J. R. Simplot Co.

Trademark Trial and Appeal Board

Jun 15, 1998

No. 74582421 (T.T.A.B. Jun. 15, 1998)

Paper No. 10
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/15/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re J.R. Simplot Company
________
Serial No. 74/582,421
_______
Aaron B. Retzer of Epstein, Edell & Retzer for applicant.
Carol A. Spils, Trademark Examining Attorney, Law Office 101
(R. Ellsworth Williams, Managing Attorney).
_______
Before Sams, Hohein & Walters, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by J.R. Simplot Company
to register the mark "FIVE ALARM" for "frozen guacamole".1
Registration has been finally refused 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 each of
the following four marks, which are asserted to constitute a
"family of marks" owned by the same registrant, as to be likely

1 Ser. No. 74/582,421, filed on October 5, 1994, which alleges a bona
fide intention to use the mark in commerce.
Ser. No. 74/582,421
2
to cause confusion, mistake or deception: the marks "1-ALARM,"2
"2-ALARM"3 and "3-ALARM,"4 each of which is registered for
"mixtures of spices used in food preparation," and the mark
"FALSE ALARM,"5 which is registered for "spices used in food
preparation".
Applicant has appealed. Briefs have been filed, but an
oral hearing was not held. We reverse the refusal to register
with respect to the citation of the registration for the "FALSE
ALARM" mark, but we affirm the refusal to register as to the
cited registrations for the "1-ALARM," "2-ALARM" and "3-ALARM"
marks.
Turning first to consideration of the respective goods,
applicant notes in its brief that "guacamole is defined in the
American Heritage Dictionary of the English Language as ’a thick
paste of mashed avocado, often seasoned with tomato, peppers or
other condiments and usually served as a dip or in salads.’"
Applicant concedes, therefore, that "guacamole can be, and
frequently is, seasoned with spices." However, inasmuch as
"[v]irtually every prepared food in the supermarket is seasoned
with spices," applicant insists that the mere fact that spices or
mixtures of spices could be used to make its frozen guacamole

2 Reg. No. 1,078,546, issued on November 29, 1977, which sets forth
dates of first use of December 18, 1964; renewed.
3 Reg. No. 1,124,120, issued on August 14, 1979, which sets forth dates
of first use of December 18, 1964; combined affidavit §§8 and 15.
4 Reg. No. 1,078,547, issued on November 29, 1977, which sets forth
dates of first use of December 18, 1964; renewed.
5 Reg. No. 1,079,984, issued on December 20, 1977, which sets forth
dates of first use of December 18, 1964; renewed.
Ser. No. 74/582,421
3
spicier before serving does not establish that consumers would
reasonably consider such products as emanating from or affiliated
with the same source. According to applicant, food preparation
spices and "[d]ry spice mixes are not the same as frozen
guacamole, they are not used similarly and they neither compete
with nor compliment one another sufficiently to introduce the
probability of consumer mistake or confusion." Applicant notes,
furthermore, that spices and mixtures of spices for use in food
preparation would not be sold on the same supermarket shelves as
frozen guacamole, which would be found in the same aisles as
other frozen prepared foods.
It is well settled, however, that goods need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient if
the goods are related in some manner and/or the circumstances
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). Moreover, it is well established that
the issue of likelihood of confusion must be determined on the
basis of the goods as they are set forth in the involved
application and cited registration(s) and that, absent any
specific limitations therein, such issue is to be decided on the
Ser. No. 74/582,421
4
basis of all normal and usual channels of trade and methods of
distribution for the respective goods. See, e.g., CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Here, we agree with the Examining Attorney that,
inasmuch as registrant’s goods are very broadly defined as being
"mixtures of spices used in food preparation" and as "spices used
in food preparation," it must be presumed for purposes of
resolving whether there is a likelihood of confusion that:
The registrant’s goods ... include spices
used to make guacamole dip. Dry [spices or]
spice mixtures are often added to fresh
ingredients, like avocados and sour cream, to
make dips.
Because consumers may consequently purchase spices or spice
mixtures either to make guacamole or to add flavor to already
prepared guacamole, registrant’s food preparation spices and
spice mixtures must be considered products which are closely
related to applicant’s frozen guacamole. Thus, notwithstanding
that the former would not be sold in the frozen foods section of
supermarkets or grocery stores like applicant’s goods, the shared
channels of trade for these complementary food products makes it
likely that, if the respective goods are sold under the same or
similar marks, confusion as to their source or sponsorship would
be likely to occur.
Turning, then, to consideration of the marks at issue,
the Examining Attorney contends that "consumers are likely to
Ser. No. 74/582,421
5
confuse [the applicant’s mark] FIVE ALARM with the registrant’s
family of ALARM marks" (emphasis added). We note, however, that
there is absolutely nothing of record which shows that registrant
has a family of such marks.6 Specifically, the Examining
Attorney has not furnished any evidence which demonstrates that
registrant’s marks have been promoted in a manner sufficient to
create a recognition or awareness among the purchasing public of
the common ownership thereof so that a family of marks,
characterized by the term "ALARM" as its distinguishing element,
in fact exists. See, e.g., La Maur, Inc. v. Bagwells
Enterprises, Inc., 199 USPQ 601, 606 (TTAB 1978) and Polaroid
Corp. v. American Screen Process Equipment Co., 166 USPQ 151, 154
(TTAB 1970). The mere fact that registrant owns a number of
marks sharing the term "ALARM," as shown by its ownership of the
four cited registrations, is alone an insufficient basis on which
to predicate the existence of a family of marks. See, e.g.,
Hester Industries, Inc. v. Tyson Foods, Inc., 2 USPQ2d 1646, 1647

