Jackie Allen, Christopher Kemp, Melissa Kemp and Lori Taylor

Trademark Trial and Appeal Board

Jul 18, 2007

No. 78572292 (T.T.A.B. Jul. 18, 2007)

Mailed:
July 18, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jackie Allen, Christopher Kemp, Melissa Kemp, Lori
Taylor
________

Serial No. 78572292
_______

Scott J. Fields, of National IP Rights Center LLC, for
Jackie Allen et al.

Fred Carl III, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Kuhlke and Bergsman, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Jackie Allen, Christopher Kemp, Melissa Kemp and Lori
Taylor (hereinafter applicants) seek registration on the
Principal Register of the mark shown below for goods
identified as “candles” in International Class 4.1

1 Application Serial No. 78572292, filed February 22, 2005,
alleging May 1, 2004 as the date of first use and use in commerce
under Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).
THIS OPINION IS NOT
PRECEDENT OF THE TTAB
Serial No. 78572292
2
In response to a request from the examining attorney,
applicants disclaimed the phrase CANDLE CO.
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 mark EARLY AMERICANA (typed form)
for “candles; scented candles; wicks for oil lamps” in
International Class 4 as to be likely to cause confusion,
mistake or deception.2
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal.
As a preliminary matter, the examining attorney’s
objections to the list of trademarks from the trademark.com
and the USPTO TESS websites submitted by applicant in its
response to the first Office action, and the updated USPTO
TESS listings submitted with applicant’s brief are
sustained. See In re Duofold Inc., 184 USPQ 638 (TTAB
1974) (submission of list of registrations does not make
them of record); Trademark Rule 2.142(d) (evidentiary
record should be complete prior to the filing of an ex
parte appeal); In re Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB

2 Registration No. 2753874, issued August 19, 2003.
Serial No. 78572292
3
1998), aff’d, 194 F.3d 1297, 52 USPQ2d 1539(Fed. Cir. 1999)
(evidence submitted with reply brief not considered).
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 and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
The “candles” identified in the application are
identical to the “candles” in the cited registration.
Moreover, given that the goods are identical and there is
no limitation in the identification thereof in the
application or registration, we must presume that the goods
will be sold in the same channels of trade and will be
bought by the same classes of purchasers. See Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31
Serial No. 78572292
4
USPQ2d 1531 (TTAB 1994). We further note that applicants
only address the factor of the similarity of the marks and
do not present argument with regard to the goods, channels
of trade or class of purchasers. In view of the above, the
du Pont factors of the similarity of the goods, the
channels of trade, and class of purchasers favor a finding
of likelihood of confusion as to the cited registration.
We turn now to the first du Pont factor, i.e., whether
applicants’ mark AMERICANA CANDLE CO. (stylized with
design) and registrant’s mark EARLY AMERICANA are similar
or dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
It is well settled that marks must be considered in their
entireties, not dissected or split into component parts and
each part compared with other parts. It is the impression
created by the involved marks, each considered as a whole,
that is important. See Kangol Ltd. v. KangaROOS U.S.A.
Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
Finally, “[w]hen marks would appear on virtually identical
goods or services, the degree of similarity [between the
marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992), cert denied, 506 U.S. 1034 (1992).
Serial No. 78572292
5
Applicant’s argument essentially is that the only
common element in the marks is the word AMERICANA, which is
weak, and when the marks are properly considered in their
entireties the differences are sufficient to distinguish
the marks. In particular, the addition of the word EARLY
to registrant’s mark creates a connotation distinct from
applicants’ AMERICANA mark in that it evokes “something
created at or near the initial period” (br. p. 5) whereas
applicants’ mark “refers to an American company that makes
candles.” With regard to applicant’s argument that the
term AMERICANA is a weak mark, as noted above, we have not
considered the listings of registrations provided by
applicant.3 Applicants have also submitted search results
retrieved from the Google search engine for the phrase
EARLY AMERICANA. The search results include excerpts from
the following entries: “Eastern Shore Early Americana
Museum, Maryland”; “Celebrity Gems – Early Americana”; and
“Video presents EARLY AMERICANA on FILM VAUDEVILLE, CIRCUS,
AMUSEMENT PARKS, and more.” While these entries are
consistent with the dictionary definition of AMERICANA
submitted by the applicants, they do little to advance our
understanding of the strength or weakness of the term

3 We note that consideration of these listings would not change
our decision inasmuch as they are of little probative value as to
Serial No. 78572292
6
AMERICANA in connection with candles. Moreover, web page
excerpts set forth in search results have little probative
value because they do not show the full context of the use
of the term. In re Remacle, 66 USPQ2d 1222 (TTAB 2002).
The examining attorney argues that the shared term
AMERICANA establishes the similarity in sound and
appearance and “the applicants’ presentation of its mark in
special form will not avoid likelihood of confusion with
the registered mark in typed form because the registered
mark could be used in the same manner of display as
applicants’ mark.” Br. p. 8. In addition, the examining
attorney argues that the marks are similar in meaning and
commercial impression because they both “convey a meaning
of colonial, or pre-colonial America.” Id.
In making his determination, the examining attorney
has noted that the disclaimed matter in applicants’ mark is
less significant inasmuch as “the wording CANDLE CO. is
descriptive and therefore [consumers] would not attribute
trademark significance to it.” Br. p. 9. With regard to
applicants’ design element he argues that “the star designs
and the wording make it clear that applicants’ mark is not
referring to modern Americana, or mid 20th century

