Chocolates A La Carte, Inc.

Trademark Trial and Appeal Board

Sep 27, 2007

No. 76510408 (T.T.A.B. Sep. 27, 2007)

Mailed: September 27, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chocolates A La Carte, Inc.
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Serial No. 76510408
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Michael A. Painter of Isaacman, Kaufman & Painter for
Chocolates A La Carte, Inc.

Chris Wells, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
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Before Walters, Grendel and Zervas, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Chocolates A La Carte, Inc. has filed an application to
register the mark SIGNATURE CHOCOLATES BY RENA in standard
character form on the Principal Register for “chocolate and
desserts, namely, pastries and frozen confections,” in
International Class 30.1 The application includes a
disclaimer of CHOCOLATES apart from the mark as a whole.2

1 Serial No. 76510408, filed April 11, 2003, based on use of the mark in
commerce, alleging first use and use in commerce as of January 1, 2003.

2 During examination, the examining attorney withdrew an earlier
requirement for a disclaimer of the term SIGNATURE. The electronic
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76510408

2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark SIGNATURE CHOCOLATES, previously registered for
“chocolate and fudge candy,”3 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We reverse the
refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
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

records of the USPTO incorrectly indicate that the application includes
a disclaimer of SIGNATURE CHOCOLATES.

3 Registration No. 3052948 issued January 31, 2006, to Signature
Fundraising, Inc. The registration includes a disclaimer of CHOCOLATES
apart from the mark as a whole.
Serial No. 76510408

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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); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
Considering, first, the goods involved in this case, we
must limit our analysis to the goods recited in the
application vis-à-vis the goods recited in the registration.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, the goods need not be identical or even competitive
in order to support a finding of likelihood of confusion.
Rather, it is enough that the goods 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 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 each parties’ goods. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991), and cases cited therein; and
Serial No. 76510408

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Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661
(TTAB 2002).
Both applicant’s goods, “chocolate and desserts,
namely, pastries and frozen confections,” and registrant’s
goods, “chocolate and fudge candy,” include “chocolate.”
Registrant’s “fudge candy” is also closely related thereto.
The examining attorney submitted six third-party
registrations including in the identifications of goods
chocolate, fudge, pastries and ice cream to demonstrate that
the public may be accustomed to seeing these goods
identified by the same mark emanating from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467
(TTAB 1988). Moreover, applicant does not argue that the
goods are unrelated. Therefore, we find the goods to be the
same in part and otherwise closely related. This du Pont
factor favors a likelihood of confusion.
Because the goods are identical, in part, and otherwise
closely related, the channels of trade and purchasers, i.e.,
all those normal for these types of goods, are essentially
the same. Thus, the du Pont factors of similarity of trade
channels and purchasers also favor a likelihood of
confusion.
Considering next the marks, the examining attorney
contends that the BY RENA portion of applicant’s mark is
Serial No. 76510408

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essentially a house mark and that applicant’s mark
encompasses the registered mark in its entirety with the
mere addition of a house mark4; that the SIGNATURE
CHOCOLATES portion of applicant’s mark is a primary element
in applicant’s mark; and that SIGNATURE is a strong term as
applied to chocolate confections.
Regarding registrant’s mark, applicant argues that
CHOCOLATES is merely descriptive and SIGNATURE is a
laudatory, and, thus, a weak term; and that the BY RENA
portion of its mark is sufficient to distinguish the marks.
Applicant contends that the Register contains numerous marks
containing the term SIGNATURE registered to third parties in
International Class 30 for candy or related food products.
In support of this statement, in its April 12, 2004
response, applicant listed fourteen marks, noting the
registration numbers and goods. This is not the proper
means for introducing third-party registrations into the
record. However, the examining attorney did not object to
the form of the evidence and, in fact, discussed the
registrations. Therefore, we have considered this list as
part of the record; although we note that it is of limited
probative value because we do not have all of the relevant
information about these registrations, e.g., the names of

4 The application includes a claim of ownership of two registrations,
both for the mark RENA - No. 2225715 for “catering services featuring
Serial No. 76510408

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the registrants to determine whether several registrations
are owned by one party. We also note that each mark
includes, in addition to the word SIGNATURE, other words
quite different from the marks in this case5; and only three
of the listed registrations are for the goods involved
herein, i.e., candy, chocolate and/or frozen confections.6
While the application as filed included a disclaimer of
CHOCOLATE, the examining attorney initially also required a
disclaimer of SIGNATURE and made of record numerous
references from Internet websites showing use of "signature
chocolate(s)" by retailers and hotels, e.g., "These Marshall
Field's signature Frango chocolates are the perfect fit for
any occasion..."; “They've been a Marshall Field's signature
item for 75 years."; and "From fresh inroom flowers, the
hint of paperwhites on your luxurious sheets or your brandy
or port ... and of course, our signature chocolates." The
examining attorney later withdrew the disclaimer requirement
for SIGNATURE; however, the evidence remains of record and
is relevant to our determination of the strength or weakness
of the registered mark.

custom designed chocolate desserts”; and No. 2598690 for “chocolate and
desserts, namely, bakery goods, pastries and frozen confections.”

5 One of the listed third-party registrations, No. 2405167, also for
candy and chocolate, is for the mark KIRKLAND SIGNATURE CHOCOLATES OF
THE WORLD.

6 Two of these three registrations are likely to be owned by the same
entity – No. 1405167 for the mark KIRKLAND SIGNATURE CHOCOLATES OF THE
WORLD and No. 2309500 for the mark KIRKLAND SIGNATURE.
Serial No. 76510408

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The issue is whether applicant’s mark and the
registered mark, when viewed in their entireties, are
similar in terms of appearance, sound, connotation and
commercial impression. The test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impressions
that confusion as to the source of the goods or services
offered under the respective marks is likely to result. The
focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
In this case, there is sufficient evidence of the use
and registration7 of the term SIGNATURE in connection with
candy and chocolates to warrant the conclusion that
SIGNATURE CHOCOLATE is a weak, highly suggestive term in
connection with these goods.
Even if we were to conclude that BY RENA is a house
mark or trade name, which we do not do on this record, the
presence of a trade name may or may not eliminate a
likelihood of confusion between the entire marks. Contrary
to the examining attorney’s contention, there is no flat

7 The third-party registrations are not evidence of use; rather, they
function in the manner of a dictionary and, thus, are indicative of the
Serial No. 76510408

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rule that the presence of a “house mark” in combination with
a similar product mark will never prevent a likelihood of
confusion. See 3 J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition, §23:43 (4th ed. 2007). In In re S. D.
Fabrics, Inc., 223 USPQ 54 (TTAB 1984), the Board stated the
following (at pp. 55-56):
Although it has often been said that the
addition of a trade name, house mark, or
surname to one of two otherwise
confusingly similar marks will not
generally serve to avoid a likelihood of
confusion between them, exceptions to
this general rule are made (1) when
there are recognizable differences
between the assertedly conflicting
product marks, or (2) when the alleged
product marks are highly suggestive or
merely descriptive or play upon commonly
used or registered terms. [citations
omitted]

See also In re Bed & Breakfast Registry, 791 F.2d 157, 229
USPQ 818 (Fed. Cir. 1986); Rockwood Chocolate Co. v. Hoffman
Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967); and In re
Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974).
In the present case, the presence of the phrase BY RENA in
applicant’s mark alleviates the likelihood of confusion with
registrant’s mark. The factor of the marks overwhelmingly
weighs against a finding of likelihood of confusion.
Therefore, we conclude that, despite the identity, in
part, and otherwise close relationship between applicant’s

laudatory nature of the term SIGNATURE CHOCOLATE in connection with the
Serial No. 76510408

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identified goods and the goods in the cited registration,
the examining attorney has not established that the marks
are sufficiently similar that the contemporaneous use of
these marks on the identified goods is likely to cause
confusion as to the source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
reversed.

goods.