Lily’s Kitchen Limited

Trademark Trial and Appeal Board

Mar 8, 2017

No. 79127092 (T.T.A.B. Mar. 8, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 8, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Lily’s Kitchen Limited
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Serial No. 79127092
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Kevin R. Casey and Elizabeth M. O’Donoghue
of Stradley Ronon Stevens & Young LLP,
for Lily’s Kitchen Limited
Michelle E. Dubois, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Kuhlke, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Lily’s Kitchen Limited (“Applicant”) seeks registration on the Principal Register
of the mark LILY’S KITCHEN (in standard characters) for “pet foods” in
International Class 31.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it

1 Application Serial No. 79127092 was filed on Jan. 8, 2013, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f, requesting extension of protection for International
Registration No. 1152487.
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so resembles the registered mark LILY’S GOURMET BUFFET (in standard
characters, with “GOURMET” disclaimed) for “pet food” in International Class 31 as
to be likely to cause confusion, to cause mistake, or to deceive prospective
purchasers.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Analysis
Applicant’s Section 66(a) application is subject to the same examination standards
as any other application for registration on the Principal Register. 15 U.S.C. §
1141h(a)(1). Trademark Manual of Examining Procedure (“TMEP”) § 1904.02(a)
(Jan. 2017). If the proposed mark is not registrable on the Principal Register, the
extension of protection must be refused. 15 U.S.C. § 1141h(a)(4).
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003).
We have considered each DuPont factor that is relevant, and have treated any
other factors as neutral. See 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.,

2 Registration No. 4269598 issued on the Principal Register on Jan. 1, 2013.
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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.”). Varying weights may be assigned to each DuPont factor depending on the
evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (factors “may play more or less weighty roles in any
particular determination”).
Two key considerations are the similarities between the marks and the
similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); Joel Gott Wines, LLC v. Rehoboth Van
Gott, Inc., 107 USPQ2d 1424, 1429 (TTAB 2013).
A. Similarity of the Goods, Channels of Trade, and Classes of Customers
We begin with the second DuPont factor, “[t]he similarity or dissimilarity and
nature of the goods … as described in an application or registration….” DuPont, 177
USPQ 567. It is clear that Applicant’s and Registrant’s identified goods, both for pet
food, are identical. Applicant acknowledges that this factor cannot be ignored, but
argues that it should not be given overriding weight, either.3 But since the goods are
identical, and there are no restrictions on channels of trade in either the Application
or the Registration, it is presumed under the third DuPont factor that Applicant’s
goods and Registrant’s goods move in the same channels of trade normal for those
goods (such as pet food stores, and the pet food sections of grocery stores and

3 Applicant’s brief p. 9, 15 TTABVUE 10.
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supermarkets) and are offered to the same classes of purchasers for those goods, pet
owners. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(legally identical goods are presumed to travel in same channels of trade to same class
of purchasers) (citing Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1005 (Fed. Cir. 2002)).
The identity in the goods, the channels of trade through which they would be
distributed, and the classes of customers to whom they would be purveyed all weigh
in favor of finding a likelihood of confusion under the second and third DuPont factors.
B. Similarity of the Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks as compared in their entireties, taking into
account their appearance, sound, connotation and commercial impression. DuPont,
177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “[T]wo marks may be found to be confusingly similar if there are
sufficient similarities in terms of sound or visual appearance or connotation.” In re
Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (emphasis in original; quoting
Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB
1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992)). Since the goods are identical, the
degree of similarity between the marks necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity between the goods. In re
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Bay State Brewing, 117 USPQ2d 1958, 1960 (TTAB 2016); Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721-22 (Fed. Cir. 2012).
Applicant acknowledges that the marks have LILY’S in common, but argues that
that one shared element is not the primary or dominant component of the marks.
Since the first element, LILY’S, is possessive, Applicant argues, “the consumer is led
to ask: “Lily’s what?’ In the applicant’s mark, the ‘what’ is a kitchen. In the
registrant’s mark the ‘what’ is a gourmet buffet.”4 “‘Lily’s Kitchen’ suggests a common
room or area where food is prepared and cooked,” whereas “‘Lily’s Gourmet Buffet’
suggests refined, elaborate preparations and presentations of meals of several
contrasting, often quite rich courses.”5 Hence, Applicant concludes, even though the
common possessive name LILY’S is the first term in both marks, it is weak, like a
geographic name, see, e.g., In re Philip Morris, Inc., 179 USPQ 60 (TTAB 1973)
(RICHMOND PREFERRED dissimilar to RICHMOND BEST for tobacco products);
In re Texas Trading & Milling Corp., 178 USPQ 319 (TTAB 1973) (TEXAS BEST
distinguishable from TEXAS PRIDE for flour and rice products), and the terms
following LILY’S are the marks’ dominant, distinguishing components. Applicant
concludes that if the marks are compared in their entireties, as they must, and not
dissected, their dissimilarities outweigh their similarities, and its two-word mark is
not likely to be confused with Registrant’s three-word mark.6

