Sun Management Services, Inc.

Trademark Trial and Appeal Board

Sep 20, 2001

No. 75735772 (T.T.A.B. Sep. 20, 2001)

9/20/01

Paper No. 11
GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sun Management Services, Inc.
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Serial No. 75/735,772
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Gregg Emch of Emch, Schaffer, Schaub & Porcello Co., L.P.A.
for Sun Management Services, Inc.

Amy C. Page and Tarah K. Hardy, Trademark Examining
Attorneys, Law Office 110 (Chris A.F. Pedersen, Managing
Attorney).
_______

Before Cissel, Rogers and Drost,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Sun Management Services, Inc. has filed an application
to register the mark CHIEF for supermarket store services.1
The Examining Attorney refused registration of applicant’s
mark under Section 2(d) of the Lanham Act, 15 U.S.C.
§1052(d), because of the prior registration of CHIEF for

1 Serial No. 75/735,772, filed June 23, 1999, asserting
applicant’s first use and first use of the mark in commerce as of
March 4, 1951.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/735,772
2
“spices and seasoning; namely, curry powder, ground
massala, amchar massala, baking powder, geera, roasted
geera, saffron, tandoori massala, whole grain massala,
garlic salt, celery salt, poultry seasoning, black pepper,
white pepper, meat tenderizer, garlic powder, onion powder,
jerk seasoning, seafood seasoning, Chinese seasoning
powder, steak seasoning powder, paprika and cocoa.”2
When the Examining Attorney made the refusal of
registration final, applicant appealed. Both applicant and
the Examining Attorney have filed briefs, but an oral
argument was not requested.
It is the Examining Attorney’s position that
registration must be refused under Section 2(d) because
there is a likelihood that consumers of the respective
goods and services would be confused or mistaken as to
their source or sponsorship, when the goods or services are
marketed contemporaneously under the respective marks.
Applicant contends there is no likelihood of confusion or
mistake.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are

2 Registration No. 1,871,487 issued to C.B.P. Limited, a
corporation of Trinidad and Tobago, January 3, 1995, and lists
1962 as a date of first use and 1963 as a date of first use of
the mark in commerce. Section 8 and 15 affidavits accepted and
acknowledged, respectively, April 6, 2001.
Ser No. 75/735,772
3
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In our
analysis of likelihood of confusion, and in view of the
record in this case, key considerations are that the marks
are exactly the same, the goods and services are related,
and the consumers for these goods and services are presumed
to overlap. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
In regard to the marks, both are the single word CHIEF
in typed form, i.e., neither mark is limited to any
particular form of lettering and the marks do not include
any particular design elements which might distinguish
them. For purposes of our Section 2(d) analysis, we must
consider that both marks could be set forth in exactly the
same form of lettering. Phillips Petroleum Co. v. C. J.
Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971); Jockey
International Inc. v. Mallory & Church Corp., 25 USPQ2d
1233 (TTAB 1992). Thus, the marks are identical in sight
and sound and, presumptively, meaning. Indeed, applicant
makes no argument that the marks are in any way different.
It is well settled that when the marks are identical,
the involved goods or services need not be as close in
order to support a refusal of registration under Section
Ser No. 75/735,772
4
2(d). In re Concordia International Forwarding Corp., 222
USPQ 355, 356 (TTAB 1983) (“If the marks are the same or
almost so, it is only necessary that there be a viable
relationship between the goods or services in order to
support a holding of likelihood of confusion.”) It is
equally well settled that goods or services need not be
identical or competitive to support a finding of likelihood
of confusion. It is sufficient if the goods or services
are related in some way or the circumstances of their
marketing are such that they would be encountered by the
same persons, even if not contemporaneously, who would,
because of the marks, mistakenly conclude that the goods or
services are in some way associated with the same producer,
or that there is an association between the producers. In
re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Applicant admits its sells seasonings and spices in
its supermarkets. In addition, the Examining Attorney has
made of record numerous third-party registrations showing
that the same mark has been registered for both supermarket
or grocery store services and for, among other wares,
spices. Third-party registrations which cover a number of
differing goods and/or services, and which are based on use
Ser No. 75/735,772
5
in commerce, although not evidence that the marks shown
therein are in use in commerce or that the public is
familiar with them, may nevertheless have probative value
to the extent that they serve to suggest that such goods or
services are of a type which may emanate from a single
source. In re Great Lakes Canning, Inc., 227 USPQ 483, 484
(TTAB 1985); In re Phillips-Van Heusen Corp., 228 USPQ 949
(TTAB 1986).
In addition, our reviewing court has noted, in a case
which similarly required a comparison of goods and services
involving sale of such goods, that “trademarks for goods
find their principal use in connection with selling the
goods and … the applicant's services are general
merchandising--that is to say selling-–services…. The
respective marks will have their only impact on the
purchasing public in the same marketplace.” In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 463, 464, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988).
All of this reveals that there is a sufficient
relationship between the goods and services that, when they
are marketed under identical marks, confusion or mistake is
likely. Applicant argues to the contrary, asserting that
its stores do not market private label products and do not
market registrant’s products, so that no CHIEF-branded
Ser No. 75/735,772
6
spices of any type will be found in applicant’s stores.
Moreover, applicant argues, purchasers encountering
registrant’s products in other stores would not believe
there is any association with applicant, “when Applicant
does not sell any private-branded products.” These,
however, are mere arguments unsupported by anything in the
record. Moreover, even if we were to find some support for
these arguments in the record, we agree with the Examining
Attorney that there is a likelihood of confusion because
the goods and services are marketed to the same classes of
consumers under circumstances in which confusion is likely.
Contrary to applicant’s conclusion, it is not necessary
that registrant’s goods be sold in applicant’s stores for a
likelihood of confusion to exist. For example, if
consumers encountering ads for registrant’s products were
to seek them in applicant’s stores, confusion would be
shown.
Applicant also argues that there are numerous third-
party registrations for marks incorporating the term
“Chief” covering various types of food products, so that
“the scope of protection available for any mark including
the term CHIEF has already been greatly narrowed.”
Applicant has not, however, entered copies of these
registrations into the record. Thus, we have no idea of
Ser No. 75/735,772
7
the status of, or title to, these registrations, or whether
they are based on use in commerce of the marks applicant
lists, or even the forms of display of the marks. Third-
party registrations are of little value in determining
likelihood of confusion, since they are not proof that
consumers are familiar with the marks therein and therefore
accustomed to the existence of similar marks in the
marketplace. Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618 (TTAB 1989). Even if we had
considered the referenced registrations, we note that their
probative value would be further limited because none is
alleged to be for the mark CHIEF alone and none is for
grocery or supermarket services or spices and seasonings.3
Finally, applicant argues that “the most important
factor involved in this appeal” is that registrant and
applicant have been concurrently using CHIEF as a mark for
their respective goods and services “since 1963 without

