Griffith Laboratories Inter-national, Inc.

Trademark Trial and Appeal Board

Mar 8, 2006

No. 78290736 (T.T.A.B. Mar. 8, 2006)

Mailed:
March 8, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Griffith Laboratories International, Inc.
________

Serial No. 78290736
_______

Barry W. Sufrin of Gardner Carton & Douglas LLP for
Griffith Laboratories International, Inc.

Scott Oslick, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Bucher and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On August 21, 2003, Griffith Laboratories
International, Inc. (“applicant”) applied to register the
mark OPTIMA in standard-character form on the Principal
Register for goods now identified as “food flavorings, not
being essential oils,” in International Class 30. The
application claims both first use anywhere and first use in
commerce in November of 2002.
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78290736
2
view of current Registration No. 1596672, issued May 15,
1990, for the mark OPTIMA in standard-character form for
“edible oils and shortenings” in International Class 29.
The cited registration specifies a date of first use
anywhere and a date of first use in commerce of March 7,
1989. The cited registration has been renewed and is
active.
The examining attorney issued a final refusal and
applicant appealed. Both applicant and the examining
attorney have filed briefs. Applicant did not request an
oral hearing. We affirm.
Section 2(d) of the Act precludes registration of an
applicant’s mark “which so resembles a mark registered in
the Patent and Trademark Office . . . as to be likely,
when used on or in connection with the goods of the
applicant, to cause confusion . . .” 15 U.S.C. § 1052(d).
To determine whether there is a likelihood of confusion, we
must consider all evidence of record bearing on the factors
delineated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977). Here, as is
often the case, the crucial factors are the similarity of
the marks and the similarity of the goods of the applicant
and registrant. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In
Ser No. 78290736
3
addition to those factors, we will also address applicant’s
argument that the purchasers of the goods are
sophisticated, and as such, less likely to be confused.
Comparison of the Marks
Applicant makes no mention of the marks, as such, in
its argument. This is understandable because the marks are
identical. That is, applicant’s mark and the cited mark
are both simply the standard-character version of OPTIMA.
Furthermore, as the Board observed in a similar case,
“ . . . in a situation such as this, where both parties are
using the identical designation, . . . the relationship
between the goods on which the parties use their marks need
not be as great or as close as in the situation where the
marks are not identical or strikingly similar.” Amcor,
Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981).
Comparison of the Goods
Applicant argues that there are differences between
the goods of applicant and registrant. In this regard,
Applicant states, “Applicant’s goods have a different
application and utility from the registrant’s goods, making
confusion even more unlikely.” Applicant adds, “While
Applicant’s food flavorings are added to food to enhance
their savor, the cited registrant’s edible oils and
shortening are added to food to affect its texture. As
Ser No. 78290736
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such, the distinct application and functionality of the
products makes confusion between the marks unlikely.”
The examining attorney argues, on the other hand,
that, “the issue on appeal is not likelihood of confusion
between applicant’s food flavorings and registrant’s edible
oils and shortening, or the particular uses of each, but
the likelihood of confusion as to the source of these
goods.” (citations omitted) The examining attorney argues
more broadly, “Thus, the conditions surrounding the
marketing and usage of the goods is such that the same
potential consumers could encounter the goods and believe
that they come from a common source.”
First, we must concur with the examining attorney’s
caution that our focus must be the likelihood of confusion
as to the source of the goods, not confusion as to the
goods themselves. In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984).
To support his position that the goods are related,
the examining attorney has provided copies of several
third-party registrations claiming use of the same mark on
both types of goods, those identified in the application
and those identified in the cited registration. The
following are among those registrations:
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Reg. No. 2221249 for CHEF LOUIS covering, among other
things, “edible oils” and “food flavorings not
essential oils”;

Reg. No. 2333616 for JULIUS MEINL covering, among
other things, “flavoring extracts for baking and
cooking, which are nonessential oils” and “edible
oils”;

Reg. No. 2696026 for a Design Only Mark covering,
among other things, “edible oils” and “food
ingredients used as a food flavoring, namely cocoa
powder”;

Reg. No. 2506682 for a Design Only Mark covering,
among other things, “shortening” and “food flavoring
extracts, not being essential oils”; and

Reg. No. 2770095 for CULINESSENCE covering, among
other things, “edible oils” and “extracts used as
flavoring.”

