Minibar North America, Inc.

Trademark Trial and Appeal Board

Oct 15, 2019

87130884 (T.T.A.B. Oct. 15, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Minibar North America, Inc.
_____

Serial No. 87130884
_____

Gregory M. Stone of Whiteford Taylor & Preston LLP,
for Minibar North America, Inc.
Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Taylor, Lykos and Larkin,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Minibar North America, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark MINIBAR SMARTSNAX (in standard characters) for, as
amended:
“packaged snack food, namely, processed nuts packaged for
sale to hotels, motels, and temporary stay facilities for
distribution through refrigerators and food storage
cabinets having sensors to detect presence and removal of
packages” in International Class 29; and
“packaged snack food, namely, candies, pretzels, popcorn,
and cookies packaged for sale to hotels, motels, and
temporary stay facilities for distribution through
Serial No. 87130884
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refrigerators and food storage cabinets having sensors to
detect presence and removal of packages” in International
Class 30.1
The Trademark Examining Attorney has finally refused registration of the mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the marks in the following two Principal Register
registrations owned by different registrants:
Registration No. 2690257 (‘257 Reg.) for the standard
character mark SMART SNACKS (SNACKS disclaimed)
for “candy, caramels, chocolate, and chewing gum,” in
International Class 30;2 and
Registration No. 3119552 (‘552 Reg.) for the standard
character mark THE SMART SNACK (SNACK disclaimed)
for “dried fruits; dried fruit mixes; dried fruit snack foods;
snack mix consisting primarily of processed fruit,
processed nuts and/or raisins; shelled, roasted or otherwise
processed nuts; candied nuts; raisins,” in International
Class 29.3
Registration was also finally refused under Section 6(a) of the Trademark Act, 15
U.S.C. § 1056(a), based on Applicant’s failure to comply with the requirement to
disclaim the word MINIBAR on the ground that it is merely descriptive of a
characteristic or feature of the goods within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1).

1 Application Serial No. 87130884 was filed on August 8, 2016, and is based upon Applicant’s
claim of first use of the mark anywhere and in commerce as to the goods identified in both
classes since at least as early as August 5, 2016.
2 Issued on February 25, 2003, renewed.
3 Issued on July 25, 2006, renewed.
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Applicant appealed, and the appeal is fully briefed. For the reasons discussed, we
affirm the refusal based on the disclaimer requirement and reverse the Section 2(d)
refusal.
I. Disclaimer
We first consider the requirement for a disclaimer of the term MINIBAR because
the determination may have a bearing on our likelihood of confusion analysis. Under
Section 6(a) of the Trademark Act, “[t]he Director may require the applicant to
disclaim an unregistrable component of a mark otherwise registrable.” 15 U.S.C. §
1056(a). Merely descriptive terms are unregistrable, under Trademark Act Section
2(e)(1), and therefore, are subject to disclaimer if the mark is otherwise registrable.
Failure to comply with a disclaimer requirement is a basis for refusing registration
of the entire mark. In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed.
Cir. 2005).
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service in connection with which it
is used, or intended to be used. See In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). The determination of whether a mark
is merely descriptive must be made in relation to the goods or services for which
registration is sought. Id. It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the goods or services, only that it
describe a single, significant ingredient, quality, characteristic, function, feature,
Serial No. 87130884
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purpose or use of the goods or services. Id.; In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987).
Relying on MERRIAM-WEBSTER online dictionary which defines “minibar” as “a
small refrigerator in a hotel room that is stocked with especially alcoholic beverages
and snacks for guests,”4 the Examining Attorney has required a disclaimer of the
term MINIBAR. She particularly maintains that the wording MINIBAR merely
describes a feature of the goods, namely the means through which Applicant
distributes its goods.
We are unpersuaded by Applicant’s argument that the term MINIBAR is more
than merely descriptive of its goods, because it has a source-identifying role given
Applicant’s longstanding use of the term as a supplier to the relevant hospitality
industry.5 Applicant claims that MINIBAR functions as its “house mark” by virtue of
its use of the term as its trade name and in marks that have been registered by it and
its corporate parent.6 Although Applicant made of record two prior registrations that
include the term MINIBAR for use in connection with, among other things,
refrigerators, the term has been disclaimed in both of them.7 To the extent that

