Griffith Laboratories Inter-national, Inc.

Trademark Trial and Appeal Board

Mar 15, 2006

No. 78290739 (T.T.A.B. Mar. 15, 2006)

Mailed:
March 15, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Griffith Laboratories International, Inc.
________

Serial No. 78290739
_______

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 Quinn, Kuhlke 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 ULTIMA 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.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78290739
2
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
view of three current registrations, specifically:
Reg. No. 1966568, issued April 9, 1996, owned by
Cargill, Inc., for the mark ULTIMA PREMIUM in
standard-character form for “shortening and cooking
oils” in International Class 29. “PREMIUM” is
disclaimed. The cited registration specifies a date
of first use anywhere and a date of first use in
commerce of August 1, 1993. The cited registration is
active; the registrant has filed renewal papers which
are awaiting action.

Reg. No. 2565089, issued April 30, 2002, owned by
Catania-Spagna Corp., for the mark ULTIMA SUN in
standard-character form for “sunflower oils” in
International Class 29. The cited registration
specifies a date of first use anywhere and a date of
first use in commerce of July 3, 2000. The cited
registration is active.

Reg. No. 2179432, issued August 4, 1998, owned by
Catania-Spagna Corp., for the mark CATANIA ULTIMA in
standard-character form for “edible oils” in
International Class 29. The cited registration
specifies a date of first use anywhere and a date of
first use in commerce of February 1998. The cited
registration 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 the refusals based on the ULTIMA
PREMIUM and ULTIMA SUN registrations and reverse as to the
CATANIA ULTIMA registration.
Ser No. 78290739
3
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
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 Goods
Applicant argues that there are differences between
the goods of applicant and registrants. In this regard,
Applicant states, “Applicant’s goods have a different
application and utility from the goods of the cited
registrants, making confusion even more unlikely.”
(citations omitted) Applicant adds, “While Applicant’s
food flavorings are added to food to enhance their savor,
Ser No. 78290739
4
the cited registrants’ edible oils, sunflower oil and
shortening and cooking oil are added to food to affect its
texture. As 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 fact that the goods of the parties differ is not
controlling in determining likelihood of confusion. The
issue is not likelihood of confusion between particular
goods, but the likelihood of confusion as to the source of
these goods.” (citations omitted) The examining attorney
argues further, “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).
At the outset we also note that each of the three
cited registrations includes an item in the identification
of goods which encompasses or is encompassed by at least
one item in each of the other two. Those items are:
Ser No. 78290739
5
“edible oils,” “cooking oils,” and “sunflower oils.” That
is, “edible oils” encompasses “cooking oils” and “sunflower
oils,” and “cooking oils” likewise encompasses “sunflower
oils.” In fact, the only other item covered by the
registrations is “shortenings” which is obviously closely
related functionally and otherwise to all of the other
items identified in the cited registrations. Accordingly,
we will compare applicant’s goods “food flavorings, not
being essential oils” to the goods in the registrations as
a group.
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 registrations. The following
are among those registrations:
Reg. No. 1879937 for WETCO covering, among other
things, “shortening” and “food flavoring extracts, not
being 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. 2564995 for BAKEMARK covering, among other
things, “shortening,” “vegetable oil,” and “food
flavoring extracts not being essential oils”;

Reg. No. 2706262 for NESWELL covering, among other
things, “edible oils” and “extracts used as flavoring,
Ser No. 78290739
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namely, extracts of coffee substitutes,” “preparations
for making ice cream, namely, . . .food flavorings and
sugar,” and “seasonings”; and

Reg. No. 2783040 for PRIMA TASTE (with a design)
covering, among other things, “edible oils and fats
for the preparation of foodstuffs,” “food flavorings
being essential oils,” “powdered spice ginger,”
“seasonings” and “spices.”

