Shah Trading Corp.

Trademark Trial and Appeal Board

Oct 29, 2002

No. 75439223 (T.T.A.B. Oct. 29, 2002)

Paper No. 22
Mailed:10/29/2002
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Shah Trading Corporation
________
Serial No. 75/439,223
_______
Dillis V. Allen, Esq. for applicant.
Linda M. King, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
_______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Shah Trading Corporation
to register the mark SUGAM for “Indian lentils” (in
International Class 29) and “Indian pastes, namely, garlic
paste, ginger paste, ginger and garlic pastes, green chili
paste; Indian chutneys, namely, coriander chutney, mint
chutney, coconut chutney, tamarind chutney, garlic chutney
and red pepper chutney; Indian flours, namely, rice flour,
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/439,223
2
corn flour; Indian spices, namely, mustard seeds, fenugreek
seeds, nutmeg powder, cloves” (in International Class 30).1
The Trademark Examining Attorney refused registration
in both classes under Section 2(d) on the ground that
applicant’s mark, when used in connection with applicant’s
goods, so resembles the previously registered mark SAGAM
and the mark shown below
both registered to the same entity, and both for “pepper-
based hot sauce, vinegar, honey and salt” (in International
Class 30).2
1 Application Serial No. 75/439,223, filed February 23, 1998,
alleging first use anywhere and first use in commerce on February
1, 1998 for both classes. The application includes a statement
that the term “sugam” is an Indian term that, when translated
into English, means “simple, easy, or light.” In its appeal
brief, applicant proposed an amendment to the identification of
goods. More specifically, applicant amended the identification
to more narrowly define the products listed as “Indian” as
indicated above. The Examining Attorney, in her brief, accepted
the amendment. Accordingly, we have analyzed the likelihood of
confusion issue on the basis of the amended identification of
goods.
2 Registration Nos. 1,242,258 and 1,242,261, issued June 14,
1983, combined Sections 8 and 15 affidavits accepted and
acknowledged, respectively. Registration No. 1,242,261 includes
the following statement: “The device on the left includes four
S’s and the fanciful Arabic design on the right translates as
‘Sagam.’”
Ser No. 75/439,223
3
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs. An
oral hearing was not requested.
Applicant argues, in urging that the refusal be
reversed, that its Indian food items are sold only in
Indian retail stores, whereas registrant’s Arabic food
items would be sold only in Arabic retail stores. Thus,
according to applicant, the goods would not be sold in the
same stores and the same customers would not encounter the
respective marks. Applicant also argues that the marks are
pronounced differently; that although its mark has a
meaning in the Indian (Gujarati) language, the term in
registrant’s marks has no meaning; and that the goods
listed in the involved application are uniquely Indian.
Applicant points to the absence of any instance of actual
confusion, and states that registrant has been out of
business since 1984, (that is, shortly after issuance of
the cited registrations).
In support of its position, applicant submitted the
affidavit of its president, Kaushik Shah. Mr. Shah states,
in part, that applicant’s goods are sold exclusively to
stores that cater to Indian origin customers in the United
States; and that due to diverse cultures and differences in
cooking methodology and tastes, Indian consumers do not
Ser No. 75/439,223
4
patronize Arabic food markets, and Arabic consumers do not
shop at Indian food markets. Applicant also submitted a
document from the secretary of state for the state of
Texas.
The Examining Attorney maintains that the similarities
between applicant’s mark and the cited marks outweigh the
differences. As to the goods, the Examining Attorney
contends that they are related, pointing out that the
limited trade channels relied upon by applicant are not
reflected in the identifications of goods in the
application and the cited registrations. In response to
applicant’s claim that registrant is no longer in business,
the Examining Attorney states that the cited registrations
are still subsisting and, thus, are valid Section 2(d)
cites. In support of the refusal, the Examining Attorney
submitted third-party registrations in an effort to show
that goods of the type involved herein may emanate from a
common source under one mark.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
Ser No. 75/439,223
5
similarities or dissimilarities between the marks and the
similarities or dissimilarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Turning first to compare the goods, we start with the
premise that they need not be identical or even competitive
to support a holding of likelihood of confusion. It is
sufficient that the goods are related or that conditions
surrounding their marketing are such that they are
encountered by the same persons who, because of the
relatedness of the goods and the similarities between the
marks, would believe mistakenly that the goods originate
from or are in some way associated with the same producer.
