Speedway LLC

Trademark Trial and Appeal Board

Mar 22, 2012

No. 77717219 (T.T.A.B. Mar. 22, 2012)

Mailed:
March 22, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Speedway LLC
________

Serial No. 77717219
_______

James F. Porcello Jr. of Emch, Schaffer, Schaub & Porcello
Co., L.P.A. for Speedway LLC.

Linda E. Blohm, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Grendel and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Speedway LLC1 has appealed from the final refusal of
the Trademark Examining Attorney to register COUNTRY FRESH
OVENS in standard characters for “biscuits; breakfast
burritos; brownies; cakes; cookies; Danish pastries; donuts;
English muffins; hamburger sandwiches; hot dog sandwiches;
muffins; sandwiches; sandwiches, namely, breakfast
sandwiches and wraps, and cheeseburgers.2 Registration has

1 The application was filed in the name of Speedway SuperAmerica
LLC. On March 16, 2011, the Office recorded a change of name to
Speedway LLC.
2 Application Serial No. 77717210 was filed on April 20, 2009
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. Applicant subsequently filed an amendment
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77717219
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been refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that applicant’s mark so
resembles the mark COUNTRY OVEN, registered for “cakes, cake
rolls, donuts, bread buns, rolls, fingers and party
squares”3 that, when used on applicant’s goods, it is likely
to cause confusion or mistake or to deceive.4
We begin with a procedural point. With its appeal
brief applicant attached over 300 pages of additional
evidence, to which the examining attorney has objected. In
its reply brief applicant has argued that applicant argued
the same issues during prosecution of the application and
supported its arguments with “the same sort of evidence that
was submitted with the appeal brief,” and that “the evidence
that Applicant submitted with its appeal brief thus serves
the same purpose in arguing the very same issues as were
argued during prosecution and only enforces the strength of
the evidence supplied during prosecution.” p. 2.

to allege use, asserting first use and first use in commerce on
January 13, 2010.
3 Registration No. 0769664, issued May 12, 1964; Section 8 & 15
affidavits accepted and acknowledged; renewed twice.
4 The examining attorney had originally cited an additional
registration as a bar to registration of applicant’s mark. That
registration, No. 0893823, for the mark COUNTRY OVEN for cookies
and also owned by the owner of Registration No. 07069664, was
cancelled in 2011, after the issuance of the final Office action.
In her appeal brief the examining attorney withdrew the refusal
based on this registration.

