Yun-hao Hung

Trademark Trial and Appeal Board

Jul 18, 2018

No. 87115720 (T.T.A.B. Jul. 18, 2018)

Mailed: July 18, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Hung
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Serial No. 87115720
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Francis J. Ciaramella of Rick Ruz, PLLC
for Yun-hao Hung.

Miah Rosenberg LaMont, Trademark Examining Attorney, Law Office 117,
Travis Wheatley, Managing Attorney.
_____
Before Taylor, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Yun-hao Hung seeks a Principal Register registration for the mark LMS
LOVE ME SWEET and design, shown below

(with SWEET disclaimed) for “cheesecake; cheese tarts; fruit tarts; cookies; bread;
pies; cakes; chocolate; candy; crepes; buns; loaf cakes; toast; muffins with croissant
layers; stuffed buns in the nature of Baozi; cream puffs; waffles; moon cake; Japanese
fish-shaped cake; red bean cake; macarons; pastries; puddings; sandwiches;
This Opinion is Not a
Precedent of the TTAB
Serial No. 87115720
2
hamburger sandwiches; pizzas; hot dogs sandwiches; meat pie; steamed buns stuffed
with minced meat; tea; coffee; ice cream; crushed ice; bubble tea.”1 The Examining
Attorney refused registration under Section 2(d) of the Trademark Act on the ground
that Applicant’s mark so resembles the registered mark LOVE ME SWEETS, in
standard characters (with SWEETS disclaimed), for “bakery goods; cakes; cup cakes
[sic]”2 that use of Applicant’s mark in connection with Applicant’s goods is likely to
cause confusion. After the refusal became final, Applicant appealed and filed a
request for reconsideration which was denied. Applicant and the Examining Attorney
filed briefs.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on all of the probative evidence of
record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered); see also In re Majestic Distilling Co., 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. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29

1 Application Serial No. 87115720 was originally filed July 25, 2016 under Section 44(d) of
the Trademark Act, 15 U.S.C. § 1126(d), with a priority claim based on a Canadian
registration; Applicant later amended the filing basis to an intent to use the mark in
commerce under Section 1(b) of the Act. The application includes this description of the mark:
“The mark consists of a black ‘X’, with black dots at each corner, separating the black letters
‘L’, ‘M’, and ‘S’ and a red heart, all within two concentric red circles, all of the foregoing above
the wording ‘LOVE ME SWEET’ in black, with black dots between the words ‘LOVE ME’ and
‘ME SWEET’.”
2 Registration No. 4465465, issued January 14, 2014.
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(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). These and other relevant factors are discussed below.
A. The Goods, Channels of Trade and Classes of Consumers
Turning first to the goods, they are in-part identical and legally identical, because
cited registration and involved application both identify “cakes,” and Registrant’s
“bakery goods” encompass, at the very least, Applicant’s cookies, bread, pies, buns,
loaf cakes and muffins with croissant layers. Where, as here, the goods are in-part
identical, we must presume that the channels of trade and classes of purchasers for
those goods are also the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels
of trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co.,
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);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
The identity (in part) of Applicant’s and Registrant’s goods and their overlapping
channels of trade and classes of consumers weigh heavily in favor of a finding of
likelihood of confusion.
B. The Marks
Where, as here, the goods are in-part identical or legally identical, the degree of
similarity between the marks necessary to find a likelihood of confusion declines. In
Serial No. 87115720
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re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248
(TTAB 2010). We must consider 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). In doing so, however, we decline
Applicant’s invitation to “find that a likelihood of confusion does not exist when
viewing the [marks] side-by-side.” 7 TTABVUE 4. “A side-by-side comparison, of
course, is not the proper test to be used in determining the issue of likelihood of
confusion since such a comparison is not the ordinary way that a prospective
customer would be exposed to the marks.” Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991). See also Coach Services Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (“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.”).
Cf. Majestic Distilling, 65 USPQ2d at 1205.
Here, the marks are similar in appearance, sound, meaning and overall
commercial impression. In fact, the phrase in Applicant’s mark is almost identical to
the cited mark (LOVE ME SWEET vs. LOVE ME SWEETS). While Applicant’s mark
includes the initials L M S, and the singular form of SWEET rather than the plural
Serial No. 87115720
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SWEETS, these differences are so minor that they do not meaningfully distinguish
the literal elements of Applicant’s mark from Registrant’s.
In fact, “L M S” will be perceived as merely the obvious initialism of LOVE ME
SWEET, and thus not convey a separate meaning therefrom. Moreover, unlike the
letters L M S, the words LOVE ME SWEET are displayed together, on the same line,
as a single phrase, and will therefore likely be perceived as such and be used to call
for the goods. Of course, because the cited mark is registered in standard characters,
it could be displayed in any font, including the same font as the literal portion of
Applicant’s mark. In re Viterra, 101 USPQ2d at 1910.
While Applicant’s mark includes the singular term “SWEET,” rather than its
plural form “SWEETS,” this distinction between the marks is not meaningful. Indeed,
LOVE ME SWEET and LOVE ME SWEETS look and sound virtually identical. See
Wilson v. DeLaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident
that there is no material difference, in a trademark sense, between the singular and
plural forms of the word ‘Zombie’ and they will therefore be regarded here as the same
mark.”); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962). Moreover, while we
recognize that LOVE ME SWEET may also be more likely to convey a request to a
lover than LOVE ME SWEETS, the phrase LOVE ME SWEETS could nevertheless
have the same meaning. Furthermore, we must consider the marks in the context of
the goods, which are in the food category sometimes referred to as “sweets,” and
therefore the connotations of both the singular and plural versions of “sweet” will be
Serial No. 87115720
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the same – the marks are most likely to be understood as a reference to the sugary
food products Applicant and Registrant offer or intend to offer.
The design element of Applicant’s mark is not sufficiently distinguishing to avoid
confusion. In fact, “the verbal portion of a word and design mark likely will be the
dominant portion.” In re Viterra, 101 USPQ2d at 1911; In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises
both a word and a design, then the word is normally accorded greater weight because
it would be used by purchasers to request the goods or services” and “because
applicant’s mark shares with registrant’s mark that element responsible for creating
its overall commercial impression, the marks are confusingly similar”). That is the
case here, because the design is not particularly distinctive, consisting of common
shapes such as “concentric red circles,” lines in the shape of an “X,” dots and a heart
design which merely emphasizes the first word of the literal element of Applicant’s
mark, LOVE.
In short, because the dominant, literal portion of Applicant’s mark is almost
identical to the entirety of the cited mark, and Applicant’s design is not sufficient to
avoid confusion, the similarity of the marks also weighs in favor of finding a likelihood
of confusion. In fact, consumers familiar with Registrant’s mark who encounter
Applicant’s mark could very well perceive it as a new or modified version of
Registrant’s mark, especially because it is also used in connection with baked goods.
See Geigy Chemical Corp. v. Atlas Chemical Indus., Inc., 438 F.2d 1005, 169 USPQ
39, 40 (CCPA 1971) (finding a likelihood that doctors would confuse HYGROTON and
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HYDRONOL, given that it is necessary to consider “the fallibility of memory over a
period of time, not merely whether one can distinguish the marks at a given
moment”).3
C. Fame/Strength of the Cited Mark
Applicant’s argument that “there is no evidence that the cited registration is
famous or has acquired secondary meaning,” 7 TTABVUE 6, is misplaced. “Although
we have previously held that the fame of a registered mark is relevant to likelihood
of confusion, du Pont, 476 F.2d at 1361, 177 USPQ at 567 (factor five), we decline to
establish the converse rule that likelihood of confusion is precluded by a registered
mark’s not being famous.” Majestic Distilling, 65 USPQ2d at 1205. In fact, “in an ex
parte appeal the ‘fame of the mark’ factor is normally treated as neutral because the
record generally includes no evidence as to fame.” In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1086 (TTAB 2016). “[I]t is settled that the absence of such evidence is not
particularly significant in the context of an ex parte proceeding.” In re Davey Products
Pty Ltd. 92 USPQ2d 1198, 1204 (TTAB 2009).
Applicant’s argument that the cited mark is weak, 7 TTABVUE 8-10, is
unsupported by the third-party registrations on which it is based. The vast majority
of the third-party registrations upon which Applicant relies contain only the word

