Sunland, Inc.

Trademark Trial and Appeal Board

Aug 7, 2009

No. 77307289 (T.T.A.B. Aug. 7, 2009)

Mailed:
August 7, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sunland, Inc.
________

Serial Nos. 77310231 and 77307289
_______

Samantha A. Updegraff of Peacock Myers, P.C. for Sunland,
Inc.

Barbara Brown, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Rogers, Walsh and Taylor, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

In an order dated March 30, 2009, the Board
consolidated the above-referenced appeals because they
involved the same applicant, the same mark and the same
issue. Accordingly, we will decide both appeals in this
opinion.
In Application Serial No. 77310231, filed on October
22, 2007, Sunland, Inc. (applicant) applied to register the
mark SUNLAND in standard characters on the Principal
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial Nos. 77310231 and 77307289
2
Register for goods now identified as “processed nuts and
nut butters” in International Class 29 and “raw nuts” in
International Class 31. Applicant claims both first use of
the mark anywhere and first use of the mark in commerce on
November 1, 1988 as to both classes.
In Application Serial No. 77307289, filed on October
18, 2007, applicant also applied to register the mark
SUNLAND in standard characters on the Principal Register
for goods now identified as “peanut butter” in
International Class 29 and “raw peanuts” in International
Class 31. Applicant also claims both first use of the mark
anywhere and first use of the mark in commerce on November
1, 1988 as to both classes in this application.
In both applications, the Examining Attorney has
finally refused registration under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), based on a likelihood of
confusion between applicant’s SUNLAND mark and the mark in
Registration No. 1109554, SUN-LAND in typed form, owned by
Sun-Maid Growers of California (Sun-Maid), for “raisins,
dried fruits, preserved fruits” in International Class 29.
The registration, which issued on December 19, 1978, has
been renewed twice and is active. The registration claims
first use of the mark anywhere and first use of the mark in
commerce since July 27, 1925.
Serial Nos. 77310231 and 77307289
3
Applicant has appealed the refusals in both
applications. Applicant and the Examining Attorney have
filed briefs.1
We affirm the refusals in both applications.
Before proceeding to the merits, we will address the
Examining Attorney’s objection to certain evidence
applicant submitted for the first time with its appeal
brief. The Examining Attorney objects on the grounds that
applicant’s submissions are untimely. Specifically,
Applicant submitted (1) copies of pages from its own
website showing how it uses the SUNLAND mark, (2) what
applicant asserts to be copies of the Sun-Maid packaging to
show how the registrant uses its SUN-LAND mark, and (3) a
copy of the cited registration from the USPTO TESS data
base to show that “roaster nuts” and other goods had been
deleted from the registration since the cited registration
issued.
The USPTO records regarding the cited registration
which the Examining Attorney provided to applicant when the
Examining Attorney issued the refusals in these
applications also included the same references to the
deleted goods as the TESS record. Thus, the TESS records

