Sokol and Company

Trademark Trial and Appeal Board

Mar 21, 2013

No. 85171408 (T.T.A.B. Mar. 21, 2013)

David C

Gene V
Hamilto

Before H

Opinion
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the follo

for “mix

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the mark
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Serial No.
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Serial Nos. 85171394 and 85171408

2

The examining attorney issued final refusals to register the marks pursuant
to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No. 3278637
as a bar to registration.2 Registration No. 3278637 is for the mark WHOOP DE-
DOO in standard character format for “bakery goods” in Class 30.
After the examining attorney made the refusals final, applicant appealed and
moved to consolidate the appeals.3 The Board granted applicant’s motion and
consolidated the appeals for application Serial Nos. 85171394 and 85171408.
Applicant and examining attorney have filed briefs. For the reasons set forth below,
the refusals to register are affirmed.
Likelihood of Confusion
Applicant contends that in view of the differences between the marks, the
goods covered in its application versus the cited registration, and the presence of its
house mark, there is no likelihood of confusion.
Our determination under § 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., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

2 Registration No. 3278637, owned by Isamax Snacks, Inc., issued on August 14, 2007.
3 On page 1 of its Appeal Brief, applicant indicates that it filed a Request for
Reconsideration that was denied. There is no Request for Reconsideration in the
prosecution file for either application.
Serial Nos. 85171394 and 85171408

3

USPQ 24, 29 (CCPA 1976). We carefully considered all of the evidence of record as
it pertains to the relevant du Pont factors, as well as applicant’s arguments
(including any evidence and arguments not specifically discussed in this opinion).
To the extent that any other du Pont factors for which no evidence or argument
were presented may nonetheless be applicable, we treat them as neutral.
A. Similarity of the Goods and Channels of Trade
We first consider the second and third du Pont factors, namely, the similarity
of the goods and their channels of trade. It is well-settled that the issue of
likelihood of confusion between applied-for and registered marks must be
determined on the basis of the goods as they are identified in the involved
application and registration. Paula Payne Products Co. v. Johnson Publishing Co.,
Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Applicant’s goods are “mixes for bakery goods” and the goods identified in the
cited registration are “bakery goods.” While admitting that both types of products
are “food” products, applicant maintains they involve different markets because its
box mixes must be baked and assembled before consumption, unlike the bakery
goods in the cited registration which are ready-to-eat at the time of purchase.4
The relatedness of the products is amply demonstrated by the 46 use-based,
third-party registrations, owned by dozens of different registrants, that recite both
bakery goods and mixes for bakery goods, submitted by the examining attorney.5

4 Applicant’s Appeal Brief pp. 21-22.
5 Copies of these third-party registrations were attached to the February 17, 2011 Office
Action and the September 15, 2011 Final Office Action.
Serial Nos. 85171394 and 85171408

4

Although these registrations are not evidence that the marks shown therein are in
use or that the public is familiar with them, they nonetheless have probative value
to the extent they are based on use in commerce and serve to suggest that the goods
identified therein are of a kind which may emanate from a single source under a
single mark, i.e., that it is common for the same entity to provide bakery goods and
baking mixes under the same mark. See In re Davey Products Pty Ltd., 92 USPQ2d
1198, 1203 (TTAB 2009); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993). Thus, consumers encountering applicant’s mixes for bakery
goods and the cited registrant’s bakery goods sold under similar marks are likely to
believe the goods emanate from the same source.
Additionally, the five third-party websites submitted by the examining
attorney offering ready-to-eat baked goods such as cakes, cookies, bread, muffins,
and brownies, as well as baking mixes including cake, cookie, and brownie mixes,
provide further evidence of the relatedness of the goods.6 These websites show that
bakery goods and mixes for bakery goods are the types of products offered for sale
by the same entity. The fact that these entities concentrate their businesses on the
sale of bakery products and bakery mixes, and are not mass retailers selling all
types of products, establishes the probative value of this evidence. Additionally, two
of the sites, pamelasproducts.com and billysbakerynyc.com, also show images of
both types of products bearing the same respective trademarks, providing
additional evidence that such products are in fact, sold under the same trademarks.

