American Blanching Company

Trademark Trial and Appeal Board

Jul 10, 2008

No. 76443653 (T.T.A.B. Jul. 10, 2008)

Mailed: 7/10/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Blanching Company
________

Serial No. 76443653
_______

Douglas W. Kenyon of Hunton & Williams for American
Blanching Company.

Caryn Glasser, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Holtzman and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

American Blanching Company filed an application to
register the mark shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76443653
2
for “peanut butter.” The application is based on a date of
first use anywhere of March 1885, and a date of first use
in commerce of December 1885.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s goods, so resembles the
previously registered mark shown below

for “coffee, tea, sugar; bread, pastry; candy, chocolate,
white chocolate, cocoa mixes, cookies, lollipops, macaroni,
pasta, peppermint candy sweets, fruit gummy candies, [and]
pretzels”1 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.2
By way of background applicant states that its
predecessor began using the mark CINDERELLA for a variety

1 Registration No. 3057988, issued February 7, 2006, alleging
first use on August 31, 2002.
2 The exhibit accompanying applicant’s appeal brief, to which the
examining attorney objected due to its untimely submission, has
not been considered. Trademark Rule 2.142(d).
Ser No. 76443653
3
of goods, including peanut butter, in 1885. Another
predecessor then registered the mark for various food
items, including peanut butter, in 1950 (Reg. No. 525873).
After a second renewal in 1990, the registration was
canceled on June 22, 2001 for failure to file a Section 8
affidavit of continued use. Later in 2001, the common law
rights in the mark were assigned to applicant.
With respect to the refusal, applicant argues that the
marks are different, with the registered mark comprising,
in part, the possessive name WALT DISNEY’S, “a well-known
provider of entertainment services.” The presence of WALT
DISNEY in the cited mark is sufficient, according to
applicant, to distinguish the marks, giving registrant’s
mark a different commercial impression from the one
engendered by applicant’s mark. Applicant’s mark makes no
reference to Disney, nor does the mark include “the
distinctive Disney Cinderella character.” In this
connection applicant points to registrant’s own arguments,
when it attempted to distinguish its mark from a cited mark
to overcome a Section 2(d) refusal during prosecution of
the underlying application for its registration, that these
additional elements distinguished its mark from the cited
mark. Applicant also contends that the goods are
different, stating that “[a]lthough many candies, snacks
Ser No. 76443653
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and cookies can be combined or flavored with peanut butter,
the products of Applicant and Registrant are nevertheless
separate and distinct, even in separate classes.” In this
connection applicant refers to the fact that registrant
owns another registration for the mark PETER PAN for a
variety of snack food items, some identical to the ones
listed in the cited registration. This registration,
applicant asserts, was allowed to issue over an existing
third-party registration of the identical mark PETER PAN
for “peanut butter.” Applicant also contends that its
peanut butter and registrant’s snack food items are
purchased after careful consideration, especially given
food-related safety issues such as allergies. Applicant
asserts that it is an industry leader in the processing of
peanuts and distribution of peanut butter, and that it is
unaware of any instances of actual confusion between its
mark and registrant’s mark. Applicant further argues that
the cited mark is weak in view of “numerous other
registrations.” In support of its arguments, applicant
submitted a printout summary of the TESS search results of
a search of “Cinderella,” and copies of the PETER PAN
registrations mentioned above.
The examining attorney maintains that the marks are
similar in that registrant’s mark is dominated by the
Ser No. 76443653
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literal portion of the mark, and that applicant merely has
deleted the trade name and pictorial representation of the
fictional character Cinderella in registrant’s mark. The
examining attorney points out that the third-party
registrations referenced by applicant were not properly
introduced; the examining attorney goes on to discount
applicant’s evidence that the mark CINDERELLA is weak and
entitled to a narrow scope of protection. The examining
attorney also contends that the goods are related inasmuch
as they are used together, travel through the same trade
channels to the same classes of purchasers, and often are
purchased in the same shopping trip. The examining
attorney is not persuaded by the lack of actual confusion,
asserting that the test is likelihood of confusion. In
support of the refusal the examining attorney submitted
articles retrieved from the Internet, and a Wikipedia
excerpt about peanut butter. Pursuant to the examining
attorney’s request, we take judicial notice of the
dictionary listing of “Cinderella” as follows: “fairy-tale
heroine who is used as a drudge by her stepmother but ends
up married to a prince.” Merriam-Webster Online Dictionary
(10th ed. 2005).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
Ser No. 76443653
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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 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).
Insofar as the marks are concerned, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). 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
their entireties that confusion as to the source of the
goods and/or services offered under the respective marks is
likely to result.
With respect to registrant’s mark, it is well settled
that one feature of a mark may be more significant than
another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression
Ser No. 76443653
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created by the mark. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) [“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
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.”].
