Brumis Imports, Inc.

Trademark Trial and Appeal Board

May 19, 2020

87947642 (T.T.A.B. May. 19, 2020)

Mailed: May 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Brumis Imports, Inc.
_____

Application Serial No. 87947642
Application Serial No. 87947763
_____

Douglas Miro of Amster, Rothstein & Ebenstein LLP for Brumis Imports, Inc.

Jeane Yoo, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Bergsman, Ritchie and Lynch, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Brumis Imports, Inc. (Applicant) filed two applications on the Principal Register
for the marks SIZZLE & STIR, in standard character form, and SIZZLE & STIR and
design, reproduced below, both for the goods listed below:1
(Based on Use in Commerce) Kitchen, food preparation,
and cooking items, namely, shears, cooking knives, kitchen
cooking knives, chef knives, carving knives, kitchen boning

1 Applicant filed both Serial No. 87947642 (standard form drawing) and Serial No. 87947763
(composite word and design) on June 4, 2018, under Section 1051(a) of the Trademark Act,
15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark anywhere and in
commerce as indicated in the list of goods on January 25, 2018, and under Section 1051(b) of
the Trademark Act, l5 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to
use the marks in commerce as indicated in the list of goods.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 87947642
Serial No. 87947763

- 2 -

knives, filleting knives, utility knives, paring knives,
kitchen steak knives, in Class 8;
(Based on Intent to Use) Kitchen, food preparation, and
cooking items, namely, table forks, disposable plastic table
cutlery, in Class 8
(Based on Use in Commerce) Measuring spoons, measuring
cups, in Class 9;
(Based on Use in Commerce) Stainless steel household
utensils, namely, cooking spoons, slotted spoons, turners,
slotted turners, kitchen ladles; nylon kitchen tools in the
nature of household utensils, namely, turners, slotted
turners, cooking spoons, slotted spoons, skimmers, pasta
cooking spoons, kitchen ladles; knife blocks; cutting boards,
in Class 21;
(Based on Intent to Use) Kitchen food preparation, cooking,
and kitchen serving items, namely, spatulas for kitchen
use, serving spoons, kitchen ladles, cutting boards,
nondisposable bowls, serving trays; cookware, namely, pots
and pans; disposable table plates; ceramic serving ware,
namely, bowls and platters; porcelain plates and mugs;
silicone cooking utensils namely, serving tongs, spatulas
for kitchen use, whisks, strainers for household purposes,
and kitchen ladles; non-electric silicone griddles; baking
mats; trivets; flatware serving trays; food storage canister
sets and household food containers; organizational trays
for domestic purposes; water bottles sold empty; coffee cups
and mugs; cooking spoons, in Class 21.

Serial No. 87947642
Serial No. 87947763

- 3 -

According to the description of the mark in the application,
The mark consists of the stylized words “SIZZLE & STIR”
with an image of a frying pan underneath the word
“SIZZLE” and on top of the words “& STIR”.
Applicant disclaims the exclusive right to use the word “Stir” in both applications.
The Examining Attorney refused to register both marks under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks so
resemble the registered mark SIZZLE, in standard character form, for “Cutlery;
Cutlery, namely, sports knives,” in Class 8, as to be likely to cause confusion.2
These appeals present common questions of law and fact and the records are
substantially similar. Therefore, in the interest of judicial economy, we consolidate
the cases and decide them in this single opinion. See, e.g., In re S. Malhotra & Co.,
128 USPQ2d 1100, 1102 (TTAB 2018) (Board sua sponte consolidated two appeals);
In re Tapco Int'l Corp., 122 USPQ2d 1369, 1369 n.1 (TTAB 2017); In re Anderson,
101 USPQ2d 1912, 1915 (TTAB2012) (Board sua sponte consolidated two appeals).
We cite to the record in Serial No. 87947642. All references to the application record
are to the USPTO Trademark Status and Document Retrieval system (TSDR) by page
number in the downloadable .pdf format.
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)

2 Registration No. 4110063, registered March 2012; Sections 8 and 15 declarations accepted
and acknowledged.
Serial No. 87947642
Serial No. 87947763

