Yoplait Marquesv.Mona Eldib d/b/a Eldib Engineering and Research, Inc.

Trademark Trial and Appeal Board

Oct 26, 2018

No. 91203854 (T.T.A.B. Oct. 26, 2018)

Mailed: October 26, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
Yoplait Marques

v.

Mona Eldib d/b/a Eldib Engineering and Research, Inc.
_____
Opposition No. 91197220 (Parent)1
Opposition No. 91203854
Opposition No. 91204420
_____

John C. Filosa of Baker & McKenzie LLP,
for Yoplait Marques.
Mona Eldib d/b/a Eldib Engineering and Research, Inc., pro se.
————
Before Cataldo, Goodman, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:

1 By order dated April 9, 2012, the Board consolidated the above-identified three opposition
proceedings. 24 TTABVUE. Citations to the record or briefs in this opinion also include
citations to the publicly available documents on TTABVUE, the Board’s electronic docketing
system. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473 (TTAB 2014). The number
preceding “TTABVUE” corresponds to the docket entry number; the number(s) following
“TTABVUE” refer to the page number(s) of that particular docket entry. All TTABVUE
citations in this decision refer to the record in Opposition No. 91197220, the parent case of
this consolidated proceeding.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91197220, 91203854, and 91204420
2
Mona Eldib d/b/a Eldib Engineering and Research, Inc. (“Applicant”) seeks
registration on the Principal Register of the following three marks:
1. GOA-GURT (in standard characters) for “Frozen yogurt confections;
Frozen yogurt mixes; Frozen yogurt” in International Class 30;2

2. GOAT-GURT (in standard characters) for “yogurts made of goat’s milk”
in International Class 29;3 and

3. for “Frozen yogurt; Frozen yogurt confections; Frozen
yogurt mixes” in International Class 30.4

Yoplait Marques (“Opposer”) opposes the registration of each of Applicant’s
marks on the following grounds: (1) likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), (2) lack of a bona fide intent to use the marks as
of the filing dates of the involved applications, and (3) dilution.5 In support of its

2 Application Serial No. 77749236, filed on June 1, 2009, based on an allegation of a bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
3 Application Serial No. 85164656, filed on October 29, 2010, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
4 Application Serial No. 85306756, filed on April 28, 2011, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b). The description of the mark reads as follows: “The mark consists of an image
of a goat’s head within an oval, to the left of which appears the stylized lettering ‘GOA’, and
to the left of which appears the stylized lettering ‘GURT’.” Color is not claimed as a feature
of the mark.
5 Opposer’s claim of dilution is insufficiently pleaded since Opposer did not affirmatively
allege that its pleaded marks became famous prior to the filing date of Applicant’s intent-to-
use applications. Toro Co. v. Torohead, Inc., 61 USPQ2d 1164, 1174 (TTAB 2001) (To properly
assert a ground of dilution, a plaintiff must plead that its mark became famous prior to the
applicant’s filing date and/or date of first use of the mark). Notwithstanding, because Opposer
did not pursue its dilution claim during trial or in its brief, we find, in accordance with the
Board’s usual practice, that the claim is waived. Alcatraz Media, Inc. v. Chesapeake Marine
Tours Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d mem., 565 Fed. Appx. 900 (Fed. Cir.
2014).
Opposition Nos. 91197220, 91203854, and 91204420
3
claims, Opposer pleaded ownership of the following registrations for marks registered
on the Principal Register, all for “dairy products, excluding ice cream, ice milk and
frozen yogurt” in International Class 29:
1. Registration No. 2427237 for the mark GO-GURT (in typeset form6)
issued on February 6, 2001; renewed;

2. Registration No. 3780528 for the mark GO-GURT SIMPLE (in
standard characters) issued on April 27, 2010; renewed; and

3. Registration No. 3845231 for the mark SIMPLY…GO-GURT (in
standard characters) issued on September 7, 2010; renewed.7

In her answers, Applicant denied the salient allegations in Opposer’s pleadings.
We additionally note that Applicant filed a counterclaim to cancel Opposer’s pleaded
Registration No. 3845231 for the mark SIMPLY…GO-GURT on the ground of fraud
but it was subsequently withdrawn without prejudice.8
I. Record
The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37
C.F.R. § 2.122(b), Applicant’s application file. The record also comprises the evidence
summarized below.