4 May 20, 2017 Office Action; TSDR 7.
5 4 TTABVUE 22-23.
6 Id. at 12.
7 Applicant made of record copies of Registration No. 1917816 for the composite mark
MINIBAR SYSTEMS (MINIBAR SYSTEMS disclaimed), , for, inter alia,
“refrigerators; and Registration No. 3247748 for the composite mark MINIBAR SYSTEMS
(MINIBAR SYSTEMS disclaimed), , for, inter alia, “refrigerators, [and] mobile
Serial No. 87130884
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Applicant asserts that the disclaimers were made to facilitate registration, the
disclaimer of a term pursuant to a requirement by the Examining Attorney is a
concession that the term is at best merely descriptive. See In re Pollio Dairy Prods.
Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988) (“By its disclaimer of the word LITE,
applicant has conceded that the term is merely descriptive as used in connection with
applicant’s goods.”) (citing State Oil Ref. Corp. v. Quaker Oil Corp., 161 USPQ 547
(TTAB 1969), aff’d, 453 F.2d 1296 , 172 USPQ 361 (CCPA 1972)).
Similarly, although Applicant identifies itself on its website as Minibar North
America,8 it also uses the term descriptively on its website in discussing the Minibar
and SmartSnax portion of the business when it touts its “[s]uperior food for your
minibar and guest amenity needs.”9 Notably, Applicant did not, as part of its
application, seek registration pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. §1141(f), in part, based on acquired distinctiveness of MINIBAR.
As noted above, the term “minibar” is defined as a small refrigerator in a hotel
room stocked with, among other things, snacks. Applicant’s identification of goods
specifically indicates that the identified packaged snack goods will be distributed
“through refrigerators and food storage cabinets” located in hotels, motels and other
temporary stay facilities. As such, consumers familiar with Applicant’s packaged
snacks will understand upon viewing Applicant’s mark MINIBAR SMARTSNAX that

refrigerating cabinets for transporting foodstuffs and beverages.” November 20, 2017
Response to Office Action, TSDR 6, 19.
8 November 20, 2017 Response to Office Action, TSDR 12-13 and 16-17.
9 November 28, 2017 Final Office Action, TSDR 8.
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the term MINIBAR immediately describes the means by which Applicant distributes
in snack products. We thus find that MINIBAR is a merely descriptive component of
Applicant’s mark and must be disclaimed.
II. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We
must consider each du Pont factor for which there is evidence or argument. See In re
Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
“[E]ach case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973).
A. The Marks
We first consider the du Pont likelihood of confusion factor concerning the
similarity or dissimilarity of the marks. In a likelihood of confusion analysis, we
compare the marks in their entireties for similarities and dissimilarities in
appearance, sound, connotation and overall commercial impression. Detroit Athletic
Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). “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) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB
Serial No. 87130884
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2014)). “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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir 2018) (quotation omitted).
Because similarity is determined based on the marks in their entireties, our
analysis is not predicated on dissecting the marks into their various components. In
re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). On the other hand, “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).
We compare Applicant’s mark MINIBAR SMARTSNAX and Registrants’ marks
THE SMART SNACK and SMART SNACK and find them similar in appearance and
sound in that each includes, or consists of, the word SMART together with the word
SNACK(S) or the variant SNAX. Applicant acknowledges that the SNAX portion of
its mark “provide[s] an alternative spelling of the term SNACKS,”10 and Applicant’s
use of the mark, which displays SMARTSNAX as “SmartSnax,” reinforces that
SMARTSNAX is the visual and aural equivalent of SMART SNACKS. Contrary to
Applicant’s contention, and as previously discussed, the word MINIBAR in
Applicant’s mark has no source-identifying significance; it merely denotes the means

