Premium Sweets & Restaurant, Inc.

Trademark Trial and Appeal Board

Sep 14, 2015

No. 85953120 (T.T.A.B. Sep. 14, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Premium Sweets & Restaurant, Inc.
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Serial No. 85953120
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Shahrina Ankhi-Krol of Ankhi-Krol Law for Premium Sweets & Restaurant, Inc.

Laura Golden, Trademark Examining Attorney, Law Office 103 (Michael Hamilton,
Managing Attorney).
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Before Shaw, Masiello, and Hightower, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Premium Sweets & Restaurant, Inc. (“Applicant”) has filed an application1 to
register on the Principal Register the mark shown below:

1 Application Serial No. 85953120, filed June 6, 2013 under Trademark Act Section 1(a), 15
U.S.C. § 1051(a), stating November 10, 2010 as the date of first use and first use in
commerce for all classes.
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The colors red, yellow, gold, and black are claimed as features of the mark. The non-
Latin characters in the mark are Bengali letters that transliterate to PREMIUM
SWEETS and are “the phonetic equivalent of the English wording ‘PREMIUM
SWEETS.’” Applicant has disclaimed the exclusive right to use PREMIUM
SWEETS and the non-Latin characters apart from the mark as shown.2
Applicant seeks to register its mark for the following goods and services:
Bakery products, namely, sweet bakery goods for retail
and wholesale distribution and consumption on or off the
premises, in International Class 30;
Restaurant services, namely, providing of food and
beverages for consumption on and off the premises, in
International Class 43.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods and services, so resembles the registered mark
shown below as to be likely to cause confusion, or to cause mistake, or to deceive:

2 Applicant submitted its disclaimer and its statement regarding the non-Latin characters
in the body of its appeal brief. The Board treated such submission as a request for remand,
and remanded the application to the Examining Attorney for consideration of these
statements. The Examining Attorney accepted the statements and they are now properly of
record.
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Color is not a claimed feature of the cited registered mark, and Registrant has
disclaimed the exclusive right to use SWEETS apart from the mark as shown. The
cited mark is registered on the Supplemental Register for the services set forth
below:
Wholesale food distributorship services featuring
packaged foods for supermarkets and grocery stores;
wholesale distributorships featuring packaged foods for
supermarkets and grocery stores, in International Class
35;
Catering services for airlines; Indian restaurants; party
catering services, in International Class 43.3
The Examining Attorney made her refusal final, and Applicant has appealed.
Applicant and the Examining Attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant
and the Examining Attorney have also submitted arguments regarding trade
channels, customers, and conditions of sale.

3 Reg. No. 4401880, issued September 10, 2013.
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1. The goods and services.
We will first consider the similarity or dissimilarity of the goods and services as
identified in the application and the cited registration. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014);
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
Applicant’s services in Class 43, “Restaurant services, namely, providing of food
and beverages for consumption on and off the premises,” are identified with
sufficient breadth to encompass Registrant’s more specifically identified “Indian
restaurants.” To this extent, the services of Applicant and Registrant are, in part,
legally identical.
Applicant’s goods in Class 30 are, in brief, “sweet bakery goods.” The cited mark is
registered for services, not goods. However, it is recognized that goods and services
may be related for purposes of determining whether there is a likelihood of
confusion. In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). In such a
context, likelihood of confusion can be found if the respective goods and services are
related in some manner or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the
same source. See, e.g., In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir.
1988).
The Examining Attorney points out that Registrant’s “wholesale food
distributorship services featuring packaged foods for supermarkets and grocery
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stores” are a channel through which goods like those of Applicant would travel.4
Although we agree with this contention, it is not self-evident that the production of
baked goods and the commercial distribution of foods for others are the types of
activities that relevant customers would expect to emanate from a single business.
The Examining Attorney has presented no evidence on this point.
The Examining Attorney has focused on demonstrating that Applicant’s bakery
goods are related to Registrant’s “party catering services.” In this regard the
Examining Attorney has submitted web pages of businesses that produce sweet
baked goods and also provide catering services. Among these, we note the following:
Sweet Confections Bakery Catering: Offering cookies, pastries, doughnuts, pies,
specialty cakes and birthday cakes; and
offering catering featuring party trays and
snacks, salads and appetizers.5