6 Prior to November 2, 2003, “standard character” drawings were known as “typed” or
“typeset” drawings. A typed or typeset mark is the legal equivalent of a standard character
mark. See TRADEMARK MANUEL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (October
2017).
7 Opposer also pleaded ownership of Registration Nos. 2479618 for the mark YOPLAIT – GO-
GURT PORTABLE YOGURT & DEVICE and design. This registration, however, has been
canceled pursuant to Section 8 of the Trademark Act, 15 U.S.C. § 1058, and therefore will be
given no consideration in our determination herein. See Black & Decker Corp. v. Emerson
Electric Co., 84 USPQ2d 1482, 1487 n.9 (TTAB 2007) (canceled registrations have no
probative value).
8 44, 59 and 61 TTABVUE.
Opposition Nos. 91197220, 91203854, and 91204420
4
A. Opposer’s Evidence
1. Testimony Declaration on written questions of Jean-Baptiste
Devade, legal director of General Mills France, an entity
responsible for legal matters relating to Opposer (including cross-
examination and re-direct testimony), and accompanying exhibits
including status and title copies of Opposer’s pleaded Registration
Nos. 2428237, 3780528, and 3845231;9
2. Testimony Declaration of Tsubasa Tanka, Business Unit Director
for Kid Yogurt at General Mills, Inc. (Opposer’s exclusive licensee
in the United States) and accompanying exhibits;10 and
3. Notice of reliance on relevant portions of Opposer’s requests for
admission which Opposer contends were not responded to by
Applicant.11
We note that some of the evidence proffered by Opposer has been designated
confidential and filed under seal. We have discussed only in general terms the
relevant evidence submitted under seal. However, to the extent the Opposer has
improperly designated testimony and evidence as confidential, the Board has
disregarded the confidential designation when appropriate. Trademark Rule
2.116(g), 37 C.F.R. § 2.116(g) (“[t]he Board may treat as not confidential that material
which cannot reasonably be considered confidential, notwithstanding a designation
as such by a party.”); see also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC,
110 USPQ2d 1458, 1461 (TTAB 2014). We further note that, effective June 24, 2016,
the Board instituted a revised standard protective order for currently pending inter
partes cases. However, insofar as Opposer had already designated materials as

9 102 TTABVUE.
10 104 TTABVUE (redacted version); 105 TTABVUE (confidential version).
11 106 TTABVUE.
Opposition Nos. 91197220, 91203854, and 91204420
5
confidential pursuant to the tiers of confidentiality under the Board’s former
protective order, those designations remain in effect. Further information regarding
the Board’s new standard protective order is available under the “Standard
documents & guidelines” section at www.uspto.gov/ttab.
B. Applicant’s Evidence
1. Testimony Declaration of Ken Eldib, Applicant’s brother and
former employee of Eldib Engineering and Research, Inc., and
accompanying exhibits;12 and
2. Notice of Reliance on copies of Applicant’s responses to Opposer’s
Document Request Nos. 1, 2 and 62 and response to Opposer’s
Interrogatory No. 36.13
II. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). Our primary reviewing court, the U.S. Court of
Appeals for the Federal Circuit, has enunciated a liberal threshold for determining
standing, namely that a plaintiff must demonstrate that it possesses a “real interest”
in a proceeding beyond that of a mere intermeddler, and “a reasonable basis for his

