Wells Enterprises, Inc.

Trademark Trial and Appeal Board

Jul 13, 2012

No. 85120587 (T.T.A.B. Jul. 13, 2012)

Mailed: July 13, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wells Enterprises, Inc.
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Serial No. 85120587
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Christine Lebron Dykeman of McKee, Voorhees & Sease PLC for
Wells Enterprises, Inc.

Robert Clark, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
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Before Kuhlke, Taylor and Wolfson, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On September 1, 2010, Wells Enterprises, Inc. applied
to register the mark RED CARPET RED VELVET CAKE (in
standard characters) on the Principal Register based on an
allegation of an intention to use the mark in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C.
§1052(b), for goods identified as “frozen confections” in
International Class 30.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 85120587
2
applicant’s mark, when used with its identified goods, so
resembles the registered mark RED CARPET CUPCAKE in
standard characters for “bakery goods,” in International
Class 30,1 as to be likely to cause confusion, mistake or
deception.2
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (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, two key considerations are the similarities
between the marks and the similarities between the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

1 Registration No. 3437347, issued on May 27, 2008.

2 The examining attorney also refused registration pursuant to
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), based on
applicant’s failure to comply with the requirement to disclaim
the wording RED VELVET CAKE on the ground that it is merely
descriptive of applicant’s goods within the meaning of Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).

In its response to the first Office Action and again in its reply
brief, applicant stated that it “does not oppose the disclaimer”
and “expressed a willingness to disclaim” the wording “red velvet
cake.” In view of applicant’s agreement to comply with the
disclaimer requirement, the disclaimer is entered and the refusal
on this ground is moot.

Serial No. 85120587
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In determining the similarity between applicant’s mark
RED CARPET RED VELVET CAKE and registrant’s mark RED CARPET
CUPCAKE, we analyze “the marks in their entireties as to
appearance, sound, connotation and commercial impression.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567.
The dominant element in both marks is the identical
phrase RED CARPET. The phrase RED VELVET CAKE in
applicant’s mark is merely descriptive of the flavor of the
frozen confections. See, e.g., www.yelp.com and
http://absentminddoracle.blogspot, attached to the December
15, 2012 Office action. Similarly, the word CUPCAKE in
registrant’s mark is the generic term for certain goods
encompassed by registrant’s bakery goods, namely, cupcakes.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985) (It is well settled that one feature
of a mark may be more significant than another, and it is
not improper to give more weight to this dominant feature
when evaluating the similarities of the marks.)
Conversely, the phrase RED CARPET, in both marks, is
arbitrary in connection with the respective goods and, as
such, is conceptually strong. Further, although the
additional terms CUPCAKE and RED VELVET CAKE connote
Serial No. 85120587
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different types of cake, the words nonetheless connote the
same category i.e., cakes. While there are differences in
appearance and sound between the marks, we find that the
similarities outweigh the dissimilarities. In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
We turn to consider the du Pont factor of the
relatedness of the goods. We base our evaluation on the
goods as they are identified in the registration and
application. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It
is settled that it is not necessary that the respective
goods be identical or even competitive in order to find
that they are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
The goods need only be sufficiently related that consumers
would be likely to assume, upon encountering the goods
under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to
the same source. See In re Martin’s Famous Pastry Shoppe,
Serial No. 85120587
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Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Finally, in
making our determination we keep in mind that the greater
the degree of similarity in the marks, the lesser the
degree of similarity that is required of the goods on which
they are being used in order to support a holding of
likelihood of confusion. In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). See also
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993).
The examining attorney argues that the goods are
closely related because “[a] confection is defined as
defined as [sic] a ‘sweet food’. Therefore applicant’s and
registrant’s bakery goods are confections. Since both the
Applicant’s and Registrant’s goods feature confections the
goods are very closely related.”3 We reject this argument.
First, to the extent the examining attorney is intimating
that the identification “frozen confections” includes
frozen bakery goods, we do not subscribe to that
interpretation. The U.S. Acceptable Identification of
Goods and Services Manual (ID Manual) includes entries for

3 Ex. Att. Br. pp. 9-10. See Merriam-Webster Online Dictionary
(www.merriam-webster.com 2011), attached to April 18, 2011 Office
Action.

Serial No. 85120587
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“frozen bread” and “frozen pie crust.”4 Thus, we presume
that bakery goods sold in frozen form would be identified
as “frozen bakery goods.” “Frozen confections” would
include items such as ice cream or similar non-dairy frozen
goods (e.g., freezer pops, cashew cream, coconut milk,
etc.). Second, we are not persuaded by the argument that
because the general definition of confections is “sweet
food” and bakery goods are “sweet food” the goods are
related or at a minimum that applicant’s goods are within
the normal expansion of registrant’s goods, i.e., that
registrant, a purveyor of baked goods, is likely to expand
into selling frozen confections (e.g., ice cream).
However, the record does show a relationship between
these goods that goes beyond the mere fact that they are
both dessert items. The web page excerpts submitted by the
examining attorney show other ice cream companies selling
ice cream with red velvet cake pieces folded into the ice
cream. See, www.theimpulsivebuy.com (Ben & Jerry’s red
velvet cake ice cream) attached to the April 14, 2011
Office action. In addition, the record contains a blog
discussion that includes references to what appears to be
registrant’s red velvet cupcakes and Baskin Robbin’s red

