Metz Baking Co.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 75058375 (T.T.A.B. Mar. 30, 1999)

Paper No. 11
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 30,00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Metz Baking Company
________
Serial No. 75/058,375
_______
Sana Hakim of Bell, Boyd & Lloyd for Metz Baking Company.
Christopher Wells, Acting Managing Attorney, Law Office
101.
_______
Before Cissel, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On February 15, 1996, applicant filed the above-
referenced application to register the mark “GRANDMA’S” on
the Principal Register for “fruit cakes,” in Class 30. The
basis for filing the application was applicant’s claim of
use of the mark and use in interstate commerce since 1912.
The Examining Attorney refused registration under
Section 2(d) of the Act on the ground that applicant’s
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mark, as applied to fruitcake, so resembles the marks
“GRANDMA’S”1 and the mark shown below,2
Both of which are registered for “cookies,” that confusion
is likely.
Applicant responded with argument that confusion is
not likely. Applicant stated that the word “grandma”
appears in the marks in over five hundred federal and state
trademark applications and registrations, and that of
those, over a hundred and sixty are for food items. Copies
of six of the third-party registrations listing “cookies”
or “cookie dough” as the goods were made of record with
this argument: “GRANDMA BETH’S COOKIES” and design for
cookies (Reg. No. 1,986,828); “GRANDMA MILLER’S COUNTRY
BAKIN’” for, inter alia, cookies (Reg. No. 1,670,426);

1 Reg. No. 1,119,007, issued on the Principal Register to
Grandma’s Foods, Inc. on May 22, 1979; combined affidavit filed
under Sections 8 and 15; The registration claims use since 1914
and use in commerce since 1930. It was assigned to Recot, Inc.
on September 15, 1989.
2 Reg. No. 1,987,936, issued on the Principal Register to Recot,
Inc. on July 23, 1996; The registration claims use and use in
commerce since August 8, 1993.
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“GRANDMA GEBHARD’S” and design for, inter alia, frozen
cookie dough (Reg. No. 1,472,543); “Grandma Hills” for
cookies (Reg. No. 1,466,483); “GRANDMA GOLDE” for, inter
alia, cookies (Reg. No. 1,062,388); and “GRANDMA LEE’S” and
design for, inter alia, cookie mix (Reg. No. 927,449).
Based on the third-party registrations, applicant argued
that because there are so many “grandma’s” marks in the
food category, including those registered for cookies or
cookie dough, it is not likely that consumers will confuse
applicant’s mark with the two cited marks.
Further, applicant argued that it had owned a
registration for the mark “GRANDMA’S FRUIT CAKE” for fruit
cake, Reg. No. 1,346,547, since it issued on July 2, 1985,
and that it coexisted for seven years with Registration No.
1,119,007 (the cited registration for “GRANDMA’S”) without
any actual confusion.
The Examining Attorney was not persuaded by
applicant’s evidence or argument, and the refusal to
register was made final with the second Office Action.
Attached to that Office Action were copies of registrations
from the Office records showing that several marks we
registered for both cookies and fruitcake. The Examining
Attorney argued that this evidence establishes that other
companies market both products under their own trademarks,
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and that because fruitcakes and cookies move through the
same trade channels to the same ordinary consumers,
confusion is likely when the mark “GRANDMA’S” is used on
both.
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed briefs.
Applicant did not request an oral hearing before the Board.
The sole issue before the Board in this appeal is
whether confusion is likely. We hold that it is.
The test for resolving this issue is well settled. We
must first consider the similarity of the marks, in terms
of their appearances, their pronunciations, their
connotations and their overall commercial impressions.
Then we must compare the goods set forth in the cited
registrations with the goods as identified in the
application to determine if they are related in such a way
that the use of the marks in question is likely to lead to
confusion or mistake in the marketplace for such products.
In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Applicant’s mark is identical to the first cited
registered mark, “GRANDMA’S,” and it creates a commercial
impression that is very similar to that of the mark in the
second cited registration by virtue of being the dominant
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element thereof. The design element in that registered
mark only amplifies or reinforces the word “GRANDMA’S.”
All three of these marks are very much alike. Plainly,
their use on the same or closely related goods is likely to
cause prospective purchasers to assume, mistakenly, that
the source of all such products is the same.
Both fruitcakes and cookies are bakery goods which
consumers have a reason to expect to come from the same
source. As the third-party registration information made
of record by the Examining Attorney shows, a number of
different businesses have their marks registered for both
fruitcakes and cookies. While not evidence of what
actually happens in the marketplace, that the marks therein
are in actual use, or that the public is familiar with the
marks shown therein, third-party registrations are an
acceptable way for the Examining Attorney to show that the
goods listed therein are commercially related. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). As
noted by the Examining Attorney, these bakery products,
both confections, move through the same channels of trade
and are bought by ordinary consumers in the same kinds of
stores.
As noted above, we conclude that confusion is likely
when applicant’s mark, identical to one of the cited marks
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and very similar to the other, is used on these closely
related products.
Applicant’s argument is not well taken that its
previous registration of the mark “GRANDMA’S FRUIT CAKE”
and the third-party registrations applicant submitted of
marks including the word “GRANDMA” as an element therein
require registration of applicant’s “GRANDMA’S” mark.
As we noted above, third-party registrations, while
appropriate for helping demonstrate that consumers may have
a basis to expect the goods listed therein to come from one
source, are not evidence of the use of the marks therein or
that the public is familiar with the use of such marks. In
re National Aeronautics and Space Administration v. Record
Chemical Co., 185 USPQ 563 (TTAB 1975). Third-party
registrations, by themselves, are entitled to little weight
in resolving the issue of whether the marks are similar.
In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). In
any event, the marks shown in the registrations submitted
by applicant include matter which distinguishes them from
each other and from applicant’s mark. Each creates a
commercial impression which is different from the other
third-party marks, and from both applicant’s mark and the
two cited registered marks as well. Only applicant’s mark
and the two cited marks are essentially “GRANDMA’S” without
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some other name or term. In summary on this point, the
third-party registrations submitted by applicant are not
persuasive evidence that confusion is unlikely.
Applicant’s argument that its previous registration of
“GRANDMA’S FRUIT CAKE” for fruitcake mandates registration
to applicant of “GRANDMA’S” for fruitcake now is to no
avail. Applicant argues that the period during which its
claimed registration coexisted with the cited registration
without applicant becoming aware of any actual confusion
demonstrates that confusion is unlikely now.
We have no information on which to base such a
conclusion. We do not have evidence showing that there was
even an opportunity for actual confusion to have occurred,
e.g., that the parties promoted or sold their goods under
these marks at the same time to the same people in the same
geographic region. Moreover, the question before us now is
whether confusion is likely, not whether it has ever
happened. That an applicant in an ex parte proceeding
before the Board is unaware of actual confusion, either
with its current mark, or with a mark it used to use and
had registered for a time, is not persuasive of the
proposition that confusion is unlikely. See In re Energy
Telecommunications and Electrical Assoc., 222 USPQ 350
(TTAB 1983).
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For the reasons set forth above, we hold that
confusion is likely and affirm the refusal to register
under Section 2(d) of the Act.
R. F. Cissel
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board
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