12 117 TTABVUE.
13 118 TTABVUE. Other than her written discovery responses to Opposer’s interrogatory and
document requests identified in her Notice of Reliance, Applicant did not attach any
documentary evidence to her notice of reliance. Notwithstanding, a party may not make its
own discovery responses of record except to the extent necessary to make not misleading the
discovery responses submitted by the inquiring party. Trademark Rule 2.120(k)(5), 37 C.F.R.
§ 2.120(k)(5). Here, Applicant submitted certain responses to Opposer’s document and
interrogatory requests without the required showing of the need to do so to avoid any
misleading submission by Opposer of her discovery responses. Id. Indeed, Opposer did not
submit any of Applicant’s responses to its document or interrogatory requests. Accordingly,
Applicant’s submission of her own responses to Opposer’s discovery requests was improper
under Board rules and, therefore, said responses have been given no consideration in our
determination herein.
Opposition Nos. 91197220, 91203854, and 91204420
6
belief of damage.” Empresa Cubana Del Tabaco 111 USPQ2d at 1062 (citing Ritchie
v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real
interest” is a “direct and personal stake” in the outcome of the proceeding. Ritchie v.
Simpson, 50 USPQ2d at 1026.
Opposer has demonstrated through the USPTO database printouts made of
record that it is the owner of its pleaded Registration Nos. 2428237, 3780528, and
3845231 and that these registrations are valid and subsisting. Because Opposer’s
registrations are of record, Opposer has established its standing. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
III. Section 2(d) Claim
We will now consider Opposer’s Section 2(d) claim, focusing on Opposer’s
registered mark GO-GURT (Registration No. 2427237) for the goods identified
therein, i.e., “dairy products, excluding ice cream, ice milk and frozen yogurt,” pleaded
and made of record. In our view, this particular registration, coupled with its
corresponding identified goods, is most likely to support a likelihood of confusion
claim. If Opposer could prevail on its Section 2(d) claim on this registration, then
consideration of others would be unnecessary; and if Opposer could not, then
consideration of other less relevant registrations would not assist Opposer. See, e.g.,
The North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB
2015) (citing In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
Opposition Nos. 91197220, 91203854, and 91204420
7
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove, by a
preponderance of the evidence, that it has priority in the use of its mark and that use
of Applicant’s marks is likely to cause confusion, mistake, or deception as to the
source or sponsorship of Applicant’s goods, Cunningham, 55 USPQ2d at 1848, even
in the absence of contrary evidence or argument. Threshold TV, Inc. v. Metronome
Enters., Inc., 96 USPQ2d 1031, 1040 (TTAB 2010).
A. Priority
Because Opposer’s pleaded registration for the mark GO-GURT is of record,
priority is not an issue with respect to the goods identified in Opposer’s registration.
See Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King
Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974)).
B. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”); see also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not
all of the DuPont factors are relevant to every case, and only factors of significance to
the particular mark need be considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus … on
Opposition Nos. 91197220, 91203854, and 91204420
8
dispositive factors, such as similarity of the marks and relatedness of the goods.”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002) (quoting Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d
1557, 1559 (Fed. Cir. 2001)). The fame of the prior mark can also be critical. Bose
Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002). These factors, and the other relevant du Pont factors are discussed below.
1. Similarity of the Marks
We first consider the first du Pont likelihood of confusion factor, which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See 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 proper test is
not a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012) (internal citation omitted). The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Our analysis cannot be
predicated on dissection of the involved marks. See Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather,
we are obliged to consider the marks in their entireties. Id.; see also Franklin Mint
Opposition Nos. 91197220, 91203854, and 91204420
9
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is
axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). Nonetheless,
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. Stone Lion, 110 USPQ2d at
1161.
We now turn to our comparison of Opposer’s GO-GURT mark and Applicant’s
involved marks. Initially, we compare Opposer’s GO-GURT mark and Applicant’s
GOA-GURT mark in standard characters. Both marks include the suffix “–GURT”
and begin with the letters “GO.” Visually, the only difference between the marks is
the addition of the letter “A” in Applicant’s mark following the letters “GO.” We find
that this slight difference is insufficient to distinguish the marks in appearance for
likelihood of confusion purposes.
With regard to pronunciation, it is well recognized “that there is no correct
pronunciation of a trademark, and consumers may pronounce a mark differently than
intended by the brand owner.” In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d
1905, 1912 (Fed. Cir. 2012); see also Centraz. Indus. v. Spartan Chem. Co., 77
USPQ2d 1698, 1701 (TTAB 2006). Because it is impossible to predict how the
consuming public will pronounce a particular mark, a purportedly correct
pronunciation cannot be relied on to avoid a likelihood of confusion. In re Viterra Inc.,
101 USPQ2d at 1912. In any event, giving due regard to the slight visual differences
Opposition Nos. 91197220, 91203854, and 91204420
10
between GO-GURT and GOA-GURT, we bear in mind that marks must be considered
in light of the fallibility of memory, see In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014), and that the average customer retains a general
rather than specific impression of the marks. Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1740 (TTAB 2014). Therefore, we find that while some consumers may
pronounce the parties’ respective marks differently, some consumers may perceive
the marks phonetically similar, particularly in light of the visual similarities of the
marks and the fallible recollection of the average consumer. Accordingly, when
viewing these two marks in their entirety, we find that they are similar in sound,
appearance, connotation and commercial impression.
We next compare Opposer’s GO-GURT mark and Applicant’s GOA-GURT and
design mark. For the same reasons explained above, we find that the literal portion
of Applicant’s mark is similar to Opposer’s mark in sound, appearance, connotation,
and commercial impression. While we acknowledge that Applicant’s mark also
includes a design element and that the literal portion of Applicant’s mark appears in
