David W. Mebane

Trademark Trial and Appeal Board

May 18, 2011

No. 77765008 (T.T.A.B. May. 18, 2011)

Mailed:
May 18, 2011
AZ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re David W. Mebane
________

Serial No. 77765008
_______

Raman N. Dewan of Jackson Walker L.L.P. for David W.
Mebane.

Saima Makhdoom, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Holtzman, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On June 22, 2009, David W. Mebane filed an application
(Serial No. 77765008) to register the mark
on the Principal Register for “frozen yogurt.” Applicant
claimed a bona fide intent-to-use the mark in commerce
pursuant to 15 U.S.C. § 1051(b), and disclaimed YOGURT.1

1 Applicant has entered the following description of the mark:
“The mark consists of the capital letter S with a black outline
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 77765008
2
Registration of applicant’s mark has been finally
refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), in view of Registration No. 3580377 for the mark

for “retail frozen dessert store services featuring frozen
yogurt.” Registrant has disclaimed YOGURT.
Applicant has appealed the final refusal of his
application. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is affirmed.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105

and blue interior. A silver spoon with a black outline
representing the letter p ….”
Ser No. 77765008
3
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In this case,
the examining attorney states that the similarity of (i)
the marks, (ii) the goods and services and (iii) the trade
channels are most relevant, and applicant discussed only
the similarity of the marks in his brief. Brief at
unnumbered p. 4. We therefore focus our discussion on the
three factors argued by the examining attorney
We first consider the similarity of the marks.
Specifically, we consider whether applicant's mark and the
registered mark, when viewed in their entireties, are
similar in 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 (Fed. Cir. 2005). It has been consistently held that
similarity in any one of the elements of sound, appearance
or meaning is sufficient to support a finding of likelihood
of confusion. See Krim-Ko Corporation v. The Coca-Cola
Company, 390 F.2d 728, 156 USPQ 523 (CCPA 1968).
Applicant states his position regarding the marks as
follows:
Applicant respectfully maintains that
contrary to the Examining Attorney’s view, the
word “SPOON” by itself should not be considered
the dominant element of the two marks for
comparison purposes. Rather, in this instance,
the two words “BIG SPOON” [in registrant’s mark]
would make a greater impression on purchasers and
Ser No. 77765008
4
together they are the portion that is more likely
to be remembered as the dominant and source-
signifying portion of the cited registration. In
contrast, Applicant’s highly stylized use of the
plural word “SPOONS” is more likely to be
remembered as the dominant and source-signifying
portion of Applicant’s mark. Moreover, because
the common term “SPOON” in the cited registration
and Applicant's mark is weak, other differences
in the remaining portions of the marks (even if
considered minor) should be considered and may
make the marks, overall, not confusingly similar.
See Freedom Savings & Loan Assn[.], v. Way, 226
USPQ 123, 127-28 (11th Cir. 1985).

Where marks in dispute are common words with
well-known meanings, relatively slight
differences in sound or appearance may suffice to
avoid conflict. See Playboy Enters. Inc. v.
Chuckberry Publ'g, Inc., 206 U.S.P.Q. 70
(S.D.N.Y. 1980). (Underlining in original.)
Brief at 7 – 8.

We agree with applicant that BIG SPOON dominates in
registrant’s mark. When a mark consists of a word portion
and a design portion, the word portion is more likely to be
impressed upon a purchaser’s memory and to be used in
calling for the goods and/or services, and the word portion
is normally accorded greater weight in determining
likelihood of confusion. In re Dakin’s Miniatures, Inc.,
59 USPQ2d 1593 (TTAB 1999); TMEP §1207.01(c)(ii) (7th ed.
2010). Also, BIG SPOON is in large letters; the design is
a highly stylized depiction of a spoon (and reinforces the
wording in the mark); BIG SPOON is the portion of the mark
that prospectve purchasers would consider when perceiving
Ser No. 77765008
5
the mark; and YOGURT is a generic term for the services
which has no source identifying function in and of itself.
We also agree with applicant that the word SPOONS is
more likely to be remembered as the dominant and source-
signifying portion of applicant’s mark. As noted above,
the word portion rather than the design component is more
likely to be impressed upon a purchaser’s memory and to be
used in calling for the goods and/or services, the spoon
design which forms the letter “P” in applicant’s mark
reinforces the wording of the mark, and, as with YOGURT in
registrant’s mark, YOGURT is a generic term in applicant’s
mark which has no source indicating function in and of
itself.2
However, we disagree with applicant’s argument that
“because the common term ‘SPOON’ in the cited registration
and Applicant's mark is weak, other differences in the
remaining portions of the marks (even if considered minor)
should be considered and may make the marks, overall, not
confusingly similar.” As discussed below, the evidence of
record does not convince us that SPOON(S) is weak, and the
differences in the marks do not persuade us that confusion
is not likely in this case.

