Western Family Foods, Inc.Download PDFTrademark Trial and Appeal BoardOct 28, 2008No. 77079369 (T.T.A.B. Oct. 28, 2008) Copy Citation Mailed: 10/28/2008 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Western Family Foods, Inc. ________ Serial No. 77079369 _______ David P. Cooper, of Kolisch Hartwell, P.C., for Western Family Foods, Inc. Timothy J. Finnegan, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Quinn, Wellington, and Ritchie de Larena, Administrative Trademark Judges. Opinion by Ritchie de Larena, Administrative Trademark Judge: Western Family Foods, Inc. filed an application to register the mark “SUMMER FLORAL” in standard character format for “deodorants, feminine deodorants and other related goods, namely douches,” in International Class 3.1 The trademark examining attorney refused registration of the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1 Application Serial No. 77079369, filed January 9, 2007, pursuant to Section 1(b) of the Trademark Act, 15 USC §1051(b), and later amended to Section 1(a) asserting dates of first use and first use in commerce on April 3, 2007. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77079369 2 §1052(d), on the ground that applicant’s mark so resembles the mark SUMMER FLOWERS, registered for the goods listed below that when used in connection with applicant’s identified goods, it will be likely to cause confusion: “Non-medicated skin care preparations, namely, anti-aging cream, anti-wrinkle cream, astringent for cosmetic purposes, body cream, body emulsion, body lotion, body milk, body oil, body scrub, body spray, exfoliants for skin, eye cream, eye gel, facial cleanser, facial cream, facial emulsions, facial masks, facial scrub, hand cream, hand lotion, hand soap, moisturizing milks, non-medicated body soak, non-medicated foot cream, shower gel, skin clarifiers, skin cleansers, skin cleansing cream, skin cleansing lotion, skin conditioners, skin cream, skin emollients, skin lotion, skin masks, skin moisturizer, skin soap, skin toner, soap for cosmetic purposes; Bath additives, namely, bath beads, bath crystals, bath foams, bath gels, bath milk, bath oils, bath pearls, bubble bath, non- medicated bath salts; Fragrances, namely, essential oils for personal use, potpourri, scented linen sprays, scented room sprays, perfume, eau de toilette; Non-medicated hair care preparations, namely, hair conditioners, hair dressings for men, hair emollients, hair gel, hair mousse, hair pomades, hair rinses, hair shampoo, hair spray, hair styling preparations; Household cleaning preparations, namely, dish detergents, laundry detergents, glass cleaning preparations, cleaner for use on countertops,” in International Class 3.2 Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs. After the case was fully 2 Registration No. 3111857, issued July 4, 2006, claiming first use and first use in commerce on July 13, 2005. Serial No. 77079369 3 briefed and ready for decision, applicant filed a request for remand pursuant to TBMP §1205 (2d ed. rev. 2004). In particular, applicant stated that it seeks remand in order to amend its identification of goods solely to “douches” in International Class 3. The TBMP provides in relevant part: “Remand of an ex parte appeal is a matter of discretion with the Board, and the Board may refuse to remand for consideration of an amendment filed more than six months after the date of the action from which the appeal was taken, if, for example, the amendment was filed in bad faith, or would serve no useful purpose.” TBMP §1205 (2d ed. revision 1 2004) We see no “useful purpose” to applicant’s proposed amendment at this late juncture. Accordingly, we deny applicant’s request for remand, and we affirm the final refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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 Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to Serial No. 77079369 4 the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). We consider each of the factors as to which applicant or the examining attorney presented arguments or evidence. The Marks Applicant’s mark is “SUMMER FLORAL,” and registrant’s mark is “SUMMER FLOWERS.” Applicant argues that the marks have different connotations, with applicant’s “SUMMER FLORAL” invoking “an image of a fresh feeling, smell or essence” and registrant’s “SUMMER FLOWERS” merely “suggest[ing] an image of flowers that are in bloom during the summer.” (Appl’s Brief at 4). However, the examining attorney submitted a dictionary definition of “floral” as “relating to flowers; relating to, containing, or suggestive of flowers.” See Encarta World Dictionary (2007). Accordingly, we find that applicant’s mark has the same meaning and connotation as the cited registration. The marks also look and sound highly similar. Both begin with the letters S-U-M-M-E-R F-L-O and both consist of four syllables. In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are Serial No. 77079369 5 sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Applicant submitted a list of third-party registrations that contain either “SUMMER” or “FLOWER” in an attempt to show that registrant’s mark is weak. Applicant did not include copies of the registrations and the examining attorney objected to their introduction into evidence. In order to make a third- party registration of record, a copy of the registration, either a copy of the paper USPTO record, or a copy taken from the electronic records of the Office, should be submitted. In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB 1998); and In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Merely listing such registrations and/or Serial No. 77079369 6 reproducing the registered mark, as applicant has done here, is insufficient to make the registrations of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB 1998). In view of the above, the examining attorney’s objection is sustained. Furthermore, the examining attorney submitted evidence that applicant’s and registrant’s marks are the only two live ones listed on the Principal Register (as an application or a registration) that contain both the term “SUMMER” and either “FLORAL” or “FLOWERS.” Finally, even a weak mark is entitled to protection against registration of confusingly similar marks. See Giant Food Inc. v. Roos and Mastacco, Inc., 218 USPQ 521 (TTAB 1982). In sum, we find that the marks are substantially similar in sight and sound and they have the same meaning. As a result of these similarities, the marks give the same commercial impression. In view of the foregoing, the first du Pont factor weighs heavily in favor of finding a likelihood of consumer confusion. The Goods and Channels of Trade Preliminarily, we note that the more similar the marks at issue, the less similar the goods need to be for the Board to find a likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). Moreover, goods or services need not be identical or Serial No. 77079369 7 even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that goods or services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The examining attorney has submitted over a dozen third-party registrations, each of which includes goods listed in both the application and the cited registration. These third-party registrations serve to suggest that these goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Therefore, we find that the goods listed in the application and the cited registration are related. Since the identifications of goods in the cited registration do not contain any limitations, both applicant’s and registrant’s goods are likely to Serial No. 77079369 8 travel through the same trade channels and be purchased by the same classes of purchasers. See Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). The goods are primarily toiletries that are purchased by the general public. Moreover, since the marks are substantially similar and the goods are related, even a careful, sophisticated consumer of toiletries is not likely to note minor trademark differences. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000). Accordingly, the second, third and fourth du Pont factors weigh in favor of finding a likelihood of consumer confusion. Balancing the Factors Considering all of the evidence of record as it pertains to the du Pont factors, we conclude that the marks are substantially similar; the goods are related; and they are likely to be sold through the same channels of trade to the same classes of purchasers. Accordingly, we find a likelihood of confusion between applicant’s mark and the cited registration. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation