Rene Rey Swiss Chocolates, Ltd.

Trademark Trial and Appeal Board

Mar 8, 2002

No. 75735648 (T.T.A.B. Mar. 8, 2002)

3/8/02

Paper No. 12
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rene Rey Swiss Chocolates, Ltd.
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Serial No. 75/735,648
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Lalitha Mani of Perkins Coie LLP for Rene Rey Swiss
Chocolates, Ltd.

Tracy Whittaker-Brown, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
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Before Cissel, Hairston and Bottorff, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Rene Rey Swiss
Chocolates, Ltd. to register the mark OUT OF THIS WORLD for
confectionery goods, namely, chocolates.1
Registration has been finally refused by the Trademark
Examining Attorney under Section 2(d) of the Trademark Act,

1 Serial No. 75/735,648, filed June 23, 1999; asserting a bona
fide intention to use the mark in commerce and claiming a right
of priority under Section 44(d) of the Trademark Act, based on
the filing on a Canadian application.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/735,648
2
15 U.S.C. §1052(d), on the ground that applicant’s mark, if
used in connection with the identified goods, would so
resemble the previously registered mark THEY’RE OUT OF THIS
WORLD CARVEL FLYING SAUCER and design as shown below,

for “edible ice cream cones, wafers, waffles, crackers,
cookies, ice creams, custards and sandwiches made from
layers of wafers, waffles, crackers and cookies with
Ser No. 75/735,648
3
interlayers of ice creams and custards,”2 as to be likely to
cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested.
Applicant, in urging reversal of the refusal to
register, argues that when the marks are viewed in their
entireties, they are different in commercial impression;
and that marks which include the phrase OUT OF THIS WORLD,
are weak marks entitled to a limited scope of protection.
In addition, applicant contends that its candy and the
cookies and ice cream products listed in the cited
registration are specifically different and that the
respective goods are sold in distinct channels of trade.
According to applicant, registrant’s goods are sold only
through licensed distributors.
The Examining Attorney, on the other hand, argues that
applicant’s mark and the registrant’s mark are very similar
due to the shared presence of the phrase OUT OF THIS WORLD.
Further, the Examining Attorney contends that chocolates
and cookies and ice cream products are related because
chocolates and other candies are used as ingredients in

2 Registration No. 621,412 issued February 14, 1956; second
renewal. The wording “THEY’RE OUT OF THIS WORLD” has been
disclaimed apart from the mark as shown.
Ser No. 75/735,648
4
cookies and ice cream products. Further, the Examining
maintains that goods of the type involved in this appeal
emanate from the same sources. In support of the refusal
to register, the Examining Attorney made of record copies
of articles retrieved from the NEXIS database which make
reference to ice cream products wherein chocolates, or
other candies are ingredients. In addition, the Examining
Attorney submitted copies of thirteen use-based third-party
registrations, which show that chocolates, on the one hand,
and ice cream products and/or cookies, on the other hand,
may emanate from the same source under the same mark.
Turning first to the respective goods, we must
determine the issue of likelihood of confusion based on the
manner in which the goods are set forth in the application
and the cited registration, respectively. In the absence
of any limitations in applicant’s application and the cited
registration, we must presume that applicant and
registrant’s goods move in all channels of trade normal for
such goods, which would include grocery stores, convenience
stores, and mass merchandisers. Thus, for purposes of our
analysis, we must assume that the goods would move in the
identical channels of trade to the same class purchasers,
namely ordinary consumers.
Ser No. 75/735,648
5
We recognize that chocolates are different in nature
from cookies and ice cream products. It is not necessary,
however, that goods be identical or even competitive in
nature to in order to support a finding of likelihood of
confusion. It is sufficient that the goods are related in
some manner and/or that the circumstances surrounding their
marketing are such that would give rise, because of the
marks used thereon, to the mistaken belief that they
originate from the same source. See In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In this case, the evidence made of record by the
Examining Attorney establishes that chocolates and cookies
and ice cream products are sufficiently related that if
they were sold under identical or substantially similar
marks, confusion would be likely to result.
Turning next to the marks, although they share the
phrase OUT OF THIS WORLD, we find that there are specific
differences between applicant and registrant’s marks. In
particular, the wording CARVEL FLYING SAUCER and the
prominent ice cream sandwich design in registrant’s mark
results in a mark that, when considered in its entirety, is
different in appearance, sound and commercial impression
from applicant’s mark OUT OF THIS WORLD. Moreover, the
phrase THEY’RE OUT OF THIS WORLD is used in registrant’s
Ser No. 75/735,648
6
mark as a tag line and it is the words CARVEL FLYING
SAUCER, which are more likely to be noted by consumers as
signifying the source of registrant’s goods.
Applicant, in support of its argument that marks which
include the phrase OUT OF THIS WORLD are weak marks and
entitled to a limited scope of protection, submitted a list
of third-party registrations which include the phrase in
its request for reconsideration. As noted by the Examining
Attorney, the submission of a mere list of registrations is
not the proper way to make the registrations of record. 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. See Weyerhauser Co. v. Katz,
24 USPQ2d 1230 (TTAB 1992). Thus, in reaching our decision
herein we have not considered the list of registrations.
However, we judicially notice that the Dictionary of
American Slang (1995) defines the phrase “Out of this
World” as “Excellent; wonderful; superior =the greatest,
way out.” It is clear that the phrase is a laudatory
designation and it is well settled that the addition of
other matter to a laudatory designation may be sufficient
to avoid confusion. See King Candy Company v. Eunice
Ser No. 75/735,648
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King’s Kitchen, Inc., 178 USPQ 121 (TTAB 1973). In this
case, where one mark consists of a laudatory designation
and the other mark consists of the identical laudatory
designation in addition to other wording and a design
element, we find that the other wording and the design
element are sufficient to avoid confusion.
In sum, in view of the differences between
registrant’s mark THEY’RE OUT OF THIS WORLD CARVEL FLYING
SAUCER and design and applicant’s mark OUT OF THIS WORLD,
we find that there is no likelihood of confusion in this
case, notwithstanding the relatedness of the involved
goods.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed.

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