Sovena U.S.A. Inc.

Trademark Trial and Appeal Board

Dec 8, 2009

No. 76599644re (T.T.A.B. Dec. 8, 2009)

Mailed:
12/8/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sovena U.S.A. Inc.
________

Serial No. 76599644
_______

On Request for Reconsideration

Mary Helen Sears for Sovena U.S.A. Inc.

Florentina Blandu, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Hairston, Grendel and Holtzman, Administrative
Trademark Judges.

Grendel, Administrative Trademark Judge:

INTRODUCTION

This case now comes up on applicant’s November 5, 2009
request for reconsideration (under Trademark Rule 2.144, 37
C.F.R. §2.144) of the Board’s October 5, 2009 final
decision affirming the Trademark Examining Attorney’s
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76599644
2
Section 2(d) refusal to register applicant’s mark. We deny
the request for reconsideration.
In the above-captioned application, applicant seeks
registration on the Principal Register of the mark PARADISE
(in standard character form) for goods identified in the
application as “imported and domestic olive oil and
vegetable oils,” in Class 29.1 The Trademark Examining
Attorney issued a final refusal of registration on the
ground that applicant’s mark, as applied to the goods
identified in the application, so resembles the mark CHEF’S
PARADISE depicted below,

previously registered on the Principal Register for
numerous goods specifically including “olive oil” in Class

1 Serial No. 76599644, filed on June 29, 2004. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). May 18, 1950 is alleged in the application to
be the date of first use of the mark anywhere and the date of
first use of the mark in commerce.

Ser. No. 76599644
3
29,2 as to be likely to cause confusion. Trademark Act
Section 2(d), 15 U.S.C. §1052(d).
In its October 5, 2009 final decision, the Board
affirmed the refusal to register, finding that a likelihood
of confusion exists as between applicant’s mark as applied
to applicant’s goods as identified in the application’s
identification of goods and the cited registered mark as
applied to the goods identified in the cited registration.
In its request for reconsideration, applicant has
requested that its identification of goods be amended and
that the application be amended to include a disclaimer.
Applicant also has submitted additional evidence in
opposition to the refusal, and certain additional arguments
based on that evidence and on its proposed amendments to
the application. Applicant also has repeated many of the
arguments made in its appeal brief.
STANDARD FOR RECONSIDERATION
The premise underlying a request for reconsideration
of a final decision “is that, based on the evidence of
record and the prevailing authorities, the Board erred in
reaching the decision it issued. The request may not be
used to introduce additional evidence, nor should it be

2 Reg. No. 2685700, issued on February 11, 2003 from an
application filed on October 10, 2001. Section 8 affidavit
Ser. No. 76599644
4
devoted simply to a reargument of the points presented in
the requesting party’s brief on the case. Rather, the
request normally should be limited to a demonstration that,
based on the evidence properly of record and the applicable
law, the Board’s ruling is in error and requires
appropriate change.” Trademark Trial and Appeal Board
Manual of Procedure (2d ed. March 2004)(TBMP) §543; see
also §1219.01.
APPLICANT’S UNTIMELY EVIDENCE
Initially, we shall give no consideration to the
evidence submitted by applicant for the first time with its
request for reconsideration. This evidence is untimely.
See Trademark Rule 2.142(d), 37 C.F.R. §2.142(d).3
Likewise, we reaffirm our refusal, made in our final
decision, to consider the evidence submitted by applicant
for the first time with its appeal brief and supplemental
appeal brief. As we noted in the final decision, that
evidence was untimely under Trademark Rule 2.142(d). We

accepted; Section 15 affidavit acknowledged.