- 4 -

(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113
USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen DuPont
factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co.,
912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019), quoting In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997), quoting DuPont,
177 USPQ at 567.
“Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc.,
901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018), quoting In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”). “Each case must be decided on its
own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde,
475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
Serial No. 87947642
Serial No. 87947763

- 5 -

effect of differences in the essential characteristics of the goods and differences in the
marks.”). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”), quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
I. The similarity or dissimilarity and nature of the goods.
The description of the goods in the cited registration is “Cutlery; Cutlery, namely,
sports knives.” The OXFORD LIVING DICTIONARIES (oxfordictionaries.com) defines
“Cutlery” as “knives, forks, and spoons for eating or serving food.”3 “Cutlery” in the
cited registration is a broad term that encompasses at least the goods listed below in
Applicant’s description of goods:
Class 8:
(Based on use in commerce) Carving knives, kitchen steak knives;
(Based on intent to use) Kitchen, food preparation, and cooking items, namely,
table forks, disposable plastic table cutlery;
Class 21:
(Based on Intent to Use) Kitchen food preparation, cooking, and kitchen serving
items, namely, serving spoons.

3 September 25, 2018 Office Action (TSDR 17). See also Dictionary.com based on the RANDOM
HOUSE UNBRIDGED DICTIONARY (2019) attached to the May 8, 2019 Office Action (TSDR 55)
(defining “cutlery” as “cutting instruments collectively, especially knives for cutting food” and
“utensils, as knives, forks, and spoons, used at the table for serving and eating food.”).
Serial No. 87947642
Serial No. 87947763

- 6 -

Where description of goods in an application or registration broadly identifies the
products, we presume that the goods encompass all products of the type identified.
See In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018) (where the
goods in an application or registration are broadly described, they are deemed to
encompass all the goods of the nature and type described therein); Sw. Mgmt., Inc. v.
Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the goods in an
application or registration are broadly described, they are deemed to encompass all
the goods of the nature and type described therein); In re Hughes Furniture Indus.,
Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”). Therefore, Applicant’s Class 8 and 21
descriptions of goods are in part legally identical to the description of goods in the
cited registration.
Under this DuPont factor, the Examining Attorney need not prove, and we need
not find, similarity as to each product listed in the description of goods. It is sufficient
for a refusal based on likelihood of confusion that we find any item encompassed by
the identification of goods in a particular class in the application and registration
related. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015),
aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); In re Aquamar, Inc.,
115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient for finding a likelihood of
Serial No. 87947642
Serial No. 87947763

- 7 -

confusion if relatedness is established for any item encompassed by the identification
of goods within a particular class in the application.”).
The Examining Attorney additionally introduced evidence, including third-party
registrations listing goods in both the application and the registrations. Third-party
registrations based on use in commerce that individually cover a number of different
goods might have probative value to the extent that they serve to suggest that the
listed goods are of a type that may emanate from the same source. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d 149 (Fed. Cir.
1988). We list below representative registrations, with relevant portions of the
identifications:4
Classes 8 and 9
Mark Reg. No. Goods
CULINA 4487603 Cutlery;
Measuring cups
CIA 5408530 Cutlery, namely pairing knives, boning
knives, and spoons;
Measuring cups

Classes 8 and 21
Mark Reg. No. Goods
MEADOWARE 2295871 Disposable cutlery, namely, knives, forks
and spoons;
Disposable plates and bowls
THE BAMBOO GUYS 4601658 Kitchen food preparation, and cooking
items, namely, cooking spoons, carving
knives, forks, and disposable plastic
cutlery;

4 May 8, 2019 Office Action (TSDR 358-457).
Serial No. 87947642
Serial No. 87947763

- 8 -

Mark Reg. No. Goods
Kitchen food preparation, cooking, and
kitchen serving items, namely, spatulas,
serving spoons, kitchen ladles, plates and
mugs, trivets
KITCHEN CHEF 3994150 Cutlery, namely, forks, spoons, and knives
Spatulas, knife blocks, and cookware,
namely, pots and pans
VERTERRA 3613058 Biodegradable cutlery, namely, knives,
forks, and spoons;
Biodegradable bowls and cups; dishes and
plates; disposable table plates
TERRAWARE 3638993 Cutlery, namely, forks, spoons and knives;
Disposable table plates; plastic cups; plastic
plates