6 See attachments to September 15, 2011 Final Office Action.
Serial Nos. 85171394 and 85171408

5

These third-party registrations and websites establish a close relationship
between applicant’s baking mixes and the bakery products in the cited registration
and provide strong evidence that such goods are of a kind that may emanate from a
single source.
Because there are no limitations as to trade channels or classes of purchasers
in the description of goods in either of the applications or the cited registration, we
must presume that the respective goods travel through all usual trade channels for
such goods and to all classes of prospective purchasers for those goods. See In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) and In re Elbaum, 211 USPQ
639, 640 (TTAB 1981). Applicant admits its baking mixes and the bakery goods
identified in the cited registration are both categorized as “groceries.” However, it
argues that the purchasers of the products differ because the purchasers of
applicant’s goods must be aware they are purchasing mixes for items which require
preparation and are not ready-to-eat, while purchasers of the bakery goods in the
cited registration are purchasing ready-to-eat baked goods. Based on this
difference, applicant concludes that applicant’s goods, and the registrant’s goods,
are tailored to “particular subset[s] of consumers.”7 Even if each product is tailored
to a “particular subset of consumers,” there is no evidence that the subsets are
mutually exclusive, i.e., that purchasers of ready-to-eat bakery products do not also
purchase mixes to make bakery products and vice versa. The evidence discussed
above shows that applicant’s goods and the goods in the cited registration are

7 See Applicant’s Appeal Brief pp. 21-22.
Serial Nos. 85171394 and 85171408

6

related and move in the same channels of trade, and are sold under conditions that
would create a potential for confusion such as being offered for sale on the same
websites. Additionally, applicant’s and registrant’s products are ordinary consumer
products which are of the type that are purchased on impulse and without much
care or deliberation. To the extent applicant’s and registrant’s respective bakery
mixes and bakery products are not restricted to particular trade channels and are
therefore offered to the general consuming public, the classes of purchasers overlap
and this overlap also weighs in favor of a finding of likelihood of confusion under du
Pont. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001).
In view of the foregoing, we find that the goods are closely related, travel in
the same channels of trade, and are sold to the same classes of purchasers,
supporting a likelihood of confusion under the second and third du Pont factors. See
In re Pan-O-Gold Baking Co., 20 USPQ2d 1761, 1765 (TTAB 1991) (muffin mix and
freshly baked bread rolls are sufficiently related notwithstanding the fact that the
former is available as a mix while the latter is already baked).
B. Similarity of the Marks
We next consider the first du Pont factor focusing on ‘‘the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation,
and commercial impression.” Palm Bay Imports 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). In comparing the marks, we are mindful that
the test is not whether the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are sufficiently similar in terms of
Serial Nos. 85171394 and 85171408

7

their overall commercial impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San Fernando Elec. Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
1. Applicant’s WHOOPIE DO! Stylized Mark
Because applicant’s WHOOPIE DO! mark and registrant’s WHOOP DE-DOO
mark both contain three syllables, beginning with the first syllable “whoop,”
followed by similarly sounding second syllables (i.e., “ee” versus “dee”), and ending
in the word “do,” when comparing the marks in their entireties, they are similar in
sound as well as appearance. With respect to the appearance of the marks,
applicant argues its mark is “heavily” stylized, contains distinctive design elements,
stylized lettering and ends with an exclamation mark.8 This distinction makes
little difference. Where a mark comprises both a word and a design, the word is
normally accorded greater weight because it would be used by purchasers to request
the goods or services. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554
(TTAB 1987); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462
(TTAB 1985). Given the overall similarities in the appearance and sound of the
marks, the inclusion of a hyphen in the cited mark and the exclamation mark in
applicant’s mark are insufficient to distinguish the marks. See In re Kent-Gamebore
Corp., 59 USPQ2d 1373, 1374 (TTAB 2001) (IMPACT and HI-IMPACT marks look

