Magverz, Inc.

Trademark Trial and Appeal Board

Feb 21, 2014

No. 85614128 (T.T.A.B. Feb. 21, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Magverz, Inc.
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Serial No. 85614128
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Matthew H. Swyers of The Trademark Company for Magverz, Inc.

Paul Moreno, Trademark Examining Attorney, Law Office 103 (Michael Hamilton,
Managing Attorney).
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Before Bucher, Bergsman and Wolfson, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Magverz, Inc. (“applicant”) filed an intent-to-use application for the mark
WELLS FRUIT CANDY and design, shown below, for “Candy; Chocolate
confections; Frozen confections; Non-dairy frozen confections,” in Class 30.

In the application, applicant described its mark as follows:
Serial No. 85614128
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The mark consists of WELLS in blue stylized font that is
outline [sic] in light blue. There is a blue leaf coming [sic]
of the second L. Below this is FRUIT CANDY in small
blue stylized font. Below these terms is a blue waving
line. All wording contained in a light blue circle.
Applicant disclaimed the exclusive right to use the term “Fruit Candy.”
The Trademark Examining Attorney refused to register applicant’s mark
pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark so resembles the mark WELLS A FAMILY
COMPANY SINCE 1913 and design, shown below, for “frozen confections,” in Class
30, as to be likely to cause confusion.1

The registration includes the following description of the mark:
The color(s) red, yellow, gold and black is/are claimed as a
feature of the mark. The mark consists of the words
"WELLS A FAMILY COMPANY SINCE 1913" in a red
oval. The word "WELLS" is in yellow letters with black
shadowing and the words "WELLS A FAMILY
COMPANY SINCE 1913" are in yellow letters. A gold
oval shaped frame extends around the oval and includes a
red ruffled border.
Registrant disclaimed the exclusive right to use the term “Family Company” and
“Since 1913.”

1 Registration No. 3922504 registered on February 22, 2011.
Serial No. 85614128
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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. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
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”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
A. The similarity or dissimilarity and nature of the goods, the likely-to-continue
channels of trade and classes of consumers.

Applicant is seeking to register its mark for “candy; chocolate confections;
frozen confections; non-dairy frozen confections.” The description of goods in the
cited registration is “frozen confections.” The description of goods in the application
and the cited registration are in part identical. It is not necessary that all of the
goods listed in the application and registrations be related. In the context of
likelihood of confusion, it is sufficient if likelihood of confusion is found with respect
to use of the mark on any item that comes within the description of goods in the
application or registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
Serial No. 85614128
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F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc.,
90 USPQ2d 1393, 1398 (TTAB 2007).
Because the goods described in the application and the cited registration are
in part identical, we must presume that the channels of trade and classes of
purchasers are the same. See 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) (“Because the goods are
legally identical, they must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers.”). See also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion).
Applicant argues that its goods and the goods in the cited registration are
different. According to applicant, applicant’s mark is “used exclusively in
connection with sugar-free mints and confectionary products. [Applicant’s] products
are vitamin enhanced using high quality raw materials that assist in freshening
breath and enhancing health.”2 On the other, “the cited mark is used in connection
with a producer of frozen confections, namely, frozen confections that are sold under
the BLUE BUNNY BRAND.”3
The problem with applicant’s argument is that its identification of goods
includes “frozen confections.” Moreover, its identification of goods is not limited to

2 Applicant’s Brief, p. 13.
3 Id.
Serial No. 85614128
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sugar-free mints and confectionary products comprised of high quality raw
materials that assist in freshening breath and enhancing health. Finally, there are
no restrictions or limitations as to channels of trade or classes of consumers in
either identification of goods. Because the scope of the registration applicant seeks
is defined by its application (and not by its actual use), it is the application (and not
actual use) that we must look to in determining applicant’s right to register:
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 Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
In view of the foregoing, we find that the goods are in part identical and that
there is a presumption that the goods move in the same channels of trade and are
sold to the same classes of consumers.
B. The strength of the mark in the cited registration.
Applicant contends that the term “Wells” is not so distinctive that it should
prevent applicant’s mark and registrant’s mark from coexisting on the Principal
Register.4 To support this argument, applicant submitted copies of 11 registered
marks which applicant contends incorporate the term “Well” or variations thereof
for related products. The registered marks are set forth below:

4 Applicant’s Brief, pp. 11-13.
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1. Registration No. 3716902 for the mark SIMPLY WELL;
2. Registration No. 3690851 for the mark WELLMADE;
3. Registration No. 3916253 for the mark WELLABY’S;
4. Registration No. 3505675 for the mark OPTIWELL;
5. Registration No. 4064691 for the mark WELLTHY CHOCOLATES;
6. Registration No. 3793627 for the mark MEDWELL FOODS;
7. Registration No. 4128014 for the mark WEL CREAM DESSERTS;
8. Registration No. 4050652 for the mark TEACH THEM WELL;
9. Registration No. 4169702 for the mark SOY WELL;
10. Registration No. 3204577 for the mark EAT WELL BE WELL; and
11. Registration No. 2877309 for the mark OATWELL.5
There are two problems with applicant’s evidence and contention which
prevents us from finding that the mark in the cited registration is weak and
entitled to only a narrow scope of protection or exclusivity of use such that
consumers will be able to distinguish the marks. First, absent evidence of actual
use, 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); Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934

