Himalaya Global Holdings, Ltd.

Trademark Trial and Appeal Board

May 14, 2010

No. 77117183 (T.T.A.B. May. 14, 2010)

Hearing: Mailed:
May 12, 2010 May 14, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Himalaya Global Holdings, Ltd.
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Serial No. 77117183
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Robert T. Maldonado and Tonia A. Sayour of Cooper & Dunham
LLP for Himalaya Global Holdings, Ltd.

Marilyn D. Izzi, Trademark Examining Attorney, Law Office
112 (Angela B. Wilson, Managing Attorney).
_______

Before Seeherman, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Himalaya Global Holdings, Ltd. has applied to register
SOLIGA FOREST HONEY, in standard character format, for
honey.1 In response to a requirement by the examining
attorney that the term FOREST HONEY is “highly descriptive,
if not generic, for applicant’s goods,” Office action
mailed January 24, 2008, applicant disclaimed exclusive

1 Application Serial No. 77117183, filed February 27, 2007,
based on Section 1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77117183
2
rights to this term. Applicant also stated, in response to
the examining attorney’s inquiries, that there is no
English translation of the word SOLIGA, “which refers to a
tribal group living in the forest regions of the Karnataka
State of India,” and that “SOLIGA FOREST appearing in the
mark has no significance in the relevant trade or industry
or as applied to the goods/services listed in the
application, no geographical significance, nor any meaning
in a foreign language.” Response filed December 20, 2007.
Applicant has appealed the refusal of the examining
attorney to register its mark, made pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark so resembles the mark FOREST
HONEY and design, shown below, registered for honey,2 that
if used on applicant’s identified goods it is likely to
cause confusion or mistake or to deceive.

2 Registration No. 3303923, issued October 2, 2007.
Ser No. 77117183
3
The word HONEY has been disclaimed, and the registration
includes the following statement:
The colors black, white, yellow and
green are claimed as a feature of the
mark. The color green appears in the
word Forest; the color light yellow
appears in the inside portion of the
flower; the color white appears on the
outside portion of the flower; the
color dark yellow appears on the
wording Honey, on the line below the
wording Honey and on the bee; and the
color black appears on the bee.

The appeal has been fully briefed, and applicant and
the examining attorney appeared at a hearing before the
Board.
Before reaching the substantive issue of whether or
not there is a likelihood of confusion, there are some
procedural points we must address. First, although the
examining attorney had objected in her brief to the exhibit
attached to applicant’s brief, at the hearing she withdrew
that objection. In any event, the exhibit appears to be a
copy of evidence that the examining attorney had previously
made of record. Therefore, we have considered it. Second,
applicant referred in its brief and at the hearing to a
letter from the registrant. The examining attorney stated
that this letter apparently was sent by the registrant to
the Office and was erroneously placed in the application
file, and because of this error, it was subsequently
Ser No. 77117183
4
removed. Accordingly, this letter does not form part of
the record of the application, and we have given it no
consideration.
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). The examining attorney asserts in this case
that the relevant factors are the similarity of the marks,
the similarity of the goods, and the similarity of the
trade channels. Applicant does not dispute that the goods
and the trade channels are identical. However, applicant
asserts that the marks are so different that, even though
the du Pont factors of the similarity of the goods and
channels of trade favor a finding of likelihood of
confusion, the single factor of the differences in the
marks outweighs them, and must result in a finding that
confusion is not likely. See Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (a single du Pont factor - the dissimilarity of
the marks – can be dispositive of the likelihood of
confusion issue).
Ser No. 77117183
5
In comparing the marks, it is a well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). The feature common to both marks in this case,
FOREST HONEY, is descriptive. Indeed, the examining
attorney required applicant to disclaim the term on the
basis that it is “highly descriptive, if not generic,” and
she submitted evidence that, as she characterizes it,
“defines ‘forest honey’ as a type of honey produced by bees
that gather pollen in a forest environment.” Office action
mailed January 24, 2008.
The evidence consists of an article from the Science
Direct website, www.sciencedirect.com, discussing the
elements in Slovenian honey and which includes the
statement:
Statistically significant differences
were established between different
types of honey (acacia, floral, lime,
chestnut, spruce, fir, forest and
Metcalfa pruinosa honeydew honey). The
highest content of elements was
Ser No. 77117183
6
determined in forest honey and the
lowest in acacia honey.

