D&D Food Corp.

Trademark Trial and Appeal Board

May 23, 2007

No. 76608042 (T.T.A.B. May. 23, 2007)

Mailed:
May 23, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re D&D Food Corp.
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Serial No. 76608042
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Mark P. Stone for D&D Food Corp.

Susan Kastriner Lawrence, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
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Before Hairston, Grendel and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

D&D Food Corp. has filed an application to register
the mark shown below for goods identified as “sauces
including marinara, vodka, tomato and basil and prosciutto;
and salad dressings” in International Class 30.1 In
response to a request from the examining attorney,
applicant disclaimed the phrases OF ARTHUR AVENUE and BAR &
RESTAURANT.

1 Application Serial No. 76608042, filed August 18, 2004,
alleging December, 2002 as the date of first use and first use in
commerce under Section 1(a) of the Trademark Act. 15 U.S.C.
§1051(a).
THIS OPINION IS NOT
PRECEDENT OF THE TTAB
Serial No. 76608042
2

Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified goods, so
resembles the registered marks DOMINICK’S (in typed form)
owned by the same entity for “seafood; meats (processed or
prepared); fruits and vegetables (processed or
unprocessed); eggs; dairy products; cheese; bakery goods;
pasta; and sauces” in International Classes 1, 5, 29, 30,
31 and 32,2 and “flavored gravy; pickle relish; breakfast
cereal; vanilla wafers; frozen prepared waffles” in
International Class 30,3 as to be likely to cause confusion,
mistake or deception.

2 Registration No. 1366046, issued October 15, 1985, renewed
September 7, 2006, owned by Dominick’s Finer Foods LLC.

3 Registration No. 2829080, issued April 6, 2004, owned by
Dominick’s Finer Foods LLC.
Serial No. 76608042
3
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/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 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the goods
identified in the application and the cited registrations.
It is well settled that goods need not be similar or
competitive in nature to support a finding of likelihood of
confusion. The question is not whether purchasers can
differentiate the goods themselves, but rather whether
purchasers are likely to confuse the source of the goods.
See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
Serial No. 76608042
4
USPQ2d 1618 (TTAB 1989). Further, we must consider the
cited registrant’s goods as they are described in the
registrations and we cannot read limitations into those
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the cited
registrations describe goods or services broadly, and there
is no limitation as to the nature, type, channels of trade
or class of purchasers, it is presumed that the
registration encompasses all goods or services of the type
described, that they move in all channels of trade normal
for these goods, and that they are available to all classes
of purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
“Sauces” in Registration No. 1366046 encompasses
applicant’s sauces.4 In addition, the examining attorney
has submitted evidence in the form of third-party use-based
registrations to show that applicant’s sauces and salad
dressings are related to registrant’s sauces and gravy.

