Smokaroma, Inc.

Trademark Trial and Appeal Board

Sep 1, 2006

No. 78135632 (T.T.A.B. Sep. 1, 2006)

Mailed:
September 1, 2006

Hearing:
July 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Smokaroma, Inc.
________

Serial No. 78135632
_______

Daniel P. Dooley of Fellers, Snider, Blankenship, Bailey &
Tippens for Smokaroma, Inc.

Eugenia K. Martin, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Walters, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Smokaroma, Inc. has appealed from the final refusal of
the trademark examining attorney to register BAR-B-Q BOSS
(in typed or standard character form) as a trademark for
“[b]arbeque sauce as a liquid, and a dry mixture; barbeque
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78135632
2
spice mixes”1 in International Class 30. In its response
filed on April 21, 2003, applicant disclaimed the term
BARBEQUE, but in its “Request for Amendment” filed December
4, 2004, and again in its response filed on June 2, 2005,
applicant withdrew its disclaimer of BARBEQUE.
The examining attorney has refused registration of
applicant's mark pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark
so resembles the previously registered mark BOSS SAUCE
(also in typed or standard character form) for “sauces and
dipping sauces,”2 in International Class 30, that, as used
on applicant’s identified goods, applicant's mark is likely
to cause confusion or mistake or to deceive. Additionally,
the examining attorney has refused registration in view of
her requirement that applicant disclaim the term
“barbeque.” According to the examining attorney, the term
is merely descriptive of a feature of applicant's goods
“because it describes the specific type of sauce or spice
mix – barbeque spice mix or sauce.” 15 U.S.C. § 1056(a).
See also 15 U.S.C. § 1052(e)(1). The examining attorney

1 Application Serial No. 78135632, filed June 13, 2002,
asserting first use anywhere and first use in commerce on June 8,
1979.
2 Registration No. 2046864, issued March 25, 1977. Section 8
affidavit accepted, Section 15 affidavit acknowledged. The word
SAUCE has been disclaimed.

Serial No. 78135632
3
has also maintained her refusal to allow applicant's
proposed amendment to its identification of goods to “[d]ry
spice mixes for commercial use,” set forth in its June 2,
2005 response, because she maintains that it exceeds the
scope of the identification of goods.3
Applicant has appealed the final refusal of his
application and the examining attorney’s refusal to allow
applicant's proposed amendment to its identification of
goods. Both applicant and the examining attorney have
filed briefs. An oral hearing was conducted on July 19,
2006.
Applicant's Identification of Goods
Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts
amendments to the identification of goods or services as
follows, “[t]he applicant may amend the application to
clarify or limit, but not to broaden, the identification of
goods and/or services.” In its response filed June 2,
2005, applicant proposed to amend its identification of
goods from “barbeque sauces as a liquid, and a dry mixture;

3 Applicant evidently has proposed the amended identification of
goods to “remov[e] the need for disclaiming the term ‘BARBEQUE’
because neither the term ‘BARBEQUE’ nor the term ‘SAUCE’ is
present in the description of the goods [and] [d]eletion of the
disclaimer of the term ‘BARBEQUE’ obviates the argument that the
common element of both marks (‘BOSS’) creates the same commercial
impression, because the mark ‘BAR-B—Q BOSS’ would no longer
contain a dominant portion.” Brief at p. 5.

Serial No. 78135632
4
barbeque spice mixes” to “dry spice mixes for commercial
use.”4 Because applicant's original identification of goods
is limited to barbeque sauce as a liquid, and a dry
mixture, and barbeque spice mixes, and the proposed
identification of goods is not limited to barbeque spice
mixes, but may include other spice mixes, the proposed
identification of goods exceeds the scope of the original
identification of goods. The refusal to accept the amended
identification of goods is affirmed.
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,
however, two key, although 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

4 In its request for reconsideration (filed October 31, 2003),
applicant initially proposed to amend its identification of goods
to “food seasoning, namely, dry spice mixes for commercial use.”
The examining attorney did not accept this proposed amendment and
so stated in her September 29, 2004 Office action.
Serial No. 78135632
5
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
As discussed above, applicant has proposed an
amendment to its identification of goods and that amendment
is unacceptable. Thus, applicant's operative
identification of goods is “[b]arbeque sauce as a liquid,
and a dry mixture; barbeque spice mixes.” Applicant’s
arguments in support of registration based on the proposed
identification of goods therefore are unpersuasive.
In considering the similarities and dissimilarities
between applicant’s and registrant’s goods, we find that
they are identical in part. Specifically, applicant's
“barbeque sauce as a liquid” is encompassed within “sauces
and dipping sauces,” which includes barbeque sauces.
As for the remaining goods in applicant's
identification of goods, we find they are closely related
to registrant’s goods. The barbeque sauces as a dry
mixture only require the addition of liquid additions such
as catsup and water to become a sauce.5 Thus, these
remaining goods are essentially the same, only differing by

5 See applicant's webpage at www.smokaroma.com/spice_sauce.asp,
submitted by applicant with its April 21, 2003 response, stating:
“Bar-B-Que Boss Sauce Mix is a dry mix of choice ingredients.
One convenient pre-measured package mixed with number ten can of
your favorite catsup and water makes one and one-eight gallon of
Award Winning barbeque sauce ….”