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
registrants 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 registrants are related.
The examining attorney has also submitted evidence
consisting of recipes which call for the use of both types
of goods, that is, food flavorings, as well as shortenings
or oils. 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
Ser No. 78290739
7
Shortening,” “Lemon Flavoring” and “Vanilla Flavoring”; and
a recipe for “Blueberry Cinnamon Rolls” calling for
“flavoring (butter, vanilla or almond)” 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” and well as “butter-flavored
extract” and “vanilla extract,” as well as a series of
recipes from www.greentab.com for cakes, including a recipe
for “Apple Pecan Cake” calling for both “vegetable oil” and
“vanilla.”
In addition the examining attorney has provided a
series of recipes from www.heartstonebakery.com for several
types of breads, many calling for both vegetable oils and
flavoring, for example, the recipes for “Challa” (Egg
Bread), “Cinnamon Raisin,” and “Cinnamon Swirl,” each call
for “vegetable oil” and “vanilla.” This evidence indicates
that the goods of the applicant and registrants, though
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 registrants are related.
Ser No. 78290739
8
Channels of Trade and Sophistication of Purchasers
Applicant essentially combines arguments which address
both the channels of trade and the sophistication of the
purchasers. In doing so applicant does not distinguish
among the cited registrations. Applicant states, “The
purchasers of Applicant’s ULTIMA 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 marks.”
With regard to the channels of trade, we must consider
the goods as identified in the application and
registrations 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).
Applicant submitted the affidavit of its Director of
Worldwide Marketing Research, Steve Graef, as evidence
regarding applicant’s actual trade channels and the
sophistication of its customers. Mr. Graef indicates that
Griffith’s products include, “seasoning blends, dry mixes,
coating systems, dough blends, crumbs, flavorings, sauces,
Ser No. 78290739
9
and food bases.”1 He also indicates that applicant sells
its products “directly to businesses, and its customers
include food processors and restaurant operators.” Mr.
Graef indicates further that applicant does “not sell its
products directly to retailers for placement on grocery
store shelves, nor does it sell its products directly to
consumers.” With regard to products sold under the ULTIMA
mark he states, “Likewise the ULTIMA food flavorings are
sold only to flavor companies, food processors, ingredient
manufacturers, and restaurant operators. The ULTIMA food
flavorings are never sold directly to retail customers.”
However, neither the application nor the registrations
at issue here include any restrictions as to the channels
of trade. Accordingly, we cannot take into account the
asserted limitations in the actual trade channels of
applicant. In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986)(extrinsic evidence and argument suggesting
trade-channel restrictions not specified in application
rejected). We must assume that applicant’s “food
flavorings, not being essential oils,” and registrants’
“shortening and cooking oils,” “edible oils” and “sunflower

1 Applicant’s own description of the range of its products lends
further support to the proposition that a variety of food
ingredients and products may emanate from the same source.

Ser No. 78290739
10
oils” would travel in all normal trade channels for such
products and reach all potential purchasers of such
products. All of these 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 registrants’ goods could travel
through the same trade channels and could reach the same
purchasers. Furthermore, those purchasers would include
individuals of varying degrees of sophistication, including
the general public.
Even Mr. Graef’s affidavit indicates the customers for
applicant’s products sold under the ULTIMA mark include
“restaurant operators,” a class which may include
purchasers of varying levels of sophistication, some, no
doubt, less sophisticated than “food manufacturers, lab
technicians and food scientists.”
Even if we were to assume that applicant’s customers
were limited to “food manufacturers, lab technicians and
food scientists,” as applicant argues, we must assume that
these same individuals are potential purchasers of
registrants’ goods, again in the absence of any restriction
in the registrations. Furthermore, even sophisticated
purchasers such as those identified by applicant are not
Ser No. 78290739
11
immune from trademark confusion. In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983). 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
sophistication of relevant purchasers does not diminish the
likelihood of confusion in this case as to any of the three
cited registrations.
Comparison of the Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression in
each instance. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). In this case, we must compare
applicant’s mark to each of the cited marks separately to
determine whether it is confusingly similar to any of the
cited marks.
Applicant argues as follows with regard to the marks:
The respective marks appear and sound differently and
make distinctly different commercial impressions
because each of the cited marks contains an additional
term which distinguishes the cited marks from
Applicant’s mark. Applicant’s mark, ULTIMA, is an
arbitrary term not commonly recognized by consumers,
thus consumers encountering Applicant’s mark will not
attach a specific meaning to the bare term “ULTIMA”
(as used in Applicant’s mark). Conversely, the cited
marks contain additional terms that have clear
meanings.
Ser No. 78290739
12

