GlobeEx Corporation

Trademark Trial and Appeal Board

Mar 1, 2010

No. 77374540 (T.T.A.B. Mar. 1, 2010)

Mailed: March 1, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re GlobeEx Corporation
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Serial No. 77374540
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Brian Gibbons for GlobeEx Corporation.

Lydia M. Belzer, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Seeherman, Kuhlke and Walsh, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

GlobeEx Corporation seeks registration on the
Principal Register of the standard character mark GOURMÈ
MIST for goods identified as “olive oils, edible oils,
canola oils, gourmet edible oils, grape seed oils, soy bean
oils, vegetable oils, avocado oils, sesame oils” in
International Class 29.1 In response to a request from the

1 Application Serial No. 77374540, filed January 17, 2008,
alleging first use on January 14, 2008 and first use in commerce
on January 17, 2008 under Section 1(a) of the Trademark Act, 15
U.S.C. §1052(a).

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77374540
2
examining attorney, applicant disclaimed the word
“GOURMET.”2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified goods, so
resembles the registered typed-form marks GARLIC-MIST for
“garlic-flavored vegetable oil-based spray for use as a
flavor enhancing topping and as a non-stick coating for
pans,” in International Class 29 (Reg. No. 1501495), OLIVE-
MIST for “olive oil for cooking and seasoning” in
International Class 29 (Reg. No. 1515616), ORIENTAL-MIST
for “cooking oils” in International Class 29 (Reg. No.
1583810), CANOLA-MIST for “canola oil based cooking oil” in
International Class 29 (Reg. No. 1617786), MESQUITE MIST
(MESQUITE disclaimed) for “cooking and topping oil” in
International Class 29 (Reg. No. 1687260), and HEARTLAND
MIST for “vegetable and other edible oils for cooking and
seasoning” in International Class 29 (Reg. No. 2458035) as
to be likely to cause confusion, mistake or deception. The
cited registrations have common ownership.

2 In the case of words that may be characterized as “misspelled,”
the disclaimer is of the word in the correct spelling. In re
Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).

Serial No. 77374540
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Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Applicant’s goods are encompassed by or encompass the
goods in the respective registrations and, as such, are
legally identical. Further, because the application and
cited registrations do not contain limitations and the
goods are legally identical, we must presume that they
travel in the same channels of trade and are available to
the same classes of customers. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987). Applicant does not argue otherwise.
We turn then to an analysis of the similarity or
dissimilarity of the marks when compared in their
Serial No. 77374540
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entireties in terms of appearance, sound, connotation and
commercial impression, keeping in mind that “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,
1701 (Fed. Cir. 1992).
The examining attorney argues that:
Here, while registrant’s marks begin with
different words, registrant in each instance has
created a mark consisting of a word intended to
describe the flavor or imply the nature of the
goods, followed by a space or a dash mark, and
then the word MIST. With six registered live
marks, registrant has established a familiar
pattern for its consumers. Applicant’s mark
follows that exact pattern: a word intended to
imply the nature of the goods, i.e., that they
are gourmet oils, followed by a space, and then
MIST. Thus, applicant’s mark creates a similar
impression to registrant’s six marks, resulting
in a likelihood of confusion as to the source of
the goods.

Br. p. 10.

In response, applicant argues that the common term
MIST is weak, based on dictionary definitions showing the
meaning to be “a fine spray of some liquid,”3 registrant’s
specimens of use and third-party registrations. Applicant

