Gilster-Mary Lee Corp.

Trademark Trial and Appeal Board

Sep 16, 2003

No. 75423447 (T.T.A.B. Sep. 16, 2003)

Mailed: September 16, 2003
Paper No. 21
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gilster-Mary Lee Corporation
________
Serial No. 75/423,447
_______
Simor L. Moskowitz of Jacobson Holman PLLC for Gilster-Mary
Lee Corporation.
Karen M. Strzyz, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Hairston, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Applicant has filed an application to register on the
Principal Register the mark FRUITY BLASTS for “breakfast
cereal.”1
1 Application Serial No. 75/423,447, filed January 23, 1998. The
application is based on applicant’s assertion of a bona fide
intention to use the mark in commerce. Applicant disclaimed the
word “fruity.”
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/423447
2
The Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, when
applied to its goods, so resembles the registered marks,
COCOA BLASTS2 and COOKIE BLAST,3 both for “breakfast
cereal,” as to be likely to cause confusion, mistake or
deception.
Applicant appealed, and briefs have been filed.
Applicant requested and later withdrew its request for an
oral hearing.
It is obvious that the identified goods are identical,
as are the channels of trade and the purchasers. “When
marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Moreover, these are
inexpensive, impulse purchases made by the general public.
2 Registration No. 1,781,628, issued July 13, 1993, to Stokely-
Van Camp, Inc., and was later assigned to The Quaker Oats Company
in September 1996 (Reel 1505 Frame 0259); Section 8 affidavit
accepted, Section 15 affidavit acknowledged, renewed. The word
“cocoa” is disclaimed.
3 Registration No. 2,093,615, issued September 2, 1997 to The
Quaker Oats Company. See Section 8(c)(1) of the Trademark Act,
15 U.S.C. §1058(c)(1). The word “cookie” is disclaimed.
Ser. No. 75/423447
3
Looking then to the marks, when comparing applicant’s
mark to each of the two cited marks, in their entireties,
we find that applicant’s mark FRUITY BLASTS is similar to
each of the cited registered marks, COCOA BLASTS and COOKIE
BLAST.
The marks share the word BLAST or BLASTS, and all
begin with a word relating to a flavor used in the
breakfast cereal -- “fruity,” “cocoa” and “cookie,”
respectively. That applicant’s mark and one of the
registered marks include “BLASTS” in plural form, and the
second cited registered mark includes “BLAST” in singular
form, is not significant in terms of the likelihood of
confusion of purchasers. See In re Pix of America, Inc.,
225 USPQ 691 (TTAB 1985). (Likewise, whether viewing the
terms “blast”/”blasts” as either a noun or a verb is not a
significant source-indicating difference.) Further, while
the first word in each of the marks is clearly a different
word, each one names a flavor of breakfast cereal.
These minor differences do not obviate the likelihood
of confusion in the minds of purchasers because they are
unlikely to remember the specific differences between the
marks due to the recollection of the average purchaser, who
normally retains a general, rather than a specific,
impression of the many trademarks encountered. That is,
Ser. No. 75/423447
4
the purchaser’s fallibility of memory over a period of time
must be kept in mind. See Grandpa Pidgeon’s of Missouri,
Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA
1973); and Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir., June 5,
1992).
Further, even if purchasers noticed and recalled the
specific differences in the marks, purchasers familiar with
registrant’s cereal sold under the registered marks COCOA
BLASTS and COOKIE BLAST, upon seeing applicant’s mark
FRUITY BLASTS on identical goods, would assume that
applicant’s goods come from the same source as registrant’s
goods, and merely refer to a new flavor thereof.
The Examining Attorney submitted several third-party
registrations to support her contention that “it is common
in the breakfast cereal industry to have both a FRUITY and
COCOA [and other] flavored version[s] of a particular
cereal. The makers of the cereal often use these terms in
their marks by adding the term FRUITY, COCOA and other
flavor indications to the main mark. … Thus, a consumer
will conclude that applicant’s FRUITY BLASTS cereal is the
fruit flavored version of registrant’s COCOA and COOKIE
“BLAST” cereals.” (September 23, 2002 denial of
applicant’s request for reconsideration, unnumbered pp. 2-
Ser. No. 75/423447
5
3.)4 Examples include the following: FRUITY SPECKLES and
COCOA SPECKLES, both for breakfast cereal, and both issued
to Weetabix Company, Inc. (Registration Nos. 2,494,840 and
2,494,844); FRUITY MARSHMALLOW KRISPIES, COCOA KRISPIES,
FROSTED KRISPIES, MARSHMALLOW KRISPIES and KRISPIES, all
4 Applicant requested in its brief (pp. 19-20) and its reply
brief (pp. 6-8) that the Board strike the Examining Attorney’s
evidence regarding the practice of the breakfast cereal industry.
