Maximilian Van der Mark-Geary

Trademark Trial and Appeal Board

May 8, 2019

87479567 (T.T.A.B. May. 8, 2019)

Mailed: May 8, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Maximilian Van der Mark-Geary
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Serial No. 87479567
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Maximilian Van der Mark-Geary, pro se.
Won T. Oh, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
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Before Taylor, Wolfson and Coggins,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Maximilian Van der Mark-Geary (“Applicant”) seeks registration on the Principal
Register of the mark LOLIPOP (in standard characters) for “Non-alcoholic beverages,
namely, carbonated beverages” in International Class 32.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of

1 Application Serial No. 87479567 was filed on June 7, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of first use of the mark
on July 5, 2012, and first use of the mark in commerce on June 10, 2015.
This Opinion is Not a
Precedent of the TTAB
Serial No. 87479567

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confusion with Registration No. 4074410 for the mark LOLLIPOP TOP (in standard
characters) for “candy” in International Class 30 and “beverages, namely, mineral
water, spring water, fruit juices, fruit drinks, fruit-flavored beverages, non-alcoholic
beverage[s], namely, carbonated beverages, non-alcoholic beverages with tea flavor,
sports drinks, soft drinks, soft drinks flavored with tea” in International Class 32.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the facts in evidence that are relevant to the factors bearing on the likelihood
of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). Not all of the du Pont factors are relevant to every case, and “only
factors of significance to the particular mark need be considered.” Zheng Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (citing
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods or services. In re Chatam Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). In addition, we
address the trade channels of distribution and the classes of consumers. We have

2 Registered on the Principal Register on December 20, 2011, Section 8 declaration accepted.
A disclaimer of “LOLLIPOP” has been entered as to Class 30 only.
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considered all of the arguments and evidence of record, including any matters not
expressly discussed.
A. Similarity of the Goods; Channels of Trade; Classes of Consumers
We first consider the second and third du Pont factors, the similarity of the goods
as they are identified in the application and registration, their channels of trade, and
classes of customers. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Comput.
Servs., Inc., 918 F.2d 937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990); see also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Here, the goods are identical in part: “carbonated beverages.” In its appeal brief,
Applicant does not dispute the identity of the goods.
Given the legal identity of the goods in part and the lack of restrictions or
limitations in the application and registration as to their nature, channels of trade,
or classes of purchasers, we must presume that the channels of trade and classes of
purchasers are also the same (i.e., ordinary consumers who buy and drink carbonated
beverages or purchase them for consumption by others). In re Fat Boys Water Sports
LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion).
The second and third du Pont factors weigh heavily in favor of a finding that
confusion is likely.
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B. Similarity or Dissimilarity of the Marks in Their Entireties
We next consider the first du Pont likelihood of confusion factor, which focuses on
“‘the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.’” Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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.” Zheng Cai, 127
USPQ2d at 1801; In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir.
2017); Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012). Under actual marketing conditions, consumers do not
necessarily have the luxury of making side-by-side comparisons between marks, and
must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp.,
206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470
(TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Here, as noted above, the
relevant purchaser is an ordinary buyer who buys and drinks carbonated beverages
or purchases them for consumption by others.
Applicant has applied to register the mark LOLIPOP. The registered mark is
LOLLIPOP TOP. The marks are similar in appearance and pronunciation because
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they share the word “LOLLIPOP,” a common name for a candy.3 Although the marks
must be considered 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 consideration of the marks in their
entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The term “LOLLIPOP” in Registrant’s mark is the dominant portion of the mark
because it is the first term in the cited mark and therefore it is the portion “most
likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods.
Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); Palm Bay 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).
The absence of the double “L” in Applicant’s mark is barely noticeable. Consumers
who are familiar with Registrant’s LOLLIPOP TOP mark, upon encountering
Applicant’s LOLIPOP mark on identical beverages, are likely to read
the missing letter into the mark. Moreover, Applicant’s mark will be pronounced the
same as the word “lollipop.” Similarity in pronunciation alone “may be sufficient to
support a holding that the marks are confusingly similar.” Trak, Inc. v. Traq Inc., 212
USPQ 846, 850 (TTAB 1981) (quoted in In re White Swan Ltd., 8 USPQ2d 1534, 1535

3 See MERRIAM-WEBSTER (online) definition of “lollipop,” attached to March 11, 2108
Response to Office Action at TSDR 6. Citations to the record are to the Trademark Status
and Document Retrieval (TSDR) page in the prosecution history of Applicant’s application,
and to TTABVUE, the docket history system for the Trademark Trial and Appeal Board.
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(TTAB 1988)); see also In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505,
507 n.9 (CCPA 1980) (finding “no legally significant difference” between “quik” and
“quick”); cf. In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING will be
perceived as the phonetic equivalent of the descriptive term URBAN HOUSING).
In view of the dominance of the term LOLLIPOP in Registrant’s mark, the
addition of the term TOP does not create a significantly different commercial
impression of the mark in its entirety; likelihood of confusion is not necessarily
avoided between otherwise confusingly similar marks merely by adding or deleting
other matter. Prospective customers are likely to view Applicant’s mark as a variant
of Registrant’s, identifying another line of beverages. See In re Mighty Leaf Tea, 601
F.3d 1342, 1347-48, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (affirming TTAB’s
finding that applicant’s mark, ML, is likely to be perceived as a shortened version of
registrant’s mark, ML MARK LEES (stylized), when used on the same or closely
related skin-care products); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248
(TTAB 2010) (holding applicant’s mark, MAX with pillar design, and registrant’s
mark, MAX, likely to cause confusion, noting that the “addition of a column design to
the cited mark…is not sufficient to convey that [the] marks…identify different
sources for legally identical insurance services”); see also In re Detroit Athletic Co.,
903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (affirming TTAB’s finding
that the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are
nearly identical in terms of sound, appearance and commercial impression); In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and
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VANTAGE TITAN confusingly similar); In re SL&E Training Stable, Inc., 88
USPQ2d 1216, 1219 (TTAB 2008) (holding SAM EDELMAN and EDELMAN, both
for wallets and various types of bags, likely to cause confusion).
While there are differences between the marks when viewed on a side-by-side
basis, in their entireties they are similar in overall commercial impression due to the
shared term LOLLIPOP (LOLIPOP).
Applicant argues, “[t]he basis of the mark is a fanciful amalgamation of the
English words ‘lolita’ (diminutive form: loli; denoting a precocious young lady) and
‘pop’ (a regional term for a carbonated beverage/soda).”4 The flaw in Applicant’s
argument is twofold: first, the record does not support Applicant’s contention that
“lolita” is an English word or that it has the meaning Applicant ascribes to it,5 and
second, there is no rational reason a buyer of Applicant’s soft drinks will parse out
“loli” and “pop” from “LOLIPOP,” instead of viewing the mark as a simple misspelling
of the word “lollipop.” Finally, because the goods are identical, the marks need not be
as close as would be necessary if there were a disparity between the goods. See, e.g.,
Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d
1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on

4 4 TTABVUE 2.
5 The Board recognizes the allusion to the novel “Lolita” by Vladimir Nabokov, but there is
no basis for taking judicial notice of any of Applicant’s unsupported assertions as to the term
“loli.” Fed. R. Evid. 201(b); see also TBMP § 704.12 and authorities cited in that section.
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virtually identical goods or services, the degree of similarity necessary to support a
conclusion of likely confusion declines.”).
For the above reasons, we find that the first du Pont factor favors a finding of
likelihood of confusion.
II. Collateral Attack on Registration Impermissible
Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate
of registration on the Principal Register shall be prima facie evidence of the validity
of the registration, of the registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in connection with the goods or services identified in
the certificate. During ex parte prosecution, including an ex parte appeal, an
applicant will not be heard on matters that constitute a collateral attack on the cited
registration. In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992).
Applicant argues,
In reviewing the competing mark’s basis and documents I
thoroughly reviewed all attached samples provided by that
mark’s registrant…. Despite having applied for and
subsequently being registered in categories of goods for
carbonated and other beverages, the samples provided by
the registrant indicate that the good being offered is not in
these categories at all. The product(s) offered are
candy/confections….While the registrant of the competing
mark has been granted the registration, the use of it in
commerce in categories related to beverages appears to be
procedural, and no subsequent filings by that registrant
have provided any evidence of bona fide use or intent to use
beyond filed statements.6

6 4 TTABVUE 2-3.
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To the extent that Applicant is arguing that the Board should not accord the cited
registration any protection for the beverage goods identified therein because
Registrant only uses its mark on a “candy-capped cap to be used as equipment with
drinking beverages,”7 and not in connection with all of the goods identified in the
registration, the argument is unavailing. It constitutes an impermissible collateral
attack on the registration and carries no weight in the context of this ex parte
proceeding.
III. Summary
A likelihood of confusion exists in this case. The marks are similar in appearance,
pronunciation, connotation, and overall commercial impression. They share the
phonetic equivalents LOLLIPOP and LOLIPOP, which term is the dominant portion
of Registrant’s mark and the entirety of Applicant’s mark. The goods are identical in
part and legally presumed to travel through identical trade channels for sale to the
same classes of consumers. Prospective consumers familiar with Registrant’s
LOLLIPOP TOP carbonated beverages would be likely, when confronted with
Applicant’s LOLIPOP carbonated beverages, to believe that the goods are
manufactured or produced by the same company.
III. Decision:
The refusal to register Applicant’s mark under Trademark Act Section 2(d) is
affirmed.

7 4 TTABVUE 3.