Kaneku Co., Ltd.

Trademark Trial and Appeal Board

Dec 29, 2020

88403111 (T.T.A.B. Dec. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kaneku Co., Ltd.
_____

Serial No. 88403111
_____

John S. Egbert, Kevin S. Wilson, and Michael F. Shwartz of Egbert McDaniel &
Swartz PLLC, for Kaneku Co., Ltd.

Gabrial Mitchell, Trademark Examining Attorney, Law Office 127,
Mark Pilaro, Managing Attorney.
_____

Before Lykos, Pologeorgis, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Kaneku Co., Ltd. (Applicant) seeks registration on the Principal Register of the
mark (the pictorial representation of wasabi and “WASABI”
disclaimed) for “wasabi powder (Japanese horseradish powder), food flavorings using
wasabi except for essential oils, seasoning using wasabi, spices using wasabi” in
Serial No. 88403111
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International Class 30.1 The application includes a description of the mark which
reads as follows: “The mark consists of the wording ‘WASABI CRUSH’ in black,
stylized lettering except for the first ‘A’ in the mark which is created using a drawing
of a mound of wasabi colored green and light green.” The colors black, green, and light
green are claimed as a feature of the mark.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the goods identified in the application, so resembles the mark CRUSH (standard
characters) for “cooking sauces; dried herbs; edible spices; garden herbs, preserved;
instant spice blends; processed herbs; sauce mixes; sauces; spice blends; spices,” in
International Class 30,2 on the Principal Register as to be likely to cause confusion,
to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal is fully briefed. We affirm the
refusal to register.3

1 Application Serial No. 88403111 filed April 25, 2019, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in
commerce since at least as early as August 2018.
2 Registration No. 5075986, issued November 8, 2016. The registration also includes
International Class 40 services, but these services were not cited as a bar to registration.
3 References to the application will include TSDR (Trademark Status and Document
Retrieval) citation, the downloadable .pdf version of the documents available from the
electronic file. The TTABVUE citations refer to the Board’s electronic docket, with the first
number referring to the docket entry and the second number, if applicable, referring to the
page within the entry.
Serial No. 88403111
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I. Likelihood of Confusion Analysis
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). We have considered each relevant DuPont factor for
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns, Inc., 450
F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each
factor for which we have evidence, we focus our analysis on those factors we find to
be relevant.”). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus ... on dispositive factors, such as
similarity of the marks and relatedness of the goods.”).
Serial No. 88403111
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A. Similarity of the Goods and Trade Channels
We address “[t]he similarity or dissimilarity and nature of the goods ... as
described in an application or registration...” and “[t]he similarity or dissimilarity of
established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567. We must
make our determinations under these factors based on the goods as they are
identified in the cited registration and Applicant’s involved application. In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). In determining
whether the goods are related, it is not necessary that we find a likelihood of confusion
between all of the registered goods and all the goods listed in the application. When
we consider the similarity of the parties’ goods and services, it is sufficient for a
refusal based on likelihood of confusion that relatedness is established for any item
encompassed by the identification of goods or services in a particular class in the
application. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed.
Cir. 1983) (holding that a single good from among several may sustain a finding of
likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409
(TTAB 2015).
As stated, Applicant seeks registration of its mark for “wasabi powder (Japanese
horseradish powder), food flavorings using wasabi except for essential oils, seasoning
using wasabi, spices using wasabi” and the registered mark is used on “cooking
sauces; dried herbs; edible spices; garden herbs, preserved; instant spice blends;
Serial No. 88403111
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processed herbs; sauce mixes; sauces; spice blends; spices.” The record includes a
definition of “wasabi:”4
1: a condiment that is prepared from the ground thick pungent greenish
rhizome of an Asian herb (Wasabia japonica synonym Eutrema wasabi) of the
mustard family and is similar in flavor and use to horseradish
also: the rhizome
2: the herb that yields wasabi

The record also includes a Wikipedia entry which explains that wasabi is “a spice
traditionally prepared from a plant from the cabbage family. Its root is used as a spice
and has a very strong flavor. The root is smashed up into paste and used as a
condiment.”5 In addition, the record includes two Internet articles (“Cooking with
Spices: Wasabi” and “True Wasabi What Is That Green Paste Really?”) discussing
“wasabi” as an herb which can be a spice or the base of a condiment, and two
advertisements for online food retailers selling wasabi powder as a spice.6
We construe Registrant’s identified goods to encompass all goods of the type
identified. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367,
107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Paula Payne Prods. Co. v. Johnson Publ’g
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973). Based on the evidence that
wasabi is an herb which can be used as a spice or a condiment, we find that the