1 Applicant filed separate brief for each of the appeals. The briefs
are essentially identical, except for the references to the differing
goods identified in each of the applications.
Serial Nos. 77310231 and 77307289
4
add no new evidence. It appears that these items of goods
were deleted at the time registrant filed an affidavit of
use and/or renewal under Trademark Act Sections 8 and 9, 15
U.S.C. § 1058 and 1059.
The Examining Attorney’s objection is well taken. The
record must be complete prior to appeal, subject to certain
exceptions not relevant here. See 37 C.F.R. § 2.142(d).
Applicant’s submissions here are manifestly late.
Therefore, we sustain the objection and exclude this
evidence from consideration. Furthermore, we will address
more fundamental problems with the arguments based on this
evidence below.
Turning to the merits, Section 2(d) of the Trademark
Act precludes registration of an applicant’s mark “… which
so resembles a mark registered in the Patent and Trademark
Office… as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion…” 15 U.S.C.
§ 1052(d). The opinion in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets
forth the factors to consider in determining likelihood of
confusion. Here, as is often the case, the crucial factors
are the similarity of the marks and the similarity of the
goods of applicant and registrant. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
Serial Nos. 77310231 and 77307289
5
(CCPA 1976) (“The fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
First, we consider the marks. In comparing the marks
we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
The Examining Attorney argues that the marks, SUN-LAND
and SUNLAND, are virtually identical.
Serial Nos. 77310231 and 77307289
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Applicant argues (1) that, when we view the marks as
used on the particular packaging of applicant and Sun-Maid,
there is no likelihood of confusion, and (2) that the marks
are pronounced “very differently” because of the hyphen in
the registered mark. Applicant’s Brief at 11.
As we noted above, applicant submitted an example of
what applicant asserts is packaging used by registrant,
Sun-Maid, to support its argument that the marks can be
distinguished because Sun-Maid uses the SUN-LAND mark in an
inconspicuous manner along with more prominently displayed
word and design marks. We excluded this evidence as
untimely. Even if applicant had submitted this evidence
prior to appeal, we would still not find it appropriate for
consideration.
In an ex parte proceeding such as this, we cannot
consider extrinsic evidence offered by applicant regarding
the registrant’s actual use of its mark offered to show
that the registrant’s rights in the mark should be
restricted. In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986).
Furthermore, the particular arguments applicant
presents based on this evidence are likewise inappropriate
in this ex parte proceeding. Applicant attempts, through
this evidence, to show that the registrant uses its SUN-
Serial Nos. 77310231 and 77307289
7
LAND mark in an inconspicuous manner on its packaging and
that there are more prominent word marks, as well as design
marks, which would enable a potential purchaser to
distinguish registrant’s goods from those of applicant.
Applicant uses its own packaging also in making this
argument.
The Examining Attorney correctly notes that the cited,
registered mark is SUN-LAND alone in typed form. In
determining likelihood of confusion here, we must and do
accord the mark in the registration the full scope of
protection Trademark Act Section 7(b), 15 U.S.C. § 1057(b),
affords. Among other things, Section 7(b) requires that we
recognize the registration as prima facie evidence of the
“… validity of the registered mark, of the registrant’s
ownership of the mark, and of the registrant’s exclusive
right to use the registered mark in commerce on or in
connection with the goods or services specified in the
certificate, subject to any conditions or limitations
stated in the certificate.” Accordingly, in applying
Section 7(b) in this case, we reject applicant’s argument
that the registrant’s rights in the registered mark are
somehow restricted based on applicant’s assertions as to
how the registrant uses the registered mark. There are no
Serial Nos. 77310231 and 77307289
8
restrictions or elements, other than SUN-LAND, in the cited
registration.
In this regard we also note that in asserting these
arguments, and elsewhere, applicant relies nearly
exclusively on infringement cases from the federal courts,
for example, Sun-Maid Raisin Growers of California v.
Sunaid Food Products, Inc., 356 F.2d 467, 149 USPQ 238 (5th
Cir. 1966). The analysis required in an infringement case
differs significantly from the analysis in this
registration case. In re Bercut-Vandervoort & Co., 229
USPQ at 765. Thus, applicant’s arguments based on these
cases are not persuasive.
Furthermore, a number of the cases applicant cites
predate the effective date of the Trademark Act of 1946
(the Lanham Act) which now governs our proceedings, for
example, Mutual Orange Distributors v. Silver Seal Dairy
Products Co., 22 USPQ 255 (Comm'r Pat. 1934). These cases
do not reflect current law. The Examining Attorney
provided extensive citations to relevant, current law in
the Office actions in these applications, but applicant has
not addressed those authorities.
Accordingly, we reject applicant’s arguments that the
marks can be distinguished because of the particular way in
which registrant and applicant use their respective marks.
Serial Nos. 77310231 and 77307289
9
See In re General Electric Co., 180 USPQ 542, 544 (TTAB
1973).
As to applicant’s unsupported assertion that SUNLAND
and SUN-LAND are distinguishable because they would be
pronounced diffferently, we first note the axiom that there
is no correct pronunciation of a trademark. Centraz
Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698,
1701 (TTAB 2006). Furthermore, applicant offers no support
for its assertion that the pronunciations would differ.
Therefore, we reject applicant’s argument based on the
asserted differences in the pronunciations of the marks.
More generally, the presence or absence of a hyphen is
hardly sufficient under these circumstances to distinguish
the marks. Id. The presence of the hyphen in the cited
mark is the only difference between the marks.
In sum, we conclude that the marks are not only
similar in appearance, sound, connotation and commercial
impression, but virtually identical.
Next we consider the respective goods. In general,
the goods of applicant and the registrant need not be
identical to find a likelihood of confusion under Trademark
Act Section 2(d). They need only be related in such a way
that the circumstances surrounding their marketing would
result in relevant consumers mistakenly believing that the
Serial Nos. 77310231 and 77307289
10
goods originate from or are associated with the same
source. See On-Line Careline Inc. v. America Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
Also, in a case such as this, where the marks are
virtually identical, the relationship between the
respective goods need not be as close to find a likelihood
of confusion as might apply where there are significant
differences between the respective marks. Amcor, Inc. v.
Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981) (“…
where both parties are using the identical designation …
the relationship between the goods on which the parties use
their marks need not be as great or as close as in the
situation where the marks are not identical or strikingly
similar.”).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and cited
registration. See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”).
Serial Nos. 77310231 and 77307289
11
Applicant identifies its goods as processed nuts, nut
butters, raw nuts, peanut butter and raw peanuts. The
goods identified in the cited registration are raisins,
dried fruits, preserved fruits.
Applicant argues:
Sunland’s peanut butter and raw peanuts [and
processed nuts, nut butters and raw nuts] are not
related to Registrant’s raisins, dried fruits and
preserved fruits. Simply because raw peanuts
[and raw nuts] and raisins are sometimes sold
together in snack mixes does not mean the goods
are closely related. There are many unrelated
foods that are sold together but that does not
change the fact that the foods are unrelated. …
Further, average shoppers would not confuse a
brand of pretzels with a brand of corn cereal
because an unrelated third company sells a mix
containing pretzels and corn cereal. An average
shopper would readily recognize that a company
selling raisins under one brand is not the same
company selling peanut butter and raw peanuts
[and processed nuts, nut butters and raw nuts]
sold under a separate brand.

