Gel Shotz, Inc.

Trademark Trial and Appeal Board

Jan 15, 2020

87387430 (T.T.A.B. Jan. 15, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gel Shotz, Inc.
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Serial No. 87387430
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Constance I. Rimmer of the Law Office of Constance I Rimmer
for Gel Shotz, Inc.
Jared M. Mason, Trademark Examining Attorney, Law Office 119,
J. Brett Golden, Managing Attorney.
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Before Bergsman, Lykos and Pologeorgis,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Gel Shotz, Inc. (“Applicant”) seeks to register on the Principal Register under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f), the stylized mark displayed below

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(GEL disclaimed) for “Flavored and sweetened gelatins” in International Class 30.1
Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered standard character mark GEL SHOTS (SHOTS disclaimed) on the
Principal Register for “aperitifs with a wine base” in International Class 33,2 that it
is likely to cause confusion or mistake or to deceive.3
When the refusal was made final, Applicant appealed. The appeal is now briefed.
For the reasons set forth below, we affirm the refusal to register.
I. Evidentiary Objection
The Examining Attorney objects to Applicant’s reference and discussion of two
third-party applications in Applicant’s appeal brief. The Board does not take judicial
notice of third-party applications. In re Olin, 124 USPQ2d 1327, 1335 n.22 (TTAB
2017) (internal citation omitted). Copies of the applications demonstrating their title
and status were not submitted during prosecution.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) provides that “[t]he record in the
application should be complete prior to the filing of an appeal. The Trademark Trial
and Appeal Board will ordinarily not consider additional evidence filed with the

1 Application Serial No. 87387430, filed March 27, 2017 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a). Color is not claimed as a feature of the mark. Applicant’s claim of
acquired distinctiveness under Section 2(f) applies to the mark as a whole.
2 Registration No. 2911162, registered December 14, 2004; renewed.
3 Registration was also refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1),
on the ground that the mark is merely descriptive of the goods. The Examining Attorney
withdrew the refusal following Applicant’s claim of acquired distinctiveness under Section
2(f) based on five years of substantially exclusive and continuous use of the mark. See
January 9, 2019 Office Action.
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Board by the appellant or by the examiner after the appeal is filed.” The Examining
Attorney’s objection is sustained, and Applicant’s reference and discussion of the two
applications has been given no consideration.4 See In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1744 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13,
2019) (mem); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596
(TTAB 2014).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019). When analyzing these factors, the overriding concerns are not
only to prevent buyer confusion as to the source of the goods, but also to protect the
registrant from adverse commercial impact due to use of a similar mark by a
newcomer. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir.
1993). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);

4 In fact, Applicant agrees that the Examining Attorney’s objection was proper. Reply Brief,
p. 3; 18 TTABVUE 3.

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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
effect of differences in the essential characteristics of the goods and differences in the
marks.”). These factors and others are discussed below.
A. The Marks