4 July 10, 2019 Office Action, TSDR 9 (Merriam-Webster online dictionary).
5 Id. at TSDR 12. Because there are inherent limitations to information derived from the
collaborative Internet resource, the Board will permit evidence from Wikipedia to be made of
record when timely introduced, so long as that the non-offering party has an opportunity to
submit rebuttal evidence, conditions which were met in this case. See In re Jimmy Moore
LLC, 119 USPQ2d 1764, 1768 (TTAB 2016); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) § 710.01(b) (October 2018).
6 Id. at 14-24; November 13, 2019 Office Action, TSDR 7, 21-22.
Serial No. 88403111
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wording “dried herbs, processed herbs, spices” in the cited registration includes
Applicant’s “wasabi powder” and “spices using wasabi.” See In re Country Oven, Inc.,
2019 USPQ2d 443903, *4-5 (TTAB 2019) (“we must consider Applicant’s services to
encompass a broad spectrum of bakery products that quite obviously includes goods
of the type identified in the cited registration, i.e., “bread buns.”); In re Solid State
Design Inc., 125 USPQ2d 1409, 1413 (TTAB 2018) (“The identification leaves the
goods broadly described as “[d]ownloadable mobile applications for mobile phones and
mobile electronic devices,” and we must deem those goods to include … Applicant’s
more specifically identified type of “[c]omputer application software for mobile
phones.”). The goods are thus, in part, legally identical.
Given this legal identity, it is presumed that Registrant’s and Applicant’s goods
travel in the same channels of trade, and are sold in the same establishments to the
same class of customers (ordinary consumers of herbs and spices). See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Information
Builders Inc., 2020 USPQ2d 10444, *3 (TTAB 2020).
Applicant’s brief does not contest the identity in part of the goods, or contend that
they travel in different channels of trade.
We find the factors of similarity of goods and channels of trade weigh in favor of
finding a likelihood of confusion.
B. Similarity of the CRUSH and WASABI CRUSH and Design
Marks
We consider the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation, and commercial impression. See Palm Bay Imps.,
Serial No. 88403111
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Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 136, 73 USPQ2d
1689 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to
find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742,
1746 (TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13, 2019) (mem)
(quoting In re Davia, 110 USPQ2d at 1812). When the goods are identical or virtually
identical, as is the case here, the degree of similarity between the marks necessary to
support a determination that confusion is likely declines. See Bridgestone Americas
Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064
(Fed. Cir. 2012); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
Registrant’s CRUSH mark is wholly incorporated in Applicant’s mark
. “Marks have frequently been found to be similar where one mark
incorporates the entirety of another mark, as is the case here.” TiVo Brands LLC v.
Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2019); see Stone Lion Capital Partners
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160-1161 (Fed. Cir. 2014);
(affirming Board’s finding that applicant’s mark STONE LION CAPITAL
incorporated the entirety of the registered marks LION CAPITAL and LION, and
that the noun LION was the dominant part of both parties’ marks); Double Coin
Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409 *6, *7 (TTAB 2019) (“Tru’s junior
mark, ROAD WARRIOR contains Double Coin’s entire mark WARRIOR”). Because
they share the identical term CRUSH, the parties’ marks are similar in commercial
impression, appearance and pronunciation as to this term.
Serial No. 88403111
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The sixth factor is the number and nature of similar marks in use for similar goods
or services. DuPont, 177 USPQ at 567. Applicant contends that the refusal should be
withdrawn based on “the dilute nature of the cited registration” which makes the
differences between the marks CRUSH and sufficient to avoid a
likelihood of confusion.7 The inherent or conceptual strength of Registrant’s mark is
not seriously at issue; it is inherently distinctive as evidenced by its registration on
the Principal Register without a claim of acquired distinctiveness under Section 2(f)
of the Trademark Act. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881,
1899 (TTAB 2006); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB
2016). Registrant’s registration is “prima facie evidence of the validity of the
registered mark ....’’ Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b).
We address whether, under the sixth DuPont factor, the registered mark’s
strength is curtailed by extensive third party use of similar marks with similar goods
or services. Jack Wolfskin Austrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-1136 (Fed. Cir.
2015) (Wolfskin); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674-75 (Fed. Cir. 2015) (Juice Generation). Although registrations
are not proof of use, third party registrations may indicate that a mark carries a
suggestive or descriptive connotation in the particular industry, and is weak for that
reason. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128

7 6 TTABVUE 3.
Serial No. 88403111
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USPQ2d 1686, 1694 (Fed. Cir. 2018) (“The purpose of introducing evidence of third-
party use is “to show that customers have become so conditioned by a plethora of such
similar marks that customers ‘have been educated to distinguish between different
[such] marks on the bases of minute distinctions.”) (citations omitted).
Here, Applicant has not submitted evidence that the term CRUSH has been
extensively registered in the herbs and spice industry so as to undercut its strength
when applied to Registrant’s goods. Applicant submitted two dozen third party use-
based registrations for a wide variety of food products “to demonstrate that the term
“CRUSH”, in its various forms and permutations, has been adopted by a number of
other users as a good or service designation and is not distinctive of the cited
registrant.”8
Reg. No. Mark Int. Cl. 30 Goods