10 4 TTABVUE 16.
Serial No. 87130884
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by which Applicant’s goods are distributed. See, e.g., In re Dixie Rests., Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed
generic term “CAFE,” was the dominant portion of the mark THE DELTA CAFE).
Moreover, although MINIBAR is the first word in Applicant’s mark and, as Applicant
correctly notes, “it is often the first part of a mark which is 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), that general principle applies where
the first part of the mark is a strong distinctive term. See Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). In this case, because MINIBAR is descriptive, and therefore
inherently weak, the general principle does not apply.
As regards connotation and commercial impression, given the structure and
syntax of Applicant’s mark, the “MINIBAR” portion, which as noted is descriptive
and not source-indicating, while appearing first and contributing to the mark’s
commercial impression, merely modifies SMARTSNAX in that it denotes the means
by which Applicant’s goods are delivered. Likelihood of confusion is not necessarily
avoided between otherwise confusingly similar marks merely by adding or deleting
other matter. If an important or, as in the case here, a significant portion of the marks
is the same, then the marks may be confusingly similar notwithstanding some
differences. See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (affirming Board’s finding that
applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered
Serial No. 87130884
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marks LION CAPITAL and LION, and that the noun LION was the dominant part
of both parties’ marks); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB
2009) (finding TITAN and VANTAGE TITAN confusingly similar); Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)
(finding that, even though applicant’s mark PACKARD TECHNOLOGIES, with
“TECHNOLOGIES” disclaimed, does not incorporate every feature of opposer’s
HEWLETT PACKARD marks, a similar overall commercial impression is created);
In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE
(stylized) for retail women’s clothing store services and CREST CAREER IMAGES
(stylized) for uniforms likely to cause confusion).
Applicant’s argument that the marks have different meanings is unpersuasive.
Consumers familiar with both Applicant’s and Registrants’ marks will most likely
ascribe the same meaning conveyed by the cited marks to Applicant’s mark such that
all three convey the meaning of being a beneficial snack, notwithstanding the novel
spelling of SNACKS (SNAX) in Applicant’s mark. We nonetheless acknowledge that
consumers who are aware of the precise nature of Applicant’s goods, i.e., that they
are used in association with a technologically-enabled distribution method, may
additionally attribute some technological meaning to the term SMART in Applicant’s
mark.
At bottom, we recognize that in comparing the marks, we must consider them in
their entireties. Thus, we have taken into account the differences in appearance,
sound and meaning between them. We nonetheless find that despite these
Serial No. 87130884
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differences, the marks are more similar than dissimilar and engender similar
commercial impressions.
The du Pont factor of the similarity of the marks favors a finding of likelihood of
confusion.
B. Strength of the Cited Marks
We must consider evidence of “[t]he number and nature of similar marks in use
on similar goods.” du Pont, 177 USPQ at 567. In this regard, the U.S. Court of Appeals
for the Federal Circuit (“Federal Circuit”) has stated that evidence of the extensive
registration and use of a term by others can be “powerful” evidence of weakness. 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); Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from
very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal
citations omitted). “The weaker [the 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.” Id. at 1676 (internal
citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party
use of similar marks on similar goods is relevant to show that a mark is relatively
weak and entitled to only a narrow scope of protection.”). “In determining the
strength of a mark, we consider both its inherent strength based on the nature of the
mark itself and its commercial strength, based on the marketplace recognition value
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of the mark.” Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research
Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Bd. of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) and MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another’s use.”)).
Applicant relies on five record third-party registrations, arguing that “the
existence of such numerous prior registrations that include the terms ‘SMART’ and
‘SNACK’ for goods similar to those set forth in the cited Registrations shows that
consumers … are well-able to distinguish sources of goods based on other distinctions
among the marks and their respective goods and services.11 The registrations
themselves are not of record, but we have considered them as they are described in
the brief. They include: Registration Nos. 5151159 (A SMART INDULGENT SNACK
for cookies); 4975861 (SNACK SMART|BE HAPPY for nuts and other foods);
4874414 and 3627724 (SMART SNACK for meat snacks); and 2107921 (SNACK
SMART for cookies and other baked goods).12
Third-party registrations may be relevant to show that the mark or a portion of
the mark is descriptive or suggestive, such that the public will look to other elements
to distinguish the source of the goods or services, in the same way dictionary

11 4 TTABVUE 17.
12 Id.
Serial No. 87130884
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definitions are used to illustrate how a term is perceived in the trade or industry, and
therefore, may be considered somewhat weak. Juice Generation, 115 USPQ2d at 1675
(third-party registration evidence may show that a term carries a highly suggestive
or descriptive connotation in the relevant industry and therefore may be considered
somewhat weak). See also Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693, 694-95 (CCPA 1976); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB
1987); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987).
Applicant also made of record pages from seven websites reflecting uses of the
term “Smart Snack(s)” to show the “common understanding of the meaning of the
term ‘smart’ when used in combination with the term ‘snack,’”13 and Applicant refers
to these uses under the sixth du Pont factor as well. We reproduce below portions of
three of the webpages:
14