Serial No. 78135632
6
the solid or liquid state in which they are sold. Further,
the evidence of record shows that the “barbeque spice
mixes” are commercially related to “sauces.” The web pages
submitted by the examining attorney with her July 7, 2005
Office action show that sauces and spice mixes may be
purchased from the same websites. Several of such web
pages even show that barbeque sauces and barbeque dry rubs
are marketed under the same trademarks. See
www.firemanschoice.com (FIREMAN’S CHOICE barbeque sauce and
FIREMAN’S CHOICE rub); www.marylanddelivered.com (JERRY
ELLIOTT’S Pig Sauce and JERRY ELLIOTT’S Bar-B-Q Rub);
www.bbqnfools.com (BBQ’N FOOLS Signature Barbecue Sauce and
BBQ’N Fools Signature Seasoning/Dry Rub); and www.zarda.com
(ZARDA Bold & Spicy Barbecue Sauce and ZARDA BBQ Rub).
Here, through the information on the web pages, the
examining attorney has established that the conditions
surrounding the marketing of spice mixes and sauces are
such that they would be encountered by the same persons
under circumstances that could give rise to the mistaken
belief that they emanate from, or are associated with, the
same source. See On-Line Careline Inc. v. America Online
Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
Serial No. 78135632
7
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Applicant has argued that applicant's goods are
“solely a commercial product” sold to restaurant
professionals, while “Registrant’s goods are sold to the
average consumer, a fact that the Trademark Examining
Attorney has apparently continued to ignore.” Brief at
p. 4. Further, applicant references its specimen of use
and a photograph of registrant’s goods and maintains that
they demonstrate that applicant's product is “a commercial
product consisting of a dry spice mix, packaged in what is
clearly commercial wrapping, a white bag with black
lettering; and Registrant’s product … has a vivid label ….”
Id.
The problem with applicant’s argument is that it
ignores a long established and fundamental tenant of
trademark law which the examining attorney has pointed out
to applicant in two Office actions and in her brief, i.e.,
that the question of likelihood of confusion must be
determined based on an analysis of the mark as applied to
the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
registrant’s registration, rather than what the evidence
shows the goods and/or services to be. If there are no
Serial No. 78135632
8
limitations in the identification, we must presume that the
“registration encompasses all goods of the nature and type
described, [and] that the identified goods move in all
channels of trade that would be normal for such goods.” In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981). See also 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 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.”). Applicant's identification
of goods does not state that applicant's goods are
commercial goods, intended only for commercial customers
and registrant’s identification of goods does not state
that registrant’s goods are intended only for non-
commercial customers. Thus, we must consider applicant's
and registrant’s goods as being made available for sale to
both commercial customers as well as to the general
consumer. We must also assume that such goods travel in
all trade channels normal for such goods. We therefore
Serial No. 78135632
9
find that the trade channels for both applicant’s and
registrant’s goods overlap.
Applicant has also argued that “Applicant has
consistently used its trade name Smokaroma, Inc. in
conjunction with its mark ….” Brief at p. 4. It is
immaterial that applicant has always used its trade name
with its mark – the trade name is not part of applicant's
mark and may not be considered.
In view of the foregoing, we find that the du Pont
factors regarding the similarities of the goods and the
similarities of likely-to-continue trade channels weigh
heavily in favor of finding a likelihood of confusion. We
also find that because there are no limitations in the
respective identifications of goods, applicant's and
registrant’s goods may both be sold in small quantities
such as by the can or jar to general consumers. Both
goods, as inexpensive food accompaniments, are hence
subject to impulse purchases. We therefore reject
applicant's arguments at p. 8 of its brief that
“[s]pecialized buyers or owners for [sic] restaurants
purchase Applicant's goods” and may purchase registrant's
sauces for consumption at their restaurants; and that “this
class of purchaser [is] relatively sophisticated and
discriminating in matters pertaining to the restaurant
Serial No. 78135632
10
industry,” and resolve the du Pont factor regarding the
conditions under which and buyers to whom sales are made
against applicant.
We next consider the similarities or dissimilarities
of the marks in their entireties. Our focus is on whether
the marks are similar in sound, appearance, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). We do not consider whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar that confusion as to the source of the
goods 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). Also, we are
guided by the well-established principle that although the
marks must be considered in their entireties, there is
nothing improper, under appropriate circumstances, in
giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
Serial No. 78135632
11
The examining attorney maintains that the marks are
similar because they both have BOSS as their dominant
terms. Further, she contends that BAR-B-Q in applicant's
mark is a misspelling of “barbeque”; that both BAR-B-Q and
SAUCE in registrant’s mark are descriptive of applicant’s
and registrant’s respective goods; and that BOSS “creates
the most significant commercial impression.” Brief at
p. 5.
Applicant maintains that “BOSS SAUCE is an entirely
different mark than BAR-B-Q BOSS”; that applicant's mark
does not have the word “sauce” and is a suggestive mark
that forms a separate commercial impression; that “the
ordinary meaning [of “barbeque”] does not create a generic
meaning for the Applicant's goods,” relying on a definition
from “the Merriam-Webster Online dictionary” which
applicant maintains does not mention spice mixes;6 and that
the misspelling of barbeque in applicant's mark “is very
suggestive of a use of its goods [and] the highly
suggestive character of this term serves to distinguish