4 Applicant’s brief p. 10, 15 TTABVUE 11.
5 Applicant’s brief p. 11, 15 TTABVUE 12.
6 Applicant’s brief pp. 9-11, 15 TTABVUE 10-12.
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We agree with the Examining Attorney, though, that LILY’S is the dominant,
source-identifying component in both marks. The marks in this case are reminiscent
of those in Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283 (TTAB 2007),
where an application to register BARB’S BUNS BAKERY was opposed by the owner
of the marks BARBARA’S, BARBARA’S BAKERY, and BARBARA’S BAKERY &
design. Comparing the parties’ marks, the Board found:
[T]he dominant feature in the commercial impression created by
applicant’s mark is the possessive proper noun BARB’S.
…
There can be no dispute that BARB is a common nickname or shortened
version of BARBARA. Both BARB and BARBARA in the respective marks
are presented in the possessive case, i.e., BARB’S and BARBARA’S.
…
Overall, we find that the similarity between the marks which arises from
both marks’ use of the arbitrary possessive BARBARA’S or BARB’S
outweighs the points of dissimilarity between the marks.
…
[T]he dominant feature of both parties’ marks is the name BARB’S or
BARBARA’S, presented in the possessive case.

Id. at 1288-89.

Here, as in Barbara’s Bakery, the marks share the possessive first name LILY’S.
The name is identical in both marks―not just a common nickname or a shortened
version of the name as in Barbara’s Bakery―which a fortiori heightens the similarity
between the marks. The shared name is the first term in each mark―which is the
most prominent part of the mark and the one most likely to be impressed in the mind
of a purchaser and remembered. See Palm Bay Imports, 73 USPQ2d at 1692 (“Veuve”
is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the
first word in the mark and the first word to appear on the label); Century 21 Real
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Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (upon encountering the marks, consumers would first notice the identical lead
word); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“[I]t is often the first part of a mark which is most likely to be impressed in the mind
of a purchaser and remembered”). Unlike geographic names, which may indicate
more than one source of a product, see In re Newbridge Cutlery Co., 776 F.3d 854, 113
USPQ2d 1445, 1446 (Fed. Cir. 2015), the individual possessive name LILY’S, like
BARB’S, suggests that one individual is the source of the goods bearing the marks.
In both marks, the words following LILY’S―KITCHEN in Applicant’s mark and
GOURMET BUFFET in Registrant’s mark―do not suffice to distinguish the marks.
They merely suggest different stages in preparation and presentation of the product:
the food is prepared in LILY’S KITCHEN and then presented as LILY’S GOURMET
BUFFET.
The Examining Attorney notes that KITCHEN and BUFFET are frequently used
in connection with pet food. KITCHEN appears in eleven third-party registrations for
pet food, weakening its significance as a source indicator, e.g.:7

Mark Reg. No. Goods and Services
THE HONEST KITCHEN 2908697 Dehydrated dog foods
FRESH FROM THE
KITCHEN
4701478 Pet food

7 Examining Attorney’s brief, 17 TTABVUE 5-6; Feb. 4, 2015 Office Action pp. 24-41, Sept.
27, 2015 Office Action pp. 4-10.
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DOGS IN THE KITCHEN 4810197 Pet food
MILO’S KITCHEN 4023837 Pet food
COUNTRY KITCHEN 4199145 Pet treats
MEATLOAF’S KITCHEN 4447129 Pet treats
KITCHEN BITES 4553107 Dog treats; pet treats
LINUS & CLYDE
KITCHEN
3846443 Dog food
NATURE’S KITCHEN
DOG FOOD
4287818 Pet food
Beyond that, the Examining Attorney makes of record several third-party
websites demonstrating use of the term “BUFFET” in reference to pet food, e.g.:
• Gourmet Pawpourri 7 Flavor Dog Treat Buffet8

• Nature’s Café Parakeet Buffet9

8 K9Confections.com 9/27/2015, Sept. 27, 2015 Office Action p. 22 pdf.
9 PetFoodExpress.com 9/27/2015, Sept. 27, 2015 Office Action p. 15 pdf.
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• Friskies Buffet Original Loaf Variety Pack10

Applicant claims that the Examining Attorney “relied too heavily” on this third-
party evidence,11 but it reinforces the Examining Attorney’s position that pet food
purchasers are likely to regard LILY’S as the dominant source indicator, rather than
the more commonly used terms KITCHEN or BUFFET that follow it.
Applicant’s mark, LILY’S KITCHEN, would tend to be seen as a variation of
Registrant’s LILY’S GOURMET BUFFET mark, suggesting another line of pet food
emanating from the same source: LILY. See In re Collegian Sportswear, Inc., 224
USPQ 174, 176 (TTAB 1984) (“…customers familiar with registrant’s
‘COLLEGIENNE’ clothing might believe that ‘COLLEGIAN OF CALIFORNIA’

