Judicakes L.L.C.

Trademark Trial and Appeal Board

Mar 23, 2016

No. 86430860 (T.T.A.B. Mar. 23, 2016)

Mailed: March 23, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Judicakes L.L.C.
________

Serial No. 86430860
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Kyle M. Globerman of Brient Globerman LLC for Judicakes L.L.C.

Allison Pollack, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow,
Managing Attorney).
_______

Before Quinn, Cataldo and Kuczma,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Judicakes L.L.C., filed an application, as amended, to register on the
Principal Register JUDICAKES (standard characters) as a mark for “baked goods,
namely, pound cakes,” in International Class 30.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act on the ground of likelihood of confusion with the mark JUDY’S
BREADSTICKS (standard characters, “BREADSTICKS” disclaimed) previously

1 Application Serial No. 86430860 was filed by Judy Chancery, L.L.C. on October 22, 2014
under Section 1(a) of the Trademark Act, based upon Applicant’s assertion of January 1,
2011 as a date of first use of the mark anywhere and in commerce. The application
subsequently was corrected to name Judicakes L.L.C. as Applicant. Judith Chancey
consents to use and registration of her name JUDI as a trademark.
This Opinion is not a
Precedent of the TTAB
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registered on the Principal Register for “bread, breadsticks, croutons, crackers,
cookies, biscotti, and bakery goods,” in International Class 30.2
When the refusal was made final, Applicant appealed.
Likelihood of Confusion
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, though not exclusive,
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).
The Goods
We begin by comparing Applicant’s goods with those of Registrant. In making our
determination under the second du Pont factor, we look to the goods as identified in
the involved application and cited registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the

2 Registration No. 3582876 issued on March 3, 2009. Section 8 affidavit accepted; Section 15
affidavit acknowledged.
The Examining Attorney cited two additional registrations as a bar to registration under
Section 2(d), but subsequently withdrew them in her May 1, 2015 final Office Action.
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application regardless of what the record may reveal as to the particular nature of
an applicant’s goods, the particular channels of trade or the class of purchasers to
which the sales of goods are directed.”). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”).
In this case, Applicant’s goods are identified as “baked goods, namely, pound
cakes” and Registrant’s goods are identified as “bread, breadsticks, croutons,
crackers, cookies, biscotti, and bakery goods.” Registrant’s broadly identified
“bakery goods” are presumed to include Applicant’s more narrowly identified
“pound cakes” which, as recited in the involved application are a subset of “baked
goods.” Thus, Applicant’s “baked goods, namely, pound cakes” are encompassed by
Registrant’s “bakery goods.” As a result, Applicant’s goods must be presumed to be
legally identical to Registrant’s “bakery goods.” In addition, the Examining
Attorney, in support of her contention that the goods at issue are commercially
related, has made of record examples of web pages from third-party e-commerce
sites offering goods similar in nature to those of both Applicant and Registrant.
Among these, we note the following:3
- the website at mrs-williams.com offers products including poundcakes and
cookies.

- the website at bakeshop.carlosbakery.com offers products including
poundcakes, biscotti and cookies.

3 February 12, 2015 first Office Action at 31-61; May 1, 2015 final Office Action at 8-35.
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- the website at elizabar.com offers products including biscotti, crackers, bread
and pound cake loaves.

- the website at hamngoodys.com offers products including pound cakes and
cookies.

- the website at pieceofcakeinc.com offers products including cookies and
pound cake.

- the website at goodcakesandbakes.com offers products including pound cakes
and bread.

- the website at sevanbakery.com offers products including pound cake, bread
sticks and bread.

- the website at dimarepastry.com offers products including biscotti, breads,
pound cakes, bread sticks and cookies.

These websites demonstrate that the goods of both Applicant and Registrant are
marketed and sold together online under the same marks. We find that customers
would readily perceive both types of goods as being within a single category of
goods.
Applicant argues that
the cited mark’s goods are marketed as a health food product line that
is vegan with “no milk from a cow nor honey from a bee” and baked
with “organic whole grain and organic wheat flours, olive oil, barley
malt, sea salt and yeast, kneaded with lots of love and handrolled in
seeds.” In contrast, the Applicant’s goods are marketed as “warm,
home-style, yummy desserts.” (Citations omitted).4

However, neither Applicant’s goods nor Registrant’s goods recite any of the
limitations as to ingredients or flavoring urged by Applicant. Thus, we must

4 4 TTABVUE 15.
The citations to “TTABVUE” throughout the decision are to the Board’s public online
database that contains the proceeding file, available on the USPTO website,
www.USPTO.gov. The first number represents the prosecution history number listed in the
electronic case file and the second represents the page number(s).
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presume that both Applicant’s goods and Registrant’s goods include products baked
in any manner typical for the goods identified. As noted above, in evaluating the
similarities between the goods, we must look to the goods as identified in the subject
application and cited registration. See Octocom, 16 USPQ2d at 1787. We may not
read limitations, such as those suggested by Applicant, into the respective
identifications that are not reflected by the wording thereof. As a result, we must
presume that Registrant’s broadly worded identification of goods includes products
baked using the same processes as those of Applicant.
Applicant further argues that
the cited mark is being used for breadsticks, croutons, cookies, biscotti
and other bakery goods. In contrast, Applicant’s mark is being used for
baked goods, namely pound cakes. Applicant’s pound cakes are not
made from bread or bread products. Therefore, although the nature of
goods may be similar because both are baked, this similarity is not
enough to cause a likelihood of confusion when the appearance, sound,
and commercial impression are so starkly different when viewed as a
whole.5

However, as identified, Registrant’s “bakery goods” include Applicant’s “baked
goods, namely, pound cakes, and the evidence of record discussed above indicates
that the goods of Applicant and Registrant are commercially related bakery
products that are marketed and sold together, and thus may be encountered
together by consumers. The similarity of the goods is a factor that weighs in favor of
a finding of likelihood of confusion.