4 The Board may take judicial notice of entries from the ID
Manual.
Serial No. 85120587
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velvet cake-flavored ice cream. See,
http://absentmindedoracle.blogspot. This evidence supports
a finding that cake, encompassed within “bakery goods,” and
ice cream, encompassed within “frozen confections,” are
complementary and even, in at least one instance, combined
as a single product. Martin’s Famous Pastry, 223 USPQ at
1290.
With regard to the channels of trade, while both goods
would certainly be found in grocery stores, that alone is
not necessarily sufficient to find marketing circumstances
that could allow for likely confusion. Federated Foods,
192 USPQ 24. However, the examining attorney submitted web
pages advertising dessert cafes offering both bakery goods
and ice cream.5 For example, the record includes the web
page for a listing of cafes in Austin, Texas that offer

5 The examining attorney also submitted three third-party
registrations that include both bakery goods and frozen
confections. However, each of these registrations issued under
Section 66(a) of the Trademark Act and, as such, are of no
probative value. Calypso Tech., Inc. v. Calypso Capital Mgmt.,
LP, 100 USPQ2d 1213, 1221 (TTAB 2011); In re Princeton Tectonics,
Inc., 95 USPQ2d 1509, 1511 (TTAB 2010); In re 1st USA Realty
Prof’ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). Given this
long-standing principle, it is inexplicable that the examining
attorney submitted these third-party registrations as evidence in
the first place and then doggedly kept referring to them
throughout prosecution, including in his brief. We further note
that one of the third-party registrations does not include both
goods inasmuch as the various frozen confections appear in
brackets which indicates that they have been deleted from the
registration.

Serial No. 85120587
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bakery goods and ice cream (www.urbanspoon.com), a bakery
cafe in Philadelphia that offers baked goods and ice cream
(www.bredenbecks.com), and an ice cream cafe in Hawaii that
offers ice cream and baked goods (www.lappertshawaii.com),
all attached to the April 18, 2011 final Office action. In
addition, the record includes examples of entities that
both produce and sell baked goods and ice cream. See
Weber’s Farm (www.weberscidermillfarm.com) and Bergy’s
Breadbasket (www.bergeysbreadbasket.com).6
This evidence both supports a finding that the
channels of trade and classes of customers overlap and
corroborates the other evidence that bakery goods and
frozen confections, and in particular cake and ice cream,
are complementary. Martin’s Famous Pastry, 223 USPQ at
1290 (“[T]here is an extensive pattern of complementary
interests; the channels of trade, the types of stores, the
commonality of purchasers, and the conjoint use.”)

6 Citing to an inter partes case, applicant argues that the
probative value of the third-party websites is limited because
there is no evidence of whether the public is aware of the
businesses identified by the websites. We note, however, that in
the context of an ex parte proceeding we review the evidence with
a broader perspective given the limited resources available to
the examining attorney. In re Pacer Technology, 338 F.3d 1348,
67 USPQ2d 1629 (Fed. Cir. 2003). See also In re Loew’s Theatres,
Inc., 769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir. 1985) (“The
practicalities of the limited resources available to the PTO are
routinely taken into account in reviewing its administrative
action.”)
Serial No. 85120587
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Applicant’s arguments regarding the need for the
examining attorney to present evidence of “something more”
to establish relatedness of the goods is misplaced. The
“something more” element is applied in analyzing the
relationship between goods and services. Jacobs v.
International Multifoods Corp, 668 F.2d 1234, 212 USPQ 641,
642 (CCPA 1982) (something more needed to establish
relatedness between food products and restaurant services);
In re Giovanni Food Co., 97 USPQ2d 1990 (TTAB 2011)
(something more needed to establish relatedness of catering
services and barbecue sauce) (for example, restaurants and
ice cream). Similarly, applicant’s arguments relying on In
re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed.
Cir. 2003) are misplaced because that case also involved
the issue of the relationship between goods (beer) and
restaurant services.
In addition, applicant’s arguments regarding
registrant’s actual channels of trade and “niche”
customers, are not persuasive. Given the absence of any
limitations in their respective identifications of goods,
we must presume that they travel in all ordinary channels
of trade for those goods and are offered to all relevant
consumers. Hewlett-Packard, 62 USPQ2d 1001. We cannot
limit registrant’s goods, channels of trade or classes of
Serial No. 85120587
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customers to what any evidence shows them to be. In re
Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986) (“It is
well settled that in a proceeding such as this, the
question of likelihood of confusion must be determined by
an analysis of the marks applied to the goods as identified
in the application vis-à-vis those recited in the
registration, rather than what extrinsic evidence shows
those goods to be.”)
In conclusion, we find that because the marks are
conceptually strong and highly similar, the goods are
related, and the channels of trade and classes of
purchasers are the same, confusion is likely between
applicant’s mark and the mark in the cited registration.
To the extent there are any doubts, we resolve them, as we
must, in favor of the registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.