Cake Divasv.Charmaine Jones

Trademark Trial and Appeal Board

Feb 23, 2011

No. 91177301 (T.T.A.B. Feb. 23, 2011)

Hearing: Mailed:
September 14, 2010 February 23, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Cake Divas
v.
Charmaine Jones
_____

Opposition No. 91177301
to Application Serial No. 76529077
filed July 11, 2007
_____

Joseph A. Mandour and Ben T. Lila of Mandour & Associates,
APC for Cake Divas.

Karin Segall and Dana C. Rundlof of Foley & Lardner LLP for
Charmaine Jones.
_____

Before Seeherman, Taylor and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Cake Divas, a California partnership (“opposer”), has
filed an opposition to Charmaine Jones’ (“applicant”)
application to register the mark CAKEDIVA, in standard
character form, for, inter alia, for the following goods:1
Cakes, namely, wedding cakes, bridal
shower cakes, party cakes, novelty cakes
and cakes for all occasions; edible cake
sculptures of all shapes and sizes made
primarily of sugar; cookies of all
shapes and sizes; edible sugar

1 The application also includes “greeting cards,” in Class 16,
but the application for registration of the mark for those goods
was not opposed.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91177301
2
sculptures in the form of flowers,
inanimate objects, human images; and
edible decorations made of sugar for
cakes and cookies, in Class 30.

As the ground for opposition, opposer has alleged use of the
mark CAKE DIVAS in connection with unidentified goods and
services and that applicant’s mark CAKEDIVA in connection
with cakes so resembles opposer’s mark as to be likely to
cause confusion. In the ESTTA generated form,2 opposer
identified its application Serial No. 76538360 for the mark
CAKE DIVAS for “custom cake making, baking, designing and
decorating services for edible and faux cakes” as the basis
for the opposition. The ESTTA generated form is considered
part of the pleading. PPG Indus. Inc. v. Guardian Indus.
Corp., 73 USPQ2d 1926, 1928 (TTAB 2005) (“the Board has
viewed the ESTTA filing form and any attachments thereto as
comprising a single document or paper filed with the
Board”).
Although opposer did not plead that it had priority of
use, as discussed below, priority was the only factual issue
litigated in this case. In view thereof, we find that
priority has been tried by the implied consent of the
parties pursuant to Fed.R.Civ.P. 15(b)(2) and the notice of
opposition is deemed amended accordingly.

2 ESTTA is the Board’s electronic filing system.
Opposition No. 91177301
3
In its brief, opposer argued that “[r]egistration
should be refused, [sic] because applicant falsely
represented it has used the trademark CAKEDIVA on all of the
goods listed in Application Serial No. 76529077,” and,
therefore, “the Board should also deny registration on the
basis of fraud.”3 As noted above, opposer alleged only
likelihood of confusion as the ground for opposition.
Opposer did not allege fraud as a ground for opposition nor
did it seek to amend the pleading to assert fraud.
Applicant, in her brief, objected to opposer’s untimely
assertion of fraud.
Implied consent to the trial of an unpleaded issue can
be found only where the nonoffering party (1) raised no
objection to the introduction of the evidence on the issue,
and (2) was fairly apprised that the evidence was being
offered in support of the issue. Morgan Creek Productions
Inc. v. Foria International Inc., 91 USPQ2d 1134, 1138 (TTAB
2009); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715,
1720-1721 (TTAB 2008).
The question of whether an issue was
tried by consent is basically one of
fairness. The non-moving party must be
aware that the issue is being tried, and
therefore there should be no doubt on
this matter.