Specifically, applicant contends that this material was offered
“post-appeal”; that it is prejudicial to applicant because it is
now unable to offer opposing evidence; and that the Examining
Attorney’s offer of this argument and evidence is outside the
scope of the issue argued in applicant’s request for
reconsideration as explained in TMEP §1504.05 and TBMP §1207.02.
Under Trademark Rule 2.142(d) the record must be complete prior
to the filing of an appeal. If applicant files a request for
reconsideration under Trademark Rule 2.64(b) and the case is with
the TTAB, the case will be remanded to the Examining Attorney for
further consideration and at this point the Examining Attorney is
free to include additional evidence in support of his/her
position, if the refusal is maintained. See TMEP §715.03(a) (3d
ed. 2002). The prosecution ends at this point, however, and
applicant is allowed no further opportunity to introduce new
evidence, absent a request for remand under Trademark Rule
2.142(d). The appeal goes forward on the evidence of record; and
neither applicant nor the Examining Attorney may introduce new
evidence in connection with the briefs.
In this case applicant filed a request for reconsideration
along with its notice of appeal, and thus, the application was
still in the pre-appeal stage and the Board automatically sent
the application to the Examining Attorney without a requirement
for applicant to make a showing of cause to do so. Once the file
is returned to the Examining Attorney because applicant filed a
request for consideration, the Examining Attorney may introduce
additional evidence directed to the issue(s) for which
reconsideration is sought. See TBMP §1204 (2d ed. June 2003).
Applicant’s reading of the “issue” in the case is too narrow as
the issue herein is likelihood of confusion under Section 2(d) of
the Trademark Act. Applicant was free to request a remand if it
needed to further address this issue. It did not do so.
Applicant’s request that the Board strike the evidence
submitted by the Examining Attorney with her denial of
applicant’s request for reconsideration is denied.
Ser. No. 75/423447
6
for breakfast cereal, and all issued to Kellogg Company
(Registration Nos. 1,640,680, 744,938, 1,318,448, 1,270,148
and 1,535,620); FRUITY WHIRLS and APPLE WHIRLS, both for
breakfast cereal, and both issued to Gilster-Mary Lee
Corporation (Registration Nos. 1,403,355 and 2,273,760);
and FRUIT DOTS, COCOA DOTS and PEANUT BUTTER DOTS, all for
breakfast cereal, and all issued to Weetabix Company, Inc.
(Registration Nos. 1,550,379, 1,653,338 and 2,507,516).
The minor differences in the marks do not offer
sufficient differences to create separate and distinct
commercial impressions. See In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We find
that these marks, considered in their entireties, are
similar in sound, appearance, connotation and commercial
impression.
Applicant strongly urges that there are about 20
third-party applications and about 30 third-party
registrations of marks which include the word “‘BLAST’ in
connection with cereal and/or related food products”
(brief, p. 6) which “should lead to the inescapable
conclusion that the term ‘BLAST’ is sufficiently diluted,
or otherwise suggestive of some characteristic of the foods
and beverages for which the term is used as a trademark, to
permit registration of more than one mark by more than one
Ser. No. 75/423447
7
party for identical, similar, or related products, so long
as the marks are sufficiently distinguishable in toto”
(brief, p. 10); that the cited registered marks should be
accorded a narrow scope of protection; and that these
third-party registrations show there is a well-established
USPTO practice for these types of goods (brief, p. 11).
Applicant’s submission of photocopies of third-party
records from the USPTO’s Trademark Electronic Search System
(TESS) includes references to pending applications,
cancelled and expired registrations. The third-party
applications are evidence of nothing except that each was
filed on a particular date. Assuming arguendo the
establishment, as applicant argues, that all the goods in
these third-party registrations are related, nonetheless
this evidence does not compel a different result herein.
