The Patisserie (Hawaii corporation)

Trademark Trial and Appeal Board

Jan 25, 2006

No. 76493247re (T.T.A.B. Jan. 25, 2006)

Mailed:
January 25, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Patisserie
________

Serial No. 76493247
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Request for Reconsideration
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James C. Wray of Law Offices of James C. Wray for The
Patisserie.

Nicholas K.D. Altree, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Seeherman, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 5, 2005, the Board affirmed the examining
attorney’s refusal to register the mark PARADISE LAVOSH in
standard-character form for “baked cracker bread and baked
Armenian bread” under Section 2(d) of the Act, 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with the mark
in Reg. No. 2,404,157, PARADISE, also in standard-character
THIS DECISION IS NOT CITABLE
AS PRECEDENT OF THE TTAB
Ser No. 76493247
2
form, for “cakes.” The Patisserie (applicant) has
requested reconsideration of that decision.1 Specifically,
applicant asks we reconsider the following: “(1) the
original Examining Attorney’s finding of registrability
after a search in the Examiner’s Amendment dated August 13,
2002, and (2) other registrations and uses of ‘Paradise’
for goods more similar to cakes than cracker bread. For
example, in the first action the Examining Attorney also
cited PARADISE DONUTS.”
Applicant also requests that we consider a list of 33
marks which applicant states it cited in its first response
with a statement that they are “all associated with food.”
Applicant adds, “All of the evidence in the case
should be considered. When all of the evidence in the case
is considered, it is clear that the protection of PARADISE
for cakes is narrow and limited only to cakes.”
We addressed Applicant’s first point, that is, the
alleged “finding of registrability” in the Examiner’s
Amendment of August 13, 2002, in our opinion. In footnote
2 of our opinion, we refer to two instances (both

1 Applicant filed the request on July 28, 2005, and identified
the paper as a “REQUEST FOR REHEARING.” It is apparent that
applicant intended to request reconsideration under Trademark
Rule 2.144 and we are treating it as such a request. The Board
regrets the delay in responding to this request.

Ser No. 76493247
3
Examiner’s Amendments), including the one referenced by
applicant, in which the examining attorney included the
standard search clause indicating that no conflicting marks
had been found. In both instances it appears that the
inclusion of the standard search clause was inadvertent.
It is crystal clear when one looks at the entire record
that the subsequent refusal, which ultimately became the
subject of this appeal, superseded the statement in the
August 13, 2002, Examiner’s Amendment that no conflicting
marks had been found.
During the examination phase the examining attorney
has the authority to issue a refusal under Section 2(d) of
the Trademark Act, if appropriate, whether or not an
earlier action stated that no conflicting marks had been
found. In fact, Office procedures obligate the examining
attorney to do so in a case such as this, “If in the first
action the examining attorney inadvertently failed to
refuse registration on a clearly applicable ground or to
make a necessary requirement, the examining attorney must
take appropriate action to correct the inadvertent error in
a subsequent action.” TMEP § 706 (4th ed. 2005).
Accordingly, we find no reason on this basis to alter our
decision.
Ser No. 76493247
4
Secondly, applicant asks that we reconsider our
decision because of, “other registrations and uses of
‘Paradise’ for goods more similar to cakes than cracker
bread.” Applicant first points to “PARADISE DONUTS,” as an
example. In footnote 3 of our opinion we discussed
“PARDISE DONUTS” specifically. We concluded that the
PARADISE DONUTS mark, which, according to the record, was
merely the subject of a pending application, failed to show
that “PARADISE” is a weak mark.
Applicant apparently also relies on the 33 marks
listed at page 2 of its request as examples of other
“registrations and uses of ‘PARDISE.’” These marks were in
a list of PTO records applicant provided in its initial
response to the Section 2(d) refusal. Beginning on page 14
of our opinion under the heading “Similar Marks in Use on
Similar Goods” we discussed this evidence, as well as other
similar evidence of record. With regard to the lists which
included these 33 marks, we stated:
Applicant provided a listing of those registrations;
the listing included only the application serial
numbers, registration numbers, the marks and the
status, that is, an indication as to whether the
record was “live” or “dead.” “Mere listings of
registrations or copies of private company search
reports, are not sufficient to make the registrations
of record.” TBMP § 1208.02 (2d ed. rev.
2004)(citations omitted). The examining attorney has
not explicitly objected to these. However, as a
practical matter, because these records do not include
Ser No. 76493247
5
any information with regard to the goods and services,
nor any ownership information, they are of extremely
limited probative value.

As indicated here, we did consider this evidence and found
that it had “extremely limited probative value.”
Finally, applicant indicates that “all of the evidence
in the case” should be considered. We did consider all of
the evidence in the case in reaching our decision, as noted
in the original decision and as we reiterate now.
In conclusion, we have considered all of applicant’s
arguments but we find no basis to change our decision.
Applicant’s request for reconsideration is denied. The
decision, dated July 5, 2005, stands.