3 Opposer’s Brief, pp. 5
Opposition No. 91177301
4
Morgan Creek Productions Inc. v. Foria International Inc.,
91 USPQ2d at 1139.
Suffice it say that there was nothing in the evidence
submitted by opposer to show that the issue of fraud was
being tried. Certainly applicant was not aware that opposer
was cross-examining applicant’s witness for purposes of
proving that applicant had committed fraud during the
prosecution of her application for registration. We find
that applicant was not aware that opposer intended to assert
fraud until opposer filed its brief, and that the issue of
fraud was not tried. Accordingly, opposer’s arguments
concerning applicant’s purported fraud have been given no
consideration.
Preliminary Issues
Ashbell J. McElveen, an executive chef, testifying on
behalf of applicant, introduced into evidence a copy of the
homepage from his website at “foodstop.com.”4 The homepage
features a link to a CAKE DIVA webpage identifying
applicant’s products. Mr. McElveen did not introduce the
CAKE DIVA webpage, but described its contents. During the
deposition, Mr. McElveen explained that although he has the
entire website in storage, he obtained the copy of the
homepage from a photographer that he had worked with

4 McElveen Dep., Exhibit 1.
Opposition No. 91177301
5
previously.5 Opposer lodged an objection to Mr. McElveen’s
testimony regarding the contents of the CAKE DIVA webpage on
the ground that it violates the best evidence rule.6
Opposer renewed the objection in its reply brief.7
The “best evidence rule” is a common law proposition
that has been codified in Rule 1002 of the Federal Rules of
Evidence, which states: “To prove the content of a writing,
recording, or photograph, the original writing, recording,
or photograph is required, except as otherwise provided in
these rules or by Act of Congress.” The “best evidence
rule” requires the production of the original document when
the contents of that document are at issue, as they are in
this case. Federal Rule of Evidence 1004 excuses this
requirement where it can be shown that the original has been
lost or destroyed, as long as unavailability is not the
result of the proponent's bad faith, the original is not
obtainable, or the document is not closely related to a
controlling issue.
Opposer’s objection is well taken because (1) the
webpage has not been lost or destroyed, (2) applicant failed
to adequately explain the absence of the document, even

5 McElveen Dep., p. 11.
6 McElveen Dep., pp. 18-20.
7 Opposer’s Reply Brief, p. 1. The better practice would have
been for opposer to have renewed the objection in its main brief
so that applicant would have had the opportunity to respond.
Opposition No. 91177301
6
though testimony indicated that it existed, (3) applicant
failed to show that a diligent effort to obtain the document
was made, and (4) the content of the webpage is closely
related to a controlling issue in this proceeding. In view
thereof, opposer’s objection to Mr. McElveen’s testimony
describing the CAKE DIVA webpage is sustained.
Opposer also objected to Mr. McElveen’s testimony
describing applicant’s business cards displaying the CAKE
DIVA mark on the basis of the “best evidence rule” because
the business cards were not introduced into evidence. The
objection is not well taken with respect to the testimony
regarding the business cards because opposer elicited the
testimony from the witness on cross-examination: that is,
opposer specifically asked the witness to describe the
business cards.8
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the application file
for applicant’s mark. The record also includes the
following testimony and evidence:
A. Opposer’s Evidence.

1. A notice of reliance on applicant’s responses to
opposer’s interrogatory Nos. 1 and 2, including documents

8 McElveen Dep., p. 41.
Opposition No. 91177301
7
identified by Bates Nos. CD000007-16 and CD000026-111
submitted in response to those interrogatories.
2. Testimony deposition of Leigh Groh, a Cake Divas
partner, with attached exhibits;
3. Testimony deposition of Joan Spitler, a Cake Divas
partner, with attached exhibits;
4. Testimony deposition of Lisa Feldman, a
psychotherapist, testifying as to her personal knowledge
regarding opposer’s use of its mark;
5. Testimony deposition of Majbritt Almskou, an
employee of opposer, testifying as to her personal knowledge
regarding opposer’s use of its mark.
B. Applicant’s Evidence.
1. Testimony deposition of Ashbell J. McElveen, an
executive chef, with attached exhibits, testifying as to his
personal knowledge regarding applicant’s use of her mark.
2. A notice of reliance on an article in the Gary
Info filed pursuant to Trademark Rule 2.122(e).
Standing

Opposer uses the mark CAKE DIVAS to identify the
manufacturing, baking and designing of edible and faux
cakes.9 This is sufficient to demonstrate that opposer has
a real interest in this proceeding and, therefore, has