3 Trademark Rule 2.142(d) provides: “The record in the
application should be complete prior to the filing of an appeal.
The Trademark Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant or by
the examiner after the appeal is filed. After an appeal is
filed, if the appellant or the examiner desires to introduce
additional evidence, the appellant or the examiner may request
the Board to suspend the appeal and to remand the application for
further examination.”
Ser. No. 76599644
5
will add, however, that our decision in this case would be
the same even if we had considered all of applicant’s
untimely evidence.
APPLICANT’S PROPOSED AMENDMENTS TO THE APPLICATION
We turn next to applicant’s newly-proposed amendments
to its application, i.e., its request to amend its
identification of goods and its request for entry of a
disclaimer. Specifically, applicant requests that its
identification of goods be amended from the current
identification, “imported and domestic olive oil and
vegetable oils,” to “blends of imported and/or domestic
olive oil with vegetable oils, blended vegetable oils and
pure vegetable oils.” Applicant further requests that the
application be amended to include the following disclaimer
with respect to its standard character mark: “Applicant
hereby disclaims the right to use the trademark “Paradise”
in any typographical format other than plain block
capitals.”
Trademark Rule 2.142(g), 37 C.F.R. §2.142(g), provides
that “An application which has been considered and decided
on appeal will not be reopened except for the entry of a
disclaimer under §6 of the Act of 1946 or upon order of the
Director, but a petition to the Director to reopen an
application will be considered only upon a showing of
Ser. No. 76599644
6
sufficient cause for consideration of any matter not
already adjudicated.”
Applicant’s request to amend its identification of
goods from “imported and domestic olive oil and vegetable
oils,” to “blends of imported and/or domestic olive oil
with vegetable oils, blended vegetable oils and pure
vegetable oils” is denied. An amendment to the
identification of goods after final decision is not
permitted by means of a request for reconsideration under
Trademark Rule 2.142(g). See In re Mack Trucks, Inc., 189
USPQ 642 (Comm’r 1976)(petition to reopen examination after
final decision for consideration of amendment to
identification of goods denied).4

4 We add that even if the proposed amendment to the
identification of goods were to be entered, it would not affect
our decision.
Applicant assertedly offers the proposed amendment to
overcome what it perceives to be the Board’s finding in the final
decision that, under the first du Pont factor, applicant’s mark
and the cited registered mark are similar because applicant’s
goods as identified are identical to the goods identified in the
cited registration, i.e., olive oil. See Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992). However, the Board’s finding that the marks
are similar was not based solely on the fact that the respective
goods are identical. The Board discussed at length the
similarity of the marks themselves in terms of appearance, sound,
connotation and commercial impression. The fact that the goods
are identical further supported the Board’s finding that the
marks are confusingly similar, but was not determinative in
itself. For all of the reasons discussed in our opinion, we
would find the marks to be similar even if the goods were not
identical.
Applicant also argues in its request for reconsideration
that the proposed amendment to the identification of goods
Ser. No. 76599644
7
We also deny applicant’s request to amend the
application to include its proposed disclaimer with respect
to its standard character mark, i.e., “Applicant hereby
disclaims the right to use the trademark ‘Paradise’ in any
typographical format other than plain block capitals.”5
Trademark Rule 2.142(g) allows for amendment of an
application to enter a disclaimer after final decision on
appeal. Generally, this rule is used in cases where the
basis of the underlying refusal on appeal was a requirement
for entry of the disclaimer. If the disclaimer requirement
is affirmed in the Board’s final decision, the Board
generally will allow the applicant time to submit the
required disclaimer. If the applicant submits the required
disclaimer, and the disclaimer otherwise puts the
application in condition for publication, then the final

overcomes the Board’s finding, under the second du Pont factor,
that applicant’s goods and registrant’s goods are identical.
However, even assuming that applicant’s proposed amendment to its
identification of goods would render the respective goods non-
identical, we still would find that the respective goods i.e.,
registrant’s olive oil and applicant’s blended olive
oil/vegetable oil, are highly similar. It is not necessary that
the respective goods be identical in order to support a finding
that they are similar under the second du Pont factor. See In re
Rexel Inc., 223 USPQ 830 (TTAB 1984). We would find that the
second du Pont factor weighs heavily in favor of a finding of
likelihood of confusion in this case even if applicant’s proposed
amendment of its identification of goods were to be entered.