These third-party registrations are not evidence that
these marks are in use, but they are of some probative
value and do indicate that the goods of applicant and
registrant are of a type which may emanate from the same
source. In re TSI Brands Inc., 67 USPQ2d 1657, 1659 (TTAB
2002); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993).
The registrations provided by the examining attorney
also indicate more broadly that the same mark has been
registered for a wide range of foods and food ingredients.
In sum, this evidence indicates that the goods of applicant
and registrant are related.
Ser No. 78290736
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The examining attorney has also submitted evidence
consisting of recipes which call for the use of both types
of goods. For example, the examining attorney has provided
several recipes from the web site of the US Highbush
Blueberry Council, including: a recipe for “Blueberry
Buns” calling for, among other ingredients, “High Ratio
Shortening,” “Lemon Flavoring” and “Vanilla Flavoring”; a
recipe for “Blueberry Cinnamon Rolls” calling for
“flavoring” and “shortening”; a recipe for “Blueberry
Muffins” calling for “shortening” and “lemon flavor.” The
examining attorney has also provided a recipe from e-
CookBooks at www.e-cookbooks.net for “Red Velvet Cake”
calling for “shortening” as well as “butter-flavored
extract” and “vanilla extract,” as well as a series of
recipes from www.greentab.com for “Brown Sugar Pound Cake,”
“Lemon Pound Cake,” “Pineapple Upside Down Cake,” “Yellow
Layer Cake,” and “White Layer Cake” each of which calls for
both shortening and some type of flavoring. In addition
the examining attorney has provided a series of recipes
from www.heartstonebakery.com for several types of breads;
many call for both shortening and flavoring, for example,
the “Apple Walnut Bread Recipe” which calls for
“shortening” and “almond flavoring, cinnamon and vanilla.”
This evidence indicates that the goods of the applicant and
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registrant, though perhaps different in some sense, are
used by the same persons, at the same time in performing
the same task. This is further evidence that the goods are
related. Accordingly, we conclude that the goods of the
applicant and registrant are related.
Channels of Trade and Sophistication of Purchasers
Applicant essentially combines arguments which address
both the channels of trade and the sophistication of the
purchasers. Applicant states, “The purchasers of
Applicant’s OPTIMA products, which include food
manufacturers, lab technicians and food scientists, are
highly sophisticated, discriminatory purchasers that are
unlikely to be confused between Applicant’s mark and the
cited mark.”
With regard to the channels of trade, we must consider
the goods as identified in the application and registration
and, in the absence of any restrictions in the channels of
trade, assume that the goods travel in all trade channels
appropriate for such goods. CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Neither the
application nor the registration at issue here include any
restrictions as to the channels of trade. Accordingly, we
must assume that applicant’s “food flavorings, not being
Ser No. 78290736
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essential oils,” and registrant’s “edible oils and
shortenings” would travel in all normal trade channels for
such products and reach all potential purchasers of such
products. Both types of products are common ingredients
for food which are widely available for purchase and used
by the general public, as well as the narrower class of
purchasers identified by applicant. Therefore, we conclude
that applicant’s goods and registrant’s goods could travel
through the same trade channels and could reach the same
purchasers.
Even if we were to assume that applicant’s customers
were limited to “food manufacturers, lab technicians and
food scientists” we must assume that these same individuals
are potential purchasers of registrant’s goods, again in
the absence of any restriction in the registration.
However, even sophisticated purchasers such as those
identified by applicant are not immune from trademark
confusion. In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983). This is particularly the case where, as here,
the marks are identical. In re Total Quality Group Inc.,
51 USPQ2d 1474, 1477 (TTAB 1999). In addition, even
sophisticated purchasers may not be aware of the range of
products offered by a party. In re Decombe, 9 USPQ2d 1812,
1815 (TTAB 1988). Accordingly, we conclude that the
Ser No. 78290736
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sophistication of relevant purchasers does not diminish the
likelihood of confusion in this case.
Conclusion
In conclusion, we have weighed all evidence related to
the du Pont factors regarding likelihood of confusion
presented in this case and determined that there is a
likelihood of confusion between applicant’s mark and the
cited mark. The principal factors dictating this result
are the fact that the marks are identical and the goods of
applicant and registrant, as identified, are related and
travel in the same or overlapping channels of trade.
Decision: The refusal to register applicant’s mark on
the ground of likelihood of confusion is affirmed.