Sokol and Company

Trademark Trial and Appeal Board

Mar 8, 2013

No. 85165569 (T.T.A.B. Mar. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Sokol and Company
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Serial No. 85165569
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David C. Brezina of Ladas & Parry LLP for Sokol and Company.

Gene V. J. Maciol, II, Trademark Examining Attorney, Law Office 110 (Michael
Hamilton, Managing Attorney).
_____

Before Quinn, Cataldo, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Sokol and Company filed an application to register on the Principal Register
the mark set forth below for “Seasoned coating for meat, fish, poultry,” in
International Class 30.1

1 Application Serial No. 85165569, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on
October 30, 2010.
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The trademark examining attorney refused registration under § 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, so resembles the registered mark WING IT, as to
be likely to cause confusion, or to cause mistake, or to deceive. The cited mark is
registered on the Principal Register in standard character form for “hot sauce”2 and
for “sauces.”3 When the refusal was made final, applicant filed a request for
reconsideration, which was denied. This appeal ensued. 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. 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).
We will first address the goods of applicant and registrant. Applicant has
submitted copies of the specimens of use filed with the Patent and Trademark
Office by the registrant,4 in order to demonstrate that registrant’s goods are
“specifically sauce for chicken wings.”5 This fact will have some relevance when we

2 Reg. No. 1524746, issued February 14, 1989. The registration was renewed in 2008.
3 Reg. No. 3605932, issued April 14, 2009.
4 Applicant’s response filed August 17, 2011.
5 Applicant’s brief at 2.
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consider the marks at issue; however, in considering the scope of the cited
registrations, we look to the registrations themselves, and not to extrinsic evidence
about registrant’s actual goods. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
Accordingly, we assume that registrant’s goods include all kinds of “sauces” and
“hot sauces.” Applicant states, with respect to its own goods (which are identified as
“seasoned coating for meat, fish, poultry”) that they “are more of a ‘kit’ for cooking
the products including breading as well as seasoning.”6 Again, as there is no
reference to a “kit” in the application, we assume that applicant’s goods include all
types of seasoned coatings for meat, fish and poultry; such “coatings” could, at the
very least, be in the form of a seasoned mixture of dry ingredients, a “rub,” or a
liquid form of seasoned coating.
Applicant argues that registrant’s sauces “are usable both for cooking and as
condiments, after cooking,” while applicant’s own product “is not suitable as a
condiment after cooking.”7 This argument, taken at face value, makes clear that
the goods of applicant and registrant are similar if only because they are both types
of ingredients used in the preparation and cooking of foods.
The examining attorney has made of record a significant number of third-
party internet websites offering sauces and seasonings, in order to demonstrate a
commercial relationship between the goods of applicant and registrant. This
evidence shows, for example, Phillips brand blackening seasoning offered alongside

6 Applicant’s brief at 21.
7 Id.
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Phillips cocktail sauce and Phillips pineapple sweet chili sauce; Maggi brand Extra
Hot Chili Sauce offered alongside Maggi brand liquid seasoning; NOH of Hawaii
seasoning mixes for chicken, duck, burgers, and stir fries, offered alongside NOH-
Hawaii BB-Q Sauce and NOH-Hawaiian Hot Sauce; rubs for beef, pork, chicken,
and seafood and spicy Parmesan corn seasoning offered by Crate & Barrel alongside
ginger dipping sauce, hibachi sauce, and sesame noodle dipping sauce;8 “coating
mix/fish fry” and Gourmet Shrimp Creole Sauce offered by South Louisiana
Cooking; Cajun seasoning and shrimp creole sauce, both offered under the Ragin’
Cajun mark; a gift box containing sauces and seasoning rub offered under the mark
Ben Benson’s Sauce & Rub Gift Box; poultry sauce and various kinds of “seasoning
& rub” offered under the Bone Suckin’ mark; and barbecue sauce and barbecue rub
offered under the Fiorella’s Jack Stack mark.9 Among this evidence are at least two
instances in which commercial websites have classified “Seasonings & Sauces” as a
single category of products. See websites at and
.
This evidence adequately demonstrates that sauces and seasoned coatings
are sufficiently similar in nature that they may be produced and offered by a single
business, such that customers could reasonably believe that they emanate from a
single source if they are marketed under similar marks. It is also clear from the
evidence that such goods are used for highly similar purposes (as flavoring
ingredients for foods) and that to some extent the goods might be used together by a

8 Office action of April 16, 2012 in response to request for reconsideration.
9 Office action of February 17, 2011.
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single customer or may even be used as substitutes for each other. Accordingly the
du Pont factor relating to the similarity or dissimilarity of the goods favors a finding
of likelihood of confusion.
The examining attorney has also submitted a significant number of use-
based, third-party registrations to show that seasoned coatings and sauces may be
offered by a single business.10 To the extent that such registrations suggest that
the listed goods are of types which may emanate from the same source, they
buttress our finding that the goods of applicant and registrant are related. 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).
Neither the applicant nor the examining attorney has presented evidence
regarding the classes of customers or trade channels for the goods. However, the
nature of the goods indicates that, in each case, they would be marketed to and
purchased by a very broad class of ordinary consumers who purchase foods. Sauces
and seasoned coatings are typically of moderate cost, so there is no reason to
perceive any limitation on the types of food shoppers who might be offered such
goods and be exposed to the marks on them. As the goods are not costly, they may
be purchased on impulse, rather than with an elevated degree of care. We would
also expect both types of goods to be marketed through all of the normal channels of
trade for food products, which would include, at the very least, food stores.