a particular stylization (which are both absent from Opposer’s mark), we nonetheless
find that these differences do not sufficiently distinguish the parties’ respective
marks. As to stylization, Opposer’s GO-GURT mark is a standard character mark,
and marks appearing in standard character form may be displayed in any font style,
color and size, including the identical stylization of the verbal portion of Applicant’s
mark, because the rights reside in the wording and not in any particular display or
rendition. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
Opposition Nos. 91197220, 91203854, and 91204420
11
1983) (“[T]he argument concerning a difference in type style is not viable where one
party asserts rights in no particular display. By presenting its mark merely in a typed
drawing, a difference cannot legally be asserted by that party.”); In re Aquitaine Wine
USA, LLC, 126 USPQ2d 1181, 1186-87 (TTAB 2018). Thus, because Opposer’s mark
may be displayed in the identical manner as the literal portion of Applicant’s mark,
the mere stylization of the words in Applicant’s mark is insufficient to distinguish the
respective marks.
Moreover, although Applicant’s mark includes a design element, “the verbal
portion of the mark is the one most likely to indicate the origin of the goods to which
it is affixed.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015),
(citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)).
Greater weight is often given to the wording in a composite mark because it is the
wording that purchasers would use to refer to or request the goods or services. See,
e.g., In re Viterra, Inc., 101 USPQ2d at 1911.
In view of the foregoing, we find that Opposer’s GO-GURT mark and Applicant’s
GOA-GURT and design mark, when viewed in their entirety, are, at a minimum,
similar in connotation and commercial impression, and more similar than dissimilar
in appearance, notwithstanding how a consumer may pronounce the parties’
respective marks. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)
(similarity in either sight, sound or connotation is sufficient to support likely
confusion).
Opposition Nos. 91197220, 91203854, and 91204420
12
Finally, we compare Opposer’s GO-GURT mark and Applicant’s GOAT-GURT
mark. Again, both marks include the suffix “-GURT.” The marks differ, however, with
regard to the prefix in each mark. Opposer’s mark begins with the word “GO” while
Applicant’s mark begins with the word “GOAT.” While we recognize that the prefixes
in each mark engender differing connotations and commercial impressions, the prefix
“GOAT” in Applicant’s mark is merely descriptive of Applicant’s identified goods, i.e.,
yogurts made of goat’s milk. As such, the prefix “GOAT” is less likely to make an
impact in the minds of consumers. Cf. In re Dixie Rests., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter that is descriptive of or
generic for a party’s goods is typically less significant or less dominant when
comparing marks); see also In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 753
(Fed. Cir. 1985). Moreover, while the prefixes may impart differing connotations and
commercial impression, we nonetheless find that the marks, as a whole, are
sufficiently similar in appearance and sound.
Accordingly, we find that, taken in their entireties, the similarities between
Opposer’s GO-GURT mark and Applicant’s GOA-GURT, GOAT-GURT and GOA-
GURT and design marks outweigh any differences for likelihood of confusion
purposes. The first du Pont factor thus supports a finding that confusion is likely.
2. Strength of Opposer’s GO-GURT Mark
We next turn to the alleged strength or fame of Opposer’s GO-GURT mark. Fame
of the prior mark, if it exists, plays a dominant role in balancing the likelihood of
confusion factors. Bose Corp., 63 USPQ2d at 1305. Fame for likelihood of confusion
purposes arises as long as a “significant portion of the relevant consuming public ...
Opposition Nos. 91197220, 91203854, and 91204420
13
recognizes the mark as a source indicator.” See Palm Bay Imps., 73 USPQ2d at 1694.
“[T]he proper legal standard for evaluating the fame of a mark under the fifth DuPont
factor is the class of customers and potential customers of a product or service, and
not the general public.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal citation omitted). “[L]ikelihood of
confusion fame varies along a spectrum from very strong to very weak.” Id. (internal
citation omitted). Such fame may be measured indirectly, for example, by the volume
of sales and advertising expenditures of the goods sold under the mark, and other
factors such as length of time the mark has been in use; widespread critical
assessments; notice by independent sources of the products identified by the marks;
and the general reputation of the products and services. Bose Corp., 63 USPQ2d at
1308; Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1817 (TTAB 2005),
rev’d on other grounds, slip. op. 05-2037, (D.D.C. Apr. 3, 2008). This information,
however, must be placed in context (e.g., a comparison of advertising figures with
competitive products, market share, reputation of the product, etc.). Bose Corp., 63
USPQ2d at 1308.
To demonstrate fame, Opposer provided a variety of evidence, some of which is
confidential and therefore will be discussed only in general terms. The evidence of
record shows that (1) Opposer has been using its GO-GURT mark since 1999 in
connection with yogurt packaged in a tube that is squeezed out of the tube directly
into the mouth, instead of being eaten by a spoon; (2) since 1999, Opposer has
generated an impressive amount of nationwide net sales of its GO-GURT yogurt
Opposition Nos. 91197220, 91203854, and 91204420
14
product on a yearly basis; (3) since 2002, Opposer has expended a significant amount
of money on a yearly basis for its advertising and marketing of its GO-GURT yogurt
product;14 (4) Opposer’s GO-GURT yogurt product has been advertised, promoted and
marketed through print advertisements, online advertisements, in-store and online
promotions, television and movie tie-ins (e.g., product line packaging tied to a Star
Wars movie), product placements, and unsolicited references in popular culture and
the press; and (5) since 2012, Opposer’s GO-GURT yogurt products has been included
as part of the Happy Meal sold at McDonald’s fast food restaurants.15
While this evidence supports a finding of noteworthy renown attributable to
Opposer’s pleaded GO-GURT mark since 1999, we find that Opposer’s mark has only
achieved a moderate degree of fame under the fifth du Pont factor to the extent that
it would not outweigh all the other du Pont factors that may favor Applicant.
Additionally, Opposer has failed to submit any evidence of (1) how its sales and
advertising figures compare to its competitors in the industry, (2) the frequency with
which consumers encounter its GO-GURT mark for yogurt, or (3) any context for its
achievements in the yogurt trade, e.g., market share. Without comparative numbers
or market share percentages, it is difficult to place the apparent success or renown of
Opposer’s GO-GURT mark into context. Bose Corp., 63 USPQ2d at 1309. Ultimately,
Opposer’s evidence falls short of establishing that its pleaded GO-GURT mark falls
on the “very strong” end of the spectrum of fame for likelihood of confusion purposes.