6 As stated in J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889, 1891-92 (Fed. Cir. 1991):
A family of marks is a group of marks having a
recognizable common characteristic, wherein the marks are
composed and used in such a way that the public associates
not only the individual marks, but the common characteristic
of the family, with the trademark owner. Simply using a
series of similar marks does not of itself establish the
existence of a family. There must be a recognition among
the purchasing public that the common characteristic is
indicative of a common origin of the goods. ....
Recognition of the family is achieved when the pattern
of usage of the common element is sufficient to be
indicative of the origin of the family. It is thus
necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment of the
contribution of the common feature to the recognition of the
marks as of common origin.
Ser. No. 74/582,421
6
(TTAB 1987); Consolidated Foods Corp. v. Sherwood Medical
Industries Inc., 177 USPQ 279, 282 (TTAB 1973); Polaroid Corp. v.
American Screen Process Equipment Co., supra; and Polaroid Corp.
v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419, 421 (CCPA 1965).
Accordingly, the issue of likelihood of confusion must be
determined by comparing applicant’s mark for its goods with each
of registrant’s marks for its various products.
With respect to registrant’s "FALSE ALARM" mark for
spices used in food preparation, the Examining Attorney insists
that such mark, like applicant’s "FIVE ALARM" mark for frozen
guacamole, is not only dominated by the word "ALARM," but shares
the same "clever play on words" which is engendered by
analogizing the spiciness of a product to various degrees of fire
emergencies.7 Such marks, the Examining Attorney contends,
consequently project a very similar overall commercial impression
since the mark "FALSE ALARM carries with it the impression of a
fire, or rather a call to a non-existent fire, thus possibly
suggesting ’mild’ spices or no spices at all." We agree with
applicant, however, that when considered in their entireties, the
marks "FIVE ALARM" and "FALSE ALARM" are quite different in sound
and appearance. More importantly, such marks simply do not share