3 Applicant’s brief at page 2, referencing the dictionary
definitions attached to its response. See, e.g., The American
Heritage Dictionary of the English Language (4th ed. 2006) “Mist
3. Fine drops of a liquid, such as water, perfume, or
medication, sprayed into the air.”
Serial No. 77374540
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continues, contending that GOURMÈ is the dominant element
in that “it is the first word in Applicant’s mark and the
word that will be perceived most strongly by consumers.”
Br. p. 3. Applicant observes that the cited marks begin
with words that are not “even close in appearance to
Applicant’s dominant term ‘Gourmè.’” Id.
The test, under this du Pont factor, 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
impression that confusion as to the source of the goods
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).
We have evaluated the marks in each of the cited
registrations individually. Given the disclaimers and
otherwise highly descriptive or generic nature of the first
words in the marks in five of the cited registrations and
the application, the common element, MIST, is the element
with the strongest source-identifying capability. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) (“[t]hat a particular feature is descriptive ...
Serial No. 77374540
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with respect to the involved goods ... is one commonly
accepted rationale for giving less weight to a portion of a
mark.”) Indeed, it is the only element in applicant’s mark
allowing for registration on the Principal Register in view
of its disclaimer of the first word GOURMÈ.
We acknowledge that, based on the dictionary
definitions, the term MIST may be suggestive of a feature
of the type of goods that are encompassed by the
identifications, i.e., various edible oils in spray form.
However, that is not sufficient to obviate a finding of
likelihood of confusion where the marks are otherwise very
similar in overall commercial impression and used on
legally identical goods.
Further, applicant’s evidence of third-party
registrations is not supportive of its argument. As the
examining attorney states, third-party registrations
“featuring goods and/or services dissimilar or unrelated to
those in the application and the cited registration are of
little probative value in determining the weakness of a
mark or portions of a mark.” Br. p. 12. The third-party
registrations submitted by applicant are generally for
goods very different from those at issue herein, including
cosmetic and beauty preparations, insect repellant spray
dispensing systems, plumbing fittings for plant growing
Serial No. 77374540
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systems and liquid spray collectors in the nature of
machines for use in the metal working industry. The only
relevant third-party registration is Registration No.
3268051 for the mark BUTTERMIST for “food spray and pan
release, namely a butter flavored vegetable oil spray.”
However, one registration is not a sufficient basis upon
which we may find that the term MIST is weak and deserving
of only limited protection in this field. In addition, the
Board is not bound by decisions made in another
application. See In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB
1994). See also In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001). Each case must be decided on
its own facts. AMF Inc. v. Am. Leisure Prods., Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Taken as a
whole, applicant’s evidence tends to prove the opposite of
its position, because other than the registrant’s series of
marks and one third-party registration, there are no other
MIST registrations in this field.
Thus, we find that the similarities between
applicant’s mark GOURMÈ MIST and registrant’s marks GARLIC-
MIST, OLIVE-MIST, ORIENTAL-MIST, CANOLA-MIST, and MESQUITE
MIST, in appearance, sound, connotation and overall
commercial impression based on the use of the word MIST
Serial No. 77374540
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preceded by a descriptive term, outweigh the
dissimilarities presented by the descriptive terms.
With regard to registrant’s mark HEARTLAND MIST, the
additional word HEARTLAND is not descriptive or generic.
Given the suggestive meaning of MIST, we find that
applicant’s mark is sufficiently different from this mark
that the refusal on the basis of this mark should not be
affirmed.
Applicant asserts that there have been no known
instances of actual confusion during a period of
approximately twenty months of concurrent use. First,
there is nothing in the record to show that there has been
a meaningful opportunity for such confusion to have
occurred. More importantly, in the context of an ex parte
proceeding, “the lack of evidence of actual confusion
carries little weight.” Majestic Distilling, supra, 65
USPQ2d at 1205.
Finally, these type of goods are relatively
inexpensive items, more susceptible to impulse purchasing
and do not call for a high degree care in the purchasing
decision.
In conclusion, we find that because the marks in five
of the registrations are similar, the goods are legally
identical, and the channels of trade and purchasers
Serial No. 77374540
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overlap, confusion is likely between applicant’s mark
GOURMÈ MIST and the marks GARLIC-MIST, OLIVE-MIST,
ORIENTAL-MIST, CANOLA-MIST and MESQUITE MIST in the cited
registrations. To the extent there are any doubts, we
resolve them, as we must, in registrant’s favor. 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
Registration Nos. 1501495, 1515616, 1583810, 1617786
and 1687260 and reversed as to Registration No.
2458035.