Lexunder Inc.

Trademark Trial and Appeal Board

Jun 7, 2016

No. 86605268 (T.T.A.B. Jun. 7, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 7, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lexunder Inc.
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Serial No. 86605268
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Luke Brean of Breanlaw, LLC for Lexunder Inc.

Thomas Young, Trademark Examining Attorney, Law Office 120 (David Miller,
Managing Attorney).
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Before Zervas, Ritchie, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Lexunder Inc. (“Applicant”) has filed an application to register the mark set forth
below for “Raw beans; Unprocessed edible seeds,” in International Class 31.1

1 Application Serial No. 86605268, filed April 21, 2015 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), stating January 1, 2013 as the date of first use and January 1,
2015 as the date of first use in commerce.
Serial No. 86605268

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Applicant has disclaimed the exclusive right to use FOOD apart from the mark as
shown. Applicant describes the design elements of the mark as a “swoosh” and “a
stylized leaf comprising the dot on the I.”
The Trademark Examining Attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the registered mark FOOD TO
LIVE BY in typed form for “Fresh organic produce,” in International Class 31,2 as to
be likely to cause confusion or mistake or to deceive. When the refusal was made
final, Applicant appealed. Applicant and the Examining Attorney have filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
1. The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,

2 Reg. No. 2530292, issued January 15, 2002; Section 8 affidavit accepted; Section 15
affidavit acknowledged; renewed. No claim is made to the exclusive right to use FOOD
apart from the mark as shown. The registration also covers services in International Class
42.
Serial No. 86605268

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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. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal
quotation marks omitted). Moreover, marks must be considered in light of the
fallibility of memory. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085
(Fed. Cir. 2014).
In appearance, sound, and meaning, the two marks are similar to the extent that
they share the words FOOD TO LIVE. The additional word BY in Registrant’s mark
is a point of visual and phonetic difference, and it might create a distinction in
meaning between the two marks. The design elements of Applicant’s mark and the
stylized form of the lettering are points of difference in the appearance of the two
marks.
With respect to the meanings and commercial impressions created by the marks,
Applicant contends that its mark connotes “foodstuffs [that] are healthy and will
provide the nutritional content needed in one’s daily life”; and that the leaf design
connects the goods to nature, “emphasizing that the products are of the earth, and
not of the lab …” By contrast, Applicant contends, Registrant’s mark “reads as a
play on the phrase ‘words to live by,’ suggesting that similar to a sage piece of
wisdom, Registrant’s products are deserving of loyal attention and will give
Serial No. 86605268

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consumers sustained value over time.”3 The Examining Attorney notes that
Applicant has not submitted any evidence “to establish that the term ‘BY’ alters the
meaning of the shared wording” of the marks.4 We find both marks to be of rather
vague and uncertain meaning, and we are not persuaded that customers would
derive from them the elaborate meanings that Applicant suggests. Moreover, the
meanings of the marks are uncertain in similar ways, as the lack of clarity of
meaning arises largely from the shared term FOOD TO LIVE in both marks.
Applicant characterizes the registered mark as “bare of any design elements,” as
compared to Applicant’s mark, which has style and design elements.5 The cited
mark is registered in typed form, but this does not mean that it will be displayed
without any design elements. Rather, use of the registered mark is not limited to
any particular display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983). Therefore, when we compare the two marks we must consider the
possibility that Registrant could display its mark in a layout and lettering style that
resemble to some extent those appearing in Applicant’s mark. See In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012). Moreover, in this case we
find that the design element of Applicant’s mark deserves less weight in our
analysis because customers will likely use the distinctive wording of the mark in
describing and requesting the goods. Viterra, 101 USPQ2d at 1908 (“In the case of a
composite mark containing both words and a design, the verbal portion of the mark

3 Applicant’s brief at 7, 4 TTABVUE 8.
4 Examining Attorney’s brief, 6 TTABVUE 5.
5 Applicant’s brief at 6, 4 TTABVUE 7.
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is the one most likely to indicate the origin of the goods to which it is affixed”
(internal quotation marks omitted)); In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999) (“In the case of marks which consist of words and a design,
the words are normally accorded greater weight because they would be used by
purchasers to request the goods”). Although we give less weight to the design
elements of Applicant’s mark, we do not wholly discount them, because we must
consider the marks in their entireties. However, 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 that our ultimate conclusion rests upon a comparison of
the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis appears to be unavoidable.”
Id.
Although the marks, considered in their entireties, have a number a differences,
we find that the similarities outweigh the differences and that overall the marks
create highly similar commercial impressions. Accordingly, the du Pont factor of the
similarity or dissimilarity of the marks weighs in favor of a finding of likelihood of
confusion.
2. The goods.
We next consider the similarity or dissimilarity of the goods as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014); In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom
Serial No. 86605268