5 Applicant’s January 29, 2013 response to Office action.
Serial No. 85614128
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(TTAB 2011). See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB
1983).
[I]t would be sheer speculation to draw any inferences
about which, if any of the marks subject of the third[-]
party registrations are still in use. Because of this doubt,
third[-]party registration evidence proves nothing about
the impact of the third-party marks on purchasers in
terms of dilution of the mark in question or conditioning
of the purchasers as to their weakness in distinguishing
source.
Id. at 286. See also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however,
registration evidence may not be given any weight”).
Second, none of the marks in the third-party registrations are as close to the
mark in the cited registration as applicant’s mark. In this regard, we note that the
commercial impression engendered by the use of the term “Wells” by both applicant
and registrant is that of a surname. See The Random House Dictionary of the English Language (Unabridged), p. 2159 (2nd ed. 1987) definition for “Wells”:
1. Henry, 1805-78, U.S. businessman: pioneered in
banking, stagecoach services, and express shipping. 2.
H(erbert) G(eorge), 1866-1946. English novelist and
historian. 3. Horace, 1815-48, U.S. dentist: pioneered
use of nitrous oxide as an anesthetic. 4. Ida Bell (Ida
Bell Wells-Barnett), 1862-1931, U.S. journalist and
civil-rights leader.6
In view of the foregoing, we find that the strength of the mark is a factor that
weighs in favor of finding that there is a likelihood of confusion.

6 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Serial No. 85614128
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C. The similarity or dissimilarity of the marks in terms of appearance, sound,
connotation and commercial impression and the strength of the mark in the
cited registration.

We turn now to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, any one of these means of comparison may be
critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In
comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108
(TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84
USPQ2d 1323, 1325 (TTAB 2007).
Furthermore, the test 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 so that
confusion as to the source of the goods or services offered under the respective
marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the
Serial No. 85614128
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average customer, who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Since the goods at issue are “frozen confections,” the average customer is an
ordinary consumer.
The marks are similar because they share the name WELLS. However, our
analysis of the similarity or dissimilarity of the marks cannot be predicated on
dissecting the marks into their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp.
V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 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”). On the other hand,
different features may be analyzed to determine whether the marks are similar.
Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ
266, 268 (CCPA 1955). In fact, 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., 224 USPQ at 751.
We find that the word WELLS is the dominant element of both marks. The
term “Fruit Candy” in applicant’s mark is a generic term for candy and the term “A
Family Company Since 1913” describes registrant and has little trademark
significance.
Serial No. 85614128
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The design elements associated with both marks (primarily a round carrier
and an oval carrier) serve as a background design for the presentation of the
WELLS name. When the marks consist of words and a design, the words are
normally given greater weight because they would be used by consumers to request
the services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In
re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed.
Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ
390 (Fed. Cir. 1983). In the settings of both marks, the name WELLS projects the
primary significance of the marks while the design elements serve to display the
WELLS name.
Applicant argues that its mark has a modern, cooler appearance when
contrasted to the registrant’s nostalgic look.
On the one hand, the Applicant’s mark has a new and
streamlined look and feel with the blue wave line made
popular in trademarks over the past 10 to 15 years. The
blue evokes a feeling of coolness with the leaf design
element a though of freshness. Finally, the disclaimed
portion of the mark, FRUIT CANDY, informs the
prospective consumer of exactly what they are getting
with this mark.
To the contrary, the cited registration uses and claims the
more bold colors gold, yellow, and red and appears in a
font and manner evoking an old-time look and feel. The
colors, moreover, are highly suggestive of a turn-of-
century San Francisco establishment using the
traditional colors of that great city. The old-time look and
feel of this trademark are impressed upon the prospective
Serial No. 85614128
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consumer by the language A FAMILY COMPANY and
SINCE 1913.7
However, consumers familiar with the WELLS family frozen confections are just as
likely to perceive applicant’s “new and streamlined look and feel” display of the
WELLS mark as just that: a new look for the WELLS family “Fruit Candy” line of
products.
As discussed in the previous section, the name WELLS as used in both
applicant’s mark and registrant’s mark has the same meaning and engenders the
commercial impression of a surname.
In view of the foregoing, we find the marks are similar in appearance, sound,
connotation and commercial impression.
D. Balancing the factors.
In view of the facts that the marks are similar, the goods are in part identical
and there is a presumption that the goods move in the same channels of trade and
are sold to the same classes of consumers, we find that applicant’s mark WELLS
FRUIT CANDY and design for “candy; chocolate confections; frozen confections;
non-dairy frozen confections” is likely to cause confusion with the mark WELLS A
FAMILY COMPANY SINCE 1913 and design for “frozen confections.”
Decision: The refusal to register is affirmed.

7 Applicant’s Brief, p. 10.