6 Because a copy of the online definition of “barbeque” mentioned
by applicant is not of record, we cannot verify that indeed this
definition of “barbeque” does not mention spice mixes.
Applicant's argument is hence not particularly persuasive.
Serial No. 78135632
12
Applicant's mark.”7 Brief at pp. 4-5; Supplemental Brief at
pp. 3-4.8
We are not persuaded by applicant's arguments but
rather agree with the examining attorney that BOSS is the
dominant portion of each mark. As applicant has
acknowledged, BAR-B-QUE is a misspelling of “barbeque.”9
BAR-B-QUE in applicant's mark is at a minimum a merely
descriptive term because it informs purchasers without
imagination or thought that the goods are intended for use

7 On p. 4 of its corrected appeal brief (filed December 4, 2004),
applicant cites several third party registrations containing the
term RED and others containing the term BOSS. The registrations
for marks containing the term RED are irrelevant to the present
appeal because neither applicant's nor registrant’s marks contain
the term RED. Also, applicant has not entered a copy of these
registrations into the record and simply identifying
registrations in a brief does not make such registrations of
record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n. 2 (TTAB
1998). Accordingly, the third-party registrations have not been
further considered in determining the relative strength of BOSS.
We hasten to add that the third-party registrations, even if
considered, would not compel a different result in this case.
8 On December 4, 2004, applicant filed its appeal brief and an
amendment to the identification of goods. On January 11, 2005,
the Board suspended proceedings and remanded the application to
the examining attorney for consideration of the amendment, and
informed applicant that it would be allowed time to file a
supplemental brief.
9 It is well settled that the use of a phonetically identical
word or a simple misspelling does not normally change a
descriptive word into a suggestive term. See In re Quik-Print
Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980)(QUIK-
PRINT held descriptive; “There is no legally significant
difference here between ‘quik’ and ‘quick’”); Armstrong Paint &
Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938)(NU-ENAMEL;
NU found equivalent of “new”); In re Organik Technologies Inc.,
41 USPQ2d 1690 (TTAB 1997)(ORGANIK); and Hi-Shear Corp. v.
National Automotive Parts Association, 152 USPQ 341, 343 (TTAB
1966) (HI-TORQUE “is the phonetic equivalent of the words ‘HIGH
TORQUE’”).
Serial No. 78135632
13
in making barbeque. See definition of “barbecue”10 (also
spelled “barbeque”) in relevant part in Webster’s Third New
International Dictionary of the English Language
(Unabridged 1997), i.e., “2 a : an “animal roasted or
broiled, whole or split, over an open fire or barbecue
pit[;] 3 … d : meat or chicken cooked in a barbecue
sauce.”11 See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987)(“Whether a given mark is suggestive or
merely descriptive depends on whether the mark ‘immediately
conveys … knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’”).
Further, the manner in which applicant uses the term
“barbeque” in promoting its goods – in close proximity to
its mark - reinforces that the goods are intended for use
in making barbeque. Applicant's webpage at
www.smokaroma.com/spice_sauce.asp, submitted with
applicant's April 21, 2003 response, emphasizes that

10 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
11 “Barbecue sauce” is defined in the same dictionary as “a highly
seasoned sauce of vinegar, condiments, and spices that may be
used in cooking, basting, or serving meat or fish.”