13 4 TTABVUE 14-15; November 20, 2017 Response to Office Action, TSDR 21-43.
14 November 20, 2017 Response to Office Action, TSDR 33.
Serial No. 87130884
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15
16

15 Id. at 24.
16 Id. at 42.
Serial No. 87130884
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The third-party uses and registrations do not persuade us that the cited marks
are so weak due to common usage of the term SMART SNACK(S) that confusion is
not likely between those marks and Applicant’s mark. As for the registrations, four
of the five are for food items that are unrelated to the nuts and candy identified in
the cited registrations. As such, they are not probative in our analysis of the strength
to be accorded the term SMART SNACK(S). To establish weakness, the identified
goods should be in the same or highly related fields. See In re i.am.symbolic, llc, 866
F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party
registrations for other types of goods where the proffering party had neither proven
nor explained that they were related to the goods in the cited registration). While all
of the registrations cover food items, there is no evidence to show that consumers
would believe that food items as diverse as cookies and other baked items and meat
snacks, on the one hand, are related to nuts and candy on the other. Here a single
registration, Reg. No. 4975861 for “nuts and other foods,” does not convince us that
the term SMART SNACK(S) is commonly used is the candy and nut industries.
Similarly, Applicant’s third-party use evidence does not satisfy the standards for
relevance set forth by the Federal Circuit. The Federal Circuit recently reiterated in
Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ
1686, 1693-95 (Fed. Cir. 2018) that third-party uses are probative under the sixth du
Pont factor only if they are for goods that are similar to the goods identified in the
subject application and registration. Of the printouts from the seven websites made
of record by Applicant, only two (shown in part above) are those of sellers of branded
Serial No. 87130884
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snack foods, and they offer foods other than those identified in the application and
the cited registrations under marks other than SMART SNACK.17 The other five
websites discuss and display various unbranded “smart” snacks.18 There is thus no
evidence of a third-party’s use of a SMART SNACK mark for any of the goods
identified in the application and cited registrations.
A single registration does not evidence such a widespread and significant use of
the term “SMART SNACK(S)” in the candy and nut industries that we can conclude
that the cited mark is so weak that the public would be able to distinguish the source
of Applicant’s goods from those of Registrants by the differences in their respective
marks. Cf. Jack Wolfskin, 116 USPQ2d at 1136 n.2 (at least fourteen relevant third-
party uses or registrations of record); Juice Generation, 115 USPQ2d at 1672 n.1 (at
least twenty-six relevant third-party uses or registrations of record); see also, In re
Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996) (“Broadway” is weak for
restaurant services based on evidence that hundreds of restaurants and eating
establishments use Broadway as a trademark or trade name).
Notwithstanding Applicant’s failure to demonstrate the commercial weakness of
the term SMART SNACK(S), based on the record we find that it has some degree of