4 Although the examining attorney argues that the term “sauces”
includes gravy inasmuch as gravy is defined as “sauces made with
meat juices,” we are not convinced that for purposes of
identifying the goods in the application sauces would necessarily
include gravy. In particular, we note that several of the third-
party registrations submitted by the examining attorney include
sauces and gravy as separate items.
Serial No. 76608042
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See, e.g., Reg. No. 2262268 (CUNNINGHAM GENUINE SPICES for,
inter alia, salad dressings; sauce, gravy and marinade
mixes; gravy bases); Reg. No. 3046522 (WEST CREEK for,
inter alia, sweet and sour sauce; taco sauce; barbecue
sauce; salad dressings; gravy base); Reg. No. 2824770 (DM
FOODS for, inter alia, sauces, gravy, and bases for making
sauces and gravy); Reg. No. 2943545 (GENERATIONS OF TASTE
SENSATIONS for, inter alia, barbecue sauce, gravy and
sauces); Reg. No. 3039187 (C THE COOKING CLUB INC. for,
inter alia, sauces and salad dressings); and Reg. No.
2962219 (BUILT ON GREAT TASTE for, inter alia, sauces and
salad dressings). Third-party registrations which
individually cover a number of different goods, and which
are based on use in commerce, may serve to suggest that the
listed goods are of a type which may emanate from a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993). We find the third-party registrations
sufficiently persuasive to conclude that applicant’s and
registrant’s goods are related. Applicant does not argue
otherwise.
Moreover, given that the goods are identical or
related and there is no limitation in the identifications
thereof in the application or registrations, we must
presume that the identical goods will be sold in the same
Serial No. 76608042
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channels of trade and will be bought by the same classes of
purchasers, while the related goods will be sold in some of
the same channels of trade, and will be bought by some of
the same purchasers. See Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987);
and In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
In view thereof, the du Pont factors of the similarity
of the goods and the channels of trade favor a finding of
likelihood of confusion as to the cited registrations.
We turn now to the first du Pont factor, i.e., whether
applicant’s mark DOMINICK’S OF ARTHUR AVENUE BAR &
RESTAURANT (and design) and registrant’s marks DOMINICK’S
are similar or dissimilar when compared in their entireties
in terms of appearance, sound, connotation and commercial
impression. It is well settled that marks must be
considered in their entireties, not dissected or split into
component parts and each part compared with other parts.
This is so because it is the entire mark which is perceived
by the purchasing public and, therefore, it is the entire
mark that must be compared to any other mark. It is the
impression created by the involved marks, each considered
as a whole, that is important. See Kangol Ltd. V.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992). Finally, “[w]hen marks would appear on
Serial No. 76608042
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virtually identical goods or services, the degree of
similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert denied, 506
U.S. 1034 (1992).
Applicant argues that the examining attorney erred in
her consideration of the marks in that she “ignored all
portions of Applicant’s composite mark which do not
correspond to the single word mark of the two commonly
owned registrations applied in the final Official Action,
and has compared only that portion of Applicant’s mark
which remains, to the mark of the applied registrations.”
Br. p. 7. We see no such error. The examining attorney,
in her analysis, appropriately applied the principles by
which we make such determinations. The dominant portion of
applicant’s mark is the word DOMINICK’S. It is the first,
most prominent, and most distinctive word in the mark. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (“That a particular feature is descriptive
[or otherwise lacking in distinctiveness] ... with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a
mark...”). While there is a large design element in the
Serial No. 76608042
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mark, it is the words by which consumers will call for the
goods. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987).
Thus, inasmuch as the dominant element in applicant’s
mark is identical to the entirety of registrant’s marks,
the marks have a similar overall commercial impression and
share strong similarities in sound, appearance and
connotation. The addition of the descriptive phrases OF
ARTHUR AVENUE and BAR & RESTAURANT do not serve to
distinguish the marks. In re Rexel Inc., 223 USPQ 830
(TTAB 1984). We also find that the design element of a
store front does not serve to sufficiently distinguish the
marks. Viewing the marks in their entireties, they are
similar in appearance, pronunciation, and connotation, and
they convey a similar commercial impression. Thus, the
factor of the similarity of the marks also favors a finding
of likelihood of confusion.
In making our findings, we have considered applicant’s
argument that “the issuance by the Patent & Trademark
Office of different registrations to non-related entities,
each of which includes the common term ‘DOMINICK’ or
‘DOMINIC’ for related goods/services, is evidence that the
respective marks are limited in scope and are capable of
co-existing with each other without resulting in likelihood
Serial No. 76608042
9
of confusion.” Br. p. 11. However, applicant’s attempt to
characterize DOMINICK’S as weak based on the coexistence of
third-party registrations that contain the words DOMINIC or
DOMINICK is not persuasive. Third-party registrations are
not evidence of use and thus are not probative of the du
Pont factor related to third-party use. However, third-
party registrations may be relevant to show that a mark is
descriptive, suggestive, or has a commonly understood
meaning such that the public will look to other elements to
distinguish the source of the goods or services, see, e.g.,
AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
1406, 177 USPQ 268, 269-70 (CCPA 1973). Here, applicant
points to the third-party registrations which were
originally cited against applicant but later withdrawn due
to the differences in the goods and services. They are
owned by one party for either restaurant services,
sandwiches or sausage. Applicant has not explained how
these registrations weaken the mark in relation to
applicant’s and registrant’s sauces, salad dressings or
gravy. Applicant also referenced in its response to the
office action a handful of registration numbers applicant
found on the USPTO website that include the word DOMINICK’S
for grocery store services, “food items” and DOMINIC’S for
coffee and whole beans. We first note that the listing of
Serial No. 76608042
10
these registrations in the response to the office action
does not make them of record, In re Duofold Inc., 184 USPQ
638 (TTAB 1974). However, inasmuch as the examining
attorney did not object to these references we have
considered them, although they are of little probative
value inasmuch as we do not know if they are still valid
and subsisting. Moreover, the services are different and
we do not know, other than coffee, the nature of the other
goods. In addition, we do not know if they are owned by
one party or several parties. Thus, these examples are
simply not sufficient to establish that DOMINCK’S has a
commonly understood meaning such that the public will look
to other elements to distinguish the source of the goods.
We further note that each case must stand on its own
merits. Cf. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001); and In re Scholastic Testing
Service, Inc., 196 USPQ 517 (TTAB 1977). Finally, even if
we consider marks which include DOMINICK’S or DOMINIC’S to
be weak marks, weak marks are deserving of protection.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 109 (CCPA 1974); and Hollister
Incorporated v. IdentAPet, Inc., 193 USPQ 439 (TTAB 1976).
In conclusion, we find that because the marks are
similar, the goods are legally identical or related, and
Serial No. 76608042
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the channels of trade are the same, confusion is likely
between applicant’s mark and the marks in the cited
registrations. To the extent there are any doubts, we
resolve them, as we must, in registrant’s favor. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.