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Applicant also states that the examining attorney discussed
the evidence in her brief.
Trademark Rule 2.142(d) provides that the record in the
application should be complete prior to the filing of an
appeal and that, after an appeal is filed, if the applicant
or examiner wishes to introduce additional evidence, he
should request the Board to suspend the appeal and remand
the application for further examination. The cases are
legion that exhibits attached to a brief that were not made
of record during examination are untimely, and generally
will not be considered. See TBMP § 1203.03(e) and cases
cited therein. If, in his or her brief, the examining
attorney discusses the exhibits attached to an applicant’s
brief without objecting to them, they will be deemed to have
been stipulated into the record. Id. However, in the
present case the examining attorney clearly did object to
the exhibits attached to applicant’s brief. “Because the
proposed evidence was untimely submitted, this evidence
should not be considered.” Brief, unnumbered p. 7. We
therefore do not view the examining attorney’s comments
about the lack of probative value of the exhibits as
stipulating to their being of record. Thus, we have given
no consideration to any materials submitted with applicant’s
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appeal brief that were not timely submitted during
prosecution of the application.
This brings us to the substantive issue before us,
whether applicant’s mark for its identified goods is likely
to cause confusion with the cited registration. Our
determination of this issue is based on an analysis of all
of the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Turning first to the goods, they are identical in part,
in that the identification of goods in applicant’s
application and the cited registration both include cakes
and donuts. We concentrate our analysis on these legally
identical goods, rather than discussing the examining
attorney’s evidence regarding the relatedness of other items
in the identification, because likelihood of confusion must
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be found if there is likely to be confusion with respect to
any item that comes within the identification of goods in
the application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). We
note, however, that the third-party registrations submitted
by the examining attorney also show that many of the other
goods identified in applicant’s application are related to
the goods identified in the registrant’s registration;
third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The
du Pont factor of the similarity of the goods favors a
finding of likelihood of confusion.
Because the goods are, in part, identical, they must be
presumed to travel in the same channels of trade and be sold
to the same class of purchasers. In re Smith and Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). Applicant has explained that its goods are
sold in gas station convenience stores, and also asserts
that the registrant’s goods are sold in grocery stores,
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arguing that the goods are therefore sold through different
channels of trade. However, the question of likelihood of
confusion must be determined based on an analysis of the
mark as applied to the goods and/or services recited in an
applicant’s application vis-à-vis the goods and/or services
recited in the registration, rather than what the evidence
shows the goods and/or services to be. In re Dixie
Restaurants Inc., 41 USPQ2d at 1534. Because the respective
identifications have no limitations as to the channels of
trade, we must assume that the goods are sold in all
channels of trade appropriate for such goods, and therefore
both applicant’s and the registrant’s goods must be deemed
to be sold in, inter alia, both grocery stores and
convenience stores.
Applicant also argues that even if the goods are deemed
to be sold in the same channels of trade, supermarkets and
convenience stores are “mega-stores” that “sell so many
different items that overlap in such channels of trade that
this particular factor has been discounted by some courts on
account of the fact that consumers are used to seeing
similar goods with similar branding in this setting.”
Brief, p. 8. Whether or not all goods would be considered
related merely because they are sold in a supermarket or
“mega-store,” here the goods are identical, and would likely
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be sold next to each other or on shelves in very close
proximity.
The du Pont factor of the channels of trade favors a
finding of likelihood of confusion.
The du Pont factor of the conditions of purchase also
favors a finding of likelihood of confusion. Items like
cake and donuts are bought by the public at large. Further,
they are inexpensive items that are subject to impulse
purchase. Purchasers of relatively inexpensive comestible
goods subject to frequent replacement are held to a lesser
standard of purchasing care. Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc. 748 F.2d 669, 223 USPQ 1281
(Fed. Cir. 1984).
This brings us to a consideration of the marks, keeping
in mind that when marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant’s
mark is COUNTRY FRESH OVENS, the cited mark is COUNTRY OVEN.
The marks thus begin with the identical word COUNTRY, and
end with the identical word (but for the pluralization)
OVENS/OVEN. In effect, applicant has added the word FRESH
to what is virtually the registrant’s mark, in that the
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pluralization of OVENS in applicant’s mark has no
distinguishing effect. With respect to the use of the
plural form of OVEN in applicant’s mark, it is not clear