Magnolia Bakery Offering cupcakes and other baked goods;
and catering of corporate events, special
events, and weddings.6

Main Street Bakery & Catering Offering baked goods; and “Catering.”7

French Meadow Bakery & Café Organic bakery offering desserts; and
catering featuring tarts, cupcakes, wedding
cakes, and cookies.8

Rasraj Restaurant Indian restaurant with full menu of sweets;
the menu also offers “Catering.”9

4 Examining Attorney’s brief, 9 TTABVUE 9.
5 Office Action of June 2, 2014 at 76-77.
6 Id. at 78-82.
7 Id. at 83-85.
8 Id. at 70-75.
9 Id. at 55-58.
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In order to further demonstrate that Applicant’s sweet bakery goods and
Registrant’s party catering services are related, the Examining Attorney has made
of record seven third-party registrations that cover both sweet baked goods and
catering services.10 Third-party registrations that are based on use in commerce and
which individually cover a number of different goods and services may have some
probative value to the extent that they serve to suggest that the listed goods and
services are of a type which may emanate from the same source. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). We note in particular the following:
Reg. No. Relevant goods and services.
3538923 Bakery desserts; catering services for food and beverages.

4004786 Bakery desserts; sweet bakery goods, etc.; catering services.

4028030 Bakery products, namely pastries; catering services.

4348787 Sakkarpora in the nature of sweet flour cookies; catering
services; catering services featuring desserts.

4527748 Almond cake; Apple turnovers; Baked goods, namely, crumbles;
bakery goods and dessert items, namely, cheesecakes, etc.;
Catering services.

4406010 Bakery products, namely, sweet bakery goods; Catering services.

4536562 Almond cake; Apple fritters; Apple turnovers; Babkas; Baked
goods, namely, crumbles; Bakery desserts, etc.; Catering.

The Examining Attorney also made of record two other registrations that cover
catering services as well as bakery goods, with no indication that those bakery

10 Id. at 9-54.
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goods are of the sweet variety.11 We give these registrations somewhat less weight
than the others, as the goods in those registrations are not clearly the same as those
of Applicant.
We find the Examining Attorney’s evidence sufficient to demonstrate commercial
relatedness, such that relevant customers would believe that sweet baked goods and
party catering services offered under similar marks may emanate from the same
source. In reaching this conclusion, we consider that the nature of “catering”12 is the
provision of foods, which may include dessert foods such as sweet baked goods.
Thus, there is some inherent degree of commercial relatedness between Applicant’s
goods and Registrant’s party catering services.
Accordingly, we find, with respect to Applicant’s goods in Class 30 and Applicant’s
services in Class 43, that the du Pont factor relating to the similarity or
dissimilarity of the goods and services weighs in favor of a finding of likelihood of
confusion.
2. The marks.
We next consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side