3 The cases which Applicant cites in arguing that the involved mark’s design is its dominant
feature are inapposite. In Ass’n of Co-op Members, Inc. v. Farmland Indus., Inc., 684 F.2d
1134, 216 USPQ 361 (5th Cir. 1982) and In re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350 (TTAB
1997) likelihood of confusion was found and in Sloppy Joe’s the marks were found to be
similar. In In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), the design was significantly
larger in relationship to the words than Applicant’s mark in this case. In Envirotech Corp. v.
Nat’l Serv. Indus., Inc., 197 USPQ 292 (TTAB 1977) the designs were “substantially
identical,” so Applicant’s addition of a word to its design was not enough to prevent confusion.
Serial No. 87115720
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LOVE, or a translation (e.g. AMORE) or variation (e.g. LUV) thereof, and not the
word SWEET. The only three registrations which contain both SWEET and LOVE
(or variations or translations thereof) are for different goods – SWEET LOVE (Reg.
No. 3970103) for “tea;” DOLCE AMORE (Stylized) (Reg. No. 2916100) for “sorbet and
ice cream;” and SWEET LUV (Reg. No. 4550795) for “natural sweetener.” Third-party
marks registered for different goods than those at issue here do not establish that the
cited mark is weak. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1751-52 (Fed. Cir. 2017) (“Symbolic has not pointed to any record evidence to support
a finding that multiple third parties use the mark I AM for the listed goods in its class
3 and 9 applications.”); In re Inn at St. Johns, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018).
These factors are neutral.
D. Conditions of Sale
To the extent Applicant continues to maintain that the relevant consumers are
“sophisticated” and will exercise care in purchasing, the evidence is to the contrary.
Applicant’s website reveals that Applicant’s “Original Cheese Tart” retails for $3.99,
and its “Original Cheesecake” retails for $11.00. These goods are not expensive, and
may very well be purchased on impulse. In any event, because there are no trade
channel, price or similar limitations in either Registrant’s or Applicant’s
identifications of goods, we must presume that ordinary and unsophisticated
consumers will purchase Applicant’s and Registrant’s baked goods, and we must base
our decision on the “least sophisticated potential purchasers” for the goods as
identified. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
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USPQ2d 1157, 1163 (Fed. Cir. 2014) (quoting Gen. Mills, Inc. v. Fage Dairy Proc.
Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on other
grounds, 2014 WL 343267 (TTAB 2014)). This factor also weighs in favor of finding a
likelihood of confusion.
E. The Lack of Actual Confusion
The absence of confusion is not relevant here because there is no evidence that
Applicant’s mark is in use in the United States, or the extent of any use, so there is
no way to determine whether or the extent to which there has been an opportunity
for confusion to occur if it were likely to occur. See Nina Ricci S.A.R.L. v. E.T.F.
Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989); In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). This factor is also neutral.
II. Conclusion
The goods are in-part identical or legally identical, and the identical goods must
be presumed to move in the same channels of trade to the same consumers. The
marks are similar and the goods will be purchased by ordinary consumers exercising
ordinary care. Therefore, confusion is likely.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.