In addition, the Examining Attorney introduced excerpts from websites showing
that KitchenAid, Cuisinart, OXO, Williams Sonoma, Crate & Barrel and IKEA sell
cutlery, as well as all the goods in Applicant’s description of goods.
• KitchenAid
Class 8
Knives;5 Shears;6
Class 9
Measuring Cup and spoon set;7

5 September 25, 2018 Office Action (TSDR 24, 26-29).
6 Id. at TSDR 90.
7 Id. at TSDR 53 and 58.
Serial No. 87947642
Serial No. 87947763

- 9 -

Class 21
Cutlery blocks;8 Ladles;9 Spatula;10 Slotted spoon;11 Whisk;12 Cutting
board;13 Slotted turner;14 Mugs;15 Strainers;16 and Trivets.17
• Cuisinart
Class 8
Cutlery;18 Shears;19
Class 9
Measuring cups and spoons set;20
Class 21
Cutlery block sets;21 Slotted turner;22 Slotted spoon;23 Ladle;24

8 Id. at (TSDR 22)
9 Id. at TSDR 35.
10 Id. at TSDR 36 and 40.
11 Id. at TSDR 42.
12 Id.
13 Id. at TSDR 62.
14 Id. at TSDR 70.
15 Id. at TSDR 93.
16 Id. at TSDR 97.
17 Id. at TSDR 116.
18 Id. at TSDR 148.
19 Id. at TSDR 143.
20 Id. at TSDR 137.
21 Id.
22 Id. at TSDR 155.
23 Id. at TSDR 156-157,
24 Id. at TSDR 159.
Serial No. 87947642
Serial No. 87947763

- 10 -

Cutting board;25 Spatula;26 Mixing bowls;27 Whisk;28 Pots and pans;29
Mugs;30 Strainers;31 Tongs;32 and Trivet.33
• OXO
Class 8
Cutlery;34 Shears;35
Class 9
Measuring cups and spoons;36

25 Id. at TSDR 167.
26 Id. at TSDR 171.
27 Id. at TSDR 181.
28 Id. at TSDR 182 and 208.
29 Id. at TSDR 191.
30 Id. at TSDR 202.
31 Id. at TSDR 219.
32 Id. at TSDR 225.
33 Id. at TSDR 242.
34 Id. at TSDR 242 and 269.
35 Id. at TSDR 306-307.
36 Id. at TSDR at 296-302.
Serial No. 87947642
Serial No. 87947763

- 11 -

Class 21
Knife block;37 Whisk;38 Strainer;39 Slotted spoon;40 Slotted turner;41
Ladle;42 Pots and pans;43 Spatula;44 Skimmer;45 Mugs;46 and
Trivets.47
• Williams Sonoma
Class 8
Carving and pairing knives;48
Class 9
Measuring cups and spoons sets;49

37 Id. at TSDR 268.
38 Id. at TSDR 267.
39 Id. at TSDR 273-274.
40 Id. at TSDR 275-276.
41 Id. at TSDR 275-276 and 279.
42 Id. at TSDR 278-279.
43 Id. at TSDR 282.
44 Id. at TSDR 311-312.
45 Id. at TSDR 317.
46 Id. at TSDR 336.
47 Id. at TSDR 348.
48 May 8, 2019 Office Action (TSDR 216)
49 Id. at TSDR 81.
Serial No. 87947642
Serial No. 87947763

- 12 -

Class 21
Knife block;50 Strainer;51 Tongs;52 Spatulas;53 Skimmer;54 Slotted
spoon;55 Whisks;56 Shears;57 Cutting board;58 Pots and pans;59 Trivets;60
and Mugs.61
• Crate & Barrel
Class 8
Flatware set consisting of forks, spoons and knives.62
Class 9
Measuring cups;63