10 Id.
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Accordingly, the du Pont factors relating to trade channels and classes of customers
favor a finding of likelihood of confusion.
We next consider the similarity or dissimilarity of the marks at issue.
Applicant contends that WING IT, which is common to both marks, is weak in
distinctiveness. Applicant has shown, by reference to registrant’s specimens of use,
that the cited marks have been applied to “sauce for chicken wings.”11 Applicant
has also shown, by reference to third-party registrations of marks that include the
designation WING, that applicants for registration of trademarks have repeatedly
associated the words WING and WINGS with chicken wings and sauces for chicken
wings.12 For example, these registrations demonstrate that marks such as HOT
CHIX BUFFALO WING SAUCE, and SALEM’S BUFFALO WINGS SAUCE have
been registered, and that CRAZY BILL’S WINGS was registered for chicken wings
and BUFFALO WILD WINGS was registered for barbecue sauces. These
registrations show that in certain contexts the designation WING may be
understood as referring to chicken wings. We hasten to add, however, that such
registrations do not demonstrate that the marks shown are in use, that the public
has become familiar with them, or that marks containing the designation WING are
weak as a result of widespread third-party use. Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); Productos Lacteos Tocumbo
S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011);
In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983); Olde Tyme Foods

11 Applicant’s brief at 2.
12 Applicant’s response filed August 17, 2011.
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Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to
strength of a mark, however, registration evidence may not be given any weight”).
Applicant goes on to state, “Consumers see [sic] Registrant’s marks will
immediately understand ‘wing’ as used in connection with ‘hot sauces’ and ‘sauces’
to connote chicken wings and the sauces therefor. … Plainly WING IT is far from a
distinctive mark when the goods are the ‘wing sauces’ [shown in registrant’s
specimens of use.]”13 Applicant later argues that the cited marks are “relatively
weak for the identified goods, and … should not be afforded broader protection than
they are due.”14
The connotation of “chicken wing” is present in the cited marks. However,
the marks in their entireties are not merely descriptive of registrant’s goods. As the
examining attorney has argued, the phrase WING IT is a well-known idiom
meaning “to do something with an impromptu manner, improvising, with little
preparation.”15 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (2nd
ed. 1987) defines the expression as “Informal. to accomplish or execute something
without sufficient preparation or experience; improvise: He had no time to study, so
he had to wing it.” Id. at 2179.16 Hence, the registered marks consist of a well-
known idiom that has no descriptive meaning in the context of registrant’s goods,

13 Applicant’s brief at 4.
14 Applicant’s brief at 6.
15 Examining attorney’s brief at 5.
16 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
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combined with a pun that refers indirectly to a purpose of the goods. The structure
of the marks and their double meaning result in inherently distinctive marks.
Applicant has further sought to demonstrate the weakness of the cited marks
by submitting third-party registrations of similar marks.17 For the reasons
discussed above, such registrations are not probative evidence that the cited marks
are weakened by third-party use. Olde Tyme Foods Inc., 22 USPQ2d at 1545. Even
if they were, the relevant registrations are few in number.18 The only one of these
marks that is registered for a food product is W’NG-ITS, a mark whose meaning is
altered by the final letter S, so that it no longer has the same idiomatic meaning as
WING IT. In short, no probative evidence indicates that the registered marks are
weak.
Applicant rightly urges that the marks at issue should be considered in their
entireties, and not dissected. However, in the process of analyzing the marks, 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 National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
It is clear that applicant’s mark consists of two distinguishable components:
an oval carrier that contains the words TASTY DELITE and a roughly rectangular