Applicant’s Brief at 6-7.
Applicant also argues that the respective goods of
applicant and registrant “do not possess the same
descriptive properties,” such as, nutritional value. Id.
at 7. Applicant argues further that the same companies do
not sell both the type of goods identified in the cited
registration and the type of goods applicant identifies in
its applications. Applicant points to Dole and Sun-Maid as
examples of such companies, stating, “The fruit based
Serial Nos. 77310231 and 77307289
12
companies focus only on fruit based products and do not
expand into peanut butter and raw peanuts [and processed
nuts, nut butters and raw nuts].” Id.
In its Reply Brief applicant continues with this same
line of argument, stating, “A purchaser of raisins and
dried fruits at a store knows fruits from nuts.” Reply
Brief at 4.
Applicant also argues that the registrant “expressly
abandoned” its registration for “roasted nuts.” To support
this claim applicant submitted a copy of the cited
registration from the USPTO TESS data base to show that the
cited registration included “roasted nuts” and other items
when it issued and that those goods have been deleted. As
we noted, the record the Examining Attorney provided also
reflected these deletions. Applicant argues that this
evidence also shows that the goods of applicant and
registrant are not related. Applicant’s Brief at 10.
The Examining Attorney argues that the goods
identified in the applications and the cited registration
are related. He states, “The goods of the parties are
closely related because they are both natural snack
products commonly sold by the same companies, they travel
in the same channels of trade and are complimentary (sic)
Serial Nos. 77310231 and 77307289
13
goods commonly packaged and/or sold together.” Examining
Attorney’s Brief at 6.
To support his position the Examining Attorney has
provided numerous third-party, use-based registrations for
marks for both the type of goods identified in the
applications and the type of goods identified in the cited
registration, for example:
Registration No. 2996302 for the mark KLEIN’S
DELIGHT for “processed nuts, namely almonds,
cashews, peanuts, sunflower seeds, pecans,
filberts, macadamia nuts, brazil nuts, pepitas,
pignolias, pistachios, pumpkin seeds, walnuts,
poppy seeds, sesame seeds, shredded coconut and
processed fruit and nut mix, dried fruits,
namely, apricots, pineapple, ambrosia, papaya,
cantaloupe, raisins, cranberries, bananas,
prunes, dates, apples, mangos, peaches, pears,
cherries, blueberries, figs and citrons…” and
“fresh, raw and unprocessed nuts, namely almonds,
cashews, peanuts, sunflower seeds, pecans,
filberts, macadamia nuts, brazil nuts, pepitas,
pignolias, pistachios, pumpkin seeds, walnuts,
poppy seeds, sesame seeds, unprocessed fruit and
nut mix”;