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Syst. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). We agree with the Examining Attorney that the goods of Applicant
and Registrant are, in part, identical inasmuch as Applicant’s “raw beans” are a
type of “fresh … produce” and, accordingly, are encompassed within the scope of
Registrant’s identified goods. Although Applicant contends that its goods, unlike
those identified in the registration, are not “organic,” we must presume that
Applicant’s goods encompass all goods of the nature and type identified in the
application, including raw organic beans. See In re Jump Designs, 80 USPQ2d 1370,
1374 (TTAB 2006); see also Octocom, 16 USPQ2d at 1787. That raw beans are a
type of produce is demonstrated in the record, which shows advertisements for
produce and organic produce that include references to various kinds of fresh beans.
We note in particular the following:
Website Relevant goods Record citation

“The Freshest Ideas in
Produce”
Organic fruits, Chinese long
beans, fava beans, French
beans, fresh garbanzo beans,
organic green beans, red
Chinese long beans, Romano
beans.

Office Action of August
6, 2015 at 15-16

“Fresh Produce”
Fresh vegetables and “Beans
(green/dry)”
Office Action of
December 17, 2015 at
75

“Organic Produce &
Natural Groceries”

Fresh fruits and vegetables;
green beans
Id. at 77, 84-86

“Sustainable Produce”

Fresh fruits, “Beans, Green” Id. at 122-125

Serial No. 86605268

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See also the definition of “bean” as “A leguminous plant that bears beans in pods”
and “An edible seed, typically kidney-shaped, growing in long pods on certain
leguminous plants”;6 and the definition of “produce” as “Farm products, especially
fresh fruits and vegetables, considered as a group.”7
We note Applicant’s argument that its goods “are normally sold as dry goods” and
are “not considered ‘fresh produce.’”8 This argument is unavailing, because
Applicant’s identified “raw beans” are not limited to dry beans. “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 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 sales of the goods
are directed.” Octocom, 16 USPQ2d at 1787.9
Inasmuch as the goods of Applicant and Registrant are, in part, identical, the du
Pont factor of the similarity or dissimilarity of the goods weighs in favor of a finding
of likelihood of confusion.

6 Definition at , Office Action of December 17, 2015 at 63.
7 Definition at , Office Action of August 6, 2015 at 10.
8 Applicant’s brief at 8, 4 TTABVUE 9.
9 We note that the Examining Attorney has made of record evidence to show that dried
beans and seeds have been offered by a single entity alongside fresh produce. Inasmuch as
we have determined that there is a direct overlap between some of the identified goods of
Applicant and Registrant, it is unnecessary to further demonstrate a commercial
relationship between the goods.
Serial No. 86605268

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3. Trade channels; customers.
Because the goods at issue are, in part, identical, we must presume that the goods
of Applicant and Opposer move in the same channels of trade and are offered to the
same classes of consumers. See In re Viterra Inc., 101 USPQ2d at 1908; American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994). Applicant argues that its goods “are sold exclusively online,
through Applicant’s proprietary website … and online retail outlets such as
Amazon.com”; and that “Applicant has no future plans to distribute its products in
physical retail stores.”10 However, because Applicant has identified its goods
without restriction as to the trade channels through which they will be offered, we
must give consideration to the full range of ordinary trade channels for the
identified goods. Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722.
Applicant also argues that “it can be reasonably assumed that if both Registrant’s
and Applicant’s goods were sold in grocery stores, they would be displayed
separately and apart.”11 This argument is unpersuasive because fresh green beans,
which are within the scope of Applicant’s identification of goods, would likely be
found in close proximity to other fresh vegetables in a supermarket. For the reasons
stated, the du Pont factors of trade channels and classes of customers weigh in favor
of a finding of likelihood of confusion.

10 Applicant’s brief at 8, 4 TTABVUE 9; see also Affidavit of Alexander Melnik, ¶¶ 2-4,
Applicant’s response of December 15, 2015 at 13.
11 Applicant’s brief at 8, 4 TTABVUE 9.
Serial No. 86605268

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4. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. On the present
record, we find that Applicant’s mark so resembles the cited mark, considered in its
entirety, as to be likely, when used in connection with Applicant’s goods, to cause
confusion as to the source of Applicant’s goods.
Decision: The refusal to register is affirmed.