the question of weakness of the term AMERICANA in the field of
candles.
Serial No. 78572292
7
Americana, but to a distant past.” Br. p. 10. The
examining attorney argues that the use of stars in
applicants’ mark evokes “early Americana” as distinguished
from contemporary U.S. culture and thus adds to the similar
connation and commercial impression with registrant’s mark
EARLY AMERICANA. In support of this argument, the
examining attorney submitted excerpts from various websites
offering a variety of goods that have an early American
historical theme. The examining attorney concludes that
“applicants’ contention that its mark conveys a meaning
that is either contemporary Americana or more significantly
geographic is not supported by facts or by the evidence of
record.” Br. p. 10.
We agree with the examining attorney that AMERICANA
is the dominant portion of applicants’ mark inasmuch as the
wording CANDLE CO. is descriptive of the goods or otherwise
without source identifying significance and is disclaimed.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (“That a particular feature is descriptive
[or otherwise lacking in distinctiveness] ... with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a
mark...”). We also find that the wording in applicants’
mark dominates over the design, inasmuch as it is the
Serial No. 78572292
8
wording by which the consumer will call for the goods and
the design element is not particularly prominent in
relation the wording. In re Appetito Provisions Co. Inc.,
3 USPQ2d 1553, 1554 (TTAB 1987).
Thus, inasmuch as the dominant element in registrant’s
mark is identical to the literal portion of applicants’
mark, the marks have a similar overall commercial
impression and share strong similarities in sound and
appearance.
As to connotation, AMERICANA is defined as:
“Materials relating to American history, folklore, or
geography or considered to be typical of American culture.”
The American Heritage Dictionary of the English Language
(4th ed. 2000). The primary meaning of each mark would be
the same, i.e., goods relating to American history,
folklore and culture, inasmuch as the goods with which the
marks are used are identical. To the extent the
connotation of registrant’s mark is temporally limited by
inclusion of the word EARLY, applicants’ mark, by not being
so limited, includes this connotation. Moreover, as the
examining attorney points out, both the goods themselves
and the use of the star design in applicants’ mark evoke
early America rather than contemporary America.
Serial No. 78572292
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Overall, we find that the additions of the descriptive
wording CANDLE CO. and the design element of stars dividing
the wording to applicants’ mark and the word EARLY to
registrant’s mark are not sufficient to distinguish the
marks. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Viewing the marks in their entireties, they are similar in
appearance, sound and connotation, and they convey a
similar commercial impression.
Finally, neither applicants, nor registrant,
disclaimed the exclusive right to use “Americana.”
Accordingly, registrant and applicants must believe that
“Americana” is at least a suggestive term when used in
connection with candles, and therefore the proper subject
of registration. Even if we find the term AMERICANA to be
suggestive of the goods and somewhat weak as a mark, even
weak marks deserve protection. Hollister Inc. v. Ident A
Pet, Inc., 193 USPQ 439 (TTAB 1976). Here the goods are
identical and the other elements in the respective marks
are not sufficient, even given limited protection, to
distinguish the marks. Applicant relies on Keebler Co. v.
Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed.
Cir. 1989); however, in that case the common term PECAN was
an ingredient in the respective parties’ cookies and as
such had no trademark significance, as distinguished from
Serial No. 78572292
10
AMERICANA which is not wholly without source identifying
significance.
In view of the above, the factor of the similarity of
the marks also favors a finding of likelihood of confusion
with respect the cited registration.
In conclusion, we find that because the marks are
similar, the goods are identical, and the channels of trade
are the same, confusion is likely between applicants’ mark
and the mark in the cited registration. To the extent
there are any doubts, we resolve them, as we must, in favor
of the registrant. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
We note that Scott J. Fields, attorney for applicant,
passed away on April 23, 2007. We therefore are mailing
copies of this decision directly to applicant; to the
Conservator for Mr. Fields; to the attorney for the
administration if Mr. Fields’ estate; and to Mr. Fields’
former law firm, National IP Rights Center, LLP.
Applicant is advised that any request for
reconsideration under Trademark Rule 2.144 must be filed
within one month from the date of this decision, and any
appeal under Trademark Rule 2.145 must be filed within two
months from the date of this decision.
Serial No. 78572292
11
If applicant wishes to file a request for
reconsideration or an appeal, and is unable to obtain the
services of an attorney in a timely manner, applicant may,
within the appropriate time limits, request an extension of
time.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.

cc:
Jackie Allen
P.O. Box 272
450 A East High Street
Flushing, OH 43977

Office of the Conservator for Scott J. Fields
820 Adams Avenue, Suite 170
Trooper, PA 19304-2328

Paul C. Heintz
Obermayer Rebmann Maxwell & Hippel LLP
One Penn Center-19th Floor
1617 John F. Kennedy Blvd.
Philadelphia, PA 19103-1895

Scott J. Fields
National IP Rights Center, LLC
550 Township Line Road, Suite 400
Blue Bell, PA 19422