50 Id. at TSDR 215.
51 Id. at TSDR 121 and 212.
52 Id. at TSDR 209 and 211.
53 Id. at TSDR 209.
54 Id. at TSDR 208.
55 Id. at TSDR 207-208
56 Id. at TSDR 200 and 207-208.
57 Id. at TSDR 77.
58 Id. at TSDR 72.
59 Id. at TSDR 102.
60 Id. at TSDR 134.
61 Id. at TSDR 113.
62 Id. at TSDR 314.
63 Id. at TSDR 225.
Serial No. 87947642
Serial No. 87947763

- 13 -

Class 21
Knife block;64 Cutting board;65 Bowls;66 Pans;67 Mugs;68 Strainers;69
Trivets;70 Tongs;71 Slotted spoon;72 Slotted turner;73 and Ladle.74
• IKEA
Class 8
Knives;75 Flatware sets consisting of knives, forks and spoons;76
shears;77
Class 9
Measuring cups;78 measuring spoons;79

64 Id. at TSDR 219.
65 Id. at TSDR 232.
66 Id. at TSDR 246.
67 Id. at TSDR 267.
68 Id. at TSDR 272.
69 Id. at TSDR 279.
70 Id. at TSDR 293.
71 Id. at TSDR 349.
72 Id. at TSDR 353.
73 Id.
74 Id. at TSDR 352.
75 September 27, 2019 Denial of Request for Reconsideration (TSDR 9 and 26).
76 Id. at TSDR 6-9.
77 Id. at TSDR 34.
78 Id. at TSDR 33.
79 Id. at TSDR 34.
Serial No. 87947642
Serial No. 87947763

- 14 -

Class 21
Bowls;80 Pots and pans;81 knife block;82 trivets,83 and Tongs.84
This evidence establishes a relationship between Applicant’s goods and those in the
cited registration. See In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050
(Fed. Cir. 2018) (crediting relatedness evidence that third parties use the same mark
for the goods and services at issue because “[t]his evidence suggests that consumers
are accustomed to seeing a single mark associated with a source that sells both”).
Finally, Applicant submitted a specimen of use consisting of a SIZZLE & STIR
TOTAL KITCHEN 26-piece set including knives, a ladle, a slotted turner, a cutting
board, a knife block, shears, a cutting board, a measuring spoon, and a measuring
spoon. Applicant is selling all of those products as part of the SIZZLE & STIR TOTAL
KITCHEN set presumably because consumers use all of these products for preparing
and serving food. This is evidence that the products are complementary because
consumers may use them together for preparing and serving food. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984)
(finding bread and cheese to be related because they are often used in combination,
and stating: “Such complementary use has long been recognized as a relevant
consideration in determining a likelihood of confusion.”).

80 Id. at TSDR 16-17.
81 Id. at TSDR 21-24.
82 Id. at TSDR 29.
83 Id. at TSDR 21.
84 Id. at TSDR 37-38.
Serial No. 87947642
Serial No. 87947763

- 15 -

Applicant argues, “The kitchen cutlery covered by Applicant’s Mark, which is used
in cooking and preparing food in a kitchen, is very different from the sporting knives
covered by the Cited Mark. … As is evidenced from the specimens [of Registrant’s
knife], this is a rugged folding knife, which would likely be used outdoors, in a rugged
activity, such as hunting or fishing or hiking.”85 Applicant also contends that the term
“cutlery” in Registrant’s description of goods is “overbroad, and therefore, should
default to the only cutlery item actually referred to in the description, i.e., sports
knives.”86
We reject Applicant’s argument that we should restrict the goods in the cited
registration because the argument “amounts to a thinly-veiled collateral attack on
the validity of the registration.” See Dixie Rests., 41 USPQ2d at 1534. Section 7(b) of
the Trademark Act, 15 U.S.C. § 1057(b), provides that “[a] certificate of registration
of a mark upon the principal register provided by this chapter shall be prima facie
evidence of the validity of the registered mark and of the registration of the mark, of
the owner’s ownership of the mark, and of the owner’s exclusive right to use the
registered mark in commerce on or in connection with the goods or services specified
in the certificate.” Thus, we presume that the cited registration is valid, including the
term cutlery in the description of goods. As noted above, where description of goods
in an application or registration broadly identifies the products, we presume that the
goods encompass all products of the type identified. See In re Solid State Design Inc.,

