Sovena U.S.A. Inc.Download PDFTrademark Trial and Appeal BoardDec 8, 2009No. 76599644re (T.T.A.B. Dec. 8, 2009) Copy Citation 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 12 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 13 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). Copy with citationCopy as parenthetical citation