Lidl Stiftung & Co. KG

Trademark Trial and Appeal Board

Feb 20, 2019

EX (T.T.A.B. Feb. 20, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: February 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lidl Stiftung & Co. KG
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Serial No. 79171734
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Scott Greenberg of Locke Lord LLP,
for Lidl Stiftung & Co. KG.
Keyla Gandara, Trademark Examining Attorney, Law Office 117,
Travis D. Wheatley, Managing Attorney.
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Before Wellington, Kuczma and Greenbaum,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Lidl Stiftung & Co. KG (“Applicant”) seeks registration on the Principal Register
of the mark for: Sushi in International Class 30.1 “SELECT” and
“TO GO” are disclaimed.

1 Application Serial No. 79171734 is a request for extension of protection of International
Registration No. 1263075 pursuant to the Madrid Protocol, Trademark Act § 60 et. seq., 15
U.S.C. § 1141 et seq. The USPTO was notified of the request for extension on February 6,
2015. The mark consists of the wording “CHEF SELECT” in gray with two gray lines around
Serial No. 79171734

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The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due to a likelihood
of confusion with the mark CHEF SELECT (standard character mark, “SELECT”
disclaimed) in Registration No. 3873838 registered for “sushi” in International Class
30, owned by Fuji Food Products, Inc.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration,3 the appeal was resumed. We have considered the evidence and
arguments presented by Applicant and the Examining Attorney. For the reasons set
forth below, the refusal to register is affirmed.
I. Likelihood of Confusion
The sole issue to be decided is whether Applicant’s mark (“chef select
to go & design”) is confusingly similar to the mark CHEF SELECT in Registration
No. 3873838 and should therefore be refused registration under § 2(d) of the
Trademark Act.
Our determination of likelihood of confusion under § 2(d) is based on an analysis

the wording “TO GO” in green, with a white arrow in the middle of the “O”; all other white
in the drawing is not a feature of the mark and represents background. The colors gray and
green are claimed as a feature of the mark.

2 Registration No. 3873838 registered on November 9, 2010; §§8 and 15 declarations accepted.
3 In the January 30, 2018 Request for Reconsideration Denied, the Examining Attorney
withdrew the refusal under § 2(d) of the Trademark Act based on Registration No. 4156570.
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of all of the probative facts in evidence that are relevant to the factors bearing on the
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003).
We have considered all of the evidence as it pertains to the relevant du Pont
factors, as well as Applicant’s arguments (including any evidence and arguments not
specifically discussed in this opinion). Here, the key considerations are the
similarities between the marks, the identity of the goods, and the presumed similarity
of the customers and trade channels of the goods. To the extent any other du Pont
factors for which no evidence or argument were presented may nonetheless be
applicable, we treat them as neutral.
A. Similarity of the Goods, Channels of Trade, Classes of Customers
Applicant’s goods are identical to Registrant’s goods, i.e., sushi. When the goods
are identical and their identifications have no restrictions as to nature, type, channels
of trade, or classes of purchasers — as is the case here — the identified goods are
presumed to travel in the same channels of trade to the same class of purchasers. See
In re Viterra Inc., 671 F. 3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983)
(“absent restrictions in the application and registration, goods and services are
presumed to travel in the same channels of trade to the same class of purchasers.”)).
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Based on the identical goods set forth in the application and cited registration,
and the overlapping trade channels and customers, the du Pont factors of the
similarity of the goods, trade channels and customers strongly favor a finding of
likelihood of confusion.
B. Similarity of the Marks
We turn next to the du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression. In re Viterra, 101 USPQ2d at 1908; du Pont, 177 USPQ at 567. We keep
in mind that “[w]hen marks would appear on virtually identical goods . . ., as is the
case here, the degree of similarity necessary to support a conclusion of likely
confusion declines.” In re Viterra, 101 USPQ2d at 1908 (citing Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992));
In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1740-41 (TTAB 2016).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Our analysis cannot be predicated on
dissecting the marks into their various components; the marks must be viewed “in
their entireties,” and it is improper to dissect a mark when engaging in this analysis,
including when a mark contains both words and a design. Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
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116 USPQ2d 1129, 1134 (Fed. Cir. 2015); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”).
The record shows that the word “chef” is defined as “the chief . . . cook, especially
in a restaurant or hotel . . . ”, and “select” means “chosen in preference to another or
others,” or “carefully chosen.”4 Therefore, in connection with sushi, which is defined
as “[a] Japanese dish consisting of small balls or rolls of vinegar-flavored cold cooked
rice served with a garnish of raw fish, vegetables or egg,”5 “chef select” means that
the contents of the sushi dish were carefully or preferentially chosen by a cook or food
preparer.
Looking at Applicant’s mark, because “chef” and “select” appear together in the
same larger-sized font and color, connected with a gray line, the term “chef select”

4 See the dictionary definitions of “chef” in the March 15, 2016 Response to Office Action at
TSDR 16, Dictionary.com, ; and “select” in the
September 11, 2015 Office Action at TSDR 72, COLLINS DICTIONARIES, , and March 15, 2016 Response to Office
Action at TSDR 20 Dictionary.com, .
Page references to the application record refer to the .pdf version of the USPTO’s Trademark
Status & Document Retrieval (TSDR) system.
5 OXFORD DICTIONARIES (definition of sushi in US English) attached as Exhibit 1 to Applicant’s Request for
Reconsideration, TSDR 20.
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appears as the dominant part of Applicant’s mark.6 Although it is improper to dissect
a mark because marks must be viewed in their entireties, 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 Viterra, 101 USPQ2d at 1908; In re Nat’l Data, 224
USPQ at 751; Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424,
1430 (TTAB 2013).
Turning to the “to go” wording in Applicant’s mark, the definition of “to go”
submitted by the Examining Attorney is “1. (US) to be taken out (said of food in a
restaurant),” which confirms that it is descriptive of Applicant’s goods.7 Applicant
contends that even if “to go” is descriptive of its goods, it still adds a connotation to
the commercial impression of the mark that is not found in the cited mark.
The merely descriptive term “to go,” which Applicant disclaimed, is on the right-
hand side of “chef select” in smaller font and presented in a different color.8 The “to

6 Although Applicant and Registrant have disclaimed “select” in their respective marks, the
filing of a disclaimer with the USPTO does not remove the disclaimed matter from the
purview of determination of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 750-51 (Fed. Cir. 1985) (rejecting the “tactical strategy” of disclaimer filing in
determination of likelihood of confusion).
7 See the dictionary definition of “to go” in the September 11, 2015 Office Action at TSDR 75,
COLLINS DICTIONARIES, ,
and online ads referring to “to go” menu categories such as “food-to-go” and “Grab & go.”
September 11, 2015 Office Action at TSDR 62-64 (), and TSDR 68-71 (