Fort Bend Junior Service League

Trademark Trial and Appeal Board

Feb 8, 2016

No. 86162765 (T.T.A.B. Feb. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: February 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Fort Bend Junior Service League
_____

Serial No. 86162765
_____

Michelle J. Eber of Baker Botts LLP,
for Fort Bend Junior Service League.
Elizabeth F. Jackson, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Wellington, Greenbaum and Gorowitz,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Fort Bend Junior Service League (“Applicant”) seeks registration on the
Principal Register of the mark SUGAR PLUM MARKET (in standard characters,
MARKET disclaimed) for
Providing entertainment and cultural activities in the
form of a seasonal festival featuring primarily activities in
the nature of fashions shows and also providing a
seasonal marketplace featuring a wide variety of
Serial No. 86162765
- 2 -
independent retailers, the proceeds of which are donated
to charity in International Class 41.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used on or in connection with the identified services, is
likely to cause confusion with the mark THE SUGAR PLUM LUNCHEON (in
standard characters, LUNCHEON disclaimed) for “Charitable fundraising services”
in International Class 36.2
When the Section 2(d) refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Matter
In the section of its brief concerning the purported weakness of the wording
SUGAR PLUM, Applicant discussed, for the first time, a third-party registration for
the mark SUGAR PLUM FAIRIES for “entertainment in the nature of visual and
audio performances, namely, musical band, rock group, gymnastic, dance, and
ballet performances” and “presentation of musical performances” in Class 41.3 The
Examining Attorney has objected to this registration because it is not of record. We
agree. The record must be complete prior to filing an appeal. See Trademark Rule

1 Application Serial No. 86162765 was filed on January 10, 2014, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as November 17,
2001.
2 Reg. No. 3087780 issued on May 2, 2006. Section 8 affidavit accepted; Section 15 affidavit
acknowledged.
3 Reg. No. 3215310, discussed in Applicant’s Brief, 11 TTABVUE 10-11.
Serial No. 86162765
- 3 -
2.142(d), 15 U.S.C. § 2.142(d). Thus, an applicant must submit a copy of the
registration, or the electronic equivalent from the USPTO’s automated systems,
prior to appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006).
Applicant had the opportunity to do so in response to the April 16, 2014 Office
Action, or with its Request for Reconsideration, but did not.4 Simply referencing a
registration in Applicant’s brief does not make that registration of record in a Board
proceeding. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841,
1843 (TTAB 2012) (mere listing of third-party registrations in brief is insufficient to
make them of record). Accordingly, we sustain the Examining Attorney’s objection,
and have not considered Applicant’s references to the third-party registration.5