85 Applicant’s Brief, p. 8 (4 TTABVUE 9).
86 Id. at p. 9 (4 TTABVUE 10).
Serial No. 87947642
Serial No. 87947763

- 16 -

125 USPQ2d at 1412-15; Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d at 1025; In re
Hughes Furniture Indus., Inc., 114 USPQ2d at 1137. Applicant has not cited any
contrary authority. Nor has Applicant cited any authority permitting us to read
limitations into the description of goods. Compare In re i.am.symbolic, LLC, 123
USPQ2d at 1748 (“It is well established that the Board may not read limitations into
an unrestricted registration or application.”); Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in
the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus, improperly read limitations
into the registration”); In re Thor Tech, 90 USPQ2d 1634, 1638 (TTAB 2009) (“We
have no authority to read any restrictions or limitations into the registrant’s
description of goods.”).
We find that Applicant’s goods in Classes 8 and 21 and the goods in the cited
registration are in part legally and that Applicant’s goods in Class 9 and the goods in
the cited registration are closely related.
II. Established, likely-to-continue channels of trade and classes of consumers.
Because the goods described in the application in Classes 8 and 21 and the goods
in the cited registration are in part legally identical, we presume that the channels
of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (identical goods are presumed to travel in
same channels of trade to same class of purchasers) (cited in Cai v. Diamond Hong,
127 USPQ2d at 1801 (“With respect to similarity of the established trade channels
Serial No. 87947642
Serial No. 87947763

- 17 -

through which the goods reach customers, the TTAB properly followed our case law
and ‘presume[d] that the identical goods move in the same channels of trade and are
available to the same classes of customers for such goods….’”); In re Yawata Iron &
Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst.,
101 USPQ2d 1022, 1028 (TTAB 2011).
As noted above, the Examining Attorney introduced excerpts from the KitchenAid,
Cuisinart, OXO, Williams Sonoma, Crate & Barrel, and IKEA websites showing that
these companies sell cutlery, as well as all the goods in Applicant’s description of
goods, including measuring cups and spoons, in Class 9. In addition, the Kohl’s
(kohls.com),87 Target (target.com),88 and Bed Bath & Beyond
(bedbathandbeyond.com)89 websites show that these independent retailers sell
cutlery and measuring cups and spoons and that they offered for sale in the same
channels of trade.
Finally, as noted above, Applicant submitted as a specimen of use a SIZZLE &
STIR TOTAL KITCHEN consisting of a 26-piece set including knives, a ladle, a
slotted turner, a cutting board, a knife block, shears, a cutting board, a measuring

87 September 8, 2018 Office Action (TSDR 53 and 144).
88 Id. at 58, 265, and 267.
89 Id. at TSDR 137 and 139.
Serial No. 87947642
Serial No. 87947763

- 18 -

spoon, and a measuring spoon. Applicant is selling all of those products as part of the
SIZZLE & STIR TOTAL KITCHEN set presumably because the same consumers use
all of these products for preparing and serving food. This is evidence that the same
classes of consumers purchase and use these products.
Applicant contends that Applicant and Registrant sell their goods in distinct
channels of trade because Applicant’s sells its products in home goods stores while
Registrant sells its sports knives in hunting or sports stores.90 For reasons discussed
in the preceding section, we reject Applicant’s contention.
We find that Applicant and Registrant offer their goods for sale in the same
channels of trade and to the same classes of consumers.
III. The strength of Registrant’s SIZZLE mark, including the number and nature
of similar marks in use in connection with similar goods.
When making a determination of likelihood of confusion in an ex parte appeal, in
order to determine the conceptual or inherent strength of the cited mark, we evaluate
its intrinsic nature, that is, where it lies along the generic-descriptive-suggestive-
arbitrary-fanciful continuum of words. Word marks that are arbitrary, fanciful, or
suggestive are “held to be inherently distinctive.” Wal-Mart Stores, Inc. v. Samara
Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). See also, In re Chippendales
USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed. Cir. 2010) (“In general,
trademarks are assessed according to a scale formulated by Judge Friendly in
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759 (2d Cir.