This DuPont likelihood of confusion factor involves an analysis of the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(citing 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, 126 USPQ2d
at 1746) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “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.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012). Our analysis cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on a comparison of the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
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determining likelihood of confusion.”).
Applicant argues that the marks are “sufficiently distinct,” pointing to the
inclusion of a hyphen between the terms GEL and SHOTZ in its mark, the spelling
of “shotz” with the letter “z” instead of the letter “s,” and the stylized lettering. We
disagree. Applicant’s and Registrant’s marks are phonetic equivalents that also share
the same connotation and meaning. Similarity in sound alone may be sufficient to
support a finding that the marks are confusingly similar. See e.g., In re White Swan
Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). Because “there is no correct pronunciation
of a mark” and because “it is impossible to predict how the public will pronounce a
particular mark,” we must assume that the marks could be pronounced in the same
manner by consumers. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d
1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d
1905, 1912 (Fed. Cir. 2012)); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162
USPQ 227, 227 (CCPA 1969). See, e.g., Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
228 USPQ 461 (TTAB 1985) (holding SEYCOS and design for watches, and SEIKO
for watches and clocks, likely to cause confusion); In re Great Lakes Canning, Inc.,
227 USPQ 483 (TTAB 1985) (holding CAYNA (stylized) for soft drinks, and CANA
for, inter alia, canned and frozen fruit and vegetable juices, likely to cause confusion).
In this regard, consumers will verbalize GEL-SHOTZ and GEL SHOTS the same
based on normal U.S. English pronunciation.
Neither the hyphen nor the stylization present in Applicant’s mark serve as
distinguishing factors. Cf. In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB
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2011) (finding “Person2Person Payment” generic despite deletion of spaces); Giersch
v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that
DESIGNED TO SELL does not create a distinct commercial impression from
DESIGNED2SELL). In general, differences in punctuation fail to obviate the
similarities in sounds, meaning and commercial impression of the involved mark. See,
e.g., Nahshin v. Prod. Source Int’l LLC, 107 USPQ2d 1257, 1258 n.2 (TTAB 2013)
(“the presence or absence of a hyphen is insignificant to our . . . decision”); Mag
Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) (hyphen
did not distinguish MAGNUM from MAG-NUM); Goodyear Tire & Rubber Co. v.
Dayco Corp., 201 USPQ 485, 489 n.4 (TTAB 1978) (“Fast-Finder” with hyphen is in
legal contemplation substantially identical to “Fastfinder” without hyphen); cf. In re
Litehouse, Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) (the presence of the exclamation
points in the mark CAESAR!CAESAR! fails to negate the mere descriptiveness of the
mark as a whole as applied to salad dressings). Such is the case here where the
hyphen in Applicant’s mark between GEL and SHOTZ does not alter the meaning of
the literal terms. In addition, the cited mark GEL SHOTS is registered in standard
characters meaning that it can be presented in any stylized format, including a font
identical to Applicant’s applied-for mark. See Trademark Rule 2.52(a), 37 C.F.R. §
2.52(a); see also In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (rejecting an argument that the specific style of a registered mark could
serve to distinguish the applicant's mark in standard character form).
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We therefore find this DuPont factor weighs in favor of finding a likelihood of
confusion.
B. The Goods
Next, we compare the goods as they are identified in the involved application and
cited registration. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1052 (Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002). The goods need not be identical or even competitive to find a likelihood of
confusion. 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). They need only be “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of
relatedness may include news articles or evidence from computer databases showing
that the relevant goods are used together or used by the same purchasers;
advertisements showing that the relevant goods are advertised together or sold by
the same manufacturer or dealer; and/or copies of prior use-based registrations of the
same mark for both applicant’s goods and the goods listed in the cited registration.
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See, e.g., In re Davia, 110 USPQ2d at 1817 (finding pepper sauce and agave related
where evidence showed both were used for the same purpose in the same recipes and
thus consumers were likely to purchase the products at the same time and in the
same stores).
Applicant argues that the goods are unrelated, asserting that its “[f]lavored and
sweetened gelatins” are “boxes of gelatin-style desserts that can be used to mix with
alcohol or without, and can be used in baking for flavoring pies, cupcakes and
fondant” whereas Registrant’s goods consist of “one-liter bottles or gallon size jugs of
wine based alcohol.” Applicant’s Brief, p. 9; 4 TTABVUE 10.
Applicant’s arguments are belied by the record evidence which show that
Applicant’s “[f]lavored and sweetened gelatins” and Registrant’s “aperitifs with a
wine base” are complementary products designed to be mixed together in the same
recipes to make alcohol infused gelatin in a shot-sized serving. See, e.g., In re Vienna
Sausage Mfg. Co., 230 USPQ 799, 799-80 (TTAB 1986) (sausage and cheese related
based in part on copies of pages from cookbooks containing recipes for dishes having
cheese and sausage as principal ingredients). Applicant’s website
(www.gelshotz.com) promotes its goods as “Jello for Grown-Ups!” to be mixed with
alcoholic beverages:
Gel-Shotz flavored gelatin is the world’s first ever retail
gelatin product specifically formulated to mix with alcohol.
Gel-Shotz works best when combined with the base alcohol
of your favorite cocktail (clear tequila with the Margaritas,
white rum with the Tropicals, and vodka with Martini
flavors.
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June 25, 2017 Office Action, p. 35. The website even provides step-by-step recipe
instructions for mixing Applicant’s branded gelatin with spirits:

