Upper Crust Ltd.

Trademark Trial and Appeal Board

Mar 30, 2007

No. 78320666 (T.T.A.B. Mar. 30, 2007)

Mailed:
March 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Upper Crust Ltd.
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Serial No. 78320666
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Mark Kushner of Kushner & Jaffee for Upper Crust Ltd.

Won T. Oh, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
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Before Seeherman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On October 30, 2003, Upper Crust Ltd. (“applicant”)
filed an application (application Serial No. 78320666) for
registration on the Principal Register of the mark

for goods ultimately identified as
fully baked, par-baked, proof-and-bake and frozen
bakery products, namely - bread; baguettes; puff
THIS DECISION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78320666
2
pastry, namely, turnovers, strudel, puff pastry
squares, puff pastry slabs, puff pastry sticks,
puff pastry formed in the shape of fans and palm
leaves, puff pastry rolls with sausage filling,
and puff pastry rolls with ground beef filling;
danish pastry, namely, twisted danish pastry,
rolled danish butter horns, cheese and fruit
filled danish pastry, danish dough slabs, and
coffee cake; cinnamon rolls; and croissants, all
for wholesale distribution[,]

in International Class 30. Applicant claims first use
anywhere and first use in commerce in 1982.
The examining attorney has finally refused
registration pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles two previously registered marks, owned by the
same entity. First, the examining attorney has refused
registration in view of Registration No. 2038106 for the
mark

for “cookies, namely, Italian dipping cookies,” in
International Class 30.1 Registrant has disclaimed the term
BISCOTTI in this mark. Second, the examining attorney has

1 Registration No. 2038106, issued February 18, 1997; section 8
accepted, section 15 acknowledged.
Serial No. 78320666
3
refused registration in view of Registration No. 2424360
for the mark

for “cookies, namely chocolate-covered pieces of Italian
dipping cookies” in International Class 30.2 Registrant has
disclaimed the terms BISCOTTI and ITTI-BITTIES in this
mark.
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is affirmed.
Our determination of the issue of likelihood of
confusion 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,
however, two key, although not exclusive, considerations

2 Registration No. 2424360, issued January 30, 2001.
Serial No. 78320666
4
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).
We first consider the similarities of the marks viewed
in their entireties. Specifically, we consider whether the
marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). We do not consider whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar that confusion as to the source of the
goods or services offered under the respective marks is
likely to result.3
Both applicant's and registrant’s marks contain a word
component and a design component. We agree with the
examining attorney that the word portion of the marks

3 In this regard, we do not accept applicant’s contention at
p. 10 of its brief that professional buyers with grocery stores
would make a side-by-side comparison of applicant's and
registrant’s goods and marks. Applicant has not supported its
contention with any evidence showing that professional buyers
with grocery stores would compare marks on a side-by-side basis
when they order various products, or that they would order all
bakery and cookie products at the same time, including items for
their bakery cases and packaged items.
Serial No. 78320666
5
dominates over the design portions of both applicant's and
registrant’s marks.4 Applicant's design functions as a
border or carrier which has minimal, if any impact in
forming the commercial impression of applicant's mark. The
design components of registrant’s marks give the effect of
a background for the words. Certainly, they are not so
distinctive as to draw the attention of purchasers to the
design and away from the word portions of the marks.
Further, to the extent that purchasers will refer to the
goods such as when making purchases of the goods by
telephone, they will use the wording in the marks and not
refer to the designs.
When we consider the wording of the marks, we find
them to be similar in sound, connotation and commercial
impression. The only wording in applicant's mark is UPPER
CRUST, which also appears on the top portions of both of
registrant’s marks along with BISCOTTI in Registration
No. 2038106 and BISCOTTI and ITTI-BITTIES in
Registration No. 2424360. BISCOTTI, of course, is a
generic term for registrant’s goods, which has been
disclaimed in each registration. In view of the generic