11 See Reg. Nos. 4486949 and 4447119.
12 We take judicial notice of the following definition of “cater”: “to provide food, service, etc.,
as for a party or wedding: to cater for a banquet.” Dictionary.com Unabridged. Based on the
Random House Dictionary (2015). http://dictionary.reference.com/browse/catering (accessed:
September 11, 2015).
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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)
(citation omitted). We bear in mind that when marks would appear on virtually
identical services, as they would in the case of Applicant’s restaurant services and
Registrant’s Indian restaurant services, “the degree of similarity necessary to
support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-
Plough HealthCare Prods. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
Applicant correctly urges that we must avoid “dissection” of the marks and must
consider the marks at issue in their entireties in reaching our ultimate conclusion.
However, there is nothing improper in giving more or less weight to a particular
feature of a mark, for rational reasons. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis appears to be
unavoidable.” Id.
In appearance, the two marks have many distinguishing features, because the
design elements of the marks and their overall styles of presentation are quite
different. However, the marks resemble each other visually in that each includes a
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prominent presentation of the words PREMIUM SWEETS, albeit in different styles
of lettering.
The Examining Attorney argues that we should give the wording PREMIUM
SWEETS more weight as an indicator of source than the graphic design elements of
the marks because customers would use this wording in calling for the goods or
services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir.
2012) (“the verbal portion of a word and design mark likely will be the dominant
portion. … This makes sense given that the literal component of brand names likely
will appear alone when used in text and will be spoken when requested by
consumers.”); see also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Serv., Inc.,
710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). We do take into consideration the
fact that the wording PREMIUM SWEETS is merely descriptive and laudatory with
respect to the goods and services of Applicant and Registrant, indicating that in
both marks this wording is lacking in inherent strength as a source indicator. We
also note that Applicant has disclaimed the exclusive right to use PREMIUM
SWEETS and the Bengali lettering that transliterates to “premium sweets.”
However, as the Federal Circuit stated in In re Viterra:
[W]e previously have found that the dominant portion of a
composite word and design mark is the literal portion,
even where the literal portion has been disclaimed. Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
1570-71 [218 USPQ 390] (Fed. Cir. 1983) (finding that the
term “GIANT” was the dominant portion of a mark
consisting of the words GIANT HAMBURGERS with a
large background design, even though the applicant
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disclaimed “GIANT HAMBURGERS.”). In addition, in the
ultimate determination of similarity of the marks, the
Board must consider the [mark] in its entirety, including
the disclaimed portion. See Giant Food, 710 F.2d at 1570
(“[I]t is well settled that the disclaimed material still
forms a part of the mark and cannot be ignored in
determining likelihood of confusion.”).
101 USPQ2d 1911.
Despite the inherent weakness of the component PREMIUM SWEETS, we agree
with the Examining Attorney that PREMIUM SWEETS is the dominant component
of each mark. While we acknowledge the visual differences between the marks
(including Applicant’s stylized P within a hexagonal design and the Bengali
lettering), this wording constitutes a significant visual similarity.
In sound, the two marks are essentially identical; as the words PREMIUM
SWEETS are common words in English, there is no question as to their
pronunciation. It is unlikely that customers would pronounce the stylized letter P in
Applicant’s mark, as this would be recognized merely as a monogram design
associated with the word PREMIUM. As the application shows, the Bengali
lettering transliterates to “premium sweets”; therefore, this element does not vary
the pronunciation of the mark, being merely redundant of the words in Latin
lettering.
In literal meaning, the two marks are also identical. In each case, PREMIUM
SWEETS has the meaning of a dessert, sweet dish, or confection of superior
quality.13 Applicant has stated that the Bengali lettering is the phonetic equivalent

13 See definitions “premium” and “sweet” submitted with the Office Action of September 27,
2013 at 27-32.
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of “premium sweets,” but has not stated that it has any meaning in Bengali. If there
is any such meaning, it was incumbent on Applicant to disclose it, inasmuch as the
Examining Attorney required a translation of the foreign wording in the mark.14
Considering the overall commercial impressions created by the marks in their
entireties, we note that each mark uses its design elements to give special
prominence to the term PREMIUM SWEETS. We find that, in both marks,
PREMIUM SWEETS would be perceived as the primary source indicator for the
goods or services, and that for this reason the overall commercial impressions they
create are quite similar. While we appreciate the two marks’ differences in
appearance, in this case, the similarities in appearance, sound and meaning
outweigh the differences. We bear in mind that the marks ‘must be considered … in
light of the fallibility of memory …,’” In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014), and that the proper focus is on the recollection
of the average customer, who retains a general rather than specific impression of
the marks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430
(TTAB 2013). We therefore find that the du Pont factor of the similarity or
dissimilarity of the marks weighs in favor of a finding of likelihood of confusion.
3. Customers; Conditions of sale.
As Applicant’s restaurant services are legally identical to Registrant’s Indian
restaurant services, we must presume that they are offered to the same classes of
customers. See In re Viterra Inc., 101 USPQ2d at 1908; American Lebanese Syrian