5795992 COLD CRUSH Frozen confections

8 October 22, 2019 Response TSDR 13-91; May 13, 2020 Response, TSDR 13-105. We note
with disapproval the submission of the identical evidence more than once, which does not
improve Applicant’s case. In addition, we do not list pending applications, or registrations
based on Trademark Act Sections 44 or 66 which are less than five years old because neither
are proof of adoption of a mark in U.S. commerce or that consumers regard a term as
distinctive.
Applications are evidence of nothing more than that they were filed. Weider Publications,
LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1360 (TTAB 2014) (evidence only that
applications were filed, thus incompetent to show common third-party use), appeal dismissed
per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); In re Binion, 93 USPQ2d 1531, 1535
n.3 (TTAB 2009) (same). Unless a Trademark Act Section 8 filing was accepted, registrations
based on Trademark Act Sections 44 or 66 do not demonstrate use of the mark. Calypso
Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1221 (TTAB 2011)
(while third-party registrations based on use in commerce may suggest listed goods and
services are of the type which may emanate from a single source, third party registrations
based on international registrations are not evidence that the marks have been used in the
United States for the stated goods and services).
Serial No. 88403111
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5708555 ALMOND CRUSH
(ALMOND disclaimed)
Chocolate biscuits sticks;
chocolate covered biscuits;
chocolate covered pretzels

5690398 PIE CRUSH BAKERY
(PIE and BAKERY
disclaimed)
Bakery goods, namely, pies;
bakery products, namely,
sweet bakery goods

5837281

NATURE’S CRUSH Corn-based snack foods;
popcorn; microwave
popcorn; dried corn; corn for
popping

5836437
Supplemental
Register
CRUSHED FRUIT BARS
(FRUIT BARS disclaimed)
Frozen confections
5724799 OUR FATHERS FOODS
CRUSHED GRAINS FOR
THE BASICS OF LIFE
(FOODS disclaimed)
Processed grains; processed
grains, namely, wheat, corn,
barley, oats, rye, and rice;
processed corn; processed
flax seed for use as a
seasoning or a flavoring for
foods and beverages

5065423 NUTRICRUSH Chocolate-based meal
replacement bars; coffee-
based meal replacement
bars

4904495

(STUFFED BITES &
STICKS disclaimed)
Pre-cooked, ready-to-eat
frozen biscuits and
sandwich wraps all with
fillings consisting primarily
of meat, egg, cheese, fruit,
vegetable, seafood or sauce,
primarily
for the institutional market.

4815877 ORANGE CRUSH Hot sauce

4703709 CRUSH Panini; sandwiches,
namely, bagel panini
sandwiches

4592343
6046499
(same owner)
COOKIE CRUSH BAKERY
(COOKIE and BAKERY
disclaimed)

cookies
Serial No. 88403111
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COOKIE CRUSH
GOURMET BAKERY
(COOKIE and GOURMET
BAKERY disclaimed)

5551007 CRUSH COFFEE
(COFFEE disclaimed)
Coffee beans, ground coffee
beans, prepared coffee and
coffee-based beverages,
baked goods, namely,
muffins, scones, biscuits,
cookies, pastries and
breads.

4005532 VANILLA BEAN
EXTRACT ‘CRUSH’
(VANILLA BEAN
EXTRACT disclaimed)

Vanilla extract used as
flavoring

4614387 BILL’S FIRST CRUSH Salad dressings and
vinaigrettes

3795777 CRUSHCAKES Cakes; cupcakes; vegan
cupcakes

4355263
3974989
2895772
2536979
(same owner)
CRUSH
(same mark)
Bubble gum; chewing gum
Confectionery, namely
candy
Cakes; Topping syrup
Confectionery, namely soft
candies

4917370 PIZZA CRUSH Pizza

1940708

(CRUSHED CHILI
PEPPERS disclaimed)

Spices and sauces
4594726
Supplemental Register
FRESHCRUSH OIL
(OIL disclaimed)

Olive oil
5138632

KALE KRUSH
(KALE disclaimed)
Frozen fruit and vegetables
Serial No. 88403111
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6038260 HONEY CRUSH

Fresh fruit; fresh melons
5728315 GOLDEN CRUSH

fresh cantaloupes; fresh
fruit
5160283

Crystallized fruits; dried
meat; flavored nuts;
fruit-based snack food;
fruit jellies; fruit,
preserved; jellies for
food; prepared nuts;
vegetable-based snack
foods