90 Applicant’s Brief, p. 8 (4 TTABVUE 14).
Serial No. 87947642
Serial No. 87947763

- 19 -

1976), which evaluates whether word marks are ‘arbitrary’ or ‘fanciful,’ ‘suggestive,’
‘descriptive,’ or ‘generic.’”). We also look to evidence pertaining to the number and
nature of similar marks in use on similar goods or services.
The RANDOM HOUSE UNABRIDGED DICTIONARY (2020) defines “Sizzle” as follows:91
1. to make a hissing sound, as in frying or burning.
2. Informal. to be very hot: It's sizzling out.
3. Informal. to be very angry; harbor deep resentment: I'm
still sizzling over that insult.
Thus, as Registrant uses SIZZLE to identify cutlery, it is, at worst, a suggestive mark.
As such, it is inherently distinctive and protectable as a trademark without a showing
of acquired distinctiveness.
Applicant argues to the contrary.
Due to third-party use, the scope of protection afforded the
Cited Mark should be relatively narrow, and therefore,
differences between the Cited Mark, SIZZLE, and
Applicant’s Mark, SIZZLE & STIR, should be sufficient to
render confusion unlikely. See T.M.E.P. § 1207.01(d)(iii)
(“active third-party registrations may be relevant to show
that a mark or a portion of a mark is descriptive,
suggestive, or so commonly used that the public will look
to other elements to distinguish the source of the goods or
services”); In re Hamilton Bank, 222 U.S.P.Q. 174, 177
(T.T.A.B. 1984) (third-party registrations are “competent
to show that others in a particular area of commerce have
adopted and registered marks incorporating a particular
term.” One can “note from such registrations that the term
or feature common to the marks has a normally understood
meaning or suggestiveness in the trade and that marks

91 Dictionary.com accessed on May 15, 2020. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB
2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Serial No. 87947642
Serial No. 87947763

- 20 -

containing the term or feature have been registered for the
same or closely related goods or services”).92
Applicant submitted copies of the two registrations listed below to support its
argument.
•Registration No. 3054250 for the mark SIZZLE-Q (stylized), reproduced
below, for “non-electric griddle for use on barbecue grills, campfires and propane
stoves,” in Class 21;93 and

•Registration No. 3695260 for the mark SIZZLEWARE, in standard character
form, for “griddles; serving platters; servingware for serving food,” in Class 21.94
Under the sixth DuPont factor, we consider “[t]he number and nature of similar
marks in use on similar goods.” DuPont, 177 USPQ at 567. The Federal Circuit has
held that evidence of the extensive registration and use of similar marks by others
can be powerful evidence of a mark’s weakness. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016); Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Even if
we put aside that neither of the registrations relied on in this case identifies the same

92 Applicant’s Brief, p. 4 (4 TTABVUE 5).
93 September 18, 2018 Request for Reconsideration (TSDR 16).
94 Id. at TSDR 18.
Serial No. 87947642
Serial No. 87947763