9 Grode Dep., pp. 11, 14.
Opposition No. 91177301
8
standing. Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Priority
In order for opposer to prevail on its likelihood of
confusion claim, it must prove that it has a proprietary
interest in the mark CAKE DIVAS and that its interest was
obtained prior to either the filing date of applicant’s
application for registration or applicant’s date of first
use. Herbko International Inc. v. Kappa Books Inc., 308
F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth
& Co., Inc. v. Universal Corp., 640 F.2d 1317, 209 USPQ 40,
43 (CCPA 1981); Miller Brewing Co. v. Anheuser-Busch Inc.,
27 USPQ2d 1711, 1714 (TTAB 1993).
Opposer began using the mark CAKE DIVAS to identify the
manufacturing, baking and designing of cakes on October 15,
1998.10
Establishing applicant’s first use date for the mark
CAKEDIVA for cakes is far more complex because applicant did
not introduce any evidence of technical trademark use prior
to opposer’s established date of first use. Thus, applicant
must rely on use analogous to trademark use. In other
words, applicant must establish use analogous to trademark
use prior to any use provable by opposer in order to tack

10 Grode Dep., pp. 15-16, 19 and Exhibit 2; Spitler Dep., p. 44.
Opposition No. 91177301
9
such use onto the constructive use date attributable to the
filing date of her application.
It is the commercial usage of a trademark which creates
trademark rights. Reflange Inc. v. R-Con International, 17
USPQ2d 1125, 1130 (TTAB 1990). “Such usage can consist of
use analogous to trademark use and need not be technical
trademark use.” Id.
Use analogous to trademark use must be
of “such a nature and extent as to
create an association of said [term]
with a single source … sufficient to
create a proprietary right in the user
deserving of protection.” Era Corp. v.
Electronic Realty Associates, Inc., 211
USPQ 734, 745 (TTAB 1981). The manner
of use must be “calculated to attract
the attention of potential customers or
customers in the applicable field of
trade” so as to create an association of
the term with a single source, even if
anonymous. Liqwacon Corp. v. Browning-
Ferris Industries, Inc., 203 USPQ 305,
308 (TTAB 1979).

Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251,
1254 (TTAB 1995). “[T]he fact finder may infer the fact of
identification on the basis of indirect evidence regarding
the opposer’s use of the word or phrase in advertising
brochures, catalogs, newspaper ads, and articles in
newspapers and trade publications.” T.A.B. Systems v.
PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1881 (Fed.
Cir. 1996).
Opposer argues that “analogous use is only relevant if
an opposer is attempting to establish that the opposer’s
Opposition No. 91177301
10
analogous use should prevent an applicant’s federal
registration. Simply put, citing analogous use can only be
used as a basis for preventing another party’s
registration.”11 However, opposer’s position is contrary to
the cases where the applicant proved its priority through
“analogous use.” Dyneer Corp. v. Automotive Products plc,
37 USPQ2d 1251, 1254 (TTAB 1995) (“we find that there is no
genuine issue of material fact that TSL, applicant’s
predecessor-in-interest, used the SURETRAC mark in a manner
analogous to trademark use” to prove priority); Asplundh
Tree Expert Co. v. Defibrator Fiberboard Aktiebolag, 208
USPQ 954, 957-959 (TTAB 1980) (applicant tried, but failed,
to prove priority by use analogous to trademark use); see
also Era Corp. v. Electronic Realty Associates, Inc., 211
USPQ at 745 (“prior use of a term analogous to trademark or
service mark use, although not of a nature sufficient for
purposes of registration, may be sufficient to preclude a
cause of action by a subsequent user notwithstanding that
said party may have been the first to have made a technical
trademark or service mark usages of its designation”); In re
Cedar Point, Inc., 220 USPQ 533, 537 (TTAB 1983) (“Of
course, an applicant or registrant involved in an inter
partes proceeding before the Board may himself reply on use
analogous to trademark or service mark use to the extent