14 Opposer did not submit its advertising expenditures for the years 1999-2001.
15 Tanka Test. Decl., ¶¶ 5-6, 8 and 9 and accompanying Exhs. 2-4; 105 TTABVUE 4-6 and 8-
13 (confidential version).
Opposition Nos. 91197220, 91203854, and 91204420
15
Notwithstanding, based on the totality of the evidence submitted by Opposer
which the Board may consider, including the evidence submitted under seal, we find
that Opposer has demonstrated its GO-GURT mark has achieved significant
commercial success when used in association with yogurt products, while only
showing that its GO-GURT mark has achieved a moderate degree of fame for
purposes of likelihood of confusion. Nevertheless, we find that Opposer’s GO-GURT
mark is commercially strong, and thus the fifth du Pont factor favors Opposer.
3. Similarity of the Goods, Trade Channels and Classes of Purchasers
We next address the second du Pont likelihood of confusion factor focusing on the
comparison of the goods identified in Applicant’s applications vis-à-vis the goods
identified in Opposer’s pleaded registration. See Stone Lion, 110 USPQ2d at1161;
Octocom Sys., Inc. v. Hous. Computs. Servs. 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).
Opposer’s GO-GURT registration identifies the goods as “dairy products,
excluding ice cream, ice milk and frozen yogurt.” Applicant’s GOA-GURT and GOA-
GURT and design applications both identify the goods as “Frozen yogurt; Frozen
yogurt confections; Frozen yogurt mixes.” Applicant’s GOAT-GURT application
identifies the goods as “yogurts made of goat’s milk.”
At the outset, we note that the Applicant’s GOAT-GURT application and
Opposer’s GO-GURT registration include goods that are legally identical.
Specifically, Opposer’s registration includes the broadly-worded goods “dairy
Opposition Nos. 91197220, 91203854, and 91204420
16
products”16 which would encompass “yogurts made of goat milk” identified in
Applicant’s GOAT-GURT application. Given that the Opposer’s goods and the goods
identified in Applicant’s GOAT-GURT application are legally identical, this du Pont
factor weighs in favor of finding a likelihood of confusion. Additionally, since neither
Opposer’s registration nor Applicant’s GOAT-GURT application contain any
limitations on the channels of trade and classes of purchasers, we must presume that
the trade channels and classes of purchasers are the same for these legally identical
goods. See Stone Lion, 110 USPQ2d at 1161; In re Yawata Iron & Steel Co., Ltd., 403
F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods,
the channels of trade and classes of purchasers are considered to be the same); Am.
Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011).
With regard to Applicant’s GOA-GURT and GOA-GURT and design applications,
we note that the identifications for both applications include “frozen yogurt.” While
we acknowledge that Opposer’s GO-GURT registration excludes “frozen yogurt” from
the identification of goods, the identification is nonetheless broad enough to include
“yogurt” in a non-frozen form. Accordingly, we find that a viable relationship exists
between Opposer’s goods and Applicant’s goods because both goods are comprised of