- 21 -

types of goods as in the cited registration, unlike cases in which the Federal Circuit
found extensive evidence of third-party use and other evidence in the record to be
“powerful on its face” inasmuch as “a considerable number of third parties use [of]
similar marks was shown,” Juice Generation, 115 USPQ2d at 1674, Applicant has
presented two registered marks and no evidence of actual use. This falls well short of
the volume of evidence the Federal Circuit found convincing in Jack Wolfskin and
Juice Generation. See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1735 (TTAB 2018)
(three third-party uses are “well short of the volume of evidence found convincing in
Jack Wolfskin and Juice Generation.”). See also Inn at St. John’s, 126 USPQ2d at
1745-46 (the Board held two third-party registrations for related but not identical
services and two registrations for identical services with a non-identical but similar
mark were not sufficient to prove Registrant’s mark was conceptually or inherently
weak). Compare Conde Nast Publ 'ns., Inc. v. Miss Quality, Inc., 507 F.2d 140, 184
U.S.P.Q. 422 (C.C.P.A. 1975) (COUNTRY VOGUES for “ladies’ and misses’ dresses”
held not likely to be confused with VOGUE for “a magazine” based, in part, on
evidence of sixty-nine third-party registrations for marks which include VOGUE);
Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334 (TTAB 2006) (RIDE
GENUINE SKIN CARE and design for “non-medicated skin care products namely
sunscreen, skin cleansers, skin moisturizers, pre-moistened cosmetic wipes and lip
balms” held not likely to be confused with GENUINE SKIN for “skin soaps, liquid
soaps, and lotions for hands, face, hair and body” based, in part, on dictionary
evidence and forty-six third-party registrations for marks which include GENUINE
Serial No. 87947642
Serial No. 87947763

- 22 -

for a variety of goods showing that GENUINE was laudatory); Knight Textile Corp.
v. Jones Inv. Co., 75 USPQ2d 1313 (T.T.A.B. 2005) (NORTON MCNAUGHTON
ESSENTIALS for “ladies’ sportswear, namely, shirts, shorts, pants, jumpers, dresses,
skirts, jackets, blouses and vests” held not likely to be confused with ESSENTIALS
for “women's clothing, namely pants, blouses, shorts, and jackets for women” based,
in part, on dictionary evidence and twenty-three third-party registrations, owned by
twenty-one different owners, for similar goods for marks which include ESSENTIALS
showing that ESSENTIALS was highly suggestive).
We find that the registered mark SIZZLE used in connection with cutlery is
entitled to the normal scope of protection accorded to a suggestive mark.
IV. The similarity or dissimilarity of the marks.
We now turn to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d
728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form,
spelling or sound alone is likely to cause confusion.”) (citation omitted).
In comparing the marks, we are mindful that where, as here, the goods are in part
legally identical and otherwise related, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there is a recognizable disparity
Serial No. 87947642
Serial No. 87947763

- 23 -

between the goods. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v.
Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc.
v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“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.” Cai, 127 USPQ2d at 1801 (quoting Coach Servs., 101 USPQ2d
at 1721). See also Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685
F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). The proper focus is on the
recollection of the average customer, who retains a general rather than specific
impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d
1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Because the goods at issue are cutlery and food preparation, serving, and eating
utensils, the average customer is an ordinary consumer.
The mark in the cited registration is SIZZLE and Applicant’s marks are SIZZLE
& STIR, in standard character form, and SIZZLE & STIR and design, reproduced
below:
Serial No. 87947642
Serial No. 87947763

- 24 -

With respect to Applicant’s SIZZLE & STIR and design mark, we find that the
word portion of the mark, SIZZLE & STIR, is the dominant portion of the mark
because SIZZLE & STIR are more likely to indicate the source of the services
inasmuch as purchasers are more likely to remember them and use them to request
the goods. See Jack Wolfskin, 116 USPQ2d at 1134; Viterra, 101 USPQ2d at 1908
(citing CBS Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983));
Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987). There is nothing improper in stating that, for rational reasons, we
give more or less to a particular feature of a mark, such as a common dominant
element, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. Viterra Inc., 101 USPQ2d at 1908; In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Accordingly, we focus on the similarity or
dissimilarity of SIZZLE & STIR versus SIZZLE.
The marks are similar because they share the inherently distinctive word “Sizzle.”
In this regard, we note that Applicant’s mark incorporates Registrant’s entire mark.
While there is no explicit rule that we must find that marks are similar where
Serial No. 87947642
Serial No. 87947763