17 Applicant’s response of August 17, 2011.
18 They are WING-IT for electric deep fryers (Reg. No. 3115158); WINGIN’ IT! HOT
WINGS. COOL PLACE. (and design) for restaurants (Reg. No. 3015573); W’NG-ITS for
frozen chicken breast portions (Reg. No. 3736535); WING’N IT for restaurants (Reg. No.
2576967); and THREE WAYS TO WING IT for restaurants (Reg. Nos. 3249547 and
3298033).
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carrier that contains the words LET’S WING IT!. These two carriers are separated
from each other by a small blank space. The dual nature of the mark is further
shown by the fact that LET’S WING IT! is grammatically a complete sentence; to
combine with it the words TASTY DELITE would disrupt this recognizable
grammatical structure. As applicant’s mark has two recognizable components, it is
reasonable to perceive one or the other as the more dominant component. We agree
with the examining attorney that the carrier containing LET’S WING IT! is the
dominant portion of the mark. The lettering of this portion is at least three to four
times the size of the lettering of TASTY DELITE. Moreover, the position of the
much smaller carrier that contains TASTY DELITE may fairly be described as
marginal.
The wording TASTY DELITE clearly has no similarity to the cited registered
marks, which consist entirely of the words WING IT. However, when we compare
the dominant portion of applicant’s mark with the cited marks, we find that it is
highly similar. First, the entirety of the cited marks, which consist of WING IT, is
encompassed within applicant’s mark; in such cases, confusing similarity has often
been found. See, In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (ML similar to ML MARK LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp.,
376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY similar to LILLI
ANN); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER
IMAGE similar to CREST CAREER IMAGES). The placement of WING IT! on a
separate line in applicant’s mark visually emphasizes the similarity of the mark to
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the registered designation WING IT. Phonetically, the sharing of WING IT is a
substantial degree of similarity. In meaning, LET’S WING IT! and WING IT are
highly similar. As the examining attorney notes, both designations would readily
be recognized as complete sentences that urge the reader to take the same action.
As the average customer retains a general rather than specific impression of marks
in the marketplace, the distinction between WING IT and LET’S WING IT! is likely
to be missed. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Considering applicant’s mark in its entirety, we note applicant’s argument
that its mark has “more words, a distinctive house mark, and distinctive graphics.”
The presence of graphic elements in applicant’s mark does not help applicant,
because the cited marks are registered in standard character form, such that
registrant is not limited to any particular depiction of its mark and registrant’s
styles of presentation might resemble those of applicant. Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88
USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d
2012, 2015 (TTAB 1988). In fact, registrant’s specimens of use, made of record by
applicant, illustrate the potential for similar graphic presentation of the two
companies’ marks. The specimens show WING IT presented in cursive lettering,
with upper case W and I and the other letters in lower case, with the lettering
inclined upward to the right. In these regards, the style of presentation of the
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registered mark resembles the style seen in applicant’s mark. In one specimen,
WING IT even appears on a roughly rectangular carrier inclining upward to the
right, which is yet another graphic feature that resembles the style of applicant’s
mark.
While the applicant’s mark contains more words, the two sets of words are
graphically isolated from each other, reducing the likelihood that all five words will
be interpreted as a unitary expression. As noted above, LET’S WING IT! makes
sense as a grammatical sentence; however, the combined wording TASTY DELITE
LET’S WING IT! does not make grammatical sense. Accordingly, customers are
likely to recognize LET’S WING IT! for the sentence that it is, without allowing the
words TASTY DELITE to alter their interpretation of LET’S WING IT! or the
commercial impression that it creates upon them.
With respect to the portion of the mark that applicant refers to as its “house
mark,” applicant theorizes that there are three types of house marks: (1) distinctive
house marks, which defeat the likelihood of confusion; (2) house marks that are
“presented in a ‘mark as a whole’” and are “insufficiently recognized to negate
confusion”; and (3) famous house marks that create “reverse confusion.”19 Applicant
has also discussed numerous cases relating to house marks. Applicant’s three
categories do not accurately reflect the law. We must decide each case on its own
facts, within the meaning of Section 2(d) of the Trademark Act. The results of
comparisons between other marks that are not identical or substantially identical to

19 Applicant’s brief at 9, and discussion at 9-21.
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the marks now at issue are of extremely limited probative value. It is apparent that
house marks have been found sometimes to be sufficient to dispel confusion and at
other times to aggravate likely confusion.
Viewing applicant’s mark as a whole, the “house mark” TASTY DELITE
creates the impression of a parent brand, of which LET’S WING IT! is a sub-brand.
This is consistent with applicant’s characterization of TASTY DELITE as a “house
mark.” This commercial impression is supported by the graphic separation of the
two portions of the mark on two discrete carriers; by the fact that TASTY DELITE
and LET’S WING IT! do not fit together to form a recognizable grammatical
structure (as do the three words of LET’S WING IT!, alone); and by the fact that the
full-sentence structure of LET’S WING IT! gives it the character of a slogan that is
subordinate to the other source indicator, TASTY DELITE.
Customers are likely to perceive applicant’s mark as a parent brand
accompanying a sub-brand. They are also likely to perceive marks that closely
resemble the sub-brand as a presentation of the sub-brand that happens
incidentally to be unaccompanied by the parent brand. We find WING IT
sufficiently similar to LET’S WING IT! that customers who are exposed to
applicant’s mark would be likely to mistakenly perceive WING IT as a presentation
of applicant’s sub-brand that happens to be unaccompanied, in a particular case, by
the parent brand.
Finally, we note that if there were any doubt about likelihood of confusion,
that doubt is required to be resolved in favor of the prior registrant. In re Hyper
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Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re
Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984).
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s goods, so closely resembles the cited registered marks as to be
likely to cause confusion, mistake or deception as to the source of applicant’s goods.
Decision: The refusal to register is affirmed.