Most of the marks in the third-party registrations create a
different commercial impression from that of applicant’s
mark and the two cited registered marks. See, for example,
BAZOOKA BLASTS for chewing gum (Registration No.
2,166,452); TRIPLE BLAST for hard candy with chewing gum
centers (Registration No. 1,886,678); Q&V CHEESE BLAST and
design for snack foods, namely, cheese-flavored puffed corn
snacks (Registration No. 2,055,861); THE TASTE IS A BLAST
for cereal-based snack foods (Registration No. 1,783,559);
Ser. No. 75/423447
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ARTIC BLAST for frozen soft drink beverages (Registration
No. 2,076,635); BLISS BLAST (in stylized lettering) for
milk shake comprising milk, flavoring syrups and ice milk
for consumption on or off the premises (Registration No.
1,516,566); SONIC BLAST for candied ice milk confections
for consumption on or off the premises (Registration No.
1,453,414); POTATO BLAST for spices for use on potatoes and
other foods (Registration No. 1,896,383); and MASTER
BLASTER for coffee (Registration No. 2,130,597).
We acknowledge that there are a few third-party
registrations which are closer in relation to the marks
and/or the goods involved in the application now before us.5
However, as stated in the TMEP §1207.01(d)(iii) (3d ed.
2002)(Revision 1, June 2002): “Generally, the existence of
third-party registrations cannot justify the registration
of another mark that is so similar to a previously
registered mark as to create a likelihood of confusion, or
to cause mistake, or to deceive.”
5 See, for example, MARSHMALLOW BLASTED for breakfast cereals
(Registration No. 2,400,535); and WILD TROPICAL BLAST for toaster
pastries and cereal based snack foods (Registration No.
2,237,818) (The latter registration had been referenced by the
Examining Attorney in the first Office action as a then prior
pending application which may be cited against applicant if it
issued as a registration. At the time the prior application for
the mark WILD TROPICAL BLAST included “breakfast cereals” in the
identification of goods. Although the Examining Attorney did
cite it against applicant herein, she later withdrew her refusal
on the basis of Registration No. 2,237,818.).
Ser. No. 75/423447
9
To the extent that applicant is arguing the du Pont
factor of “the number and nature of similar marks in use on
similar goods,” that factor is irrelevant in this case
because there is no evidence of any uses of other “BLAST”
marks. See Octocom Systems Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990).
To the extent applicant is arguing that the registered
marks, COCOA BLASTS and COOKIE BLAST, are diluted in the
marketplace due to third-party uses of similar marks, again
there is no evidence regarding use in the marketplace. In
fact, it is well settled with regard to the weight given to
third-party registrations, that these registrations are not
evidence of use in the marketplace or that the public is
familiar with them. Thus, we cannot assume that the public
will (presumably) come to distinguish between them. As the
Court of Appeals for the Federal Circuit stated in the case
of Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992):
Under Du Pont, “[t]he number and
nature of similar marks in use on
similar goods” is a factor that must
be considered in determining
likelihood of confusion. 476 F.2d at
1361, 177 USPQ at 567 (factor 6).
Much of the undisputed record
evidence relates to third party
registrations, which admittedly are
Ser. No. 75/423447
10
given little weight but which
nevertheless are relevant when
evaluating likelihood of confusion.
As to strength of a mark, however,
registration evidence may not be
given any weight. AMF Inc. v.
American Leisure Prods., Inc., 474
F.2d 1403, 1406, 177 USPQ 268, 269
(CCPA 1973)(“The existence of [third
party] registrations is not evidence
of what happens in the market place
or that customers are familiar with
them. ...”) (Italics emphasis in
original.)
See also, Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618 (TTAB 1989).
To the extent applicant is arguing that these third-
party registrations establish that the terms “BLAST” and
“BLASTS” have a meaning in the industry, applicant has not
set forth what it believes that common meaning might be in
relation to food products, and, in particular, breakfast
cereal.
The USPTO strives for consistency of examination, but
as often noted by the Board, each case must decided on its
own merits. We are not privy to the records of the third-
party registration files, and moreover, the determination
of registrability of those particular marks by trademark
Examining Attorneys cannot control the merits in the case
now before us. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also, In re
Ser. No. 75/423447
11
Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); and In re
Wilson, 57 USPQ2d 1863 (TTAB 2001).
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must
be resolved against the newcomer as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed as to both cited
registrations.