specification of others” in
International Class 40;16
MÄNI’S BAKERY CAFÉ for “bakery desserts; bakery goods; bakery products” in
International Class 30;
“retail bakery shops; take-out bakery services” in
International Class 35;
“cafe and restaurant services; catering; take-out
restaurant services” in International Class 43;17

13 Registration No. 3841248 issued on August 31, 2010.
14 Registration No. 3893660 issued on December 21, 2010. No claim is made to the exclusive
right to use the word “Cupcake” apart from the mark as shown.
15 Registration No. 3913491 issued on February 1, 2011. No claim is made to the exclusive
right to use the terms “Malasadas” and “Hawaii's Original Malasada” apart from the mark
as shown. The color red is claimed as a feature of the mark. Claim of acquired
distinctiveness in part under Trademark Act Section 2(f) as to “Leonard’s Malasadas.”
16 Registration No. 3916439 issued on February 8, 2011. No claim is made to the exclusive
right to use the word “Bakery” apart from the mark as shown.
17 Registration No. 3919811 issued on February 15, 2011. No claim is made to the exclusive
right to use the words “Bakery Café” apart from the mark as shown.
Serial No. 85214746
12

This evidence indicates that the same entity may commonly provide both bakery
products and retail bakery services, and confirms common knowledge that
customers routinely find bakery products at retail bakery stores. See In re Davey
Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); and In re Toshiba Med.
Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
To address applicant’s claim that its services are unrelated to registrant’s goods
because applicant’s bakery is an all-vegan, soy-free, dairy-free, gluten-free, low- or
no-sugar, kosher bakery, the examining attorney placed into the record screen-
prints of retail bakery shop websites, many of which provide both traditional/non-
restrictive bakery goods as well as dietary/restrictive bakery goods:
18
19
20 21 22

18 http://www.bakeshopva.com/pages/out-of-the-oven/
19 http://www.ghabq.com/
20 http://www.millersbakeshoppe.com/testimonials.html/
21 http://imagicakes.com/default.aspx/
22 http://www.theswissbakery.com/
Serial No. 85214746
13

23
24
25
26
27

In spite of this showing, applicant points to In re Gerhard Horn Investments
Ltd., 217 USPQ 1181, 1182 (TTAB 1983), and the non-precedential case of In re
Panasonic Corp. of North America, 2006 TTAB LEXIS 321 (TTAB Aug. 3, 2006), as
support for its position that confusion is unlikely herein. We remind applicant that in
each case, the fundamental inquiry mandated by Section 2(d) goes to the cumulative
effect of the relationship of the goods/services and the similarities/differences in the
marks. Federated Foods, 192 USPQ at 29.
As to the relationship of the goods/services, the Board in Gerhard Horn
confirmed that relatedness has frequently been found between unfinished fabric
goods and finished clothing for purposes of evaluating potential for confusion under
Section 2(d). Similarly, we find from this record that the cited registration for

23 http://www.thewestsidebakery.com/tastymenu.asp/
24 http://theflouruprising.com/
25 http://www.fridascafe.com/Menus.htm/
26 http://www.hallspastryshop.com/
27 http://www.heidelbergbakery.com/
Serial No. 85214746
14

“bakery goods” includes goods found in “retail bakery shops.” By contrast, in the
Panasonic decision, the Board found that there was no evidence of record to support
an assumption that retailers of audio electronic components (like the cited
registrant) were also engaged in manufacturing their own brands of audio
components for automobiles. Furthermore, if registrant, with its own Internet and
brick-and-mortar retail operations were to begin to manufacture its own brand of
audio components, it was unlikely that it would market them via third parties.
As to the similarities/differences in the marks, the marks involved in the
Gerhard Horn case (MARIPOSA) were identical. Similarly, on the instant record,
the marks are substantially the same. By contrast, the marks in the Panasonic case
were quite different [ vs. HIFI.COM].
As a result, we find our affirming the examining attorney herein to be
consistent with the results in both of these cases referenced by applicant.
Applicant also argues at length that no consumer familiar with applicant’s
services “would ever believe that Babycakes NYC had expanded to include a
processed, packaged donut that contains ingredients that would never be found
in a Babycakes NYC bakery.” (emphasis supplied). It is true that the cited
registration issued to Lone Star Consolidated Foods, Inc. and prominently names
“doughnuts” as the most specific listing of baked goods. Apparently, applicant would
have us read registrant’s International Class 30 food items as limited to “packaged,
processed pastries in the nature of junk food, namely doughnuts.” By contrast,
applicant would have us factor into our decision that it sells only non-traditional
(read “healthy”) bakery items.
Serial No. 85214746
15

The problem with this type of argument is that when comparing applicant’s
services with registrant’s goods, the comparison must be based upon the goods as
identified in the involved registration and application, and not on extrinsic evidence
that illustrates, for example, the goods for which registrant may actually use its
trademark, or the services with which applicant uses its service mark. As to
registrant’s goods, there are no explicit restrictions on its channels of trade, the type
of food items, the nature of the trade dress on its packaging, or its classes of
potential customers. Hence, we must presume that registrant’s customers include
all classes of retail purchasers and that its bakery products will move through all
the normal trade channels for such goods, including traditional retail bakery shops
that also sell restrictive/dietary food products. Certainly we have seen that the
field of retail bakeries in the U.S. is not neatly bifurcated between traditional and
non-traditional bakery products. Rather, shops that carry a majority of traditional
bakery items may also feature vegan, gluten-free and kosher bakery products.
Accordingly, we cannot resort to applicant’s extrinsic evidence in order
impermissibly to restrict either applicant’s services or registrant’s goods. See, e.g.,
In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) (applicant cannot rely
on registrant’s website to restrict the scope of registrant's goods); In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (extrinsic evidence that
relevant goods are expensive wines sold to discriminating purchasers must be
disregarded given the absence of any such restrictions in the application or
registration).
Serial No. 85214746
16