In re International Telephone and Telegraph Corp., 197 USPQ
910 (TTAB 1978).
Applicant’s Indian lentils, pastes, chutneys, flours
and spices are similar and/or related to registrant’s
pepper-based hot sauce, vinegar, honey and salt. The goods
are all food items, and the relatedness of such specific
items as pastes, spices, hot sauce, vinegar, honey and salt
is undeniable. All are used to flavor foods, and any
combination of the items may be used in any one recipe. We
find that the requisite relationship between applicant’s
and registrant’s goods exists in this case, and that this
Ser No. 75/439,223
6
du Pont factor weighs in favor of a finding of likelihood
of confusion.
In comparing the goods, applicant places great
significance on its assertion that its goods are sold only
in Indian stores, whereas registrant’s goods are likely
sold only in Arabic stores, and that there will be no
crossover in clientele between the two different types of
stores. The perceived differences in trade channels are
largely irrelevant for purposes of the likelihood of
confusion issue before us. Although applicant’s
identification of goods indicates that the food items are
“Indian,” there is no limitation to the effect that the
items are sold only in Indian grocery stores. See:
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813, 1815 (Fed. Cir. 1987) [the goods must be
compared as recited in the involved application and
registration]. As identified, applicant’s goods are
presumed to be sold in ordinary grocery stores as well.
Moreover, nothing in the involved registrations limits the
trade channels in which registrant’s food items are sold.
We must assume that applicant’s and registrant’s goods move
through all normal and usual channels of trade and methods
of distribution. Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed.
Ser No. 75/439,223
7
Cir. 1990); and Squirtco v. Tomy Corporation, 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983). As identified,
applicant’s and registrant’s goods must be presumed to
travel in the very same trade channels, such as ordinary
grocery stores and food markets that cater to consumers of
all nationalities. Further, we must presume that the same
classes of purchasers purchase the goods. In re Elbaum,
211 USPQ 639 (TTAB 1981).
The goods listed in the involved application and
registrations are everyday items used in food preparation.
All of the items are relatively inexpensive, subject to
frequent replacement, and often are bought on impulse.
Ordinary consumers are not likely to exercise any great
care in purchasing these goods. Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ
1281, 1282 (Fed. Cir. 1984). These facts weigh in favor of
a finding of likelihood of confusion.
In reaching our decision, we have taken into account
the use-based third-party registrations submitted by the
Examining Attorney.3 The third-party registrations show the
same marks registered by the same entity for both types of
goods listed in the involved application and the cited
3 The registrations based under Section 44 of the Act are of no
probative value.
Ser No. 75/439,223
8
registrations. Although the third-party registrations are
not evidence that the marks shown therein are in use or
that the public is familiar with them, they nevertheless
have probative value to the extent that they serve to
suggest that the goods identified therein are of a kind
that may emanate from a single source. Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6
(TTAB 1988).
Insofar as the marks are concerned, the test is not
whether applicant’s mark SUGAM and registrant’s marks SAGAM
and SAGAM and design can be distinguished when subjected to
side-by side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to cause
confusion. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks encountered in the
marketplace. Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, aff’d, Appeal No. 92-1086, (Fed. Cir. June 5,
1992); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).