However, because there is no evidence that all food products are considered
similar by consumers of registrant’s goods, we find the majority of these registrations
are not relevant for the purpose of assessing the strength of the registered mark.
Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 128 USPQ2d at 1694 (“the
present analysis [of whether third party use affects the mark’s scope of protection]
only involves goods like those being offered by the parties to the ‘relevant public,’
while third-party use outside of that relevant market is meaningless.”). The few
registrations featuring spices or condiments which are similar on their face to the
registered goods are insufficient in number to be considered “extensive third party
use.” In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018) (“The totality of the
evidence presented by Applicant fails to show that the term INDIGO as it appears in
the cited mark and involved marks is significantly weak in connection with the
involved goods.”). In sum, we find the registered mark is entitled to the normal scope
of protection accorded an inherently distinctive mark, and that Applicant has not
proven that third party use or registration warrants restricting that protection.
Serial No. 88403111
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We turn to the differences between the marks CRUSH and based
on Applicant’s addition of stylization and the prefatory term WASABI, which
features, in place of the first letter A, “a drawing of a mound of wasabi colored green
and light green.” Applicant contends that the marks are dissimilar “due to unique
design and stylization accompanying Applicant’s mark, the addition of the term
‘WASABI’ in Applicant’s mark, and the unique use of a mound of wasabi to create the
stylized letter ‘A’ in Applicant’s mark.”9 While we agree, of course, that the marks
differ, we disagree that either the stylization of the wording or the design element is
unique. In fact, the stylized wording appears to be a standard font, and does not
create a commercial impression separate from the impression created by the literal
elements of the mark. In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986)
(“We think it likely that purchasers … would not see the lettering style or coloring of
the generic designations as an indicium of source.”). Moreover, because the registered
mark appears in standard characters, Registrant’s ability to employ any font, size,
style, or color when using the mark could result in use of the same font used by
Applicant. See In re Viterra Inc., 101 USPQ2d at 1909 ; In re Davia, 110 USPQ2d at
1814. See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-
1848 (Fed. Cir. 2000) (“The record shows that the registration for the LASERSWING
mark contains a ‘typed drawing.’ … Therefore, it is irrelevant that Cunningham has

9 6 TTABVUE 5-6.
Serial No. 88403111
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a particular display for his mark in commerce, and the Board was correct to ignore
those features.”).
Similarly, the design element of the mark does not involve any notable or
eyecatching features, but merely comprises a realistic representation of the goods. A
realistic representation of the goods generally does not act as a distinctive trademark
for the goods. See In re Underwater Connections, Inc., 221 USPQ 95, 95 (TTAB 1983)
(pictorial representation of a compressed air gas tank held merely descriptive of
travel-tour services involving underwater diving). This is even more true when the
representation forms part of the generic term for the representation. See In re Swatch
Grp. Mgmt. Servs. AG, 110 USPQ2d 1751, 1762 (TTAB 2014) aff’d per curiam, 599
Fed. Appx. 959 (Fed. Cir. 2015) (finding that the design element depicting a tourbillon
- a watch component - combined with the word TOURBILLON reinforced the singular
impression conveyed by the mark as a whole as merely descriptive for “jewellery,
horological and chronometric instruments”). Here, the representation of wasabi has
been disclaimed. In consideration of the mark as a whole, we do not find that either
the stylization or the design element contributes much to the commercial impression
of the mark.
As is usually the case, we find that the literal portion of Applicant’s
mark creates the dominant part of its commercial impression. See In re Viterra Inc.,
101 USPQ2d at 1911 (“the verbal portion of a word and design mark likely will be the
dominant portion … given that the literal component of brand names likely will
appear alone when used in text and will be spoken when requested by consumers.”);
Serial No. 88403111
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Bos. Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2007) (“It has
frequently been stated that it is the word portion of marks, rather than the particular
display of the words, that is likely to have a greater impact on purchasers and be
remembered by them.”). And of the literal portions of Applicant’s mark, we find that
the word CRUSH contributes more to the commercial impression of the mark as a
whole than the term WASABI, because wasabi appears in the name of Applicant’s
goods, and has been disclaimed. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997) (disclaimed or descriptive terms are considered less
significant features of the mark).
The proper focus is on the recollection of the average purchaser, who retains a
general impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958,
1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir.1992)). In the present case we
find that Applicant’s mark wholly incorporates the registered mark CRUSH, and
Applicant’s addition of stylization, the generic term for the goods and a pictorial
representation of the goods are insufficient to detract from the strong similarities of
the marks in overall commercial impression. This factor also weighs in favor of
finding a likelihood of confusion.
C. Balancing the Factors
After careful consideration of the evidence and arguments, we find that the in
part identity of the goods in combination with the in part identity of the marks lead
Serial No. 88403111
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us to the conclusion that prospective consumers are likely to confuse the source of the
involved goods.
Decision: The refusal to register Applicant’s mark is affirmed.