8 Applicant’s Appeal Brief p. 5.
Serial Nos. 85171394 and 85171408

8

and sound alike due to shared word IMPACT, despite the additional prefix HI being
physically connected by a hyphen to the dominant term IMPACT).
Moreover, the cited mark is for the term WHOOP DE-DOO in standard
character format. A mark that is in standard characters may be displayed in any
lettering style; the rights reside in the wording or other literal elements and not in
any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284
(TTAB 2009). Therefore, registrant is entitled to all depictions of its standard
character mark regardless of the font style, size, or color, including the identical
font style and size in which applicant’s applied-for marks are shown. In re Viterra
Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir.
2011) and In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). The
stylized font utilized for the term WHOOPIE DO! in applicant’s marks does not
alter the meaning or the commercial impression formed by the words “whoopie do”
in applicant’s marks. Thus, the presentation of applicant’s mark in a stylized form
that does not impact the commercial impression of its mark will not avoid a
likelihood of confusion with the cited mark, in standard characters, because the
owner of the cited registration has the right to present its mark in a similar manner
of display. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991)
and In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
Turning to the meaning and commercial impression of the marks, the
definition of the cited WHOOP DE-DOO mark is:
Serial Nos. 85171394 and 85171408

9

Noun
1: noisy and exuberant or attention-getting activity (as at
a social affair or in a political campaign)
2: a lively social affair
3: agitated public discussion or debate
www.merriam-webster.com/dictionary/whoop-de-doo 9
Based on this definition, the WHOOP DE-DOO mark connotes something that is
exuberant and lively.
As to the meaning of applicant’s mark, we take judicial notice of the
definition of “whoopee”:
Interjection
–used to express exuberance
www.merriam-webster.com/dictionary/whoop-de-doo.10
Because “whoopie” would be understood as an alternate spelling of “whoopee,” the
meaning of the word “whoopie” in applicant’s mark, like the term “whoop de-doo” in
the cited mark, expresses an exuberant event. The “DO” portion of applicant’s mark
does not alter this meaning. Thus, overall, the marks have similar meanings.
Inasmuch as applicant’s WHOOPIE DO! mark may be considered to be a play
on the phrase “whoop de-doo” embodied in the cited mark, the commercial
impressions of the marks are the same. When used in connection with mixes for

9 See attachment to September 15, 2011 Office Action.
10 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), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).

Serial Nos. 85171394 and 85171408

10

bakery goods, the “whoopie” in applicant’s WHOOPIE DO! mark might also connote
a “whoopie pie,” a type of bakery good familiar to some consumers as recognized by
applicant’s disclaimer of the word “whoopie.”11 The strong similarities in the sound,
appearance and meanings of the marks however, are more than sufficient to
overcome the possibility of a difference in connotation particularly where bakery
goods include whoopie pies.
Applicant contends that the weakness of the cited mark limits it to a narrow
scope of protection that does not encompass applicant’s marks. Merely descriptive
or highly suggestive terms have been generally categorized as “weak” marks, and
the scope of protection extended to these marks has been limited to the
substantially identical notation and/or to the subsequent use and registration
thereof for substantially similar goods. In re Central Soya Co, Inc., 220 USPQ 914,
917 (TTAB 1984) citing In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975).
In support of the weakness of the cited mark, applicant first argues that
“whoop” is descriptive of bakery goods, especially whoopie pies. Its argument is
unsupported by any evidence and ignores the fact that the term “whoop” is not
disclaimed in the cited registration. Applicant next argues the cited mark is weak,
relying on thirteen third-party registrations comprising “whoop” marks for bakery

11 The record indicates that “whoopie pies” are a type of bakery product comprised of two
layers of chocolate cake with mallow creme filling in-between. See specimen filed by
applicant on November 8, 2010, the February 17, 2011 Office Action and the August 17,
2011 Response to Office Action.

Serial Nos. 85171394 and 85171408

11

goods and sandwiches.12 Based on these registrations, applicant contends that
many entities are using “whoop” as a trademark and consumers are therefore
conditioned to recognize many users and can distinguish between the various uses
of “whoop.” However, the following chart of these registrations shows that it is
actually the word “whoopie” that is in common use for bakery goods:
Trademark/SN/RN Brief Goods/Services
AT LEAST 10 SMILES IN EACH
WICKED WHOOPIE PIE

Registration No.: 3284407
(Int’l Class: 30) Bakery goods
BAKING WHOOPIE (Stylized)

Registration No.: 3754201
(Int’l Class: 30) Cakes; cookies;
pastries; pies
BAKING WOOPIE

Registration No.: 3041366
“BAKING” disclaimed
(Int’l Class: 30) Baked chocolate
cream filled desserts
GRAB A WICKED WHOOPIE AND
KEEP SMILING!