Ser No. 75/439,223
9
With respect to the typed marks, applicant’s mark
SUGAM differs from registrant’s mark SAGAM by only one
letter. With only the minor second letter difference, the
marks are certainly similar in appearance. Although we
note applicant’s argument that the marks sound very
different when spoken, it has often been stated that there
is no correct pronunciation of a trademark. In re Great
Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985). Thus, while
applicant has carefully explained the correct pronunciation
of the respective marks, consumers may very well pronounce
the marks in a variety of ways, making the marks’ sound
more alike than when “correctly” pronounced. As to
connotation, Mr. Shah asserts that applicant’s mark means
“easy going” in the Indian (Gujarati) language, whereas
registrant’s mark has no meaning. Although applicant may
be correct, we suspect that most consumers in this country
are not familiar with the Gujarati language, and any
difference in meaning will be completely lost on them. In
sum, we find that the terms SUGAM and SAGAM are similar in
overall commercial impressions.
The similarities between SUGAM and SAGAM just
discussed obviously apply as well when we compare
applicant’s mark with registrant’s logo mark, SAGAM and
design. Further, although the marks must be considered in
Ser No. 75/439,223
10
their entireties, including the design features of
registrant’s logo mark, it is well-settled that one feature
of a mark may be more significant than another, and it is
not improper to give more weight to this dominant feature
in determining the commercial impression created by the
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985). In the present case, SAGAM is the
dominant feature of registrant’s logo mark. When a mark
consists of a word and a design, the word portion is more
likely to be impressed upon a purchaser’s memory. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). That
would be the case here. The SAGAM portion of registrant’s
mark will be most likely impressed upon purchasers’
memories and used by purchasers in calling for registrant’s
goods.
The term SAGAM in registrant’s mark, according to Mr.
Shah, has no meaning. Based on the record before us,
therefore, the term would appear to be arbitrary as applied
to the relevant goods. There is no evidence of any third-
party uses or registrations of the same or similar marks in
the food industry. This favors a finding of likelihood of
confusion.
In sum, we find that applicant’s mark is sufficiently
similar to both of registrant’s marks that, when applied to
Ser No. 75/439,223
11
their respective goods, consumers are likely to be
confused.
The absence of evidence of actual confusion is not
determinative. Given the ex parte nature of this
proceeding, registrant does not have an opportunity to be
heard on this point. Further, it is not necessary to show
actual confusion in establishing likelihood of confusion.
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 396 (Fed. Cir. 1983); and J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1892 (Fed. Cir. 1991).
Lastly, with respect to applicant’s claim that
registrant is no longer in business, it has submitted a
document from the secretary of state of the state of Texas.
The document indicates that registrant, incorporated under
the laws of Texas, was deemed to have forfeited its
corporate charter by the secretary of state on February 20,
1984 pursuant to the franchise taxation provisions of the
Texas statutes. The document also indicates that
registrant has filed no application for reinstatement. Mr.
Shah, in his affidavit, further states that his
investigation, revealing the absence of any SAGAM brand
products in the marketplace, leads to the reasonable
conclusion that registrant is no longer in business.
Ser No. 75/439,223
12
Notwithstanding applicant’s remarks and the Texas
document, the certificate of registration is prima facie
evidence, pursuant to Section 7(b) of the Act, of the
validity of the registration and registrant’s exclusive
right to use the mark in connection with the goods
specified. Applicant’s argument that the registered mark
is essentially abandoned is a collateral attack on the
validity of the registration that cannot be entertained in
the context of an ex parte proceeding. Rather, the
appropriate forum for such a challenge is a cancellation
proceeding. In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534-35 (Fed. Cir. 1997); TMEP §1207.01(d)(iv)
(3rd ed. 2002).
We conclude that consumers familiar with registrant’s
pepper-based hot sauce, vinegar, honey and salt sold under
the SAGAM marks would be likely to mistakenly believe, upon
encountering applicant’s mark SUGAM for Indian lentils,
pastes, chutneys, flours and spices, that the goods
originated with or are somehow associated with or sponsored
by the same entity.
Decision: The refusals to register are affirmed.