5 It is questionable whether this would be a proper disclaimer in
any event, inasmuch as it essentially seeks to transform
applicant’s standard character drawing of the mark into a special
form drawing.
Ser. No. 76599644
8
decision affirming the disclaimer requirement refusal will
be set aside, the disclaimer entered, and the application
will proceed to publication. See, e.g., In re Rosemount
Inc., 86 USPQ2d 1436 (TTAB 2008); In re Brown-Forman Corp.,
81 USPQ2d 1284 (TTAB 2006).
However, entry of a disclaimer after final decision
under Trademark Rule 2.142(g) will be allowed only if it
would put the application in condition for publication
without the need for further examination by the examiner.
See In re Petite Suites Inc., 21 USPQ2d 1708 (Comm’r
1991)(requested entry of disclaimer after final decision
denied because further examination of registrability of
mark pursuant to Trademark Act Section 2(f) would still be
required); In re S.D. Fabrics, Inc., 223 USPQ 56, 57 n.1
(TTAB 1984)(requested entry of disclaimer after final
decision denied because further examination of
registrability of mark on Supplemental Register would still
be required).6
In this case, the basis for the underlying refusal of
registration is likelihood of confusion under Trademark Act

6 Cf. In re Vesper Corp., 8 USPQ2d 1788, 1789 n.3 (Comm’r
1988)(petition to reopen application to amend description of the
mark after final decision denied because it would require further
examination with respect to underlying functionality refusal); In
re Vico Products Manufacturing Co., Inc., 229 USPQ 716 (TTAB
1986)(same).

Ser. No. 76599644
9
Section 2(d), not a disclaimer requirement. Applicant has
offered the proposed disclaimer in an attempt to overcome
the Section 2(d) refusal. Even if the disclaimer were to
be entered, it would not put the application in condition
for publication, because further examination of the
application still would be required. That is, the
application would have to be reopened for a determination
of whether the proposed disclaimer would suffice to render
applicant’s mark and the cited registered mark dissimilar
for purposes of the first du Pont factor and, further,
whether the disclaimer would obviate the Section 2(d)
refusal entirely, thus putting the application in condition
for publication. In short, because applicant’s proposed
disclaimer would not put the application in condition for
publication but rather would necessitate further
examination of the application with respect to the
underlying the Section 2(d) refusal on appeal, entry of the
disclaimer is not permissible under Trademark Rule
2.142(g). See In re Petite Suites Inc., supra; In re S.D.
Fabrics, Inc., supra.7

7 We add, moreover, that even if applicant’s proposed disclaimer
were to be entered, it would not alter our finding that
applicant’s mark is confusingly similar to the cited registered
mark under the first du Pont factor. Applicant assertedly offers
the disclaimer to overcome the Board’s finding in its final
decision that registration of applicant’s mark in standard
character form would entitle applicant to display its mark in all
Ser. No. 76599644
10
LIKELIHOOD OF CONFUSION
We have considered all of applicant’s arguments in
support of its request for reconsideration of our decision
finding that a likelihood of confusion exists. To the
extent that applicant’s arguments are merely restatements
of the arguments made in applicant’s appeal brief, we
remain unpersuaded that our findings were erroneous.
For the reasons discussed in our final decision, we
find that applicant’s mark is highly similar to the cited
registered mark in terms of appearance, sound, connotation
and commercial impression. In particular, we reiterate
that applicant’s reliance on the purported manner in which
the respective marks appear on their actual product labels
is misplaced. Our likelihood of confusion determination in
this case must be based solely on the marks as they are set
forth in the application and the registration,
respectively. See Kimberly-Clark Corporation v. H. Douglas
Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir.

reasonable manners, including in the manner in which the cited
registered mark is displayed. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). However,
we would find that even if applicant were to limit the display of
its standard character mark to block capital letters by means of
its proposed disclaimer, the mark still would be confusingly
similar to the cited registered mark because the stylization of
the cited registered mark is so minimal. The proposed disclaimer
therefore would not affect our likelihood of confusion
determination in this case.