Where both words and a design comprise the mark (as in
registrant’s mark), then the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them,
and would be used by them to request the goods. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Thus, in the case of registrant’s mark,
we find that the dominant portion is the literal portion of
the mark, namely WALT DISNEY’S CINDERELLA.
In considering the literal portion of registrant’s
mark, this portion, in turn, is dominated by the term
CINDERELLA. We so find because the term CINDERELLA is in
larger type than WALT DISNEY’S, and the accompanying
pictorial representation of the well-known fictional
Ser No. 76443653
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character named “Cinderella” serves to reinforce the
literal CINDERELLA portion of registrant’s mark.
In view of the above, we find that the dominant
portion of registrant’s mark is the term CINDERELLA. This
term is identical to the entirety of applicant’s mark. The
stylization of the terms in the marks is not sufficient to
distinguish them in any meaningful manner.
Although the dominant portion, CINDERELLA, of
registrant’s mark is identical to applicant’s mark in
sound, appearance, meaning and commercial impression, we
must do more than just compare the individual components of
the marks; it is necessary that we compare the marks as a
whole. M2 Software Inc. v. M2 Communications Inc., 450
F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006). Nevertheless,
as indicated above, the design feature of registrant’s mark
only reinforces the literal CINDERELLA portion. And, WALT
DISNEY’S would be viewed merely as the trade name of the
entity that is the source of the goods sold under the mark.
The deletion of these additional features to form
applicant’s mark simply is not enough to sufficiently
distinguish applicant’s mark from registrant’s mark.
Generally, likelihood of confusion is not avoided between
otherwise confusingly similar marks by adding or deleting a
house mark. See In re Chatam International Inc., 380 F.3d
Ser No. 76443653
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1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); In re Apparel Ventures, Inc., 229 USPQ 225
(TTAB 1986); and In re Riddle, 225 USPQ 630 (TTAB 1985).
Insofar as the goods are concerned, we find
applicant’s peanut butter to be related and complementary
to, at the very least, registrant’s candy, chocolate,
cookies, pretzels and bread. As often stated, it is not
necessary that the respective goods be competitive, or even
that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods are related in some manner, and/or
that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originated from the same
producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991). Likelihood of confusion may be found based on any
item that comes within the identification of goods in the
involved application or registration. Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981). We also recognize that there is no
per se rule requiring a finding of likelihood of confusion
Ser No. 76443653
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when both types of goods are food items. Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 927, 198 USPQ
151 (CCPA 1978).
In the present case, the examining attorney submitted
several articles retrieved from the Internet showing that
peanut butter is used in food items in combination with
chocolate, candy, cookies and pretzels; peanut butter also
may be used as an ingredient in candy and cookies.
Further, it is common knowledge that peanut butter spread
on bread is often eaten as a snack. Thus, applicant’s
product is often used in combination with some of the snack
products listed in the cited registration. These
complementary uses are probative in finding that the goods
are related for purposes of our likelihood of confusion
analysis. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Neither the identification of goods in the application
nor the identification in the registration includes any
limitation regarding trade channels or classes of
purchasers. Where the goods in the cited registration
and/or application are broadly identified as to their
nature and type (as is the case herein), such that there is
an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is
Ser No. 76443653
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presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Thus, the goods are presumed to move through the
same trade channels normal for such products (e.g., grocery
stores, and the grocery departments of mass merchandisers
such as Wal-Mart and Target). The same classes of
purchasers, including ordinary consumers, would buy both
types of products, even on the same shopping trip.
Further, goods of the type involved herein are relatively
inexpensive, and would be the object of impulsive purchases
and frequent replacement. Applicant’s argument that the
goods are targeted to different consumers, or that
customers are sophisticated, is irrelevant given the lack
of any limitation in the identifications of goods.
We find that applicant’s and registrant’s goods are
related, complementary snack food items that move in the
same trade channels to the same classes of purchasers.
Ser No. 76443653
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These factors weigh in favor of finding likelihood of
confusion.3
Another du Pont factor on which evidence has been
introduced is the number and nature of similar third-party
marks in use on similar goods. In this connection
applicant argues that the cited mark is “weak” and
“entitled to a narrow scope of protection.” In support
thereof, applicant submitted a printout summary of a search
of CINDERELLA registered marks retrieved from the USPTO’s
TESS database. The summary merely lists the mark, the
registration number, and the “Live/Dead” status of the
registration.4 The examining attorney, in the final
refusal, indicated that the search report was insufficient
to make the registrations of record, further pointing out
the inherent deficiencies of such reports that do not list
the goods and/or services for which the mark is registered.
The examining attorney went on to state that, in any event,
third-party registrations are entitled to limited weight in
the absence of evidence of use. Applicant, in its brief,
is silent on this evidentiary matter, but continues to