2 Applicant has disclaimed YOGURT.
Ser No. 77765008
6
As support for his contention that SPOON is weak,
applicant relies on fifty-two applications and
registrations for marks which he maintains are for the same
or similar goods or services as those of the cited
registration and the present application. The pending
applications (which are seventeen in number) have “no
probative value other than as evidence that the application
was filed” and have not been further considered. Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1403
n.4 (TTAB 2010), citing, In re Phillips Van Heusen Corp.,
63 USPQ2d 1047, 1049 n.4 (TTAB 2002). Thirteen of the
registrations are not active, and they have no probative
value. In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261,
1264 (TTAB 2011) (“‘dead’ or cancelled registrations have
no probative value at all”).3 One registration is not a

3 Applicant also relies on a listing of search results from the
Office’s TESS electronic database which yielded 655 applications
and registrations, submitted for the first time with applicant’s
brief. Evidence submitted after appeal, without a granted
request to suspend and remand for additional evidence

may be
considered by the Board, despite its untimeliness, if the
nonoffering party (1) does not object to the new evidence, and
(2) discusses the new evidence or otherwise affirmatively treats
it as being of record. In such a situation, the Board may
consider evidence submitted by the nonoffering party to rebut the
untimely evidence. TBMP Section 1207.03 (3d ed. rev. 2011).
Although the examining attorney did not object to the TESS search
results, she did not address them in her brief. Thus, we do not
further consider the TESS search results and applicant’s argument
concerning the search results. If we had, however, we would not
find them persuasive; the listing of registrations and
applications on the TESS database have no probative value
Ser No. 77765008
7
used-based registration and has very little, if any,
probative value. In re Mucky Duck Mustard Co., Inc., 6
USPQ2d 1467 (TTAB 1988). The following are some of the
remaining twenty-two active use-based registered marks on
which applicant relies:
THE CUPCAKE YOU EAT WITH A SPOON for “ice cream
cupcakes”;

ENJOY LIFE ONE SPOONFUL AT A TIME for “frozen dessert
products, namely, ice cream, sorbet and gelato;

WHAT’S ON YOUR SPOON? for “retail frozen yogurt store
services …”;

SPOON ME for “… yogurt bar services …”;

SPOON ME for “smoothies; frozen fruit based
beverages”;

SPOON ME for “frozen yogurt”;

AMERICAN SPOON ESTABLISHED 1982 for goods including
“gelato and sorbetto”

LOSE THE SPOON for “yogurt”;

BLUE SPOON for services including “ice cream parlors”;

BLUE SPOON CREAMERY CAFE for services including “ice
cream parlors”;

COUNTRY SPOON for “ice cream”;

SPOONBENDER for “shakes, namely, thick frozen custard
shakes”;

BRING YOUR OWN SPOON for “retail store services
featuring ice cream, sherbet, water, ice and dessert
products”;

because, inter alia, it is not apparent on what goods or services
the marks are for.
Ser No. 77765008
8

LEMONADE WITH A SPOON for “lemon ice”;

SPOONERS SOFT SERVE for “frozen dessert”; and

GOLDEN SPOON for “retail sales of yogurt or frozen
yogurt on and off the premises”.