17 November 20, 2017 Response to Office Action, TSDR 21-24 (Sargento cheese snacks), TSDR
at 33-34 (General Mills cereal bars, Betty Crocker oatmeal bars, Nature Valley granola bars,
and Yoplait yogurt).
18 Id. at TSDR 25-32 (Pinterest pages); TSDR at 35-37 (Colgate Oral Care Center); TSDR at
38-39 (health.com); TSDR at 40-41 (Alliance for a Heathier Generation); and TSDR at 42-43
(United States Department of Agriculture).
Serial No. 87130884
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inherent weakness, as least with regard to the identified processed nuts, in that it
connotes a beneficial snack.
Accordingly, we find this du Pont factor neutral or that it slightly favors Applicant.
C. The Goods
We now turn to a comparison of the goods under the second du Pont factor. In
making our determination regarding the relatedness of the goods, we must look to
the goods as identified in Applicant’s application and the cited registration. See In re
Detroit Athletic 128 USPQ2d at 1052; Dixie Rest., 41 USPQ2d at 1534. “This factor
considers whether ‘the consuming public may perceive [the respective goods of the
parties] as related enough to cause confusion about the source or origin of the goods
and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed.
Cir. 2014).
Under this du Pont factor, we need not find similarity as to each and every product
listed in Applicant’s identification of goods. It is sufficient for a refusal based on
likelihood of confusion that relatedness is established for any item encompassed by
the identification of goods in a particular class in the application. 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), aff’d, 866 F.3d 1315, 123
USPQ2d 1744 (Fed. Cir. 2017); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734,
1745 (TTAB 2014).
The goods identified in the application are “packaged snack foods,” namely,
“processed nuts” in Class 29 and “candies, pretzels, popcorn, and cookies” in Class 30,
Serial No. 87130884
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all of which are further described as “packaged for sale to hotels, motels, and
temporary stay facilities for distribution through refrigerators and food storage
cabinets having sensors to detect presence and removal of packages.” The goods
identified in the cited ‘257 Reg. (SMART SNACKS) are “candy, caramels, chocolate,
and chewing gum” and the goods identified in the cited ‘552 Reg. (THE SMART
SNACK) are identified as “dried fruits; dried fruit mixes; dried fruit snack foods;
snack mix consisting primarily of processed fruit, processed nuts and/or raisins;
shelled, roasted or otherwise processed nuts; candied nuts; raisins.” The more
narrowly defined “packaged snack foods, namely candy” identified in the application
is encompassed by the broadly identified candy in the ’257 Reg., and are to that extent
legally identical to Registrant’s candy. Similarly, the “packaged snack foods, namely
processed nuts” in the application are encompassed by the broadly identified
“processed nuts” in the registration, and are to that extent legally identical to
Registrant’s nuts. However, although Registrants’ broadly identified candy and nuts
encompasses packaged candy and nuts, as more fully discussed, infra, we do not find
that those broadly worded snack food items would include those packaged in all types
of product packaging, such as the specialized packaging that enables Applicant’s
goods to be “distribut[ed] through refrigerators and food storage cabinets having
sensors to detect presence and removal of packages.”
Nevertheless, because Applicant’s and Registrants’ goods are legally identical to
the extent noted above, “there is no need for us to further consider the relatedness of
the goods.” FabFitFun, 127 USPQ2d 1670, 1672 (TTAB 2018).
Serial No. 87130884
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The second du Pont factor thus favors a finding of likelihood of confusion.
D. The Channels of Trade and Classes of Consumers
To determine the established, likely-to-continue channels of trade and classes of
consumers, we must look to the goods as identified in the involved application and
registrations. Stone Lion, 110 USPQ2d at 1162.
The Examining Attorney cites to In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir 2012) (quoting Hewlett-Packard, 62 USPQ2d at 1005), asserting that
because there are no restrictions in the cited registrations, the identified goods are
presumed “to travel in the same channels of trade to the same class of purchasers.”
The Examining Attorney’s reliance on Viterra is misplaced. The legal presumptions
set forth in Viterra only apply when the goods are identical or legally identical and
unrestricted with respect to categories of purchasers and/or channels of trade. Id.
(“Viterra concedes that the goods at issue are identical . . . [and] it is well established
that, ‘absent restrictions in the application and registration, goods and services are
presumed to travel in the same channels of trade to the same classes of purchasers”)
(internal quotation omitted). See also i.am.symbolic, 123 USPQ2d at 1750 (“In the
absence of meaningful limitations in either the application or the cited registrations,
the Board properly presumed that the goods travel through all usual channels of
trade and are offered to all normal potential purchasers.”) (Emphasis added).
Such is not the case here. Based on the identifications themselves, combined with
the usual channels of trade for goods of the types identified by the Registrants, we
Serial No. 87130884
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find that the established, likely-to-continue channels of trade are distinct.19
Applicant’s “packaged snack food, namely, candies and processed nuts” are limited to
“sale to hotels, motels, and temporary stay facilities” and “for distribution through
refrigerators and food storage cabinets having sensors to detect presence and removal
of packages.” While the Registrants’ goods, namely “candy” (‘257 Reg.) and “processed
nuts,” (‘552 Reg) by contrast, include no limiting language, and accordingly we must
presume that Registrants’ goods will travel in all the usual trade channels for such
goods, this does not entitle Registrant to a presumption that its goods will travel in
every trade channel possible. That is, the unrestricted identifications in the cited
registrations mean that those registrations are entitled to trade channel
presumptions that include usual trade channels, which in this case as set forth by
Applicant and unchallenged by the Examining Attorney would include mass
distribution mediums to the general public such as vending machines, convenience
stores, grocery stores and the like. To extend the presumption to trade channels that
include those outside the norm would inaptly extend the presumption. Here
Applicant’s goods are limited not only to hotels, motels and temporary stay facilities,
but also for distribution through sensor-enabled refrigerator or food storage cabinets.
While a Registrant may always expand its trade channels, application of the trade
channel presumption is limited to the usual ones. Id. Because Applicant’s trade