that consumers for the goods at issue herein would notice or
accord any import to the “S” appearing at the end of the
mark. See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339
(CCPA 1957) (no material difference between the plural and
singular forms of the mark ZOMBIE). Applicant attempts to
distinguish this case, as well as others, on the basis that
the only difference in the marks involved in those cases was
the pluralization, while in the present case applicant’s
mark also includes the word FRESH. To the extent that
applicant is arguing that because its mark includes the word
FRESH as well, the pluralization of OVENS somehow adds a
distinguishing element, we are not persuaded. There are
many other cases involving marks that have additional words
where pluralization was found not to be a distinguishing
element. See, for example, Chicago Bears Football Club Inc.
v. 12th Man/Tennessee LLC, 83 USPQ2d 1073, 1077 (TTAB 2007),
involving the marks 12th BEAR and BEARS, i.e., “12th” was an
additional element, in which the Board said, “[W]e cannot
attribute much trademark significance to the difference in
the plural and singular form of the word “Bear” in the
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marks.” Thus, we do not consider the pluralization of OVENS
in applicant’s mark to be a distinguishing factor.
Applicant’s mark does include the additional word
FRESH, and the presence of this word, necessarily, results
in some differences in appearance and pronunciation of the
two marks. However, these differences are not sufficient to
distinguish the marks. As has been frequently stated, the
question 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 their entireties that
confusion as to the source of the goods or services offered
under the respective marks is likely to result. In re Iolo
Technologies LLC, 95 USPQ2d 1498, 1499 (TTAB 2010).
Comparing the marks in this manner, the similarities in
appearance and pronunciation far outweigh the differences.
In particular, because we must assume that applicant’s and
the registrant’s identical goods could be sold on the same
shelves, and could be simply “grabbed” by a purchaser as an
impulse purchase and without careful examination, such a
consumer might well notice only the identical first and last
words of applicant’s mark and assume he or she was taking
the registrant’s COUNTRY OVEN cake or donuts.
With respect to the meaning of the marks, applicant
argues that its goods are sold in convenience stores, where
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freshness is a concern for the consumer purchasing ready-to-
eat items, and “the addition of the word ‘fresh’ is intended
to create the commercial impression of freshness in the
consumer.” Brief, p. 6. Applicant also asserts that the
COUNTRY OVEN goods are sold in supermarkets. As a result,
applicant argues that “while the mark COUNTRY OVEN seeks to
create the impression that the branded goods are made in an
old fashioned country style by bringing to mind rural or
rustic preserving methods such as baking, canning and
pickling, the mark COUNTRY FRESH OVENS connotes food items
that are ‘fresh’ in a ‘just gathered,’ ‘farm-to-table’
manner,” such that COUNTRY OVEN connotes a style of baked
goods, while COUNTRY FRESH OVENS connotes a product that
uses ingredients that are fresh in a way only found in a
country setting.” Id.
We are not persuaded by applicant’s arguments. First,
because the goods are not limited as to their channels of
trade, we cannot assume that applicant’s goods will be seen
only by people shopping in convenience stores, and the
registrant’s only by people shopping in supermarkets.
Second, applicant’s contentions as to the concerns of
shoppers in the various venues, and the resulting message
that they will understand from each of the marks seems, to
say the least, highly speculative. It appears much more
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likely that they will view each mark as suggesting products
that are baked in ovens and that the products have a country
or plain, down-home style. Third, even if we were to accept
applicant’s contention that its goods are sold in
convenience stores and the registrant’s are sold in
supermarkets, consumers of cakes and donuts may shop at both
types of stores, and therefore would be likely to encounter
both products. Consumers familiar with the registrant’s
COUNTRY OVEN donuts, for example, seeing donuts sold under
the mark COUNTRY FRESH OVENS, are likely to believe that the
goods come from the same source. Even if consumers were to
realize that one mark includes the word FRESH, they are
likely to view COUNTRY FRESH OVENS as a variation of the
COUNTRY OVEN mark they know, with both marks indicating
goods coming from a common source. Certainly, for these
inexpensive impulse purchases they will not undertake the
psychological dissection of the marks to arrive at the
differences in meaning that applicant suggests.
Accordingly, although there are some differences
between the marks, overall they are similar in appearance,
pronunciation, meaning and commercial impression. The du
Pont factor of the similarity of the marks favors a finding
of likelihood of confusion.
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Applicant argues that the registrant’s mark is weak,
both because it is not well known or famous, and because
there are “an abundance of third party marks in use on
similar goods that incorporate the words ‘country’ and/or
‘oven’) both registered and unregistered.” Brief, p. 11.
We agree that there is no evidence to show that the
registrant has a famous mark, although we would not expect
evidence of such fame in deciding an ex parte appeal, since
an examining attorney would normally not have access to the
type of evidence by which, in an inter partes proceeding, a