4 Applicant argues that the Board should consider the registration “for the limited purpose
of responding to the Examining Attorney’s assertion that no registered marks exist for
related services,” which assertion the Examining Attorney did not raise until she denied
Applicant’s Request for Reconsideration. 14 TTABVUE 11. This argument is not
persuasive, as Applicant was not without recourse; after the Examining Attorney denied
the Request for Reconsideration, Applicant could have filed a request under Trademark
Rule 2.142(d) to suspend and remand for additional evidence.
5 In her brief, the Examining Attorney appears to have addressed this third-party
registration on its merits, in the alternative. 13 TTABVUE 9. Even if we were to view this
action as a waiver of her objection, which we do not, consideration of the third-party
registration would have no effect on the outcome of this appeal for at least two reasons.
First, third-party registrations are of limited value as they are not evidence of use of the
marks in commerce or that the public is familiar with them. See, e.g., In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 at n. 6 (TTAB 1988). Second, this third-party registration is for
services that are different from the charitable fundraising services identified in the cited
registration. Therefore, even if viewed in conjunction with Applicant’s other evidence of
third-party use of SUGAR PLUM for charitable fundraising services, which we discuss
below, the existence of this registration is not probative evidence that SUGAR PLUM is
diluted in use or commercially weak for such services. Cf., Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671 (Fed. Cir. 2015).
Serial No. 86162765
- 4 -
II. Applicable Law
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 Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and 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 or services. See
Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (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.”).
A. Similarity or Dissimilarity and Nature of the Services
We begin with a comparison of the services. We must make our determination
under this factor based on the services as they are identified in the registration and
application. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
When analyzing the similarity of the services, “it is not necessary that the
products [or services] of the parties be similar or even competitive to support a
Serial No. 86162765
- 5 -
finding of likelihood of confusion.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir.
2000) (The goods and services need not be identical or even competitive to find a
likelihood of confusion). Rather, “likelihood of confusion can be found ‘if the
respective products [or services] are related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.’” Coach Servs., 101
USPQ2d at 1722 (quoting 7-Eleven, 83 USPQ2d at 1724). The issue is whether there
is a likelihood of confusion as to the source of the services, not whether purchasers
would confuse the services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
As noted above, Applicant’s services are identified as “providing entertainment
and cultural activities in the form of a seasonal festival featuring primarily
activities in the nature of fashion shows and also providing a seasonal marketplace
featuring a wide variety of independent retailers, the proceeds of which are donated
to charity,” and Registrant’s services are identified as “charitable fund-raising
services.” The respective services are inherently related in that both raise money for
charity. Moreover, the services identified in the registration are not limited to a
particular form of charitable fundraising, and therefore are presumed to include all
methods thereof, including providing a “seasonal festival” and a “seasonal
marketplace” whose proceeds are donated to charity, as identified in the
Serial No. 86162765
- 6 -
application. See Jump Designs, 80 USPQ2d at 1374; In re Linkvest S.A., 24 USPQ2d
1716, 1716 (TTAB 1992) (unrestricted and broad identifications are presumed to
encompass all services of the type described).
With her April 16, 2014 (first) Office Action, the Examining Attorney submitted
screenshots from several third-party websites to demonstrate that various
organizations provide seasonal marketplaces to raise money for charity. For
example, a press release from the Frisco Women’s League (FWL) in Frisco, Texas
states that it “has raised more than $12,000 for charity with the success of its third
annual premier shopping event and charity fundraiser, Merry Marketplace. Event
proceedings will be donated to FWL’s selected beneficiary ….” Likewise, the town of
Lyme, Connecticut hosts a “seasonal Lyme Farmers Market,” where once a year,
“kids of all ages will be stationed alongside regular vendors to sell their goods and
raise money for charity.” Similarly, the Chi Omega sorority hosts an annual
Christmas Market in Dallas, Texas, in which it provides “a unique holiday shopping
experience” and donates the proceeds to selected beneficiaries such as the Make-A-
Wish Foundation of North Texas, and the Good Mews Animal Foundation hosts an
annual charity flea market in Marietta, Georgia. This evidence supports a finding
that the respective services are related and will be encountered by the same
consumers in the same venues. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d
1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-
69 (TTAB 2009).
Serial No. 86162765
- 7 -
Applicant argues in its reply brief that the identified services are distinguishable
because Registrant actually uses its mark “in connection with an annual luncheon
benefitting a children’s hospital in Wisconsin[,]” Applicant’s services are “not
directed to ‘charitable fund-raising services,’ but to providing entertainment and
cultural activities in the form of a seasonal festival, and also providing a seasonal
marketplace[,]” and even though “Applicant donates the proceeds of its services to
charity[, that] does not change the core purpose of Applicant’s services: the
provision of entertainment and cultural activities and a seasonal marketplace.”6 We
must consider the services as they are described in the application and registration
regardless of what the record may reveal as to the particular nature of the services,
and therefore cannot read Registrant’s identification of services to be so limited. See
Dixie Rests., 41 USPQ2d at 1434; Octocom Sys., 16 USPQ2d at 1787. Nonetheless,
we note that the Examining Attorney also provided, with the May 15, 2015 Denial
of Request for Reconsideration, screenshots from more than forty other third-party
websites to demonstrate that it is common for organizations to raise money for
charity by providing luncheons and fashion shows, marketplaces, and festivals,
including seasonal festivals featuring fashion shows and marketplaces, often at a
singular event.7
Based upon the identifications of services and the ample evidence of record, we
find that consumers would believe that the services identified in the application and
registration are highly related, and may emanate from a common source.