11 Opposer’s Reply Brief, p. 3.
Opposition No. 91177301
11
that he may tack such use on to his technical trademark or
service mark use for purposes of determining priority”).
Opposer has not cited, and we have not found, any cases
supporting opposer’s proposition that analogous use can only
be used as a basis for preventing another party’s
registration. Opposer relies on an excerpt from Professor
McCarthy’s treatise to support its position. However,
opposer did not include the highlighted portion.
Prior use of a term in advertising, as a
tradename, as a style or model
designation, or in a purely descriptive
sense may be sufficient to prevent a
later user from obtaining federal
registration of that term. … This kind
of priority, however, is purely
defensive. That is, the first to use a
term, even in a non-affixed usage, may
prevent federal registration by another,
even though he himself may not be able
to obtain federal registration.

MCarthy On Trademarks and Unfair Competition § 16:22 (4th
ed. 2010). In other words, a party may prove priority
through use analogous to trademark use, but to obtain a
registration, it must make technical use of the mark. Thus,
“[a]nalogous service mark or trademark use may be tacked on
to technical use of the term in question for the purpose of
establishing prior rights in a proceeding of this type.” Era
Corp. v. Electronic Realty Associates, Inc., 211 USPQ at
745.
Opposition No. 91177301
12
As noted, the only issue litigated and argued in this
case has been priority of use.
The following testimony and evidence has been made of
record regarding applicant’s use of CAKE DIVA:
1. The advertisement shown below was published in the
March 1993 Brides Today magazine.12

2. The advertisement shown below was published in the
June 15, 1993 issue of Brides Today magazine.13

12 Opposer’s notice of reliance.
13 Id.
Opposition No. 91177301
13

3. An article in the May/June 1994 issue of
Sugarcraft Magazine entitled “New York Show Cakes:
Charmaine Jones.” The article noted that applicant is
“[a]ffectionately known as the ‘cake diva.”14
4. An article in the September 1, 1994 issue of the
Gary Info entitled “Gary native ‘cake diva’ in New York.”15
The author writes that “Horace Mann High School’s 1975
graduate Charmaine Williams-Jones, is known as the cake diva
of New York City with astounding array of Afro-centric
cakes.” The article features a photograph of applicant with
the heading “Charmaine Jones, the cake diva of New York and
a former Garyite.”
5. An article in the Spring/Summer 1996 issue of
Wedding Dresses Magazine entitled “Isn’t That Special:

14 Id.
15 Applicant’s notice of reliance.
Opposition No. 91177301
14
Outrageous Cakes.”16 In the article, the author wrote that
“[s]tacked cakes and theme cakes are all the rage and
Charmaine Jones, affectionately known as the ‘cake diva’ is
leading the nation into very unique cake styles.”
6. An interview with applicant appearing in the May
1997 issue of Black Diaprosa Magazine entitled “Charmaine
Jones The Cake Diva of Outrageous Cakes.”17 In the
interview, the author revealed that “Charmaine Jones wants
to take her business onto the next plateau hope-fully [sic]
becoming a household name, Cake Diva.”
7. Ashbell McElveen, an executive chef, testified
that “probably around ‘93’” he remembers applicant marketing
“Christmas cards with gift box cakes on them” and that CAKE
DIVA appeared on the cards.18 Mr. McElveen also testified
that in 1995 he delivered a cake for applicant and left the
cards next to the cake. The cards said “‘Outrageous cakes,
the Cake Diva,’ with some contact details and a photograph
of the Cake Diva.”19
Mr. McElveen also introduced into evidence a screen
shot from the home page of his website foodstop.com.20
There is a link to The Cake Diva webpage on the left-hand

16 Opposer’s notice of reliance.
17 Id.
18 McElveen Dep., p. 40.
19 McElveen Dep., pp. 31 and 41 (Opposer’s cross-examination).
20 McElveen Dep., Exhibit 1.
Opposition No. 91177301
15
side of the home page. The foodstop.com home page is
displayed below.