Registration No. 3106169 for the mark REVERENCE
FOR THE LAND for “nut butters, fruit butters,
peanut butter, tahini, frozen vegetables, frozen
fruit, French fried potatoes, raisins, dried
fruit, dried vegetables, processed edible seeds,
nuts, candied nuts, snack foods made of
vegetables, snack foods made of fruit, snack mix
consisting primarily of processed fruits,
processed nuts and/or raisins, tomato paste,
tomato puree, peeled tomatoes, stewed tomatoes,
diced tomatoes, fruit sauce, butter, milk”;

Registration No. 3176367 for the mark PETERSON’S
for “salad topping consisting primarily of
roasted soybeans with spices, croutons, dried
Serial Nos. 77310231 and 77307289
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vegetables, nuts, bacon bits, dried noodles or
combinations thereof; flavored, roasted snacking
peanuts; natural snacks, namely, roasted cashew
snacks, snack mixes consisting primarily of
roasted nuts, dried fruits, raisins, or
combinations thereof and also consisting of
granola, spices, sesame sticks, candy, toasted
corn kernels, edible seeds or combinations
thereof; shelled, roasted or otherwise processed
packaged nuts; snack mixes consisting primarily
of processed fruits, processed nuts and/or
raisins” and “mixes for making bakery goods
packaged together in pre-measured proportions,
and bakery products; candies and snack mixes
consisting primarily of crackers, pretzels,
candied nuts and/or popped corn; granola based
snack food; corn and wheat based snack foods” and
“unprocessed or raw packaged nuts”;

Registration No. 3148741 for the mark EARTH FARE
for “processed beans; olive oil for food; peanut
butter, vegetable-based snack foods; eggs;
processed nuts, roasted nuts and processed
almonds; raisins; and snack mix consisting
primarily of processed fruits, processed nuts
and/or raisins” and “fresh nuts, raw nuts and
unprocessed nuts”;

Registration No. 3415917 for the mark NY SNACKS
and Design for “salty snacks, namely, potato
chips, barbeque flavored potato chips, sea salt
and vinegar flavored potato chips, potato sticks;
banana chips; sweet and sour processed onion
rings; preserved meats, namely, fried pork rinds,
barbeque flavored pork rinds, fried pork skins,
beef jerky, beef sausages in stick form, beef
pepperoni and cheese sticks; pizza flavored
potato sticks, pizza flavored potato chips, pizza
flavored cheese, pizza flavored beef jerky;
processed nuts, namely, cashews, peanuts, and
pistachios; processed edible seeds, namely,
sunflower seeds, party/bar mix consisting
primarily of processed fruits, processed nuts
and/or raisins”; and

