Yong O’Connor

Trademark Trial and Appeal Board

Sep 29, 2008

No. 78793021 (T.T.A.B. Sep. 29, 2008)

Mailed: September 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Yong O’Connor
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Serial No. 78793021
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Yong O’Connor appearing pro se.

D. Beryl Gardner, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Kuhlke, Cataldo and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Yong O’Connor seeks registration on the Principal
Register of the mark shown below for goods identified as
“protein based, nutrient dense snack bars, veggi burger
patties,” in International Class 29; “cakes, ice cream
cakes, processed cereals, processed granola cereal, breads,
breakfast cereal derived food bars, vegetable burger
sandwiches, cookies, tea, ice cream” in International Class
30; and “unprocessed cereal, unprocessed granola cereal” in
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78793021
2
International Class 31.1 The application includes the
following description of the mark: “The mark consists of
the stylized letters Y’s.”

Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the following registered mark for “bakery
products,” in International Class 30, and “wholesale and
retail stores featuring bakery products” in International
Class 35, as to be likely to cause confusion, mistake or
deception:
2
When the refusals were made final, applicant appealed
and filed a request for reconsideration. The examining
attorney denied the request and the appeal was resumed and
fully briefed.

1 Application Serial No. 78793021, filed January 17, 2006,
alleging a bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).

2 Registration No. 3198497, issued January 16, 2007, based on an
application filed on January 31, 2006.
Serial No. 78793021
3
We first address applicant’s argument regarding the
filing date of the cited registration. By way of
background, the subject application was filed on January
17, 2006, whereas the cited registration was filed on
January 31, 2006. During prosecution, applicant’s
application was abandoned for failure to respond to an
Office Action. In the meantime, the later-filed
application issued into a registration; thereafter,
applicant’s request to revive the application was granted.
The protocol for handling these situations is set forth in
The Trademark Manual of Examining Procedure Section 718.08
(5th ed. ) which provides as follows:
When an abandoned application is revived or
reinstated, the examining attorney must conduct a
new search of USPTO records for conflicting
marks...if a later-filed conflicting application
is already registered, the USPTO is without
authority to cancel the registration. The
examining attorney must refuse registration of
the earlier-filed (revived) application under 15
U.S.C. 1052(d). In this situation, an applicant
has the option of filing a petition to cancel the
registration under Section 14 of the Trademark
Act, 15 U.S.C. 1064.

In view thereof, it was appropriate for the examining
attorney to make the refusal despite applicant’s earlier
filing date.
We turn now to the question of likelihood of confusion
between the marks. Our determination of the issue of
Serial No. 78793021
4
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, two key considerations are the similarities
between the marks and the similarities between the goods
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of whether the
respective marks are similar or dissimilar when compared in
their entireties in terms of appearance, sound, connotation
and commercial impression. The analysis is not whether the
marks can be distinguished when compared side-by-side.
Rather, we must determine whether the marks are
sufficiently similar that there is a likelihood of
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
who normally retains a general, rather than specific,
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
The examining attorney argues:
Serial No. 78793021
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Consumers, upon seeing the marks, will find that
the marks are similar in appearance because the
featured portion of the marks is the Y in the
oval. Furthermore, consumers will call for the
goods by the sole letter name, Y. The literal
portions are the dominant and most significant
features of marks because consumers will call for
the goods or services in the marketplace by that
portion. [citations omitted]. For this reason,
the examining attorney must give greater weight
to the literal portions of the marks in
determining whether there is a likelihood of
confusion. A consumer in the market place for
baked goods may recommend another consumer to
Y’s, thus calling the goods and services by the
literal portion of the mark. However, the source
of the baked goods from “Y’s” may be a reference
to the registrant’s source of baked goods.
Overall, the marks are similar in appearance as
they both depict a very similar stylized Y inside
of an oval.

Br. pp. 9-10.

As stated by our principal reviewing court:
There is no general rule as to whether letters or
design will dominate in composite marks ... the
spoken or vocalized element of a design mark,
taken without the design, need not of itself
serve to distinguish the goods. The nature of
stylized letter marks is that they partake of
both visual and oral indicia, and both must be
weighed in the context in which they occur. ...
“It must be remembered that [registrant’s]
trademark consists of highly stylized letters and
is therefore in the gray region between pure
design marks which cannot be vocalized and word
marks which are clearly intended to be.” In
Georgia-Pacific the court observed that even if
the letter portion of a design mark could be
vocalized, that was not dispositive of whether
there would be likelihood of confusion. A design
is viewed, not spoken, and a stylized letter
design can not be treated simply as a word mark.

Serial No. 78793021
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In re Electrolyte Laboratories Inc., 913 F.2d 930, 16
USPQ2d 1239, 1240 (Fed. Cir. 1990) quoting Georgia-
Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757,
760, 204 USPQ 697, 699 (CCPA 1980).

In this case, the degree of stylization in
registrant’s mark which includes a face, integrating the
design with the letter such that the Y forms part of the
outside circle and the face, is so high that it is more
akin to a design mark rather than simply stylized displays
of word marks as the examining attorney argues. See In re
TSI Brands Inc., 67 USPQ2d 1657 (TTAB 2002). Considering
the marks in their entireties we find that registrant’s
mark is so highly stylized that it projects the image of a
design mark and the letter takes on its significance only
by reference to registrant’s trade name Yummy Foods, Inc.
Id. at 1663. In contrast, the significance of applicant’s
mark is focused on the letter Y, in particular by the
inclusion of the possessive “s.” Thus, we find that the
marks are not so similar in sound, appearance, connotation
or commercial impression, that, merely because such marks
share the letter Y, confusion as to origin or association
is likely. Id.
In view thereof, even considering the relatedness of
the goods and services, at least as to applicant’s goods
Serial No. 78793021
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listed in International Class 30,3 we believe that
applicant’s Y’S mark is not so similar to registrant’s Y
and face design mark that the contemporaneous use of the
respective marks in connection with closely related goods
or services is likely to cause confusion.
Decision: The refusal to register under Section
2(d) of the Trademark Act is reversed.

3 In that regard we note that the examining attorney only
submitted evidence in the form of use-based third-party
registrations that establish the relatedness of applicant’s goods
in International Class 30, but none of the third-party
registrations include applicant’s goods listed in International
Classes 29 or 31. See In re Albert Trostel & Sons CO., 29 USPQ2d
1783 (TTAB 1993).