Food Depot, Inc.

Trademark Trial and Appeal Board

May 10, 2002

No. 76162482 (T.T.A.B. May. 10, 2002)

5/10/02 Paper No. 8
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
____________

In re Food Depot, Inc.
____________

Serial No. 76/162,482
____________

Myron Amer for Food Depot, Inc.

Karen M. Strzyz, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
____________

Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Food Depot, Inc. (applicant) seeks to register in
typed drawing form FOOD DEPOT OF NEW YORK for services
which applicant subsequently identified as “wholesale
distributorship featuring the sale of food and quantities
of food for the restaurant market.” The intent-to-use
application was filed on November 13, 2001. At the request
of the Examining Attorney, applicant disclaimed the
exclusive right to use FOOD and NEW YORK apart from the
mark in its entirety.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 76/162,482

In her second and final Office Action dated October 9,
2001, the Examining Attorney refused registration on two
grounds. First, the Examining Attorney contended that
applicant’s recitation of services was “unacceptable as
indefinite.” Second, the Examining Attorney contended that
applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with the mark FOOD DEPOT,
previously registered in typed drawing form for “retail
food store services.” Registration No. 2,111,099 issued
November 4, 1997.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
We will first consider the refusal on the basis that
applicant’s amended identification of services is
“unacceptable as indefinite.” As just noted, these were
the words which the Examining Attorney used in her second
and final Office Action dated October 9, 2001. It should
be noted that in her brief, the Examining Attorney does not
explain why applicant’s amended identification of services
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is unacceptable. In other words, in her brief the
Examining Attorney did not repeat her contention that
applicant’s amended identification of services is
unacceptable because it is “indefinite.” (Examining
Attorney’s brief pages 2 and 10).
By way of background, applicant’s original
identification of services was “wholesale distribution of
food products to restaurants.” In the first Office Action
dated April 2, 2001, the Examining Attorney contended that
the foregoing identification of services was “unacceptable
as indefinite.” She suggested that the applicant may adopt
the following recitation of services if accurate:
“wholesale distributorship featuring food for the
restaurant market.”
In response, applicant amended its identification of
services to “wholesale distributorship featuring the sale
of food and quantities of food for the restaurant market.”
In the second and final Office Action the Examining
Attorney, as previously noted, held that the amended
identification of services was “also unacceptable as
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indefinite.” At no time has the Examining Attorney
explained why applicant’s initial or amended identification
of services were unacceptable as “indefinite.”
To cut to the quick, we find that applicant’s amended
identification of services is proper, and is not
indefinite. Accordingly, the refusal to register on the
basis that applicant’s amended identification of services
is indefinite is reversed.
We turn now to the second ground of refusal premised
on Section 2(d) of the Trademark Act, namely, that
applicant’s mark, as applied to applicant’s services, is
likely to cause confusion with the mark FOOD DEPOT,
previously registered in typed drawing form for “retail
food store services.” In any likelihood of confusion
analysis, two key, although not exclusive, considerations
are the similarities of the marks and the similarities of
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
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
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marks.”)
Considering first the marks, note that the only
component common to both marks are the words FOOD DEPOT.
However, as applied to registrant’s services (retail food
store services) and especially as applied to applicant’s
services (wholesale distributorship featuring the sale of
food and quantities of food for the restaurant market), the
words FOOD DEPOT are extremely suggestive. In this regard,
we note that both applicant and registrant have disclaimed
any exclusive rights to the word FOOD. Moreover, we take
judicial notice that the word “depot” is defined as “a
storehouse; warehouse.” Webster’s New World Dictionary (2d
ed. 1975). Thus, the registered mark FOOD DEPOT is
synonymous with FOOD WAREHOUSE, and applicant’s mark FOOD
DEPOT OF NEW YORK is synonymous with FOOD WAREHOUSE OF NEW
YORK. It has been held that the mere presence of a highly
suggestive common component in two marks is “usually
insufficient to support a finding of likelihood of
confusion.” Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693, 694 (CCPA 1976). It is with this
proposition in mind that we turn to a comparison of
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applicant’s services and registrant’s services. However,
before so doing, we wish to make it clear that we have not
impermissibly characterized the registered mark FOOD DEPOT
as being merely descriptive. Rather, we have properly
characterized the registered mark FOOD DEPOT as being
extremely suggestive. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Turning to a consideration of the respective services
of applicant and registrant, we note that the only evidence
made of record by the Examining Attorney in an effort to
show that the services are related are 29 third-party
registrations. In 17 of these 29 registrations, the
services include essentially the wholesale and retail sale
of various food items. The other 12 registrations include
the wholesale and retail sale of other products. It is the
position of the Examining Attorney that these 29 third-
party registrations demonstrate that “registrant’s grocery
store and applicant’s wholesale distributorship are likely
to be marketed to the same class of purchasers under
circumstances which would give rise to a mistaken belief
that they originate from or are in some way associated with
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the same source.” (Examining Attorney’s brief page 10).
We do not dispute that there are common purchasers of
registrant’s “retail food store services” and applicant’s
“wholesale distributorship featuring the sale of food and
quantities of food for the restaurant market.” However,
those common purchasers are an extremely narrow and, when
it comes to food items, sophisticated segment of the
general population, namely, owners and operators of
restaurants. Obviously, almost all Americans partake of
“retail food store services,” registrant’s services.
However, only owners and operators of restaurants would
partake of “wholesale distributorship featuring the sale of
food and quantities of food for the restaurant market,”
applicant’s services.
When it comes to purchasing food items, owners and
operators of restaurants are clearly sophisticated
purchasers. This is true when they purchase food at the
wholesale level for their restaurants, and it is likewise
true when they purchase food at the retail level for their
own consumption. In other words, owners and operators of
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restaurants in their off hours do not suddenly become
unsophisticated when it comes to the purchase of food
items.
Our primary reviewing Court has made it abundantly
clear that in any likelihood of confusion analysis,
purchaser “sophistication is important and often
dispositive because sophisticated consumers may be expected
to exercise greater care.” Electronic Design & Sales v.
Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392
(Fed. Cir. 1992). We are of the view that sophisticated
purchasers of food items would not assume that FOOD DEPOT
retail food store services and FOOD DEPOT OF NEW YORK
wholesale food distribution services to restaurants are
related merely because both marks contain the extremely
suggestive words FOOD DEPOT. Accordingly, we reverse the
refusal pursuant to Section 2(d) of the Trademark Act.
Decision: The refusal to register on the basis that
applicant’s amended identification of services is
indefinite is reversed. The refusal to register pursuant
to Section 2(d) of the Trademark Act on the basis that
applicant’s mark, as applied to applicant’s services, is
8
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likely to cause confusion with the mark FOOD DEPOT for
retail food store services is likewise reversed.

9