3 Applicant’s argument relating to the different classification
of the goods has no bearing on the issue before us. Jean Patou
Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993).
4 Several of the listed marks do not even include CINDERELLA as a
portion thereof. See, e.g., LINCELLA, SAN DERELLA and FAIRY
WAND.
Ser No. 76443653
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argue its point about the weakness of the cited mark. The
examining attorney, in her brief, addresses, in more
detail, the deficiencies of the search report.
As correctly pointed out by the examining attorney, a
TESS summary is insufficient to make the listed
registrations of record. See In re JT Tobacconists, 59
USPQ2d 1080 (TTAB 2001); and In re Duofold Inc., 184 USPQ
638 (TTAB 1974). Accordingly, the third-party
registrations have not been considered in reaching our
decision. Even if the list itself were considered, the
mere listing of registered marks (many of which are
“dead”), without any accompanying indication of the goods
and/or services associated therewith, has virtually no
probative value. Further, the expired registrations are of
no value. See Action Temporary Services Inc. v. Labor
Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir.
1989) [“[A] cancelled registration does not provide
constructive notice of anything.”].
Even if copies of the “live” registrations had been
submitted, it is unlikely that we would reach a different
result on the merits of this appeal. Third-party
registrations are not evidence of use of the marks shown
therein. AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1407, 177 USPQ 268 (CCPA 1973). Thus, they are not
Ser No. 76443653
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proof that consumers are familiar with such marks so as to
be accustomed to the existence of similar marks in the
marketplace, and as result are able to distinguish among
CINDERELLA marks based on any differences in the marks.
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462 (CCPA 1973). Moreover, marks for goods far
removed from the types involved herein would be of no
value.
Applicant also relies upon registrant’s arguments made
in prosecuting the underlying application that matured into
the registration now cited as a Section 2(d) bar to
applicant’s mark. Applicant points to registrant’s remarks
directed to the state of the register, in particular, that
the term “Cinderella” is a weak indicator of source given
its registration by a number of third parties. These
remarks were made during the prosecution of registrant’s
application, as part of its efforts to overcome the refusal
of registration based on one of the third-party
registrations. Although we have considered these remarks,
we do not view them as a substitute for applicant’s own
obligation to establish any purported weakness of the cited
mark.
Applicant also relies upon the coexistence on the
register of registrations of the mark PETER PAN, one owned
Ser No. 76443653
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by a third party for peanut butter, and the other owned by
registrant for various snack foods, including cookies,
candies, chocolates, and pretzels.
As often stated, each case must be decided on its own
merits. We are not privy to the records of those
registrations and, in any event, previous decisions by
examining attorneys in approving other marks are without
evidentiary value and are not binding on the USPTO or the
Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564 (Fed. Cir. 2001); and In re Sunmarks Inc., 32 USPQ2d
1470 (TTAB 1994).
Although we have considered applicant’s claim that
there has been no actual confusion between the marks, we
have accorded limited probative value to this factor.
There is no evidence regarding the extent of use of the
respective marks, and whether the use has been sufficient
for opportunities of actual confusion to occur. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000). In any event the relevant
test is likelihood of confusion, not actual confusion.
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
We also have considered, of course, the fact that
applicant’s predecessor at one time owned a registration
Ser No. 76443653
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for the identical mark covering the identical goods
involved in its present application. As noted earlier, the
registration was cancelled in 2001. Further, so as to be
clear on this point, the record is devoid of any consent
agreement between registrant and applicant. Such an
agreement, had one been submitted, would be given great
weight. The earlier registration, now cancelled, once
owned by applicant’s predecessor, while worthy of
consideration, is outweighed by the factors weighing in
favor of finding likelihood of confusion. See In re Kent-
Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001).
Finally, applicant asserts that it is the senior user
of the mark CINDERELLA for food items, and that, therefore,
it has priority over the cited mark. To the extent that
applicant’s allegations constitute a collateral attack on
registrant’s registration, they are impermissible. Section
7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides
that a certificate of registration on the Principal
Register shall be prima facie evidence of the validity of
the registration, of the registrant’s ownership of the mark
and of the registrant’s exclusive right to use the mark in
connection with the goods or services identified in the
certificate. During ex parte prosecution, including an ex
parte appeal, an applicant will not be heard on matters
Ser No. 76443653
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that constitute a collateral attack on the cited
registration (e.g., applicant’s claim of priority over the
cited mark). In re Dixie Restaurants, Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re Peebles
Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP
§1207.01(d)(iv) (5th ed. 2007). Further, there is nothing
to indicate that applicant has sought to cancel the cited
registration. Accordingly, no consideration has been given
to applicant’s arguments in this regard.
In sum, the similarities between the marks and goods,
and the identity between the trade channels and classes of
purchasers, coupled with the inexpensive nature of the
goods that are subject to frequent replacement, weigh in
favor of finding likelihood of confusion.
We conclude that consumers familiar with registrant’s
candy, chocolate, cookies, pretzels and bread sold under
the mark WALT DISNEY’S CINDERELLA and design would be
likely to believe, if they were to encounter applicant’s
mark CINDERELLA (stylized) and design for peanut butter,
that the goods originated from or are associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.