3 Applicant does assert that there is one registration for the
mark TAIPAN for, among other items, a “5 spice powder”; that
these goods are equivalent to one of the cited registrant’s
goods, i.e., “Chinese seasoning powder”; that TAIPAN translates
to “chief” and therefore, under the doctrine of foreign
equivalents, TAIPAN for “5 spice powder” should not be
registrable over CHIEF for “Chinese seasoning powder”; and that
since TAIPAN has been registered over CHIEF, applicant’s mark
should not be barred from registration by the cited mark.
Applicant has not, however, provided a copy of the
registration, or entered anything into the record to support the
translation or the asserted equivalence of “5 spice powder” and
“Chinese seasoning powder.”
Ser No. 75/735,772
8
appellant being aware of any actual confusion.” The
asserted absence of actual confusion is, however, not
determinative of the question of likelihood of confusion,
for a number of reasons. First, we have only applicant’s
“version of the marketplace” and “we do not really know the
conditions in the marketplace since the picture painted by
applicant is incomplete….” In re Sunmarks Inc., 32 USPQ2d
1470, 1473 (TTAB 1994); see also In re Wilson, 57 USPQ2d
1863, 1869 (TTAB 2001). Second, registrant appears to be
located outside the United States, in Trinidad and Tobago,
while applicant, by its own argument, runs only 7 stores in
northwest Ohio. Thus, despite the overlapping years of
use, there may have been no meaningful opportunity for
actual confusion to occur in the marketplace. Cf. In re
Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209, 1212
(TTAB 1999); see also, Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983). Third, in view of the relatively inexpensive nature
of registrant’s goods, it may be that even confused
purchasers would not take the trouble to inform either of
the trademark owners. Azteca, supra, 50 USPQ2d at 1212
(TTAB 1999). Moreover, it is unnecessary to show actual
confusion in establishing likelihood of confusion. In re
Ser No. 75/735,772
9
Marriott Corp., 517 F.2d 1364, 1368, 186 USPQ 218, 221-222
(CCPA 1975).
In sum, the marks are identical and the goods and
services are related and marketed to the same classes of
consumers, so that there exists a likelihood of confusion.
Decision: The refusal to register is affirmed.