On the other hand, the examining attorney argues that
the additional elements in the cited marks are insufficient
to distinguish the marks. He states, “The marks at issue
in the present appeal are highly similar in sound, meaning,
appearance and overall commercial impression.” He argues
that ULTIMA is the dominant element in the ULTIMA PREMIUM
and ULTIMA SUN marks, and he argues that “CATANIA” is not
sufficient to distinguish the CATANIA ULTIMA mark from
applicant’s mark, apparently because he regards “CATANIA”
as the name of “the company providing the goods.”
First with regard to applicant’s ULTIMA mark and the
cited ULTIMA PREMIUM mark, the marks are highly similar in
all respects. “ULTIMA” is the first and only distinctive
element in both marks, and therefore, the dominant element
in both marks. In this case, as in many others, the first
term in the mark is most important in evaluating
similarity. Palm Bay Imports, Inc. v. Veuve Clicquot, 73
USPQ2d at 1690. See also Presto Products v. Nice-Pak
Products, 9 USPQ2d 1895, 1897 (TTAB 1998) (“It is often the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered.”).
The only difference between the marks is the inclusion
of “PREMIUM” in the registered mark. The Merriam-Webster’s
Ser No. 78290739
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Collegiate Dictionary (Eleventh Ed. 2003) defines “premium”
as “of exceptional quality or amount; also : higher-
priced.”2 This descriptive meaning applies in numerous
fields, including foods. Thus, “PREMIUM” is descriptive as
used in registrant’s mark. While we are obligated to view
the marks overall, and we have, it is appropriate to
consider the relative impact of distinct elements within a
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 750 (Fed. Cir. 1985). In this case, the addition of
the descriptive term “PREMIUM,” which is disclaimed, does
nothing to differentiate the marks in appearance, sound,
connotation or commercial impression. Consequently, we
conclude that ULTIMA and ULTIMA PREMIUM are similar.
Furthermore, when we consider the marks in conjunction
with all other relevant factors here, including the goods
and the sophistication of the purchasers, we conclude that
there is a likelihood of confusion between ULTIMA for “food
flavorings, not being essential oils,” and ULTIMA PREMIUM
for “shortening and cooking oils.”
Secondly, with regard to applicant’s ULTIMA mark and
the cited ULTIMA SUN mark, here also the marks are highly

2 We take judicial notice of this definition. See University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213
USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983) and other authorities referenced in TBMP
§ 1208.04 (2d ed. rev. 2004).
Ser No. 78290739
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similar in all respects. “ULTIMA” is the first and most
distinctive element in both marks, and therefore, the
dominant element in both marks. As we noted above, the
first term in the mark is often most important in
evaluating similarity. Palm Bay Imports, Inc. v. Veuve
Clicquot, 73 USPQ2d at 1690. See also Presto Products v.
Nice-Pak Products, 9 USPQ2d at 1897.
The only difference between the marks in this case is
the inclusion of “SUN” in the registered mark. In this
case “SUN” is highly suggestive of the goods, “sunflower
oils.” As noted previously, while we must view the marks
overall, it is appropriate to consider the relative impact
of distinct elements within a mark. In re National Data
Corp., 224 USPQ at 750. In this case, the addition of the
highly suggestive term “SUN” is insufficient to
differentiate the marks in appearance, sound, connotation
or commercial impression. Consequently, we conclude that
ULTIMA and ULTIMA SUN are similar.
Furthermore, here too when we consider the marks in
conjunction with all other relevant factors, including the
goods and the sophistication of the purchasers, we conclude
that there is a likelihood of confusion between ULTIMA for
“food flavorings, not being essential oils,” and ULTIMA SUN
for “sunflower oils.”
Ser No. 78290739
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Lastly, with regard to applicant’s ULTIMA mark and the
cited CATANIA ULTIMA mark, the marks are sufficiently
distinct in all respects to conclude that the marks are not
confusingly similar. In concluding so we note that
“CATANIA” is the first and the most distinctive, and
therefore, the dominant element in the cited, registered
mark. Contrary to the examining attorney’s argument, we
have no basis to conclude here that relevant consumers
would perceive CATANIA as a company name or that such a
perception would lead to a likelihood of confusion in this
case. Furthermore, when we consider the similarity of the
marks here, along with the other relevant du Pont factors,
including the distinction between the goods, we conclude
that there is not a likelihood of confusion between ULTIMA
for “food flavorings, not being essential oils,” and
CATANIA ULTIMA for “edible oils.”
Decision: The refusal to register applicant’s mark
based on the ULTIMA PREMIUM and ULTIMA SUN registrations is
affirmed; the refusal to register applicant’s mark based on
the CATANIA ULTIMA registration is reversed. The
application is refused.