Although normally more than this single document would be
necessary for applicant to support its position that FOREST
HONEY is a type of honey, in this case both applicant and
the examining attorney agreed on this point, so there was
no need for applicant to submit additional evidence.3
As a general rule, descriptive or generic terms are
given less weight when comparing marks because “the public
can be said to rely more on the non-descriptive portion of
each mark.” National Data, 224 USPQ at 752. The examining
attorney appears to believe that, although FOREST HONEY is
descriptive of applicant’s identified “honey,” it cannot be
considered merely descriptive of the registrant’s
identified “honey” because the registration contains a
disclaimer of only the word HONEY, not FOREST HONEY.
“[A]pplicant’s arguments that the term ‘FOREST HONEY’ is
generic amount to a collateral attack to the validity of

3 We recognize that at the oral hearing the examining attorney
stated that she was retreating from her position that FOREST
HONEY is generic or even highly descriptive, and now believes
that it is merely descriptive. However, throughout the
prosecution of the application the examining attorney continued
to treat FOREST HONEY as being generic or at least highly
descriptive. “[A]pplicant intends to use the term ‘FOREST HONEY’
to describe the type of honey being provided to consumers….”
Brief, p. 10. Therefore, applicant was never put on notice that
it should submit additional evidence to show that FOREST HONEY is
a generic or highly descriptive term.

Ser No. 77117183
7
the cited registration as the registration exists with only
a disclaimer of ‘HONEY’.” Brief, p. 10.
However, this is not a correct statement of the law.
In a very similar situation, the Court explained:
The board acknowledged that National's
evidence was credible with respect to
some financial services, but refused to
give it any weight in resolving the
ultimate issue because of the absence
of a disclaimer in the registered mark.
The absence of a disclaimer does not,
however, mean that a word or phrase in
a registration is, or has become,
distinctive in the registered mark, so
that that part of the mark must be
treated the same as an arbitrary
feature.

***
Thus, National was entitled to show, if
it could, that CASH MANAGEMENT in the
registered mark was descriptive, and
its proof should not have been
disregarded on the ground that the
registration could not be attacked in
this proceeding. The registration
affords prima facie rights in the mark
as a whole, not in any component.
Thus, a showing of descriptiveness or
genericness of a part of a mark does
not constitute an attack on the
registration.

National Data, 224 USPQ at 751, 752.
The examining attorney also considers the words FOREST
HONEY in the cited mark to be entitled to greater weight in
the likelihood of confusion analysis because of the case
law that has found words to be dominant over designs.
Ser No. 77117183
8
Certainly there are any number of cases that reflect the
principle that if a mark comprises both a word and a
design, the word is normally accorded greater weight
because it would be used by purchasers to request the goods
or services. See In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987). However, this is not a rule, and whether
or not the principle should be followed depends on the
circumstances of the individual case. See Parfums de Coeur
Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007) (prominently
displayed design considered to be dominant element of
BODYMAN and design mark).
In the present case, because of the highly
descriptive, if not generic, nature of the words FOREST
HONEY, the prominent display of the design, and the
depiction of the word HONEY, which gives the appearance of
being written with honey, we consider the design portion of
the cited mark to be dominant.4 Similarly, because of the
unusual word SOLIGA, which is also the first word of
applicant’s mark, and the fact that the rest of the mark

4 The examining attorney has pointed out that, because applicant
has applied for its mark in standard character format, it could
be presented in the same manner of display as the registered
mark. That is not entirely correct. Although the protection for
a mark registered in standard character format is not limited to
a particular type font or style of lettering, it would not
include the design element of making the word appear to be
written with honey.

Ser No. 77117183
9
consists of the descriptive words FOREST HONEY, we consider
SOLIGA the dominant part of applicant’s mark. This is not
to say that the inclusion of the identical words FOREST
HONEY in both marks can be ignored, or that they do not
contribute to the commercial impressions of the marks.
However, when the marks are compared in their entireties,
FOREST HONEY deserves less weight because consumers are
likely to regard this term as merely describing the type of
honey, and look to other elements in the marks to indicate
the source of this forest honey.
Accordingly, we find that the marks are sufficiently
different that confusion is not likely to result from their
contemporaneous use on honey, and on the basis of this
single du Pont factor, find that applicant’s mark SOLIGA
FORST HONEY for honey is not likely to cause confusion with
the registration for FOREST HONEY and design for honey.
Decision: The refusal of registration is reversed.