6 14 TTABVUE 13.
7 5 TTABVUE 7, and 6-9 TTABVUE.
Serial No. 86162765
- 8 -
B. The Marks and the Number and Nature of Similar Marks in Use in
Connection With Similar Services
We next compare Applicant’s mark SUGAR PLUM MARKET and Registrant’s
mark THE SUGAR PLUM LUNCHEON in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). “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., 101 USPQ2d at 1721.
Our analysis cannot be predicated on dissection of the involved marks. Stone
Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their
entireties. Id. See also Franklin Mint 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. For instance, as our principal
reviewing court has observed, “[t]hat a particular feature is descriptive or generic
with respect to the involved goods or services is one commonly accepted rationale for
giving less weight to a portion of the mark.” See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 86162765
- 9 -
The marks SUGAR PLUM MARKET and THE SUGAR PLUM LUNCHEON are
nearly identical in appearance, sound, connotation and overall commercial
impression. With the exception of the word “THE” in Registrant’s mark, the
structure of each mark is the same, differing only in that the last word in
Applicant’s mark is MARKET rather than LUNCHEON, which would be perceived
simply as a variant of Registrant’s mark, indicating the form of the event. Further,
in this case, the word “the” is a definite article that has no source identifying
significance. See In re Thor Tech, 90 USPQ2d 1634, 1635 (2009) (“The addition of
the word ‘The’ at the beginning of the registered mark does not have any trademark
significance. ‘The’ is a definite article. When used before a noun, it denotes a
particular person or thing.”).
Moreover, in each instance, the words MARKET and LUNCHEON have greatly
reduced source-identifying capacities because they are descriptive of the type of
event. Indeed, each of the terms has been disclaimed (see Dixie Rests., 41 USPQ2d
at 1533-34), leaving the identical common wording SUGAR PLUM with the most
source-identifying significance in each mark. Nat’l Data Corp., 224 USPQ at 752.
The prominence of the words SUGAR PLUM is further enhanced by their placement
at the beginning of Applicant’s and Registrant’s marks. See Palm Bay Imps., 73
USPQ2d at 1692; Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988).
For these reasons, we find that SUGAR PLUM is the dominant term in each
mark, and accordingly, it is entitled to more weight in our analysis. In coming to
Serial No. 86162765
- 10 -
this conclusion, we do not discount the presence of the additional wording in each
mark. However, for the reasons discussed above, we find that the term SUGAR
PLUM in each mark is more likely to be remembered by consumers than the other
elements of the marks.
With respect to the meaning and connotation of the marks, the Examining
Attorney made of record the following definition of the word “Sugarplum”: “a small
candy in the shape of a ball or disk: SWEETMEAT.”8 Applicant argues that the
shared term SUGAR PLUM has different meanings when used in connection with
the identified services, connoting a candy when used in connection with Registrant’s
identified services because Registrant’s mark includes the term LUNCHEON and
Registrant displays its mark next to a cartoon plum on its website, and connoting
the Sugar Plum Fairy ballerina from the well-known ballet “The Nutcracker” when
used in connection with Applicant’s identified services, as the ballerina silhouette
on Applicant’s specimens demonstrates.9 Applicant, however, did not submit
evidence of consumer perception to buttress its contention that the term “sugar
plum” means two different things when viewed in connection with Applicant’s and
Registrant’s services, and such a conclusion is not obvious from the record. We
conclude instead that the same meanings of the word “sugar plum,” whether a
candy or a ballerina, attach equally to Applicant’s mark SUGAR PLUM MARKET
when used in connection with providing entertainment and cultural activities in the