5 4 TTABVUE 16.
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Channels of Trade and Classes of Consumers
In this case, neither Applicant’s nor Registrant’s identification of goods recites any
limitations on the channels of trade in which the goods may be encountered or the
classes of consumers to whom they may be marketed. Thus, absent any restrictions
in the identifications of goods, the goods of Applicant and Registrant are presumed
to move in all normal channels of trade and be available to all classes of potential
consumers of such goods. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In
each case, the customers would include ordinary consumers of food products; and
the channels of trade would include retail and wholesale food stores and other
distribution channels for bakery products. As discussed above, because there are no
trade channel limitations recited in the respective identifications of goods, we do not
find probative Applicant’s arguments6 that its goods are marketed in separate trade
channels to customers that are distinct from those in which Registrant’s goods are
encountered.
The overlap in trade channels and classes of purchasers are factors that further
weigh in favor of a finding of likelihood of confusion.
The Marks
We turn then to the first du Pont factor, i.e., whether Applicant’s JUDICAKES
mark and Registrant’s JUDY’S BREADSTICKS mark, both in standard characters,
are similar or dissimilar when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression. See Palm Bay Imports, Inc.

6 Id. at 16-17.
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v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). We note initially that the test under the first du Pont factor is
not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the source of the goods or
services offered under the respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). We note initially that, “[w]hen marks would appear on
virtually identical goods or services, the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion declines.” See Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1994). See also ECI Division of E-Systems, Inc. v.
Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
In comparing Applicant’s mark and Registrant’s mark, we note that the marks are
similar to the extent that the first part of Applicant’s mark, “JUDI” is highly similar
to the first word of Registrant’s mark, “JUDY’S,” in appearance and sound. The
marks are dissimilar with respect to their second terms, “CAKES” and
“BREADSTICKS.” The terms “JUDI” and “JUDY’S” also are highly similar in
meaning inasmuch as both are variations in spelling of a woman’s given name. In
Applicant’s mark, the term “JUDI” refers to an individual whose consent to use and
registration of her name is of record. We cannot determine from this record whether
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“JUDY’S” in Registrant’s mark denotes a specific individual. However, there is no
evidence that the terms “JUDI” or “JUDY’S” have any significance other than that
of a female name. As a result, we find that JUDICAKES connotes cakes made by
Judi while JUDY’S BREADSTICKS similarly connotes breadsticks made by Judy.
Furthermore, the significance of the words “JUDI” and “JUDY’S” is reinforced by
their location as the first part of Applicant’s mark and Registrant’s mark. Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed in the mind of a
purchaser and remembered”). See also Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the identical lead word).
The possessive apostrophe in Registrant’s mark does not create a significant
difference in commercial impression. See In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1946-47 (Fed. Cir. 2004) (Board correct in finding similarity between
JOSE GASPAR and GASPAR’S GOLD notwithstanding possessive form of surname
GASPAR in applicant’s mark). See also Hunt Foods & Indus., Inc. v. Gerson Stewart
Corp., 367 F.2d 431, 151 USPQ 350 (CCPA 1966); In re Binion, 93 USPQ2d 1531
(TTAB 2009); Georgia-Southern Oil Inc. v. Richardson, 16 USPQ2d 1723 (TTAB
1990); In re Curtice-Burns, Inc., 231 USPQ 990 (TTAB 1986). Consistent with the
cited cases, we conclude that there is, in fact, very little difference between “JUDI,”
as used in Applicant’s mark and “JUDY’S,” as it appears in the cited registration.
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We also observe that “BREADSTICKS” is disclaimed in Registrant’s mark and
appears to be descriptive of the goods recited in the registration. Similarly, the term
“CAKES” in Applicant’s mark appears to describe Applicant’s goods. We find,
therefore, that the terms “JUDI” and “JUDY’S” are the dominant portions of the
marks at issue, and accordingly they are entitled to more weight in our analysis. It
is a well-established principle that, in articulating reasons for reaching a conclusion
on the issue of likelihood of confusion, 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
As a result, when the marks JUDICAKES and JUDY’S BREADSTICKS are
viewed in their entireties, they are somewhat more similar than dissimilar in
appearance and sound and convey a similar connotation, namely, that Applicant’s
JUDICAKES pound cakes and Registrant’s JUDY’S BREADSTICKS are variations
on each other, but point to a common source. Similarity in any one of the elements
of sound, appearance, meaning, or commercial impression is sufficient to support a
determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion”); In re White Swan
Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
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In view of the foregoing, we find that the similarities in the marks outweigh the
differences, and that this du Pont factor also weighs in favor of a finding of
likelihood of confusion.
Summary
Neither Applicant nor the Examining Attorney has discussed any of the
remaining du Pont factors. We note, nonetheless, that none seem to be applicable,
inasmuch as we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers familiar with Registrant’s
goods sold under its above-referenced JUDY’S BREADSTICKS mark would be
likely to believe, upon encountering Applicant’s goods offered under its
JUDICAKES mark that the goods originated with or are associated with or
sponsored by the same entity. The legal identity of Applicant’s goods to Registrant’s
“bakery goods,” the presumed identity of their unlimited channels of trade and
classes of consumes, and the similarity in connotation and overall commercial
impression of the marks outweigh any dissimilarities in their appearance and
sound.
Decision: The refusal to register is affirmed.