Serial No. 78135632
14
applicant's BAR-B-QUE BOSS sauces and spice mixes are
“Great for Bar-B-Que ….” Additionally, the web page claims
that, “[m]any barbeque connoisseurs claim this sauce is the
best they have ever tested … your customers will too!”; and
that applicant's sauce is “particularly excellent for
barbeque ….”
Because BAR-B-QUE is at a minimum a merely descriptive
term, we accord BAR-B-QUE less weight in our comparison of
the marks as a whole, and find BOSS is the dominant term in
applicant's mark. It is completely appropriate to give
less weight to a portion of a mark that is merely
descriptive of the relevant goods or services in comparing
marks in their entireties. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“That a
particular feature is descriptive … with respect to the
relevant goods or services is one commonly accepted
rationale for giving less weight to a portion of the
mark.”).
We also find that BOSS is the dominant term in
registrant’s mark. Registrant’s goods include “sauces,”
thus SAUCE is a generic term and is hence insignificant as
a source identifier. Registrant has disclaimed SAUCE in
its registration.
Serial No. 78135632
15
Thus, both marks contain BOSS as the identical
dominant term along with descriptive or generic terms.
While the marks have obvious differences in their
appearances and pronunciations due in part to the inclusion
of the merely descriptive term BAR-B-QUE in applicant's
mark and the generic term SAUCE in registrant’s mark, and
possibly slight differences in connotation,12 these
differences are not as significant as the similarities
created by the identical common term. Also, in view of the
shared dominant term, we find that their commercial
impressions are not dissimilar. We conclude, therefore,
that when we consider these marks in their entireties, any
differences in appearance, pronunciation, meaning, and
commercial impression are eclipsed by the similarities of
the marks. The du Pont factor regarding the similarities
of the marks thus weighs in favor of finding a likelihood
of confusion.
Applicant maintains that “there has been no actual
evidence of the existence of confusion within either
customer base.” Brief at p. 10. Applicant also maintains
that applicant's mark has been in the marketplace for

12 We take judicial notice of the definition of “boss” from
Webster’s Third New International Dictionary of the English
Language (Unabridged 1997) as “adj 1 : being in charge : having
authority : PRINCIPAL, MASTER … 2 slang : marked by superiority :
EXCELLENT, CHAMPION, FIRST-RATE.”
Serial No. 78135632
16
twenty-five years and respondent’s mark has been in the
market place for at least eighteen years, and that there
has been no “proof of actual consumer confusion with the
Registrant[’]s mark.” Brief at p. 10. However, there is
no evidence in the record as to the geographic locations
where applicant and registrant have been doing business.
If distant from each other, the geographic separation may
account for this lack of actual confusion. Also, there is
no evidence in the record regarding the level of sales or
advertising by applicant. The absence of any instances of
actual confusion is a meaningful factor only where the
record indicates that, for a significant period of time, an
applicant's sales and advertising activities have been so
appreciable and continuous that, if confusion were likely
to happen, any actual incidents thereof would be expected
to have occurred and would have come to the attention of
one or both of these trademark owners. Similarly, we have
no information concerning the nature and extent of
registrant's use, and thus we cannot tell whether there has
been sufficient opportunity for confusion to occur, as we
have not heard from the registrant on this point. All of
these factors materially reduce the probative value of
applicant's argument regarding a lack of actual confusion.
Therefore, applicant’s contention that there has been no
Serial No. 78135632
17
actual confusion is not indicative of an absence of a
likelihood of confusion. See In re Majestic Distilling
Co., supra. (“uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.”) Applicant's argument regarding actual confusion
therefore is unpersuasive.
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that, when
potential purchasers of applicant's “barbeque sauce as a
liquid, and a dry mixture; barbeque spice mixes” and
registrant’s “sauces and dipping sauces” encounter the
marks BAR-B-Q BOSS and BOSS SAUCE for these goods, they are
likely to believe that the sources of these goods are in
some way related or associated. As a result, there is a
likelihood of confusion.
Disclaimer
As discussed above, we do not accept that BAR-B-QUE, a
misspelling of “barbeque,” is “very suggestive,” but rather
find that BAR-B-QUE is at least merely descriptive of a
feature of applicant's goods. In view thereof, we affirm
the examining attorney’s requirement for a disclaimer of
BAR-B-QUE. See 15 U.S.C. §§ 1052(e)(1) and 1056(a).
Serial No. 78135632
18
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act in view of Registration
No. 2219977 is affirmed; the refusal to register
applicant's mark in the absence of a disclaimer of BAR-B-
QUE is affirmed; and the refusal to accept applicant's
proposed amendment to the recitation of services is
affirmed.