19 We recognize that there may be some overlap in purchasers because the purchasers of
Applicant’s packaged candy and nuts for sale in hotels, motels and temporary stay facilities
may also purchase candy and nuts in their capacity as ordinary consumers. However any
overlap in purchasers is mitigated by the care exercised by these purchasers when
purchasing Applicant’s goods, as more fully explained, infra.
Serial No. 87130884
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channels are outside of the usual ones, it was incumbent on the Examining Attorney
to introduce evidence to show relatedness between Applicant’s trade channels and
those of Registrants.
We thus find that the du Pont factor concerning the channels of trade strongly
favor a finding of no likelihood of confusion.
E. Sophistication of the Purchasers/Conditions of Sale
Next we consider the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. See, e.g., Primrose Ret. Cmtys., LLC v.
Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) (finding that,
“even in the case of the least sophisticated purchaser, a decision as important as
choosing a senior living community will be made with some thought and research,
even when made hastily”).
Applicant contends that the purchasers of its goods are not impulse purchasers,
but rather are “sophisticated, institutional, professional product buyers for hotel and
hospitality facilities” who exercise care in their purchasing decisions. Applicant
explains that these purchasers are “tasked with maintaining appropriate stock of food
products in a guest’s room”20 and are “tasked with ensuring that product packages
meet the technical requirements necessary to allow them to be detected by the specific

20 4 TTABVUE 20.
Serial No. 87130884
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sensors in hotel refrigerators and storage [and, thus] exercise significant care before
purchasing.”21
We agree with Applicant and conclude that the professional temporary lodging
purchasers for Applicant’s goods will exercise more than ordinary care in their
purchasing decisions. We find so because Applicant’s packaged candy and nuts will
most likely be purchased in larger quantities given the institutional nature of its
consumers, i.e., hotels, motels and temporary stay facilities, and must be packaged
in a manner that is compatible with sensor-enabled refrigerators or food storage
cabinets. There is nothing in the record that shows a correlation between Applicant’s
ordering form and the care exercised by its product purchasers. That Applicant’s
order form is relatively simple is of no moment.
We find that this du Pont factor favors Applicant.
F. Conclusion
When we consider all of the arguments and evidence relating to the relevant
likelihood of confusion factors, we conclude, on balance, that confusion is not likely
between Applicant’s mark MINIBAR SMARTSNAX and the cited registered marks,
SMART SNACKS and THE SMART SNACK. We find so principally because the
similarity between the marks and the legal identity of the goods is outweighed by the
distinct trade channels, and the care that will be exercised by purchasers of
Applicant’s goods. Because the goods of Applicant and the Registrants travel in

21 7 TTABVUE 10.
Serial No. 87130884
- 22 -
distinct trade channels, and because purchasers of Applicant’s goods will exercise
more than ordinary care in their purchasing decisions, it is highly unlikely that
prospective purchasers will encounter Applicant’s goods and the goods of Registrants
under circumstances that would lead them to believe that Applicant’s goods emanate
from the same source as that of either Registrant.
Decision: The refusal to register Applicant’s mark MINIBAR SMARTSNAX
under Section 2(d) is reversed. The refusal to register based on the requirement for a
disclaimer of the word MINIBAR is affirmed. However, if Applicant submits the
required disclaimer of MINIBAR to the Board within thirty days of the mailing date
of this decision, the decision will be set aside as to the affirmance of the disclaimer
requirement.22 See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).
Opinion by Larkin, Administrative Trademark Judge, concurring in part
and dissenting in part:
I concur in the majority’s decision to affirm the refusal to register MINIBAR
SMARTSNAX without a disclaimer of MINIBAR. I respectfully dissent, however,
from the majority’s reversal of the refusal to register under Section 2(d) of the
Trademark Act. For the reasons discussed below, the majority incorrectly analyzes
the third DuPont factor in finding distinct channels of trade for legally identical
goods, and this leads the majority to find incorrectly that the sophistication of
purchasers under the fourth DuPont factor makes confusion unlikely.