4 Although the marks must be considered in their entireties,
there is nothing improper, under appropriate circumstances, in
giving more or less weight to a particular portion of a mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985).
Serial No. 78320666
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significance of BISCOTTI in connection with registrant’s
identified goods, it has no source-identifying value, and
it is the arbitrary term UPPER CRUST that creates the
commercial impression of registrant’s mark UPPER CRUST
BISCOTTI and design.
With respect to the second cited mark, we acknowledge
that ITTI-BITTIES is prominently displayed in this mark,
but its impact is as a product mark, with UPPER CRUST
appearing to be the house mark. Thus, the fact that this
mark includes this additional term and applicant’s mark
does not does not serve to distinguish the marks; consumers
will not view ITTI-BITTIES as indicating a separate source
of the goods, but will still view UPPER CRUST as the
source-indicating portion.
Applicant has argued that UPPER CRUST is not the
dominant portion of the cited registrations but “the
overall design and the wording ‘BISCOTTI’ and the wording
‘ITTI-BITTIES’ form the dominant portion of the cited
registrations. … The marks set forth in the cited
registrations when considered in light of the goods on
which they are used, clearly convey the impression of an
Italian cookie. Indeed, the overall shape of the cited
registrations, i.e., the circular configuration with the
swirled portion of the mark, conveys the impression of a
Serial No. 78320666
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cookie.” Brief at pp. 7 – 8. We disagree. As noted
above, the word BISCOTTI would not be perceived as the
source indicator for the goods, while the inclusion of
ITTI-BITTIES in the manner of a product mark does not take
away from the house mark significance of the UPPER CRUST
portion. Although applicant’s suggestion that the cited
marks resemble an Italian cookie is an interesting one, the
design of a cookie is not so readily discernible. We
therefore find it unlikely that consumers, even the
professional buyers who would be the common customer for
the goods, will undertake the kind of analysis that would
allow them to conclude that the design portion of the marks
are such a representation.
Thus, when we consider the marks as a whole, in view
of the common dominant element UPPER CRUST in the marks, we
find them to be similar in meaning, sound and commercial
impression, and any differences in appearance are
outweighed by such similarities. We therefore resolve the
du Pont factor of the similarity of the marks against
applicant.
With regard to the du Pont factor regarding the
similarities of the goods, we note that applicant has not
discussed this in its briefs, which may indicate that it
does not contest that the goods are similar. In any event,
Serial No. 78320666
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because both applicant's and registrant’s goods are bakery
goods, including dessert items, we find them to be closely
related. This du Pont factor is therefore resolved against
applicant.
We next consider the du Pont factor involving the
similarity of established, likely-to-continue trade
channels. Although registrant’s identifications of goods
do not include any trade channel limitations, applicant has
limited its identification of goods to wholesale
distribution. Applicant states that “a restriction in the
channels of trade will tend to avoid likelihood of
confusion,” relying on the Board’s opinion in In re The
Shoe Works Inc., 6 USPQ2d 1890 (TTAB 1988). Brief at
p. 10. We are not persuaded by applicant's argument and
its reliance on Shoe Works. First, because there are no
trade channel limitations in registrant’s identifications
of goods, registrant’s goods must be presumed to travel in
all trade channels normal for such goods. See In re
Elbaum, 211 USPQ 639 (TTAB 1981). Such trade channels
necessarily include the trade channels of applicant's
goods, i.e., those that are normal for bakery goods sold
Serial No. 78320666
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for wholesale distribution.5 Second, the Board in Shoe
Works did not state that any trade channel restriction will
avoid likelihood of confusion. Rather, the Board stated
that “[w]e agree with applicant in this case that the
restriction of its channels of trade will tend to avoid
likelihood of confusion.” Id. at 1891. The restriction in
Shoe Works was to sales of applicant's goods, i.e., women’s
shoes, “solely through applicant's retail shoe store
outlets,” and the goods of the conflicting registration
were “men’s, women’s and children’s shorts and pants.” The
Board recognized that retail shoe store outlets were not
within the normal channels of trade for “men’s, women’s and
children’s shorts and pants.” In contrast, in this case,