Registration No. 3258800 for the mark TORN &
GLASSER for “banana chips; blanched nuts; candied
Serial Nos. 77310231 and 77307289
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fruit; candied nuts; compotes; dehydrated fruit
snacks; desiccated coconut; dried beans; dried
figs; dried fruit mixes; dried fruits; dry or
aromatized fruit; flaked coconut; fruit chips;
fruit pectin; fruit-based snack food; fruits,
namely, processed, dried and preserved; glazed
fruits; instant or pre-cooked soup; lentils; nut
butters; nut butters, namely peanut and honey
roasted peanut; nut meats; nut topping; peanut
butter; preparations for making soups; prepared
coconut; prepared pistachio; prepared walnuts;
processed almonds; processed apples; processed
apricots; processed beans; processed blueberries;
processed cherries; processed coconut; processed
dates; processed edible seeds; processed fruits;
processed lemons; processed mangos; processed
nuts; processed oranges; processed papayas;
processed peaches; processed peels; processed
pumpkin seeds; processed soy beans; raisins;
roasted nuts; shelled nuts; snack mix consisting
primarily of processed fruits, processed nuts
and/or raisins; soup mixes.”

Attachments to Office Action of May 28, 2008. These
examples are representative of the numerous other similar
records the Examining Attorney provided.
The Examining Attorney also provided evidence from
Internet websites of specialty retailers, including fruit
and nut companies, which offer both the type of goods
identified in the applications and the type of goods
identified in the cited registration under the same mark,
for example, preparedpantry.com, nutsonline.com,
harryanddavid.com, foodler.com, and futtersnutbutters.com.
Attachments to Office Action of December 31, 2008.
Serial Nos. 77310231 and 77307289
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Applicant has not addressed the Examining Attorney’s
evidence in either of its briefs. The Examining Attorney’s
evidence belies applicant’s unsupported assertions that
fruits and nuts are unrelated products. The Internet
evidence shows that both types of goods are sold by the
same party under the same mark and that they are
complementary.
The third-party registrations provide further evidence
that the goods in the applications and the goods in the
cited registration are the types of goods which may emanate
from the same source. In re TSI Brands Inc., 67 USPQ2d
1657, 1659 (TTAB 2002); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
The proper inquiry is not whether the goods could be
confused, but rather whether the source of the goods could
be confused. Safety-Kleen Corp. v. Dresser Indus., Inc.,
518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975); In re Rexel,
Inc., 223 USPQ 830, 831 (TTAB 1984). Much of applicant’s
argument overlooks this fundamental point.
Furthermore, the fact that the cited registration may
have included “roasted nuts,” which have been deleted, in
no way supports applicant’s argument that the goods are not
related. If anything, it would support the contrary
position, that is, that historically companies have sold
Serial Nos. 77310231 and 77307289
17
both types of goods under the same mark. For the record,
we reject applicant’s implication that this deletion from
the registration, by itself, would establish that Sun-Maid
had expressly abandoned any rights.
Furthermore, the point is not whether Sun-Maid now
offers both types of goods under the SUN-LAND mark or any
other mark, but rather whether the circumstances
surrounding the marketing of these types of products in
general would result in relevant consumers mistakenly
believing that the respective goods originate from or are
associated with the same source. See In re International
Telephone & Telegraph Corp., 197 USPQ at 911.
Based on the evidence of record, we have no hesitation
in concluding that the goods identified in the applications
and the cited registration are closely related. We find
all of applicant’s arguments to the contrary unpersuasive.
See also In re Diamond Walnut Growers, Inc., and Sunsweet
Growers Inc., 204 USPQ 507 (TTAB 1979).
Also, in its reply brief applicant argues that there
is no dilution as between its SUNLAND mark and the cited,
registered SUN-LAND mark. The Examining Attorney has not
refused registration based on dilution. In fact, Trademark
Act Section 2(f), 15 U.S.C. § 1052(f), precludes examining
attorneys from issuing a refusal based on dilution in the
Serial Nos. 77310231 and 77307289
18
ex parte examination of applications. Accordingly, we fail
to see the relevance of applicant’s arguments regarding
dilution and we reject them.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any we have not
specifically discussed here, we conclude that there is a
likelihood of confusion between applicant’s SUNLAND mark
when used in connection with processed nuts, nut butters,
raw nuts, peanut butter and raw peanuts and the registered
SUN-LAND mark when used in connection with raisins, dried
fruits and preserved fruits.
Decision: We affirm the refusals to register
applicant’s mark under Trademark Act Section 2(d) in both
applications.