Ser. No. 76599644
11
1985); Vornado, Inc. v. Breuer Electric Mfg. Co., 156 USPQ
340 (CCPA 1968); Hercules Inc. v. National Starch and
Chemical Corp., 223 USPQ 1244 (TTAB 1984).
For all of the reasons discussed in our final
decision, we find that applicant’s goods and registrant’s
goods, as they are identified in the application and the
registration, respectively, are legally identical and
otherwise highly similar. Likewise, the trade channels and
classes of purchasers are highly similar, and the goods are
inexpensive ordinary consumer items purchased by ordinary
consumers. The purported absence of actual confusion is
not dispositive, especially in view of the fact that there
has been little or no overlap or opportunity for actual
confusion to have occurred in the marketplace.
In our final decision, we found that there was no
evidence under the ninth du Pont factor pertaining to the
“variety of goods” upon which the respective marks are
used. In its request for reconsideration, applicant notes
that the cited registration itself indicates that the
registered mark is used on a variety of goods and services.8

8 The goods and services listed in the cited registration are:
Class 16 “bakery paper”; Class 21 “storage containers; bakery
supplies, namely baking pans, measuring cups, measuring spoons,
baking boxes; bakery paper; cutting boards”; Class 24 “towels;
tablecloths”; Class 29 “preserved beans, jams, processed olives,
pickles, canned vegetables, olive oil, tart and pastry shells;
prepared dough; prepared desserts, namely, pies and tarts; flour;
Ser. No. 76599644
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However, to the extent that registrant uses its mark as a
house mark on a variety of goods and services, that fact
weighs in favor of a finding of likelihood of confusion,
not against such a finding. See In re Wilson, 57 USPQ2d
1863 (TTAB 2001).
Next, for the reasons discussed in our final decision,
we are not persuaded by applicant’s arguments regarding
registrant’s purported belief that confusion is unlikely,
which are based on the unsuccessful settlement negotiations
and unexecuted draft settlement agreement between applicant
and registrant during the course of applicant’s now-
dismissed cancellation proceeding against the cited
registration. Again, there is no timely evidence in the
record concerning this issue. Even if we were to consider
applicant’s untimely evidence, we would give it little or
no probative value in the absence of an actual consent from
registrant to registration of applicant’s mark. We will
not assume such consent on registrant’s part. See In re
Association of the United States Army, 85 USPQ2d 1264 (TTAB

pasta; coffee; tea; sugar; maple syrup; berry syrup; honey; non-
essential oils for food flavoring; spices; vinegar; sauces;
candy; cookies; crackers”; Class 30 “baking ingredients, namely
gelatin, baking sugar and yeast”; Class 31 “unprocessed nuts,
grain, olives; fresh beans; fresh vegetables”’ and Class 35
“retail distributorship featuring commercial kitchen equipment,
food service equipment, restaurant supplies and foods.”

Ser. No. 76599644
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2007); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); In
re Kent-Gamebore Corp., 59 USPQ2d 1373 (2001).
Finally, applicant in its request for reconsideration
argues at length that its predecessor-in-interest had owned
a prior registration, Reg. No. 1962751 (now cancelled) of
the same PARADISE mark for the same goods covered by
applicant’s current application, and that this prior
registration was not cited as a Section 2(d) bar to the
registration cited against applicant’s application in the
present case. It is settled, however, that we are not
bound by the decisions of previous examining attorneys but
instead must reach our decision based on the evidence
before us in this case. See In re Davey Products Pty Ltd.,
92 USPQ2d 1198, 1206 (2009); In re Thomas, 79 USPQ2d 1021,
1028 (2006); and In re Kent-Gamebore Corp., supra, 59
USPQ2d at 1377. For all of the reasons discussed in our
final decision and in this denial of applicant’s request
for reconsideration, we find that the evidence establishes
that a likelihood of confusion exists in this case.
DECISION
In summary, we are not persuaded that our October 5,
2009 final decision conclusion that a likelihood of
confusion exists and that registration of applicant’s mark
Ser. No. 76599644
14
therefore is barred under Trademark Act Section 2(d) was
erroneous.

Decision: Applicant’s request for reconsideration is
denied. The refusal to register is affirmed.9

9 Applicant’s time for filing an appeal of our decision affirming
the refusal to register shall expire two months after the date of
this decision denying applicant’s request for reconsideration.
See Trademark Rule 2.145(d)(1), 37 C.F.R. §2.145(d)(1).