8 Derived from http://www.merriam-webster.com/dictionary/sugarplum, attached to April
16, 2014 Office Action.
9 11 TTABVUE 8-9.
Serial No. 86162765
- 11 -
form of a seasonal festival, and providing a seasonal marketplace, the proceeds of
which are donated to charity, and Registrant’s mark THE SUGAR PLUM
LUNCHEON for charitable fundraising services. Further, Applicant’s contention
that Applicant actually may display its mark with a design of a ballerina and
Registrant actually may display its mark with a design of a cartoon plum does not
affect this analysis. Applicant has applied for a mark in standard characters, and
may display the mark in any lettering style, and with or without any design. Cf.
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1256 (Fed. Cir. 2011) (noting that standard character marks are not limited to any
particular presentation); Vornado, Inc. v. Breuer Elec. Mfg. Co., 390 F.2d 724, 156
USPQ 340, 342 (CCPA 1968) (noting that “the display of a mark in a particular
style is of no material significance since the display may be changed at any time as
may be dictated by the fancy of the applicant or the owner of the mark”); Frances
Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 120 USPQ 480, 481 (CCPA
1959) (“In determining the applicant's right to registration, only the mark as set
forth in the application may be considered; whether or not the mark is used with an
associated house mark is not controlling.”).
Applicant also argues that the term SUGAR PLUM is weak, justifying only a
narrow scope of protection. As evidence, Applicant submitted screenshots from ten
websites displaying the wording “Sugar Plum” or “Sugarplum.”10 Of these, only six
are for charitable fundraisers. In addition to being limited in number, the probative

10 Attached to October 16, 2014 Response to Office Action and April 27, 2015 Request for
Reconsideration.
Serial No. 86162765
- 12 -
value of this evidence also is limited because the screenshots do not establish how
many relevant customers may have encountered the third-party uses. In particular,
the screenshots alone do not establish that potential consumers have been so
exposed to the term “SUGAR PLUM” (or “SUGARPLUM”) that they have become
accustomed to it and look to other elements for source identification in association
with charitable fundraising activities. See Palm Bay Imps., 73 USPQ2d at 1693 (“As
this court has previously recognized[,] where the ‘record includes no evidence about
the extent of [third-party] uses … [t]he probative value of this evidence is thus
minimal.’”) (quoting Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338, 57
USPQ2d 1557 (Fed. Cir. 2001)) (emphasis in original). See also In re Thomas, 79
USPQ2d 1021, 1026 (TTAB 2006) (stating that “without evidence as to the extent of
third-party use, such as how long the websites have been operational or the extent
of public exposure to the sites, the probative value of this evidence is minimal”). At
best, the screenshots are evidence that the consuming public potentially could be
aware of third-party use of the term “SUGAR PLUM.” See Palm Bay Imps., 73
USPQ2d at 1693 (“While the Beverage Media Guide is compelling evidence that
distributors were aware that the term VEUVE was used for other alcoholic
products, it is not evidence that the consuming public was likewise aware. At best,
the Beverage Media Guide is evidence that the consuming public could potentially
be cognizant of third-party use of the term VEUVE.”). In other words, the record
evidence does not approach the level from which we can conclude that “SUGAR
Serial No. 86162765
- 13 -
PLUM” is a diluted and commercial weak term. Cf. Jack Wolfskin, 116 USPQ2d
1129; Juice Gen., 115 USPQ2d 1671.
We find the sound, appearance, meaning and overall commercial impression of
the marks SUGAR PLUM MARKET and THE SUGAR PLUM LUNCHEON to be
highly similar. Viewing the marks in their entireties, we note in particular their
structural similarity, where the words SUGAR PLUM modify the final words
MARKET and LUNCHEON. The similarity in structure creates a very similar
connotation and commercial impression of the marks. The additional words
MARKET and LUNCHEON simply create subcategories of events that point to a
common source identified as SUGAR PLUM.
III. Conclusion
Having considered the arguments and evidence of record and all relevant
du Pont factors, we find that Applicant’s mark SUGAR PLUM MARKET, used in
connection with the services identified in the application, so closely resembles
Registrant’s mark THE SUGAR PLUM LUNCHEON, used in connection with the
services identified in the registration, as to be likely to cause confusion, mistake or
deception as to the source of Applicant’s services.
Decision: The refusal to register Applicant’s mark SUGAR PLUM MARKET
under Section 2(d) is affirmed.