plaintiff can prove fame of its mark. In terms of third-
party marks, we reiterate that we have given no
consideration to the evidence attached to applicant’s appeal
brief that was not previously made of record. Nevertheless,
applicant did submit, with its response to the first Office
action, several third party registrations for marks
containing the word COUNTRY or OVEN for baked goods, for
example, COUNTRY LIVING (Reg. No. 3438038); COUNTRY TREATS
(Reg. No. 2702176); COUNTRY HOME (Reg. No. 3001339); COUNTRY
EPICURE (Reg. No. 1289265); CUPOLADUA OVEN (Reg. No.
3659183); OVEN TREASURES (Reg. No. 3021557); GRANNY’S OVEN
(Reg. No. 2326926); RIGHT FROM THE OVEN (Reg. No. 2968183);
and NATURAL OVENS (Reg. No. 2720416). Although these
registrations are not evidence that the marks shown therein
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are in use, or that the public is familiar with them, they
can be used, in the manner of dictionary definitions, to
show that a mark or a particular term within a mark has a
significance in the relevant industry. See Mead Johnson &
Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977). The
meaning conveyed by COUNTRY and OVEN in the third-party
marks suggests the dictionary definition of the words,
namely the idea that these are baked goods, i.e., baked in
ovens, and having an uncomplicated or down-home style.
We would agree that the registrant’s mark is suggestive
of its identified goods, and therefore the protection to be
accorded to it is not as great as it would be for an
invented term or an arbitrary mark. However, suggestive
marks are still entitled to a degree of protection, and in
this case the protection due to the cited registration
COUNTRY OVEN extends to prevent the registration of the very
similar mark COUNTRY FRESH OVENS for goods that are, in
part, identical. We also point out that none of the third-
party registrations is as similar to the registrant’s mark
as is applicant’s mark; while the third-party registrations
contain either the word COUNTRY or OVEN, applicant’s mark
contains both of these words.
As for third-party use, applicant has submitted a
listing retrieved by the Google search engine giving the
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summary results from a search for “country oven.” As we
have said in other cases, such summary results have little
probative value because there is very little text to show
the context within which the term is used. See TBMP
§ 1208.03 (3d ed. 2011) and cases cited therein. From what
we can tell, it appears that many of these references are to
restaurants. It is not clear that any of these listings
refers to COUNTRY OVEN used as a trademark for baked goods.
Certainly there is insufficient evidence of third-party uses
for the products at issue from which to conclude that
consumers would distinguish between applicant’s and the
registrant’s mark based on the word FRESH and the
pluralization of OVEN.
The cumulative effect of all contributing factors must
be weighed, as each case is decided on its own facts. In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565 (Fed.
Cir. 1984). In this case, in weighing the various du Pont
factors on which we have evidence or argument, we find that
the identity of the goods (in part), the legally identical
channels of trade and classes of customers for such goods,
and the fact that these goods can be purchased on impulse
and without care weigh heavily in favor of finding a
likelihood of confusion. In addition, despite the
additional word FRESH in applicant’s mark and the
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pluralization of OVEN, the marks are, on the whole, similar.
Applicant’s reliance on In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1958, 1063 (Fed. Cir. 2003), for the
statement that “the finding of similarity is a less
important factor in establishing a likelihood of confusion
than it would be if the two marks had been identical in
design or nearly indistinguishable to a casual observer” is
not really applicable to the present situation. First, it
was said in the context of upholding the Board’s finding
that the marks at issue, BLUE MOON with a design of a full
moon rising over a forest scene, and BLUE MOON with a
cartoon-type design of a moon with a face and wearing
sunglasses, were similar. Second, the language quoted by
applicant followed the statement that “because there are
significant differences in the design of the two marks.” In
the present case, for the reasons we have already discussed,
the word FRESH that has been inserted between COUNTRY and
OVENS in applicant’s mark does not have the same impact as
the designs in the marks in the Coors case. Moreover, as
opposed to the Coors case, here we have identical goods.
While the similarity of the marks may be a matter of degree
in determining how much weight to give this factor, the
Court has told us, as stated above, that when goods are
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identical, the degree of similarity of the marks necessary
to support a conclusion of likely confusion declines.
Accordingly, we find that applicant’s mark COUNTRY
FRESH OVENS used for the goods identified in the application
is likely to cause confusion with the cited registration for
COUNTRY OVEN. We also point out the often-cited principle
that “a new entrant presenting a new mark for registration
has an obligation to avoid confusion with established marks
in the same market.” Bridgestone Americas Tire Operations,
LLC v. Federal Corporation, __F.3d__, slip. op. No. 2010-
1376, p. 5 (Fed. Cir. March 16, 2012). In the present case,
according to its amendment to allege use, applicant began
using its mark on January 13, 2010; the cited registration
issued in 1964.
Decision: The refusal of registration is affirmed.