10 Amazon.com 9/27/2015, Sept. 27, 2015 Office Action p. 11 pdf.
11 Applicant’s brief p. 7, 15 TTABVUE 8.
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clothing was a new line of clothing from registrant featuring a ‘California’ or west
coast style.”); Wella Corp. v. California Concept Corp., 194 USPQ 419, 422 (CCPA
1977). Pet owners encountering Applicant’s products in the pet food aisle “who do
recognize the differences in the marks may believe that applicant’s mark is a
variation of [Registrant’s] mark that [Registrant] has adopted for use on a different
product.” Schieffelin & Co. v. Molson Co’s. Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989).
Overall, then, comparing the marks in their entireties, Applicant’s mark is similar
to Registrant’s. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014).
The first DuPont factor weighs in favor of finding a likelihood of confusion.
C. Number and Nature of Similar Marks in use on Similar Goods
Under the sixth DuPont factor, the Federal Circuit has stated that “evidence of
third-party use of similar marks on similar goods ‘can show that customers have been
educated to distinguish between different marks on the basis of minute distinctions.”’
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (quoting Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015)). “The weaker [a registrant’s] mark, the closer an applicant’s mark can come
without causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.
Applicant contends that the LILY’S element of Registrant’s mark is weak and
should be afforded a narrow scope of protection based on a Trademark Electronic
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Search System (“TESS”) printout listing 290 third-party registrations for marks
including “LILY” or “LILY’S.”12 But “the mere submission of a listing from the TESS
database is insufficient to make the referenced registrations of record.” In re Jump
Designs, 80 USPQ2d 1370, 1374 (TTAB 2006). Applicant accordingly submits TESS
printouts of six use-based, third-party registrations containing the term “LILY”:13
Mark Reg. No. Goods and Services
LILY TREE
(“LILY” disclaimed)
3277732 Lily bulbs, lily plants, lily flowers
LILY FARM FRESH

4155507 Skin care preparations
LILY GARDEN
(“LILY” disclaimed)

4715044 Arm bands, artificial flowers, fruit
and garlands; brooches for clothing
LILY HILL ESTATE 4679143 Alcoholic beverages
LILY FROM THE
VILLAGE
4588785 Bakery goods and dessert items
LILY’S VINTAGE
DRESSING
2179243 Salad dressing
These registrations, however, are entitled to little, if any, probative value. None
is for related goods, i.e., pet foods. See In re Integrated Embedded, 120 USPQ2d 1504,
1512 (TTAB 2016) (“[T]he probative value of the third-party registrations in this case
is significantly diminished because the trademarks cover a wide variety of goods and
services that are not related to the types of services involved here.”); In re Thor Tech,
Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (citing Key Chemicals, Inc. v. Kelite

12 Applicant’s brief p. 11, 15 TTABVUE 12; Aug. 4, 2015 Request for Reconsideration pp. 11-
21.
13 Aug. 4, 2015 Request for Reconsideration pp. 23-29.
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Chemicals Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972)). The first three
registrations in the table use “Lily” in a descriptive sense, referring to the flower or
its scent. The next two, LILY HILL ESTATE and LILY FROM THE VILLAGE,
project completely different commercial impressions. See Spoons Rests. Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. 1992) (“only one of the approximately 70 third-party registrations is for [relevant]
services and the mark…is markedly different in connotation, sound, appearance and
overall commercial impression from that of any other of the parties’ marks.”). The
last registration, for LILY’S VINTAGE DRESSING, uses “LILY’S” as a possessive
name and relates to food products (albeit for humans, not pets), but “one third-party
registration has little probative value, especially in the absence of evidence that the
mark is in use on a commercial scale or that the public has become familiar with it.”
In re Mr. Recipe, 118 USPQ2d at 1089. Hence, Applicant’s evidence fails to dilute the
distinctiveness of LILY’S in Registrant’s mark, LILY’S GOURMET BUFFET.
Consequently, the sixth DuPont factor does not weigh in Applicant’s favor.
II. Conclusion
Having carefully considered all of the arguments and evidence of record, and all
relevant DuPont factors, we find that: Applicant’s and Registrant’s goods, channels of
trade, and classes of customers are the same; their marks, taken in their entireties,
are similar in appearance, sound, connotation and commercial impression; and the
number of similar marks registered or in use on similar goods does not undermine
the strength of LILY’S as a source indicator in Registrant’s mark. All other factors
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are deemed neutral.14 All in all, we find that there is a likelihood of confusion under
Section 2(d).
Decision: The refusal to register Applicant’s mark LILY’S KITCHEN is affirmed.

14 Applicant agrees that none of the remaining DuPont factors appears relevant at this time.
Applicant’s brief p. 13, 15 TTABVUE 14. Applicant points out that it has been seeking to
reach a consent agreement with Registrant. Id. At Applicant’s request, the Board granted
three extensions of time in which to file its brief on appeal, pending negotiation of a consent
agreement with Registrant. Applicant’s brief, pp. 5-6, 15 TTABVUE 6-7; 7-14 TTABVUE. But
there is no indication in the record that such an agreement has been reached.