As noted in our earlier discussion of the inherent and marketplace strength of
the cited mark, applicant’s attempt to limit the scope of registrant’s goods is also
inappropriate. One of the presumptions of Trademark Act Section 7(b) is that use of
the mark extends to all goods identified in the registration. Neither registrant nor
applicant has placed any limitations on the identifications of goods as to trade
channels, types of customers, etc. As a result, the presumption implies that the
registrant operates in all normal channels of trade and reaches all classes of
purchasers. Hence, we must presume that registrant’s involved goods will include
vegan, gluten-free or kosher items. In re Melville Corp., 18 USPQ2d 1386, 1389
(TTAB 1991); McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989);
RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-65 (TTAB 1980).
Specifically, we must presume that registrant may well be marketing dietary or
restrictive bakery products under its mark, including
baked goods that are gluten-free, vegan or kosher.
Accordingly, given the nature of the presumptions that constrain our
determinations herein, the du Pont factors as to the relatedness of the goods /
services and the respective trade channels also weigh in favor of finding a likelihood
of confusion.
D. Lack of Actual Confusion
Applicant argues that its mark has been in continuous use for more than five
years without actual confusion between applicant’s and registrant’s respective
marks. Applicant’s brief at 8. Of course, the test under Trademark Act § 2(d) is
Serial No. 85214746
17

whether there is a likelihood of confusion, and it is unnecessary for the
examining attorney in an ex parte case to show actual confusion in establishing
likelihood of confusion. See In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27
(TTAB 1984) (“applicant’s assertion that it is unaware of any actual confusion
occurring as a result of the contemporaneous use of the marks of applicant and
registrant is of little probative value in an ex parte proceeding such as this where
we have no evidence pertaining to the nature and extent of the use by applicant
and registrant (and thus cannot ascertain whether there has been ample
opportunity for confusion to arise, if it were going to); and the registrant has no
chance to be heard from (at least in the absence of a consent agreement, which
applicant has not submitted in this case).”). Similarly, the plaintiff in an inter
partes case does not need to show actual confusion in order to establish likelihood of
confusion. See Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14
USPQ2d 1840, 1842-43 (Fed. Cir. 1990); and Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983).
Accordingly, we conclude that the lack of actual-confusion factor is neutral in
this case.
E. Conditions of Sale
As to the degree of care that will be exercised by applicant’s customers,
applicant argues that its purchasers are not impulsive ones, but rather are careful
and deliberate shoppers having a high degree of concern for the ingredients of their
Serial No. 85214746
18

bakery products – consumers who “know precisely what they are getting and who
they are getting it from.”
However, just as there are no limitations on registrant’s goods, there are also no
limitations in applicant’s recitation of services restricting its type of bakery
products or its classes of purchasers. Accordingly, we must presume that both
applicant’s and registrant’s customers include all ordinary consumers – not just
those who shop exclusively at a gluten-free shop, for example, or contrariwise, those
who crave large, once-frozen quantities of fat, sugar, frosting, jelly, cream and/or
cholesterol cleverly wrapped up in “eye-appealing” packaging.
Even assuming that some of the relevant consumers are sophisticated, the fact
that many of the purchasers of applicant’s goods may be knowledgeable in the field
of restrictive/dietary bakery products does not necessarily mean that they are
immune from source confusion when marks are substantially the same. See In re
Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812
(TTAB 1988); and In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
Additionally, there is certainly no indication in the record that any of the goods
or services involved in this proceeding are expensive enough to prompt a higher
standard of care on the part of prospective consumers.
At best for applicant, this too is determined to be a neutral du Pont factor.
F. Fame
Finally, applicant’s assertion that its mark is famous is not supported by the
record. However, in any event, the fifth du Pont factor refers to “the fame of the
Serial No. 85214746
19

prior mark,” which in this case means registrant’s mark. Cf. Wet Seal Inc. v. FD
Management Inc., 82 USPQ2d 1629, 1638 n.18 (TTAB 2007).
Logically, should applicant, as the junior user, achieve a high degree of renown
nationwide, it could ultimately result in a case of “reverse confusion” where the
junior user is mistakenly viewed by many consumers as the source of the senior
user’s goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed.
Cir. 1993); Fisons Horticulture, Inc. v. Vigoro Indust., Inc., 30 F.3d 466, 31
USPQ2d 1592, 1597-98 (3d Cir. 1994); and Banff, Ltd. v. Federated Dept. Stores,
Inc., 841 F.2d 486, 6 USPQ2d 1187, 1190-91 (2d Cir. 1988).
Hence, at best for applicant, this too is determined to be a neutral factor.
G. Balancing the factors
In view of the facts recited above that: the cited mark is not inherently or
commercially weak when used in connection with registrant’s goods; the marks are
quite similar; the goods and services are closely related; and the trade channels are
deemed to be similar – we find that applicant’s registration of its mark is likely to
cause confusion.
Decision: The refusal to register applicant’s mark
under Trademark Act § 2(d) is hereby affirmed.