Registration No.: 3278640
(Int’l Class: 30) Bakery goods
MAINE WEE WHOOPIE PIE A
PERFECT FINISH!

Registration No.: 3824589
“WHOOPIE PIE” and “MAINE”
disclaimed
(Int’l Class: 31) Bakery goods
THE ORIGINAL BROWNIE WHOOPIE
PIE

Registration No.: 3707226
“BROWNIE WHOOPIE PIE” disclaimed
(Int’l Class: 30) Pastry dessert,
namely, two brownie cakes
sandwiched together with either a
white vanilla cream filling or a
peanut butter cream filling

12 See attachments to August 17, 2011 Response to Office Action.

Serial Nos. 85171394 and 85171408

12

THE WHOO(PIE) WAGON "EVEN OUR
NAME IS FRESH!"

Registration No.: 3915976
“WHOOPIE” disclaimed
(Int’l Class: 30) Bakery desserts;
bakery goods; bakery products,
namely, sweet bakery goods
WHIMSICAL WHOOPIES

Registration No.: 3678972
(Int’l Class: 30) Baked goods,
namely, pies
WHOOPERCHEESIE

Registration No.: 2424265
(Int’l Class: 29) Cheeseburger
sandwich sold only in a fast food
restaurant and only in containers
identifying the fast food restaurant
WHOOPSKIDAWG

Registration No.: 1658421
(Int’l Class: 30) Polish sausage
sandwiches
WICKED WHOOPIE

Registration No.: 3278635
(Int’l Class: 30) Bakery goods
WILD WHOOPIE BAKERY

Registration No.: 3704886
“WHOOPIE BAKERY” disclaimed
(Int’l Class: 30) Bakery products,
namely, sweet bakery goods
WILD WHOOPIE PIE

Registration No.: 3695812
“WHOOPIE PIE” disclaimed
(Int’l Class: 30) Bakery products,
namely, sweet bakery goods

It is well established that third-party registrations are of little probative
value in determining likelihood of confusion because they are not evidence that the
marks depicted therein are in use or that the public is aware of them. However,
they may be submitted to demonstrate the meaning of a word which comprises a
mark, or a portion thereof, in the same way dictionary definitions are used to
illustrate how a term is perceived in the trade or industry. See The Institut
National des Appellations D'Origine v. Vintners International Co. Inc., 958 F.2d
Serial Nos. 85171394 and 85171408

13

1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third party registrations show sense
in which word is used in ordinary parlance and may show that a particular term
has descriptive significance as applied to certain goods or services) and In re Box
Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
A closer look at these registrations reveals that the only pertinent
registration is the cited registration. None of the remaining registrations are
probative of the alleged weakness of the term “whoop” for bakery goods. Twelve of
the registrations are for marks where “whoop” is not used as a stand-alone term,
including ten registrations for marks that include the word “whoopie.”13 Two other
registrations are for marks where “whoop” is merely incorporated as part of a longer
word and the goods are sandwiches which have not been shown to be related to
bakery products or baking mixes. Notably, the owner of the cited registration owns
three of the registrations submitted by applicant.14 Thus, aside from the cited
registration, the remaining registrations are for marks that include the merely
descriptive term “whoopie” and not the arbitrary term “whoop,” or that recite goods
that are unrelated to those at issue herein. In view of the foregoing, these
registrations do not impact the meaning of applicant’s mark or the cited mark, nor
do they support a finding that the cited mark is weak or otherwise entitled to a
narrow scope of protection.