Many of the twenty-two registered marks are part of a
phrase (see, e.g., HEALH IN EVERY SPOON and SPOON ME) and
have a different connotation and commercial impression than
registrant’s mark, or are for goods that are not
sufficiently related to registrant’s services (see e.g.,
SPOON HUGGING TEXTURE for dairy products not including
frozen yogurt.). Also, absent evidence of actual use (and
there is no evidence of actual use in the record for most
of the registrations), third-party registrations have
little probative value because they are not evidence that
the marks are in use on a commercial scale or that the
public has become familiar with them. See Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463
(CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark
Office); and In re Hub Distributing, Inc., 218 USPQ 284,
285 (TTAB 1983).
In addition to the registrations, applicant has
introduced into the record webpages showing use of the
following marks for the following goods or services:
Ser No. 77765008
9
• GOLDEN SPOON for frozen yogurt (goldenspoon.com);

• SPOON ME for frozen yogurt (spoonme.com);

• SILVER SPOON YOGURT OBSESSION for yogurt bar
services (silverspoonyogurt.com);

• THE BENT SPOON for a yogurt shop (thebentspoon.net);
and

• LITTLE SPOON DESSERTS for a dessert company
(littlespoondesserts.com).

SPOON ME and SILVER SPOON YOGURT OBSESSION have a different
commercial impression than that of registrant’s mark. The
remaining marks are too few in number to persuade us that
SPOON is a weak term. Moreover, while these webpages
demonstrate use of the term SPOON in a handful of
trademarks in connection with similar goods or services, we
have no further information to assist us in determining the
degree of exposure or notoriety of these trademarks. In
other words, these may be four very small business entities
which have only been encountered by a minimal number of
consumers.
In sum, the third-party applications, registrations
and websites do not persuade us that SPOON is a weak term
in the context of registrant’s services.4 We add, however,

4 Applicant has argued that because the cited registration was
not cited in another third-party application, but applicant’s
application was noted as a potential bar to registration of the
third-party registration, the mark is weak. The Board is not
bound by the decisions of examining attorneys and each case must
be considered on its own merits.
Ser No. 77765008
10
that even if the term SPOON is regarded as weak it would
not automatically mean that these marks are not confusingly
similar; even weak marks are entitled to protection against
registration of similar marks for closely related goods
and/or services. See King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Now, we turn to the different design elements and the
word BIG in the cited registration which applicant stresses
differentiate the two marks. We might well agree that in a
side-by-side comparison of the respective marks there are
noticeable distinctions between the spoon designs of the
two marks and that BIG does not appear in applicant’s mark.
However, we cannot emphasize too strongly that applicant’s
and registrant’s marks are not marks which will be viewed
at the same time by purchasers in the marketplace, but
rather they are marks which will be viewed independently of
each other by purchasers whose memories are not infallible,
and who retain but a general or overall rather than a
specific recollection of the various elements or
characteristics of each mark. To such viewers, the
differentiating elements pointed out by applicant will not
be recalled in the memory of the purchaser who will only
remember that he had previously encountered a mark with
what appears to be a spoon design and the wording SPOON(S).
Ser No. 77765008
11
See Grandpa Pidgeon's of Missouri Inc. v. Borgsmiller, 177
USPQ 573 (CCPA 1973); and Johann Maria Farina Gegenuber Dem
Julichs Platz v. Chesebrough-Pond, Inc., 176 USPQ 199 (CCPA
1973). Also, BIG in registrant’s mark functions as an
adjective that modifies SPOON, indicating a size of the
spoon. To the extent that purchasers recall BIG in
registrant’s mark, they may consider BIG as suggesting
portion sizes at SPOON yogurt stores. Further, the
additional “S” in applicant’s mark does not serve to
distinguish the marks.
In sum, we are not persuaded by applicant’s evidence
that SPOON is a weak term; rather, we find that the marks
are overall very similar despite the differing designs and
the word BIG in registrant’s mark. Due to the shared term
SPOON, and the same spoon theme in the designs in the mark,
we find that while the marks differ in appearance, the
marks are similar in sound, connotation and commercial
impression; these similarities outweigh the dissimilarity
in appearance. The first du Pont factor regarding the
similarity of the marks therefore supports a finding of
likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity and nature of the goods and
services as described in the application and cited
Ser No. 77765008
12
registration. It is settled that it is not necessary that
the goods and services be identical or even competitive in
order to find that they are related for purposes of our
likelihood of confusion analysis. It is sufficient that
the goods and services be related in some manner, or that
the circumstances surrounding their marketing be such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source. See In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991).
We find the goods and services to be related for the
following reasons. First, the examining attorney has
submitted various webpages offering frozen yogurt and
promoting stores that offer frozen yogurt under the same
mark. See webpages regarding Haagen-Dazs and Ben & Jerry’s
frozen yogurt and retail stores selling frozen yogurt.
Also, the spoonme.com webpage submitted by applicant offers
frozen yogurt and contains a link to SPOON ME retail shops.
This evidence suggests that consumers are accustomed to
seeing frozen yogurt and “retail frozen dessert store
services featuring frozen yogurt” as emanating from the
Ser No. 77765008
13
same source. Second, there is an inherent relationship
between goods and the retail sale of those goods. See,
e.g., Fortunoff Silver Sales, Inc. v. Norman Press, Inc.,
225 USPQ 863, 866 (TTAB 1985) (“there is little question
that jewelry store services and jewelry are highly related
goods and services”); J. Thomas McCarthy, Trademarks and
Unfair Competition § 24:25 (2006) (“[w]here the services
consist of retail sales services, likelihood of confusion
is found when another mark is used on goods which are
commonly sold through such a retail outlet.”). That
inherent relationship extends to the goods and services
involved in this appeal. Third, applicant stated that he
“does not disagree with the Examining Attorney’s position
that the goods offered under its [sic] mark are related to
the services offered under the cited registration.” Reply
at 1.
Based on the forgoing, we find that registrant’s
services and applicant's goods are related and resolve the
second du Pont factor against applicant.5

