RaceTrac Petroleum, Inc.

Trademark Trial and Appeal Board

Mar 28, 2017

No. 86636421 (T.T.A.B. Mar. 28, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 28, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re RaceTrac Petroleum, Inc.
_____

Serial No. 86636421
_____

Kevin W. Grierson of Culhane Meadows PLLC,
for RaceTrac Petroleum, Inc.
Jeane Yoo, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Taylor, Pologeorgis and Larkin,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
RaceTrac Petroleum, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark SWIRL WORLD and design, as illustrated below, for “frozen
yogurt” in International Class 30 and “self-serve yogurt shop services” in
International Class 35.1

1 Application Serial No. 86636421, filed on May 20, 2015, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming September
30, 2011 as both the date of first use and the date of first use in commerce for both classes of
goods and services. The application includes the following description of the mark: “The mark
consists of the word ‘Swirl’, in stylized form, in white letters and outlined in blue, with the
graphic of a pink, blue, and white frozen yogurt cup inside a pink circle and outlined in blue,
Serial No. 86636421
- 2 -

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the mark SWIRLZ WORLD and design, as displayed
below, registered on the Principal Register for “self-serve frozen yogurt shop services”
in International Class 35.2

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Objection
We initially turn to an evidentiary objection lodged by the Examining Attorney
regarding evidence presented by Applicant for the first time with its appeal brief. The
Examining Attorney objects to the submission of a listing of registered trademarks

forming the dot in the letter ‘i’, all of which is above the word ‘World’, in white letters inside
a pink oval and outlined in blue.” The application also claims the colors white, pink and blue
as a feature of the mark. Additionally, Applicant claims ownership of Registration Nos.
4238768, 4246941, and 4246942.

2 Registration No. 4323387, issued on April 23, 2013, claiming January 2, 2012 as the date
of first use and May 25, 2012 as the date of first use in commerce.
Serial No. 86636421
- 3 -
generated from a Trademark Electronic Search System (“TESS”) search that include
the term SWIRL used in association with “yogurt.”3
The record in an ex parte proceeding must be complete prior to appeal. Trademark
Rule 2.142(d); 37 CFR § 2.142(d). Exhibits that are attached to a brief but not made
of record during examination are untimely, and will not be considered. See In re Fitch
IBCA, Inc., 64 USP2d 1058, 1059 n.2 (TTAB 2002); see also TBMP §§ 1203.02(e) and
1207.01 (January 2017). Similarly, lists of marks that include certain terms that are
submitted for the first time in an appeal brief are also untimely. To the extent that
Applicant wished to introduce additional evidence after its appeal had been filed,
Applicant should have filed a written request with the Board to suspend the appeal
and remand the application for further examination pursuant to Trademark Rule
2.124(d). Applicant did not do so. Accordingly, we cannot consider the list of registered
trademarks that include the term “SWIRL,” submitted for the first time with the
appeal brief, as evidence in our analysis. In view thereof, the Examining Attorney’s
objection is sustained.
As a final matter, we also note that, for the first time in its appeal brief, Applicant
submitted status and title copies of the three registrations it specifically claimed

3 Applicant’s submission of the TESS-generated list of registered trademarks that include
the term “SWIRL” was apparently made to demonstrate the weakness of said term when
used in connection with yogurt and/or yogurt related products and services. 7 TTABVUE 7-
8. Even if the list of registered trademarks had been timely submitted, we note that the
submission of a list is not the proper way to make registrations of record. As noted by the
Examining Attorney, in order to make registrations of record, copies of the registrations
themselves, or the electronic equivalent thereof, i.e., printouts of the registrations taken from
the electronic records of the Patent and Trademark Office's database, must be submitted
prior to the appeal. See In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In
re Ruffin Gaming, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002).
Serial No. 86636421
- 4 -
ownership of in its application, in addition to Registration No. 4238767. Inasmuch as
the Examining Attorney did not object to the submission of these registrations and
presented substantive arguments regarding these registrations in her brief, we deem
any objection to the submission of these registrations as waived and we, therefore,
have considered these registration is our decision. Cf. In re Rodale Inc. 80 USPQ2d
1696, 1699 n. 4 (TTAB 2006) (Board considered summary of applicant’s prior
registrations presented for the first time in its appeal brief because the examining
attorney did not object and also presented substantive arguments regarding the
registrations).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”).
Serial No. 86636421
- 5 -
A. Comparison of the Marks
We first address the du Pont likelihood of confusion factor focusing 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.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). 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 a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
Serial No. 86636421
- 6 -
Applicant’s mark is SWIRL WORLD appearing in stylized lettering with the
pictorial element of a small cup with swirled frozen yogurt to dot the letter “I” in the
word “SWIRL.” Additionally, Applicant’s mark appears in the colors pink, white and
blue. The cited mark is SWIRLZ WORLD also in stylized lettering with a swirl design
functioning to dot the letter “I” in the term “SWIRLZ.” The cited registration makes
no claim to color as a feature of the mark.
Applicant argues that marks are visually different and that the different design
elements incorporated in each of the marks at issue are as prominent and distinctive
as the literal portions of the marks. Applicant contends that these differences are
sufficient to avoid a likelihood of confusion.4 We disagree.
We find that the literal portion of Applicant’s mark, i.e., SWIRL WORLD, and the
literal portion of the mark in the cited registration, i.e., SWIRLZ WORLD, are highly
similar. The only difference between the literal portions of the respective marks is
the addition of the letter “Z” at the end of the term “SWIRL” in the cited mark. The
record demonstrates, however, that the letter “Z” is a common misspelling of the
letter “S” to indicate a plural version of a term.5 Therefore, we find that the consuming
public would view Applicant’s SWIRL WOLRD mark as merely the singular version
of the cited SWIRLZ WORLD mark. An applied-for mark that is the singular or plural
form of a registered mark is essentially identical in sound, appearance, meaning, and
commercial impression, and thus the marks are confusingly similar. Swiss Grill Ltd.,