- 25 -

Applicant’s mark contains the whole of the Registrant’s mark, the fact that
Applicant’s mark incorporates the cited registered mark in its entirety increases their
similarity. See, e.g., China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337,
83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s mark CHI PLUS is similar to
opposer’s mark CHI both for electric massagers); Coca-Cola Bottling Co. of Memphis,
TN, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA
1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger
ale is likely to cause confusion with BENGAL for gin); In re Toshiba Med. Sys. Corp.,
91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical
magnetic resonance imaging diagnostic apparatus confusingly similar to TITAN for
medical ultrasound diagnostic apparatus); Broadcasting Network Inc. v. ABS-CBN
Int’l, 84 USPQ2d 1560, 1568 (TTAB 2007) (respondent’s mark ABS-CBN is similar to
petitioner’s mark CBN both for television broadcasting services); In re El Torito
Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (applicant’s mark MACHO COMBOS
for food items confusingly similar to MACHO for restaurant entrees).
We also note that the word “Sizzle” is the first part of Applicant’s mark SIZZLE &
STIR and that the first part of a mark is significant because consumers often notice
those words first. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is
particularly significant because consumers typically notice those words first”); Palm
Bay Imps., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark
VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word
Serial No. 87947642
Serial No. 87947763

- 26 -

to appear on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers will first notice the identical lead word); 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”).
We also find that the marks have similar meanings and engender similar
commercial impressions. As noted above, the word “Sizzle” means “a hissing sound,
as in frying or burning” and, thus, the meaning and commercial impression
engendered by both marks is the sound of cooking. While Applicant agrees that
SIZZLE & STIR evokes the commercial impression of the “consumer at the store
preparing a meal in a frying pan and mixing it with a utensil to make sure all the
ingredients are evenly cooked and browned,”95 Applicant fails to acknowledge the
broad definition of “cutlery.”96 While not identical, we find that the commercial
impressions engendered by the marks is similar.
Finally, consumers familiar with Registrant’s previously used SIZZLE mark for
cutlery upon encountering the mark SIZZLE & STIR for food preparation, cooking,
and serving products may mistakenly believe that the SIZZLE & STIR products are
an expansion of the SIZZLE brand cutlery with a variation of the SIZZLE mark
expanded to include & STIR.

95 Applicant’s Brief, p. 7 (4 TTABVUE 8)/
96 Id.
Serial No. 87947642
Serial No. 87947763

- 27 -

Applicant contends that the alliteration of SIZZLE & STIR will “cause the
consumer to focus on the duplicate soft ‘S’ sounds, reminiscent of the famous
childhood rhyme ‘sugar and spice (and everything nice).’ By contrast, in the Cited
Mark, the emphasis will be on the sharp ‘Z’ sound of ‘sizzle.’”97 First, since Applicant’s
mark begins with the word “Sizzle,” consumers are just as likely to focus on the sharp
“Z” sound of Applicant’s use of the of the word “Sizzle.”
Second, the reference to the nursery rhyme “Sugar and Spice” is inapposite
because there is no evidence that the phrase “Sizzle & Stir” is has a meaning other
than that attributed to the dictionary definitions of the terms as discussed above.
Here, SIZZLE & STIR does not evoke an image other than heating and stirring food.
Consumers will not perceive any other meaning. Compare In re Colonial Stores, Inc.,
394 F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (the mark SUGAR & SPICE evokes
the immediate impression of “sugar and spice with everything nice” referring to the
well-known nursery rhyme).
We find that the marks are similar in their entireties as to appearance, sound,
connotation and commercial impression.
V. Conclusion
Because the marks are similar, at least one good in each class is legally identical
or otherwise closely related, and Applicant and Registrant offer the goods in the same
channels of trade to the same classes of consumers, we find that Applicant’s marks,
SIZZLE & STIR, in standard character form, and SIZZLE & STIR and design, are

97 Applicant’s Brief, p. 6 (4 TTABVUE 7).
Serial No. 87947642
Serial No. 87947763

- 28 -

likely to cause confusion with the registered mark SIZZLE for “cutlery; cutlery,
namely, sports knives.”
Decision: The refusals to register Applicant’s marks SIZZLE & STIR and SIZZLE
& STIR and design are affirmed.