Id. Applicant’s substitute specimen consisting of product packaging displays a similar
recipe using vodka to make Cosmopolitan flavored gelatin shots:

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See August 11, 2017 Response, p. 7. Cf. In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d
1707, 1710 (Fed. Cir. 2017) (evidence of descriptiveness may be obtained from
Applicant’s own specimen of use and any explanatory text included therein). While
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Applicant’s web site and substitute specimen suggest mixing its flavored gelatin with
spirits, it is foreseeable that consumers of these types of goods may substitute other
types of alcoholic beverages such as Registrant’s “aperitifs with a wine base.”
We acknowledge that the principle “the mere appearance of different items in a
recipe will not necessitate a finding that the goods are related.” In re Davia, 110
USPQ2d at 1817. Here, however, Applicant instructs the consumer to use both its
and Registrant’s type of goods together. In short, we can conclude that Applicant’s
and Registrant’s goods are complementary products that could be purchased and used
together to make shot-sized alcohol infused gelatin. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984)
(“[C]omplementary use has long been recognized as a relevant consideration in
determining a likelihood of confusion.”). As such, this DuPont factor also favors a
finding of likelihood of confusion.
C. Trade Channels
Next we direct our attention to the established, likely-to-continue channels of
trade. Applicant contends that while Registrant’s goods are sold only in “bars,
restaurants, and drive-through daiquiri bars” to consumers of legal drinking age,
Applicant’s goods are sold exclusively in grocery stores. Applicant’s Brief, p. 9; 4
TTABVUE 10.
Because the identifications in the application and cited registration have no
restrictions on channels of trade, we must presume that the goods travel in all
channels of trade appropriate for such goods. See Octocom, 16 USPQ2d at 1787. It is
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common knowledge that in some states, wine and wine products are sold in grocery
stores where gelatin is also sold. The classes of purchasers overlap as well – persons
of drinking age. As such, the DuPont factor regarding the similarity or dissimilarity
of established, likely to continue trade channels also favors a finding of likelihood of
confusion.
D. Other Factors – Prior Registration
The thirteenth and final du Pont factor pertains to “any other established fact
probative of the effect of use.” du Pont, 177 USPQ at 567. Rarely invoked, this factor
“accommodates the need for flexibility in assessing each unique set of facts….” In re
Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). This includes a variety
of circumstances such as an applicant’s ownership of a previously registered mark.
Where an applicant owns a prior registration that is over five years old and the mark
is “substantially the same” as in the applied-for application, this can weigh against
finding that there is a likelihood of confusion. In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1748 (TTAB 2018) (citing In re Strategic Partners Inc., 102 USPQ2d
at 1399 (no likelihood of confusion found with the registered mark ANYWEAR BY
JOSIE NATORI and design where the applicant’s previously registered mark
ANYWEARS was substantially similar to the applied-for mark ANYWEAR for
identical goods)).
Applicant points to its ownership through a predecessor in interest of the same
registered mark as set forth in the application at issue. But as Applicant
acknowledges, this registration was inadvertently cancelled, meaning that prior
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ownership of a “substantially similar” mark is no longer a factor for consideration.
While it is unfortunate that Applicant’s prior registration was not maintained, our
precedent is clear; a cancelled or expired registration has no probative value other
than to show that it once issued and it is not entitled to any of the statutory
presumptions of Section 7(b) of the Trademark Act. In Re Ginc UK Ltd., 90 USPQ2d
1472, 1480 (TTAB 2007). See also Action Temp. Servs. Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“a cancelled registration does not
provide constructive notice of anything.”); 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.”).
This DuPont factor is therefore neutral.
E. Balancing the Factors
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto. The marks are phonetic equivalents with the same
connotation and commercial impression. This, coupled with the complementary
nature of the goods sold in at least one overlapping trade channel to the same class
of consumers leads us to the conclusion that prospective consumers are likely to
confuse the involved goods as originating from or associated with or sponsored by the
same entity.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.