Tokyo Plast Intl. Ltd.

Trademark Trial and Appeal Board

Dec 28, 2011

No. 85061337 (T.T.A.B. Dec. 28, 2011)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: December 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tokyo Plast Intl. Ltd.
________

Serial No. 85061337
_______

Angelo Notaro and Nader Abadir of Notaro Michalos &
Zaccaria PC for Tokyo Plast Intl. Ltd.

Kathleen Lorenzo, Trademark Examining Attorney, Law Office
109 (Gwen Stokols, Managing Attorney).
_______

Before Cataldo, Ritchie and Kuczma, Administrative
Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Tokyo Plast Intl. Ltd. filed an application to
register on the Principal Register the mark shown below for
“hot pots and casseroles” in International Class 21.1

1 Application Serial No. 85061337 was filed on June 12, 2010
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce on the goods. “The color(s) Blue, green, yellow
and black is/are claimed as a feature of the mark. The mark
consists of the letters "PINN" and the letters "CLE" in blue with
a green and yellow triangle there between. The letters "PINN"
are located above the words "STYLE WITH SUBSTANCE" in black
script.”
Ser. No. 85061337
2

Registration has been finally refused pursuant to
Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark PINNACLE (standard
characters) in Registration No. 325558162 for “bakeware” in
International Class 21, as to be likely, if used on or in
connection with the identified goods, to cause confusion,
to cause mistake, or to deceive. Applicant and the
examining attorney have filed briefs on the issue under
appeal, including applicant’s reply brief.
Likelihood of Confusion
Our determination under Trademark Act §2(d) is based
upon an analysis of all of the probative facts in evidence
that are 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). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,

2 Issued on June 26, 2007.

Ser. No. 85061337
3
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); and In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999), and cases cited therein.
We review the relevant du Pont factors as they apply
to this case.
The Goods
We begin by comparing applicant’s goods with those of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973).
In this case, applicant’s goods are identified as “hot
pots and casseroles” and registrant’s goods are identified
Ser. No. 85061337
4
as “bakeware.” In support of the refusal to register, the
examining attorney has made of record the following
definitions: bakeware – “heat-resistant dishes, as of
glass or pottery, in which food may be baked; ovenware;”3
and casserole - “a deep heavy cooking pot suitable for use
in an oven.”4 Thus, as identified, applicant’s casseroles,
which are cooking pots used in an oven, are encompassed by
registrant’s more broadly identified bakeware, which
includes dishes in which food may be baked in an oven.
In addition, the examining attorney made of record
copies of use-based, third-party registrations reciting the
goods identified in the involved application and cited
registration. The following examples are illustrative:
Registration No. 2810088 for goods including
“bakeware; casseroles”;

Registration No. 3825695 for goods including
“bakeware; casseroles”; and

Registration No. and “bakeware; casseroles; hot
pots.”

These registrations suggest, in general, that applicant’s
casseroles and hot pots are related to registrant’s
bakeware. See In re Infinity Broadcasting Corp. of Dallas,
60 USPQ2d 1214, 1217-18 (TTAB 2001). Although these

3 Dictionary.infoplease.com
4 Encarta.com

Ser. No. 85061337
5
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
nevertheless have probative value to the extent that they
serve to suggest that the goods listed therein are of a
kind which may emanate from a single source. See, e.g., In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 at n. 6 (TTAB 1988).
The examining attorney further made of record evidence
from commercial Internet websites showing bakeware offered
for sale under the same marks as casseroles and/or hot
pots. These websites include gourmet.org (bakeware,
casseroles, hot pots), thesmartcook.com (bakeware and
casseroles), chantal.com (bakeware and casseroles) and
crateandbarrel.com (bakeware and casseroles). Such
evidence serves to demonstrate that third parties are using
a single mark to identify applicant’s goods as well as
those of registrant.
Based upon the goods recited in the involved
application and the cited registration, as well as the
evidence made of record by the examining attorney, we find
that registrant’s goods encompass in part and otherwise are
related to those provided by applicant. The legal identity
Ser. No. 85061337
6
in part of the goods (i.e., bakeware and casseroles) is a
factor that weighs heavily against applicant.
Channels of Trade
Neither registrant’s nor applicant’s goods contain any
restrictions as to the channels of trade in which they are
distributed or the class of purchasers to whom they are
marketed. It is settled that in making our determination
regarding the channels of trade, we must look to the goods
as identified in the involved application and cited
registration. See Octocom Systems, supra; and Paula Payne,
supra. Because as discussed above the goods are legally
identical in part and otherwise related, and there are no
restrictions in the identifications, applicant’s and
registrant’s goods are presumed to move in all trade
channels in which such items are typically encountered, and
be available to all classes of potential consumers,
including consumers of each other’s goods. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
The Marks
We now consider whether applicant’s mark and
registrant’s mark are similar or dissimilar when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
Ser. No. 85061337
7
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). It is a well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
In this case, applicant’s mark,

is similar to registrant’s mark, PINNACLE, in that
applicant’s mark contains the word comprising registrant’s
mark as the most prominent feature thereof. Applicant
argues in its brief that
there is nothing in the record to suggest that a
consumer would perceive or infer that Applicant’s
mark represents the word “PINNACLE.” It is
submitted that this conclusion would not be
apparent to an ordinary observer. The green and
yellow triangle creates a distinctive commercial
impression. It is located near the center of the
mark and is taller than any of the letters in the
mark. It separates the bright blue-colored
letter combinations “PINN” and “CLE.” It is this
Ser. No. 85061337
8
contrasting green and yellow element that may be
first encountered by potential consumers.5

We disagree. We observe initially that the green and
yellow triangle or pyramid in applicant’s mark stands in
place of the letter “A” in what otherwise would be the word
PINNACLE. The triangle is positioned in such a manner that
its shape is very similar to the letter “A” and, while
slightly taller than the blue letters, is not so outsized
that it would not be perceived as such. Thus, and contrary
to applicant’s arguments, we find that based upon the
appearance of applicant’s mark, consumers are more likely
to view and pronounce it as the word PINNACLE in stylized
form than “PINN triangle CLE” or some other combination of
letters and design.
In addition, the examining attorney has made of record
several third-party registrations in which a triangle or
pyramid is substituted for the letter “A”. The marks in
these registrations and descriptions thereof, where
supplied, are reproduced below:
Registration No. 3394233, for the mark

The mark consists of The word PRIMATICS, with a
stylized form of the letter A, the A appearing in

5 Applicant’s brief, p. 4.
Ser. No. 85061337
9
the shape of a triangle divided into two halves,
the right half of the triangle being filled in,
and the left half of the triangle consisting of
three smaller filled-in triangles;

Registration No. 3751438, for the mark

The mark consists of the word "STANDARD" in black
letters, with the initial "A" in the word
replaced by a blue tetrahedron, all on a white
rectangular background surrounded by a grey
border;

Registration No. 3045706, for the mark

(no description supplied);

Registration No. 3128779, for the mark

The mark consists of the words RAPID ARMOR with
the letter "A" in a stylized triangle design; and

Registration No. 3655908, for the mark

(no description supplied).

Based upon the foregoing evidence, we find that it is not
uncommon for owners of word marks to display them in
Ser. No. 85061337
10
stylized form with a geometric design in place of the
letter “A” at or near the center thereof.
The word PINNACLE, as it appears in both marks, is
identical in sound and meaning, and similar in appearance.
Moreover, PINNACLE has the connotation of a high level of
achievement or quality in applicant’s mark, and there is
nothing in registrant’s mark that suggests a different
connotation. The word PINNACLE in applicant’s mark is the
dominant element. It is displayed in letters that are much
larger in size than the remaining wording, STYLE WITH
SUBSTANCE, in applicant’s mark. Thus, PINNACLE is the
portion of applicant’s mark to which the viewer is drawn,
as well as the portion that the viewer is most likely to
remember. The triangle design substituting for the letter
“A” in applicant’s mark, though visually prominent, is less
significant than the totality forming the word PINNACLE.
This is because it is by the word PINNACLE that consumers
will refer to or request the identified goods. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
As for the presence of STYLE WITH SUBSTANCE in
applicant’s mark, this term appears in much smaller script
as compared to the script in which PINNACLE appears and
thus is far less visually prominent. Consumers are likely
to regard this phrase as less important, and thus will
Ser. No. 85061337
11
refer to the mark as PINNACLE, instead of pronouncing the
seven-syllable PINNACLE STYLE WITH SUBSTANCE. See Big M.
Inc. v. United States Shoe Corp., 228 USPQ 614, 616 (TTAB
1985)(“[W]e cannot ignore the propensity of consumers to
often shorten trademarks.”)
With regard to the mark in the cited registration, the
word PINNACLE is the sole element. Viewing the marks in
the involved application and cited registration as a whole,
we find that the identity of the dominant feature of
applicant’s mark, namely, the word PINNACLE, with
registrant’s mark in sound and meaning results in the marks
conveying similar overall commercial impressions. We note
that the test under the first du Pont factor 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 terms of their overall commercial
impression that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).

Ser. No. 85061337
12
Summary
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them. Accordingly, we
find the others to be neutral in our analysis.
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.