22 The standard printing format for the required disclaimer text is as follows: “No claim is
made to the exclusive right to use MINIBAR apart from the mark as shown.” TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.08(a)(i) (Oct. 2018).
Serial No. 87130884
- 23 -
Third DuPont Factor
When Applicant filed the involved application, it identified its goods simply as
“packaged snack foods, namely, candies, nuts, pretzels, popcorn, and cookies.”23
Applicant added the trade channel restriction during prosecution in an effort to
overcome the citation of the two registered marks, which cover goods identified as
“candy, caramels, chocolate, and chewing gum” (‘257 Reg.) and “dried fruits; dried
fruit mixes; dried fruit snack foods; snack mix consisting primarily of processed fruit,
processed nuts and/or raisins; shelled, roasted or otherwise processed nuts; candied
nuts; raisins” (‘552 Reg.).24
The majority correctly finds that the “more narrowly defined ‘packaged snack
foods, namely candy’ identified in the application is encompassed by the broadly
identified candy in the ’257 Reg., and are to that extent legally identical to
Registrant’s candy,” and that “the ‘packaged snack foods, namely processed nuts’ in
the application are encompassed by the broadly identified “processed nuts” in the
registration, and are to that extent legally identical to Registrant’s nuts.” Op. at 17.
But the majority then proceeds to find that the channels of trade for these legally
identical goods are not only different, but “distinct.” Id. at 19. The majority notes that
“Applicant’s goods are limited not only to hotels, motels and temporary stay facilities,
but also for distribution through sensor-enabled refrigerator or food storage
cabinets,” id. at 19, and finds that these channels of trade are completely distinct

23 August 8, 2016 Application at TSDR 1.
24 May 17, 2017 Response to Office Action at TSDR 2.
Serial No. 87130884
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from what the majority finds to be “the usual trade channels, which in this case
would include mass distribution mediums to the general public such as vending
machines, convenience stores, grocery stores and the like.” Id. The majority
acknowledges that “a Registrant may always expand its trade channels, id., but
argues that the “application of the trade channel presumption is limited to the usual
ones.” Id. Because Applicant’s trade channels are outside of what the majority finds
to be the usual ones, the majority concludes that “it was incumbent on the Examining
Attorney to introduce evidence to show relatedness between Applicant’s trade
channels and those of Registrants.” Id. at 19-20.
I respectfully disagree with the majority’s analysis and conclusion. When the
unrestricted identifications of goods in the cited registrations are construed properly,
they encompass the specific trade channels in the application and the classes of
purchasers who purchase the goods in those specific channels.
The majority acknowledges that “the Registrants’ goods, namely ‘candy’ (‘257
Reg.) and ‘processed nuts’ (‘552 Reg) . . . include no limiting language,” Op. at 19, and
that “accordingly we must presume that Registrants’ goods will travel in all the usual
trade channels for such goods,” id., but argues that “this does not entitle Registrant
to a presumption that its goods will travel in every trade channel possible.” Id. The
majority effectively reads into the unlimited identifications in the registrations an
exclusion of the specific trade channels in Applicant’s amended identification.
“‘We have no authority to read any restrictions or limitations into the registrant[s’]
description[s] of goods.’” In re I-Coat Co., LLC, 126 USPQ2d 1730, 1739 (TTAB 2018)
Serial No. 87130884
- 25 -
(quoting In re Thor Tech. Inc., 90 USPQ2d 1634, 1638 (TTAB 2009)). “Indeed, the
owner of an unrestricted registration is entitled to change its current trade channels
at any time.” Detroit Athletic, 128 USPQ2d at 1052 (citing CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983) (“although a registrant’s current
business practices may be quite narrow, they may change at any time from, for
example, industrial sales to individual consumer sales”)); see also San Fernando Elec.
Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 2 (CCPA 1977)
(“Opposer’s rights are not tied to its current business practices, which may change at
any time. Its rights are as broad as its registration for ‘capacitors’.”).
The issue is not whether we must presume that the Registrants may sell their
goods “in every trade channel possible,” op. at 19, but rather whether the Registrants’
unrestricted identifications of goods encompass the specific trade channels identified
in the application. As noted above, Applicant itself began with a virtually identical
unrestricted identification of goods and amended it to specify and narrow its trade
channels. On this record, which contains no evidence showing that Applicant’s
channels of trade are unusual or unique to Applicant,25 we may not assume, as the
majority does, that only Applicant, and never the Registrants, would sell candy and
nuts to “hotels, motels, and temporary stay facilities” for “distribution through
refrigerators and food storage cabinets having sensors to detect presence and removal