The foodstop.com website home page was publicly available
in October 1996.21 Mr. McElveen testified that the Cake
Diva link generated “about thirty or so e-mails in the
period of ’96 that I recall that specifically wanted, ‘How
do you get in touch with Cake Diva, and how do I get a
cake?”22 On cross-examination, Mr. McElveen confirmed that
the people who sent e-mails “referred to her as the Cake
Diva, because that was what was on the site.”23 The Cake

21 McElveen Dep., p. 14.
22 McElveen Dep., p. 22.
23 McElveen Dep., pp. 42-43.
Opposition No. 91177301
16
Diva link appeared on the foodstop.com website through
2002.24
Finally, Mr. McElveen testified that he had a segment
on the Sunday Morning Weekend Today Show on NBC from 1990
through 199325 and that he featured applicant’s cake for the
1993 Thanksgiving show.
Charmaine made a cornucopia cake. It is
a huge cornucopia with all of the autumn
vegetables and stuff, leaves. It was
absolutely stunning, and that was the
lead-into that Sunday show from my
segment, and the show teased with the
cornucopia.26

Based on the evidence presented, we find that applicant
used CAKE DIVA in a manner analogous to trademark and
service mark use as of 1993. Applicant made bona fide
commercial use of the mark through her advertising. Her use
of the mark CAKE DIVA created a public identification for
her mark and her goods as demonstrated by Ashbell McElveen
displaying the cornucopia cake on the 1993 Thanksgiving show
for the Sunday Morning Weekend Today Show and this public
identification continued with the news articles referencing
the Cake Diva in the Gary Info, Wedding Dresses Magazine,
Sugarcraft Magazine, and Black Diaprosa Magazine.

24 McElveen Dep., p. 26.
25 McElveen Dep., p. 5.
26 McElveen Dep., pp. 27-28. Because McElveen met applicant in
1993, the Thanksgiving show had to be in 1993. (McElveen Dep.,
p. 28.
Opposition No. 91177301
17
We note that applicant’s early use is for the mark CAKE
DIVA as two words and the mark sought to be registered is
CAKEDIVA as one word. To tack the prior use of one mark
[CAKE DIVA] onto another [CAKEDIVA] requires that the marks
be legal equivalents or indistinguishable from each other,
and that the consumer considers both as the same mark. The
marks must create the same continuing commercial impression
and the later mark must not materially differ from or alter
the character of the mark attempted to be tacked. Van Dyne-
Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d
1866, 1868 (Fed. Cir. 1991). The marks CAKE DIVA and
CAKEDIVA are legal equivalents because the space between the
words “Cake” and “Diva” is inconsequential.27 See Humble
Oil & Refining Co. v Sekisui Chemical Co., 165 USPQ 596, 603
(TTAB 1970)(the marks S-LON and ESLON convey the same
significance and would be recognized as the same marks); see
also In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB
2007) (THEATL is the compressed version of THE ATL they are
equivalent in sound, meaning and impression); In re
Planalytics Inc., 70 USPQ2d 1453, 1456 (TTAB 2004)
(“gasbuyer” is the equivalent of “gas buyer”); (Ex parte
Pocket Books, Inc., 91 USPQ 182, 183 (Pat. Off. Ex.-in Chief
1951) (in an application where original drawing displayed

27 Opposer contends that “[o]pposer’s CAKE DIVAS and Applicant’s
CAKEDIVA trademarks are nearly identical in sight, sound, and
connotation. (Opposer’s Brief, p. 4).
Opposition No. 91177301
18
the mark as two words and the substitute drawing displayed
the mark as one word, the presence or absence of the space
was immaterial).
In conclusion, we find that the mark CAKE DIVA is the
legal equivalent of CAKEDIVA, that applicant may tack her
use of CAKE DIVA onto CAKEDIVA, that applicant first used
CAKE DIVA in 1993 and, therefore, that applicant has prior
use. Because opposer has failed to prove that it had a
proprietary interest in CAKE DIVA prior to that of
applicant, opposer’s likelihood of confusion claim fails.
Decision: The opposition is dismissed with prejudice.