13 Five of the ten registrations include a disclaimer of the word “whoopie.”
14 The cited registrant, Isamax Snacks, Inc., is listed as the owner of Registration Nos.
3278640 and 3278635.
Serial Nos. 85171394 and 85171408

14

Where the goods of the applicant and cited registrant are similar and/or
closely related as they are in this case, the degree of similarity between the marks
required to support a finding of likelihood of confusion is not as great as would be
required with diverse goods. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350, 1354 (Fed. Cir. 2004) also see In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987). Here, the strong similarity of the marks in sound, sight,
and meaning overcome any questionable difference in commercial impression. In a
particular case, any one of the factors (appearance, sound or meaning) may be
critical in finding the marks to be similar, and any difference in the commercial
impressions of the marks at issue in this case is more than overcome by their
similarity in sound and appearance. In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988) and In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987).
Therefore, considering the relevant du Pont factors, we find that the Office has met
its burden in showing a likelihood of confusion between applicant’s WHOOPIE DO!
mark and the cited WHOOP DE-DOO mark.
2. Applicant’s SOLO WHOOPIE DO! Stylized Mark
Applicant contends that due to the weakness of the cited mark, the inclusion
of its registered SOLO house mark in its SOLO WHOOPIE DO! stylized mark is
sufficient to distinguish its mark from the cited mark so as to avoid any likelihood
of confusion.15

15 Specifically, applicant argues that SOLO is a strong house mark entitled to the broadest
scope of protection because it is the subject of other registrations owned by applicant
namely, Registration Nos. 1049138, 1278185, 1973444 and 2672137, none of which are for
bakery goods or mixes for bakery goods. Applicant’s ownership of these registrations does
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Serial Nos. 85171394 and 85171408

16

examples of third-party registrations having the common term ESSENTIALS.
Other than the cited registration, the record does not contain any examples of third-
party registrations having the stand alone term WHOOP in connection with bakery
goods or mixes for bakery goods. Applicant’s listed examples of third-party
registrations that contain the word “whoopie” are not as probative on this issue as
the 23 third-party registrations containing the exact term at issue in Knight
Textiles. Even if the third-party registrations for “Whoopie” marks somehow
evidence the weakness of the cited WHOOP DE-DOO mark, it is well-established
that even weak marks are entitled to protection against the registration by a
subsequent user of a similar mark for closely related goods. King Candy Company
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
We look next to the marks in their entireties to assess their commercial
impression and specifically to the manner in which applicant’s house mark is
depicted in the drawing of the mark (reproduced above). Applicant’s house mark is
displayed in noticeably smaller and different style font from the rest of the mark,
with the term WHOOPIE DO! being prominently featured. In addition, the SOLO
house mark is contained inside a rectangle that is offset to the left side, separate
from the other wording in the mark. In fact, the manner in which the SOLO house
mark is displayed reinforces its intended purpose as a house mark. As such, it does
nothing to alter the meaning or impression created by applicant’s WHOOPIE DO!
mark. Consumers familiar with the registered mark are likely to assume that
applicant’s SOLO house mark simply identifies what had previously been an
Serial Nos. 85171394 and 85171408

17

unidentified anonymous source. Thus, the addition of the SOLO house mark to
applicant’s otherwise confusingly similar WHOOPIE DO! mark does not avoid a
likelihood of confusion with the cited mark and likely suggests instead that
applicant’s products are a variation of registrant’s products. See, e.g., In re Riddle,
225 USPQ 630, 632 (TTAB 1985) (finding RICHARD PETTY’S ACCU TUNE and
design for automotive service centers specializing in engine tune-ups and oil
changes likely to cause confusion with ACCUTUNE automotive testing equipment)
and 4 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 23:43 (4th ed. Mar. 2013).
In view of the foregoing, we find the commercial impression of applicant’s
SOLO WHOOPIE DO! mark similar to that of the cited mark and this similarity
outweighs any dissimilarities, particularly in light of the relatedness of the goods.
C. Conclusion
Because the goods are closely related, the channels of trade and classes of
purchasers are the same, and the marks are similar, confusion is likely between
applicant’s WHOOPIE DO! and SOLO WHOOPIE DO! stylized marks and the
WHOOP DE-DOO word mark in the cited registration. Purchasers familiar with
registrant’s bakery goods would, upon encountering applicant’s mixes for bakery
goods under either of its marks, mistakenly assume that the latter product either
originated with or is in some way connected with registrant.

Decision: The refusals to register the marks in application Serial Nos.
85171394 and 85171408 under Section 2(d) of the Trademark Act are affirmed.