7 We judicially notice, in this regard, that The American Heritage
Dictionary of the English Language (3rd ed. 1992) at 658 defines
"false alarm" as "1. An emergency alarm, such as a fire alarm, that is
set off unnecessarily. 2. A signal or warning that is groundless."
It is settled that the Board may properly take judicial notice of
dictionary definitions. See, e.g., Hancock v. American Steel & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and
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).
Ser. No. 74/582,421
7
a sufficiently similar connotation since the mark "FALSE ALARM"
does not allude to, and in fact conveys basically the opposite
of, the association of exceedingly high spiciness or heat which
is suggested by the phrase "FIVE ALARM". Thus, even allowing for
the fallibility of memory of the average consumer, who normally
retains only a general rather than a specific recollection of
marks encountered in the marketplace, the marks "FIVE ALARM" and
"FALSE ALARM" are distinguishable and their use, respectively, in
connection with frozen guacamole and spices used in food
preparation would not be likely to cause confusion.
However, with respect to each of registrant’s other
marks for mixtures of spices used in food preparation and
applicant’s "FIVE ALARM" mark for the closely related product of
frozen guacamole, we concur with the Examining Attorney that
confusion concerning the origin or affiliation of the respective
goods is likely. As pointed out by the Examining Attorney, the
marks "1-ALARM," "2-ALARM," "3-ALARM" and "FIVE ALARM" are highly
similar in connotation and overall commercial impression since
they "all suggest the intensity of a fire, differing only in the
degree indicated by the numbers". Applicant, in fact, concurs
that "[t]he meaning of FIVE ALARM is similar to 1-ALARM, 2-ALARM
and 3-ALARM inasmuch as each indicates one in a progression of
designations for the severity of a fire and each is used to
suggest a level of hot spiciness." Although applicant emphasizes
that, as acknowledged by the Examining Attorney, such marks
differ in degree, we nonetheless find--as applicant admits--that
in terms of "[t]he overall commercial impression of the marks,
Ser. No. 74/582,421
8
... [they] share a connotation of spiciness." Because the
respective marks are so similarly structured, with the word
"ALARM" preceded by a numerical term, it is the general
connotation of an intensity of heat or spiciness, rather than the
specific level or degree thereof, which is likely to cause
consumers to believe that such closely related goods as frozen
guacamole and food preparation spice mixtures emanate from or are
affiliated with the same entity. Thus, as the Examining Attorney
observes:
Consumers will most likely remember ... the
various combinations of the numbers with the
[word] ALARM simply as indicating the spice
intensity of the goods. Consumers are
familiar with the terms "one, two, three,
four, five, etc., alarm" when used in
connection with a fire. And, many consumers
will appreciate the analogy to a fire when
those terms are used in connection with spicy
food. Therefore, to the ordinary consumer,
the marks 1-ALARM, 2-ALARM, 3-ALARM, and FIVE
ALARM will be very similar in connotation,
commercial impression and sound.
Accordingly, notwithstanding the slight differences in
appearance caused by applicant’s having spelled out the numerical
term in its "FIVE ALARM" mark rather than using numbers as is the
case with registrant’s "1-ALARM," "2-ALARM" and "3-ALARM" marks,
we find that in light of the substantial similarity in
connotation and overall commercial impression, contemporaneous
use of applicant’s mark for frozen guacamole is likely to cause
confusion with each of the above-noted marks of respondent for
its mixtures of spices used in food preparation. Furthermore, to
the extent that, due to the suggestiveness inherent in such
Ser. No. 74/582,421
9
marks,8 we may nevertheless entertain any doubt as to our
conclusion in this regard, we must resolve such doubt--contrary
to applicant’s contention--in favor of the registrant. See In re
Pneumatiques Caoutchouc Manufacture et Plastiques Kelber-
Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is reversed
with respect to the citation of the registration for the mark
"FALSE ALARM," but is affirmed as to the cited registrations for
the marks "1-ALARM," "2-ALARM" and "3-ALARM".
J. D. Sams
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board

8 In recognition thereof, the Examining Attorney additionally asserts
that:
[W]hile the numbers in combination with [the term]
ALARM may indicate degrees of hotness of the spices [in the
guacamole or spice mixtures], the term is not necessary for
others in the food industry to use as a trademark to
complete. Certainly, spiciness of food can be indicated in
other ways. Registrant’s creative use of "ALARM" as a ...
feature of its trademarks does not prevent others from
competing in the same trade channels for complimentary [sic]
goods.