4 Applicant’s Appeal Brief, pp. 6-8, 7 TTABVUE 7-9.
5 See August 14, 2015, Office Action.
Serial No. 86636421
- 7 -
v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious
that the virtually identical marks [the singular and plural of SWISS GRILL] are
confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d
1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be
essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ
339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and
plural forms of ZOMBIE such that the marks were considered the same mark)).
We also find, contrary to Applicant’s arguments, that the differing design
elements in the respective marks are insufficient to distinguish the marks and avoid
a likelihood of confusion. Specifically, the presence of the design of a small cup with
swirled frozen yogurt in Applicant’s mark is less dominant since it appears in a
significantly smaller size than the literal elements of Applicant’s mark and is
nonetheless highly suggestive of the goods and services offered under Applicant’s
mark. Similarly, the “swirl” design in the cited mark also appears in a smaller size
than the literal elements of the cited mark and tends to reinforce the term SWIRLZ
in the cited mark.
In any event, when considering a composite mark containing both words and a
design, the word portion may be more likely to indicate the origin of the goods and/or
services because it is that portion of the mark that consumers use when referring to
or requesting the goods and/or services. See In re Viterra, Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB
2016).
Serial No. 86636421
- 8 -
Because the design elements in a mark are less dominant than its literal elements
and because the literal portions of Applicant’s and Registrant’s respective marks are
highly similar in sound, appearance, and commercial impression, we find that, when
the marks are considered in their entireties, their similarities outweigh their
differences, including the differences noted by Applicant. Thus, the first du Pont
factor favors a finding of likelihood of confusion.
B. Strength of Registrant’s Mark
Applicant argues in its request for reconsideration6 and in its appeal brief7 that
the term SWIRL is weak when used in connection with yogurt or yogurt-related
services. In support of its argument, Applicant submitted for the first time with its
appeal brief a list of 36 trademark registrations generated from a TESS search that
include the term SWIRL for yogurt related products and services. As discussed supra,
this evidence was untimely submitted and therefore has been given no consideration.
Accordingly, on this record we cannot find that the term “SWIRL” is weak or
diluted for yogurt products or for the services identified in the cited registration. This
du Pont factor is therefore neutral.8

6 4 TTABVUE 3.
7 Applicant’s Appeal Brief, pp. 6-7, 7 TTABVUE 7-8.
8 Even if Applicant had timely and properly submitted the third-party registrations upon
which it relies and such evidence demonstrated that the term SWIRL was in fact weak for
yogurt-related products and services, we note that even weak marks are entitled to protection
against registration of similar marks for identical goods and/or services. In re Max Capital
Group, 93 USPQ2d 1243, 1246 (TTAB 2010). See also In re Colonial Stores, 216 USPQ 793,
795 (TTAB 1982).
Serial No. 86636421
- 9 -
C. Comparison of the Goods and Services
We next compare Applicant’s goods and services and the Registrant’s services. In
making our determination under this second du Pont factor, we look to the goods and
services as identified in the involved application and cited registration. See Octocom
Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods [and
services] set forth in the application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [and services], the particular channels
of trade or the class of purchasers to which the sales of goods [and services] are
directed.”). See also Paula Payne Prods. v. Johnson Pub. Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion
must be decided on the basis of the respective descriptions of goods.”).
In determining whether Applicant’s goods and services are related to Registrant’s
services, it is not necessary that the goods and services of Applicant and Registrant
be similar or competitive in character to support a finding of likelihood of confusion;
it is sufficient for such purposes to establish that the goods and services are related
in some manner and/or that conditions and activities surrounding marketing of these
goods and services are such that they would or could be encountered by same persons
under circumstances that could, because of similarities of marks used with them, give
rise to the mistaken belief that they originate from or are in some way associated
with the same producer. Coach Servs., Inc., 101 USPQ2d at 1722; Edwards
Serial No. 86636421
- 10 -
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering
Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v.
Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
As noted above, Applicant’s identified goods and services are “frozen yogurt” in
International Class 30 and “self-serve yogurt shop services” in International Class
35. The services identified in the cited registration are “self-serve yogurt shop
services” in International Class 35.
The parties’ respective Class 35 services are identical. With regard to Applicant’s
Class 30 goods, i.e., “frozen yogurt,” the Examining Attorney made of record the
following Internet evidence demonstrating that entities in addition to Applicant itself
provide both frozen yogurt and self-serve yogurt shop services under the same mark:9
Web page printouts from www.menchies.com – showing frozen yogurt and the
service of self-service yogurts shops offered under a common mark.