25 A page from Applicant’s website, which indicates that several of Applicant’s executives
have been involved in the minibar business for more than two decades, November 20, 2017
Response to Office Action at TSDR 16, suggests that this is a well-established market for
snack foods.
Serial No. 87130884
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of packages.” Detroit Athletic, 128 USPQ2d at 1052 (finding that it would be improper
to assume that the cited registrant, a private social club that owned a registration for
various types of clothing that it sold to its members, “will never sell clothing online
or through third-party distributors”); see also In re Hester Indus., Inc., 231 USPQ 881,
883 (TTAB 1986) (the “fact that the registrations are currently owned by a retail
supermarket chain does not mean that limitations as to channels of trade and classes
of purchasers may be read into the registrations when no such limitations are
incorporated in the identification of goods.”).
When the unrestricted identifications of goods in the cited registrations are
properly given their full scope, the channels of trade for the Registrants’ and
Applicant’s legally identical goods are themselves identical in part. I-Coat Co., 126
USPQ2d at 1739 (applicant’s “corrective lenses sold through eye care professionals”
and the registrant’s unrestricted spectacles deemed to be “offered in at least one
common channel of trade” where identification of goods in cited registration contained
no trade channel limitations). Because the channels of trade for the goods are
identical in part, the same is true for the consumers of the goods.26 In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013) (“although applicant
has limited its trade channels to casinos and its purchasers presumably to casino
patrons, registrant’s unrestricted registration encompasses bar services rendered in

26 The majority acknowledges that even in the distinct trade channels that it finds, there
“may be some overlap in purchasers because the purchasers of Applicant’s packaged candy
and nuts for sale in hotels, motels and temporary stay facilities may also purchase candy and
nuts in their capacity as ordinary consumers.” Op. at 20 n.20.
Serial No. 87130884
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a casino setting to casino patrons”). Under a proper construction of the identifications
of goods in the cited registrations, the third DuPont factor supports a finding of a
likelihood of confusion.
Fourth DuPont Factor
The majority concludes that “the professional temporary lodging purchasers for
Applicant’s goods will exercise more than ordinary care in their purchasing
decisions,” op. at 21, because “Applicant’s packaged candy and nuts will most likely
be purchased in larger quantities given the institutional nature of its consumers, i.e.,
hotels, motels and temporary stay facilities, and must be packaged in a manner that
is compatible with sensor-enabled refrigerators or food storage cabinets.” Id. I have
some doubt that these purchasers exercise a high degree of care given the relative
simplicity of Applicant’s order form,27 which discusses case prices and quantities,
serving sizes, and shelf lives, and requires purchasers to provide only basic contact
and quantity information in online transactions with Applicant, and given the
apparently generic nature of Applicant’s packaging.28 But even assuming that the
least sophisticated of these purchasers exercises some greater degree of care than
purchasers of candies and nuts in other trade channels, because the channels of trade
and classes of consumers are identical in part, we must assume the same degree of
care on the part of the overlapping purchasers of the goods. Under a proper

27 May 17, 2017 Substitute Specimen of Use.
28 Id.
Serial No. 87130884
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construction of the identifications of goods in the cited registrations, the fourth du
Pont factor is neutral in the analysis of likelihood of confusion.
Conclusion
The majority persuasively demonstrates that the marks are similar and the goods
are legally identical. Even assuming that the cited marks are somewhat weak
conceptually, as the majority finds, op. at 15-16, when the identifications of goods in
the cited registrations are properly given their full scope in terms of channels of trade
and classes of consumers, the DuPont factors as a whole support a finding of a
likelihood of confusion, and I would affirm the refusal to register.