16 We take judicial notice of the relevant dictionary definition of the term “dairy” defined as
“food (such as ice cream, cheese, or yogurt) made primarily of or from milk.” Merriam-
Dictionary.com. The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format or have regular fixed editions. In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1747 n.15 (TTAB 2018); In re Cordua Rests. LP, 110 USPQ2d 1227,
1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Opposition Nos. 91197220, 91203854, and 91204420
17
yogurt in different forms. Moreover, on the facts of this case, we find that consumers
would be likely to assume that Applicant’s use of her GOA-GURT and GOA-GURT
and design marks on a frozen yogurt product identifies an extension of Opposer’s non-
frozen yogurt product line. See, e.g., Joel Gott Wines LLC v. Rehoboth Von Gott Inc.,
107 USPQ2d 1424, 1433 (TTAB 2013).
As such, the second du Pont factor regarding the similarity or dissimilarity of the
goods favors a finding of likelihood of confusion with regard to Opposer’s GO-GURT
mark and Applicant’s GOA-GURT and GOA-GURT and design marks.
With regard to trade channels and classes of purchasers, Opposer has submitted
testimony attesting that its GO-GURT yogurt product is sold at grocery stores, club
and discount stores, and mass merchandisers including Costco, Walmart, Kroger,
Target, Safeway, Ahold, Publix, Shoprite, SuperValu, and Meijer.17 The testimony
also demonstrates that Opposer’s GO-GURT yogurt product line is available and sold
through online retailers, including the online arms of grocery stores, club and
discount stores, and mass merchandisers, as well as through Peapod and other online
sellers of food products.18 These include the following online retailers: Amazon.com,
Instacart.com, and Walmart.com.19 With regard to classes of consumers, the evidence
shows that, while children are the primary consumers of Opposer’s GO-GURT yogurt
product, adults of all ages also enjoy and consume the goods.20