Web page printouts from www.orangeleafyogurt. – showing frozen yogurt and the
service of self-service yogurts shops offered under a common mark.

Web page printouts showing frozen yogurt and the service of self-service yogurts
shops offered under the common SWEET FROG mark.10

9 See August 14, 2015, Office Action.
10 We note that the Examining Attorney did not include the URL designation of this
particular site. The Board generally will not consider Internet evidence if such evidence does
not include URL designations and the date on which this evidence was downloaded from the
Internet. See In Re White, 73 USPQ2d 1713, 1716 (TTAB 2004) (“Internet evidence would be
acceptable in an ex parte case when the full address for the page, and the date the page was
accessed and downloaded, are provided.”). However, since Applicant has not objected to this
evidence on the ground that the Examining Attorney failed to provide the URL designation,
we deem any such objection waived and, therefore, in our discretion, we have considered the
web page printouts from this particular site in our analysis.
Serial No. 86636421
- 11 -
We find this evidence sufficient to demonstrate that the Class 30 goods identified
in Applicant’s application and the services identified in the cited registration are
related. Thus, the second du Pont factor also weighs in favor of finding a likelihood of
confusion.
D. Similarity of Trade Channels and Classes of Purchasers
Because Applicant’s services in Class 35 are identical to Registrant’s services, we
presume that the services travel through the same trade channels and are offered to
the same classes of customers. In re Viterra, 101 USPQ2d at 1908 (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). For
the services in this class, the du Pont factor of trade channels and classes of
purchasers weighs in favor of a finding of likelihood of confusion.
With respect to the trade channels and classes of purchasers for Applicant’s Class
30 frozen yogurt product, the only evidence relating to the trade channels through
which the goods at issue travel is the third-party website evidence submitted by the
Examining Attorney, discussed above. This evidence shows that frozen yogurt and
self-serve yogurt shop services may be provided in the same marketplace to all
relevant classes of purchasers. Thus, Applicant’s Class 30 goods and Registrant’s
Class 35 services, as identified, would be provided in the same or at least overlapping
channels of trade to the same or overlapping classes of purchasers. Thus, the third
du Pont factor also weighs in favor of finding a likelihood of confusion with regard to
Applicant’s Class 30 goods.
Serial No. 86636421
- 12 -
E. Consistency of Examination
Applicant has claimed ownership of the following registrations:
1. Registration No. 4238767 for the mark SWIRL WORLD (in standard
characters) for “frozen yogurt;”11

2. Registration No. 4246941 for the mark SWIRL WORLD (in standard
characters) for “self-serve yogurt show services;”12
3. Registration No. 4246942 for the mark for “self-serve yogurt
shop services;”13 and
4. Registration No. 4238768 for the mark for “frozen yogurt.”14

Pursuant to the thirteenth du Pont factor, which permits the Office to consider
other information relevant to likelihood of confusion, see In re E. I. du Pont, 177 USPQ
at 567, Applicant argues that since it already owns two registrations for a mark that
is identical to its applied-for mark, except for the claim of color, that identify identical
goods and services as those identified in its application, and because it has priority of
use over the cited registration, it would be inequitable to not allow its applied-for
mark to register, particularly since Applicant’s prior registrations have coexisted