14 Office Action of September 27, 2013 at 7.
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Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011).
With respect to Applicant’s sweet bakery goods, Applicant argues as follows:
The use of Bengali writing in Applicant’s mark
demonstrates that the Applicant sells its goods primary to
Bengali consumers. The Applicant’s goods are not sold or
intended to be sold wholesale to grocery stores or
supermarkets. … The Registrant sells to supermarkets
and grocery stores on a wholesale basis, and not to the
end consumer directly. Further, catering services for
airlines and parties also prevent the Registrant’s goods
from reaching its consumers in a direct manner, unlike
the Applicant’s goods. … Additionally, the Registrant’s
target end consumer is the Indian population, not the
Bengali population.15
For the avoidance of confusion, we must point out that the cited registration does
not relate to any goods. To the extent that Registrant’s services are directed to
“supermarkets and grocery stores,” we assume that Applicant is referring to
Registrant’s “wholesale distributorship services.” Although Applicant claims that its
bakery goods are not sold to such stores, the application identifies these goods as
being “for retail and wholesale distribution,” which indicates that they are, indeed,
intended to be distributed to third-party retailers like supermarkets and grocery
stores. While Applicant’s goods may be primarily for sale to consumers, we note that
Registrant’s Indian restaurant and party catering services would also be directed to
individual consumers. We cannot give any weight to Applicant’s contention that its
consumers are Bengali as opposed to Registrant’s consumers who are Indian,
because neither Applicant’s identification of goods nor Registrant’s recitation of

15 Applicant’s brief at 6-7, 4 TTABVUE 7-8.
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services contains any such limitation as to target customers. It would be
unreasonable to assume that only persons of Indian heritage would dine in an
Indian restaurant or use Registrant’s party catering services; nor can we assume
that only persons of Bengali heritage would purchase baked goods bearing a mark
that happens to include some Bengali lettering in it.
With respect to the conditions of sale, Applicant contends as follows:
[Applicant’s] bakery products, sweet bakery goods, and
foods and beverages are sold and intended to be sold
directly to consumers who travel to the premises of the
restaurant to purchase the good for consumption on and
off the premises. Therefore, in order for a consumer to
obtain the goods sold by the Applicant, the consumer
must have some form of personal knowledge and/or
contact with the Applicant’s restaurant, from which the
goods are being sold. The Applicant’s Mark is clearly
posted on the awning of the restaurant …, on the
packaging of the goods …, and on its menu of goods….16
Applicant’s identification of goods does not support Applicant’s contention that its
goods are available to customers only at its restaurant. Applicant’s goods are, in
part, “for retail and wholesale distribution,” meaning that they may be distributed
to, and available for purchase at, all kinds of retail establishments that normally
carry such goods. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1825 (TTAB 2015) (“[A]bsent any explicit restriction in the application or
registration, we must presume the parties’ identified goods to travel through all
normal channels of trade for goods of the type identified …”), citing Coach Services
Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722.

16 Id.
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We find that there is no persuasive evidence of record relating to the conditions
under which sales are made by either Applicant or Registrant. However, the du
Pont factor relating to the classes of customers to which sales are made favors a
finding of likelihood of confusion with respect to Applicant’s goods and services,
because they, as well as certain services of Registrant, would be offered to ordinary
consumers of no special sophistication.
4. Trade channels.
As Applicant’s restaurant services are legally identical to those of Registrant, we
must presume that those services of Applicant and Registrant move in the same
channels of trade. See In re Viterra Inc., 101 USPQ2d at 1908. With respect to
Applicant’s goods, the fact that Registrant’s wholesale food distributorship services
constitute a channel through which Applicant’s goods would travel is a point of
proximity that increases the likelihood of confusion.
Accordingly, we find that this du Pont factor weighs in favor of a finding of
likelihood of confusion with respect to both classes of Applicant’s goods and services.
5. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. In view of the
legal identity of the restaurant services of Applicant and Registrant; the degree of
commercial relatedness between Applicant’s baked goods and Registrant’s party
catering services; and the substantial overlap with respect to the relevant
customers and trade channels, Applicant’s mark encroaches even the limited scope
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of protection accorded to the cited mark registered on the Supplemental Register.
See In re Smith & Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1994); King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(“Confusion is confusion. The likelihood thereof is to be avoided, as much between
‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’
mark.”). Accordingly, we find that Applicant’s mark so resembles the cited
registered mark as to be likely to cause confusion, mistake or deception as to the
source of Applicant’s goods and services.
Decision: The refusal to register is affirmed.