5 The examining attorney has stated that “any goods or services
in the registrant’s normal fields of expansion should be
considered when determining whether the registrant’s services are
related to the applicant’s goods.” Brief at unnumbered p. 13.
However, as the Board stated in In Re Kysela Pere et Fils, Ltd.,
98 USPQ2d 1261 (TTAB 2011):

[T]he expansion of trade doctrine is more appropriate
to inter partes cases, and that in the context of an
Ser No. 77765008
14
We now consider the trade channels and conditions of
purchase of both applicant's and registrant’s respective
goods and services. Neither applicant's nor registrant’s
identifications contain any specific trade channel
limitations; we therefore presume that registrant’s and
applicant’s identifications encompass all goods or services
of the nature and type described, and that the identified
goods or services move in all channels of trade that would
be normal for such goods or services, and that they are
available to all classes of purchasers for the described
goods and services. See Linkvest, 24 USPQ2d at 1716; In re
Elbaum, 211 USPQ 639 (TTAB 1981). The class of purchasers
for retail store services featuring frozen desserts, as
well as for the goods, frozen yogurt, is the general
public. Also, the website evidence demonstrates that
frozen yogurt and retail stores featuring frozen
confections are advertised in the same locations.

ex parte proceeding the analysis should be whether
consumers are likely to believe that the services
emanate from a single source, rather than whether the
owner of the cited registration has or is likely to
expand its particular business to include the goods of
applicant. … Therefore, neither the argument by an
examining attorney that the applicant's goods or
services are within the natural scope of expansion of
the goods or services of the registrant, nor the
argument by an applicant that it is not likely that
the particular registrant that owns the cited
registration(s) will so expand its use of its mark, is
applicable in an ex parte proceeding.
Ser No. 77765008
15
Moreover, frozen yogurt is generally not very expensive; we
cannot therefore assume a greater degree of care will be
taken by consumers in purchasing such goods or services
from registrant’s retail stores or elsewhere.
In view of the foregoing, the du Pont factors
regarding the trade channels and conditions of purchase are
resolved against applicant.
Upon consideration of all of the relevant du Pont
factors discussed above, as well as the evidence of record
and the arguments of the examining attorney and applicant,
we conclude that when purchasers who are familiar with
registrant’s mark for its claimed services encounter
applicant's mark on his goods, they are likely to be
confused as to the source of such goods.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.