11 Issued on November 6, 2012, claiming September 30, 2011 as both the date of first use and
the date of first use in commerce.
12 Issued on November 20, 2012, claiming September 30, 2011 as both the date of first use
and the date of first use in commerce.
13 Issued on November 20, 2012, claiming September 30, 2011 as both the date of first use
and the date of first use in commerce.
14 Issued on November 6, 2012, claiming September 30, 2011 as both the date of first use and
the date of first use in commerce.
Serial No. 86636421
- 13 -
with the cited registration for over four years.15 In support of its arguments,
Applicant relies on the Board’s decision in In re Strategic Partners, Inc., 102 USPQ2d
1397 (TTAB 2012).16 Applicant’s reliance on this decision is misplaced.
In Strategic Partners, appellant owned a registered mark that had coexisted with
the cited mark for over five years. Because appellant’s prior registration was over five
years old, it was not subject to challenge by the owner of the cited registration based
on a claim of likelihood of confusion. 102 USPQ2d at 1399.
In finding no likelihood of confusion in Strategic Partners, the Board provided the
following explanation:
[T]he present case involves the unique situation presented
by the coexistence of applicant’s existing registration with
the cited registration for over five years, when applicant's
applied-for mark is substantially similar to its existing
registered mark, both for identical goods. When we
consider these facts under the thirteenth du Pont factor,
we find in this case that this factor outweighs the others
and leads us to conclude that confusion is unlikely.
Strategic Partners, 102 USPQ2d at 1400.
While we acknowledge that refusing to register the mark now before us is
obviously inconsistent with the issuance of Applicant’s earlier registrations and
although we are sympathetic to Applicant’s position on this point, we do not consider
the issuance of Applicant’s earlier registrations to be a dispositive factor against a
finding of likelihood of confusion. As discussed above, the Examining Attorney’s
refusal is justified on the record in this case. Unlike the situation in Strategic

15 Applicant’s Appeal Brief, pp. 9-11, 7 TTABVUE 10-12.
16 Id. at 9-10, 7 TTABVUE 10-11.
Serial No. 86636421
- 14 -
Partners, Applicant’s earlier registrations were issued in November of 2012 and,
therefore, are still subject to cancellation on the basis of priority and likelihood
confusion, an important distinction from Strategic Partners. See Section 14 of the
Trademark Act, 15 U.S.C. § 1064. We find, on this record, that the existence of
Applicant’s prior registrations does not outweigh the other du Pont factors. To hold
otherwise would give preclusive effect to the decisions of the Examining Attorneys in
granting Applicant’s prior registrations, and the Board is not bound by the decisions
of Examining Attorneys. To the contrary, “the [US]PTO must decide each application
on its own merits, and decisions regarding other registrations do not bind either the
[USPTO] or [the reviewing] court.” See In re Boulevard Entm’t, 334 F.3d 1336,
67 USPQ2d 1475, 1480 (Fed. Cir. 2003). The issuance of Applicant’s four prior
registrations does not compel the issuance of a fifth registration if it would otherwise
be improper to do so. Cf. In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d
1218, 1221 (Fed. Cir. 2009).
In that regard, Applicant was not without any remedy against the refusal of
registration in this case. Applicant could have sought a suspension of this appeal or
the prosecution of its application after receiving the Section 2(d) refusal to pursue (1)
a cancellation proceeding against the cited registration, or (2) possibly a consent
agreement with the Registrant. The record demonstrates, however, that Applicant
pursued neither of these alternatives.
Furthermore, we find unavailing Applicant’s argument that, based on its prior
registrations, it has priority of use over the cited registration. It is well established
Serial No. 86636421
- 15 -
that an applicant’s assertion of priority of use may be given no consideration in an ex
parte proceeding when registration has been refused under Section 2(d) of the Act in
view of a subsisting registration. See In re Calgon Corp., 435 F.2d 596, 168 USPQ
278, 280 (CCPA 1971) (“As the board correctly pointed out, ‘the question of priority of
use is not germane to applicant’s right to register’ in this ex parte proceeding.”); In re
Kent-Gamebore Corp., 59 USPQ2d 1373, 1375 n.3 (TTAB 2001). The rationale behind
these decisions is that the portion of Section 2(d) which proscribes registration of a
mark likely to be confused with a mark registered in the Patent and Trademark Office
does not speak of priority but of a “mark registered”; and that an applicant’s assertion
of priority of use in such a case constitutes a collateral attack upon the cited
registration, which attack cannot be entertained in an ex parte proceeding. In re
Calgon, 168 USPQ at 280. As discussed above, Applicant’s possible priority of use
gave Applicant a remedy by way of a petition to cancel the cited registration, but
overall, this is not a case in which the existence of Applicant’s earlier registrations
outweighs the impact of the other du Pont factors on the issue of a likelihood of
confusion.
F. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
found that (1) the marks at issue are highly similar; (2) Applicant’s services in Class
35 are identical to those of Registrant and travel through the same channels of trade
to the same classes of customers; and (3) Applicant’s Class 30 goods are commercially
Serial No. 86636421
- 16 -
closely related to Registrant’s identified services, would move in the same or
overlapping trade channels, and are offered to the same classes of purchasers, we
conclude that Applicant’s mark, as used in connection with the goods and services
identified in the application, so resembles the cited mark for the identified services
as to be likely to cause confusion or mistake, or to deceive under Section 2(d) of the
Trademark Act.
Decision: The refusal to register Applicant’s SWIRL WORLD and design mark
under Section 2(d) of the Trademark Act is affirmed.