17 Tanka Test. Decl., ¶ 7, 104 TTABVUE 5.
18 Id.
19 Id.
20 Id. at ¶ 11, 104 TTABVUE 6.
Opposition Nos. 91197220, 91203854, and 91204420
18
With regard to Applicant’s applications for the marks GOA-GURT and GOA-
GURT and design, the identifications for the goods are not limited to any specific
trade channel or classes of purchasers. Accordingly, we presume that Applicant’s
goods sold under these marks would be offered in all ordinary trade channels for these
goods and that the goods are available for purchase by all the usual purchasers. In re
Elbam, 211 USPQ 639, 640 (TTAB 1981). Applicant’s unlimited channels of trade and
classes of purchasers therefore encompass Opposer’s demonstrated trade channels
and classes of consumers for the parties’ related goods. Thus, the third du Pont factor
concerning established, likely to continue trade channels and classes of purchasers
also favors a finding of likelihood of confusion with regard to these marks.
C. Actual Confusion (and the Opportunity for Actual Confusion)
We next turn to the seventh du Pont factor (nature and extent of any actual
confusion) and the related eighth du Pont factor (extent of the opportunity for actual
confusion). du Pont, 177 USPQ at 567.
Because the evidence of record does not indicate that Applicant has commenced
use of her marks in commerce in connection with the goods identified in her involved
applications, there has been no opportunity for confusion to have occurred.
Accordingly, the seventh and eighth du Pont factors are neutral.
D. Conclusion
Based on all evidence and arguments bearing on the du Pont factors that the
Board may consider, including the evidence and arguments that we have not
specifically discussed herein, we conclude that although Opposer has established that
its pleaded GO-GURT mark has achieved a moderate degree of fame for likelihood of
Opposition Nos. 91197220, 91203854, and 91204420
19
confusion purposes, at least insofar as it relates to its yogurt product, its “fame” is
insufficient in and of itself to establish a likelihood of confusion under Section 2(d) of
the Trademark Act. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000) (“fame alone cannot overwhelm the other DuPont factors as a matter
of law.”). Notwithstanding, because we have found that the marks at issue are
substantially similar; that Applicant’s identified goods are either identical or related
to Opposer’s goods; that they would move in the same or overlapping trade channels;
and that they are offered to the same or overlapping classes of purchasers, we
conclude that Applicant’s GOA-GURT, GOAT-GURT, and GOA GURT and design
marks so resemble Opposer’s GO-GURT mark as to be likely to cause confusion or
mistake, or to deceive under Section 2(d) of the Trademark Act. Accordingly, we find
that Opposer has proven its likelihood of confusion claim by a preponderance of the
evidence.
IV. Lack of a Bona Fide Intention to Use the Mark
Although the Board has found that Opposer has prevailed on its claim of likelihood
of confusion, for the sake of completeness, we now address Opposer’s claim of lack of
a bona fide intent to use the marks in commerce as of the filing date of Applicant’s
involved intent-to-use applications.
Trademark Act Section 1(b), 15 U.S.C. § 1051(b), states that “a person who has a
bona fide intention, under circumstances showing the good faith of such person, to
use a trademark in commerce” may apply for registration of the mark. A
determination of whether an applicant has a bona fide intention to use the mark in
commerce is an objective determination based on all the circumstances. Lane Ltd. v.
Opposition Nos. 91197220, 91203854, and 91204420
20
Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994); and Commodore
Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).
Opposer has the burden of demonstrating by a preponderance of the evidence that
Applicant lacked a bona fide intent to use the marks on the identified goods. In
Commodore, the Board held that “absent other facts which adequately explain or
outweigh the failure of an applicant to have any documents supportive of or bearing
upon its claimed intent to use its mark in commerce, the absence of documentary
evidence on the part of an applicant regarding such intent is sufficient to prove that
applicant lacks a bona fide intention to use the mark in commerce as required by
Section 1(b).” Commodore Electronics, 26 USPQ2d at 1507; see also Honda Motor Co.
v. Winklemann, 90 USPQ2d 1660 (TTAB 2009); Boston Red Sox Baseball Club LP v.
Sherman, 88 USPQ2d 1581 (TTAB 2008).
Opposer has met its burden of demonstrating Applicant’s lack of a bona fide intent
to use the involved marks. In the present case, because Applicant failed to respond to
Opposer’s requests for admission (which Opposer has made of record), Applicant has
effectively admitted, inter alia, that (1) she did not have a bona fide intent to use her
involved marks; (2) at the time she filed her intent-to-use applications, Applicant did
not have the capacity to produce, manufacture, market, license, advertise, promote,
distribute, ship, sell, or offer for sale the goods identified in her involved applications;
(3) at the time she filed her applications, Applicant had no business plan, no product
development plan, no written business plan, and no written product development
plan to produce, manufacture, market, license, advertise, promote, distribute, ship,
Opposition Nos. 91197220, 91203854, and 91204420
21
sell, or offer for sale the goods in the involved applications; (4) Applicant currently
does not have a written business plan or a written product development plan to
produce, manufacture, market, license, advertise, promote, distribute, ship, sell, or
offer for sale the goods identified in her involved applications; and (5) Applicant has
not produced a written business plan or a written product development plan to
produce, manufacture, market, license, advertise, promote, distribute, ship, sell, or
offer for sale the goods identified in her involved applications.21 See FED. R. CIV. P.
36(a)(3) (“A matter is admitted unless, within 30 days after being served, the party
to whom the request is directed serves on the requesting party a written answer or
objection addressed to the matter and signed by the party or its attorney.”).
Additionally, Opposer maintains that Applicant has failed to submit any
documentary evidence during trial that would demonstrate her bona fide intent to
use her involved marks in commerce.22
Applicant has supplied no documentary evidence regarding her intent to use her
marks on any of the identified goods during trial, and has effectively admitted that
no such documents exist by virtue of Opposer’s submitted requests for admission that
are deemed admitted by operation of FED. R. CIV. P. 36(a)(3). The lack of any
documentary evidence of record and the submitted admissions are sufficient for
Opposer to satisfy its initial burden of proving that Applicant did not and does not
have an intention to use her applied-for marks on or in connection with goods