5 Applicant argues inter alia that registrant’s goods are used on
packaged cookies for sale to the general public. Applicant has
attached with its appeal brief several pages from registrant’s
website to support its argument. Because the web pages were not
made of record prior to the filing of the appeal and because the
examining attorney has objected to applicant's evidence, we do
not further consider the web pages submitted with applicant's
brief. See Trademark Rule 2.142(d). Even if this evidence were
of record, it would not be persuasive because in this ex parte
proceeding, we consider the goods as described in registrant’s
identification of goods, rather than the goods on which
registrant actually uses its mark. See In re Dixie Restaurants
Inc., 105 F.2d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997), quoting
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1
USPQ2d 1813 (Fed. Cir. 1987). Moreover, even if the registrant
used its mark only on packaged cookies, the relevant consumers
could still assume, because of the similarity of the marks, that
the purveyor of fresh, frozen and par-baked bakery items had
expanded its bakery products to include packaged specialty
cookies.
Serial No. 78320666
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“wholesale distribution” of goods is within the normal
channels of trade for registrant's goods.
Thus, because the trade channels for applicant's and
registrant’s goods overlap, the third du Pont factor is
resolved against applicant.
In regard to the du Pont factor regarding the
conditions under which and buyers to whom sales are made -
“impulse” vs. careful, sophisticated purchasing - applicant
has argued at p. 3 of its reply brief:
Assuming arguendo that Registrant’s goods travel
in the same channels of trade as Applicant's
goods, Registrant’s goods would be purchased by
the same professional buyers from bakeries,
restaurants and hotels. … it is Applicant's
position that sophisticated buyers from grocery
stores, department stores or bakeries are less
likely than the general public to be confused
when confronted with the respective marks at
issue here.

We have recognized earlier in this decision that the common
purchaser for applicant's and registrant’s goods is the
professional buyer. Thus, we accept that such purchasers
are more discriminating than the general public. However,
professional buyers - in view of the shared term UPPER
CRUST in the marks and the descriptive or generic wording
in registrant's marks - would likely view applicant's and
registrant’s closely related goods as coming from a common
source. Specifically, such purchasers would likely view
Serial No. 78320666
11
both applicant's mark and the registrant’s marks as
variations of each other, rather than as indicating that
the goods come from different sources. Thus, if a retailer
that is supplied with fresh bakery products from applicant
sees that biscotti are being offered under the registrant's
marks, the retailer is likely to believe that applicant has
expanded its product line to include Italian dipping
cookies. We therefore disagree with applicant that the du
Pont factor regarding the sophistication of the consuming
public favors applicant, but rather find this factor to be
neutral.
Applicant has also argued that registrant’s marks are
not entitled to a broad scope of protection in view of two
registrations containing the terms UPPER CRUST. Inasmuch
as the registrations are not of record, and the examining
attorney in his brief has objected to consideration of
these registrations, applicant's argument and the
registrations have been given no consideration. We add
that, based on the record before us, we consider the
registered marks to be strong, with UPPER CRUST creating a
distinctive impression because of the double entendre
relating to CRUST with respect to bakery items, and the
meaning of this term of “the highest social class or
Serial No. 78320666
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group.” The American Heritage Dictionary of the English
Language (4d ed. 2000).6
Additionally, applicant states that it “has
experienced no instances of any actual confusion between
the respective marks and has received no communication from
the owner of the cited registrations.” Brief at p. 11. It
is not necessary to show actual confusion in order to
establish likelihood of confusion. See Weiss Associates
Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025
(Fed. Cir. 1990). On the record before us there is no
evidence as to whether there has been any opportunity for
confusion to occur, i.e., we have no information as to the
extent of applicant’s use, or that of the registrant.
Applicant's argument regarding actual confusion therefore
is unpersuasive, and the du Pont factor regarding actual
confusion is neutral.
Further, applicant argues that it has been using its
mark since at least as early as 1982, well before the date
of first use of the cited registrations. Brief at p. 11.
To the extent that applicant is asserting that it has
superior rights, applicant's argument is irrelevant in this

6 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Serial No. 78320666
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ex parte proceeding. Section 2(d) prohibits the
registration of a mark which so resembles a mark registered
by another as to be likely, when applied to applicant's
goods, to cause confusion, mistake or to deceive. In view
of the express language of the statute, the question of
priority of use is not germane to applicant's right to
register. See In re Shoemaker’s Candies, Inc., 222 USPQ
326 (TTAB 1984).
Thus, when we consider the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, we conclude that, when
potential purchasers of applicant's and registrant’s goods
encounter the applied-for and registered marks for their
respective goods, they are likely to believe that the
sources of these goods are in some way related or
associated with one another. As a result, there is a
likelihood of confusion.
DECISION: The refusal to register applicant's mark
under Section 2(d) of the Trademark Act in view of
Registration Nos. 2038106 and 2424360 is affirmed.