21 106 TTABVUE, Opposer’s Requests for Admission Nos. 20-27; 33-41; 44-55; 58-61.
22 Opposer’s Brief, pp. 23-25, 120 TTABVUE 29-31.
Opposition Nos. 91197220, 91203854, and 91204420
22
identified in her involved applications. The burden then shifts to Applicant to come
forward with evidence that would adequately explain or outweigh the failure to
provide such documentary evidence.
While Applicant submitted the testimony declaration of her brother, Kenneth
Eldib, Mr. Eldib’s testimony contains no information about his sister’s bona fide
intent to use her involved marks on the identified goods.23 His testimony deals with
Ms. Eldib’s experience baking chocolate chip cookies and selling bakery goods and
coffee in New Jersey many years ago. In essence, his testimony is an argument,
unsupported by any documents, that since his sister did not have a business plan
before when she sold bakery goods and coffee in New Jersey, she should not need a
business plan now. His testimony, however, is irrelevant to the bona fide intent issues
in the present case. Moreover, the documents accompanying Mr. Eldib’s testimony
declaration also do not demonstrate Applicant’s bona fide intention to use her
involved marks in commerce. The first exhibit is a purported client list from Global
Trade Consulting, Mr. Eldib’s consulting company.24 The second is purportedly a copy
of a document regarding the sale of Applicant’s bakery business.25 Neither of these
two documents show Applicant’s bona fide intent to use her involved marks. Since
Applicant submitted no evidence whatsoever regarding her intent to use her marks,
nor did she file a brief, Applicant has failed to rebut Opposer’s evidence.

23 Eldib Test. Decl., 117 TTABVUE.
24 Id., Exh. 1, 117 TTABVUE 6-10.
25 Id., Exh. 2, 117 TTABVUE 11-21.
Opposition Nos. 91197220, 91203854, and 91204420
23
So as to be clear, the record is devoid of facts showing any efforts Applicant has
undertaken to commence use of the involved marks, such as product design efforts,
manufacturing plans, graphic design efforts, test marketing, correspondence with
prospective licensees or suppliers, preparation of marketing plans or business plans,
creation of labels, marketing or promotional materials, steps to comply with
regulatory requirements, securing of financing, and the like. Simply put, the record
is lacking of any concrete activities to demonstrate Applicant’s bona fide intent to use
her involved marks in commerce.
Accordingly, we find that Opposer has demonstrated, by a preponderance of the
evidence, that Applicant lacked a bona fide intent to use the involved marks in
commerce as of the filing date of Applicant’s involved applications.
Decision: The opposition, based on the grounds of likelihood of confusion and
lack of a bona fide intent to use the marks as of the filing date of the involved
applications, is sustained.