American Vegetable Oils, Inc.

Trademark Trial and Appeal Board

Jan 16, 2007

No. 76549215 (T.T.A.B. Jan. 16, 2007)

Mailed: January 16, 2007

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Vegetable Oils, Inc.
________

Serial No. 76549215
_______

Christopher J. Day of the Law Office of Christopher J. Day
for American Vegetable Oils, Inc.

Rebecca M. Eisinger, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Quinn, Grendel and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

American Vegetable Oils, Inc. has filed an application
to register the mark CAFÉ DEMONTE and design, in the form
shown below,

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 76549215

2
for “coffee” in International Class 30.1 In response to a
request from the examining attorney, applicant has
disclaimed the word CAFÉ and has included a statement that
the stippling shown in the design portion of the mark is a
feature of the mark.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the mark DEMONTE, previously
registered for “confectionery products, namely chocolates
and candy”2 as to be likely to cause confusion, mistake, or
deception.
Applicant has appealed. Applicant and the examining
attorney filed briefs. We affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. DuPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,

1 Application Serial No. 76549215, filed October 6, 2003, based
on use of the mark in commerce, and alleging first use and use in
commerce as of September 15, 2003.

2 Registration No. 2894253 issued October 19, 2004.
Ser No. 76549215

3
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). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Considering first the similarity of the marks, we must
determine whether applicant’s mark and registrant’s mark,
when compared in their entireties, are similar or
dissimilar in terms of sound, appearance, connotation and
commercial impression. Although the marks must be
considered in their entireties, 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 created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). For instance, “that a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark….”
Id. at 224 USPQ at 751. 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
Ser No. 76549215

4
impression that confusion as to the source of the goods
and/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).
Applicant argues that “when compared in their
entireties, Applicant’s CAFÉ DEMONTE mark is readily
distinguished from Registrant’s DEMONTE mark.” We
disagree. The dominant and distinguishing portion of
applicant’s mark CAFÉ DEMONTE and design is the term
DEMONTE due to the genericness of the word CAFÉ, i.e.,
“café” being the French word for coffee, as evidenced by
the disclaimer. The dominant portion of applicant’s mark
is identical to registrant’s mark.
Here, the generic word CAFÉ, while not present in
registrant’s mark, is not sufficient to distinguish such
marks due, as noted above, to the fact that the dominant
portion of applicant’s mark DEMONTE is identical to
registrant’s mark DEMONTE. See In re Dixie Restaurants,
105 F.3d at 1407, 41 USPQ2d at 1533-34. Nor do we find the
Arc de Triompe design sufficient to distinguish applicant’s
mark from the registrant’s mark. Although the design
element is clearly noticeable, it does not serve to
Ser No. 76549215

5
distinguish these marks in sound or appearance. The design
simply reinforces the pseudo French aura surrounding the
applicant’s mark. Further, it is the dominant term DEMONTE
that would be used by purchasers to call for applicant’s
goods. Thus it would make a greater impression on
purchasers and it is the portion that is more likely to be
remembered as the dominant and source-signifying portion of
applicant’s mark. See e.g., In re Appetito Provisions Co.,
Inc., 3 USPQ2d 1553 (TTAB 1987).
Accordingly, and while differences admittedly exist
between the respective marks when viewed on the basis of a
side-by side comparison, we find that in their entireties,
the marks are not only substantially similar in appearance
due to the shared phrase DEMONTE but, in light thereof,
they are substantially similar in connotation and convey a
substantially similar commercial impression. Thus, the
factor of the similarity of the marks favors a finding of
likelihood of confusion.
We now turn to a consideration of the goods identified
in the application and the cited registration. It is well
settled that the question of likelihood of confusion must
be determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration. Canadian Imperial
Ser No. 76549215

6
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783
(Fed. Cir. 1992); and The Chicago Corp. v. North American
Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991). Further, it is
a general rule that goods or services need not be identical
or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that the
goods or services are related in some manner or that some
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which would give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer
or that there is an association between the producers of
each parties’ goods or services. In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991), and the cases cited therein.
Applicant, in urging that the refusal to register be
reversed, argues that:
Applicant’s goods are not competitive
and not related to the goods of the
cited mark. Applicant provides the
goods of coffee. In contrast, the
cited mark is used strictly in
connection with candy. (Brief, p. 4)

Applicant further argues that:

Although both Applicant’s mark and
Registrant’s mark is [sic] filed in
connection with goods that are broadly
categorized as “food”, they are neither
Ser No. 76549215

7
competitive nor related. There is a
vast difference in the types of goods
and the consumers for whom the goods
are produced in connection with
Applicant’s mark as in contrast with
those of the cited mark. (Brief, p. 4)

The examining attorney, on the other hand, argues that
applicant’s coffee and registrant’s confectionery products,
namely chocolates and candy, are related because such goods
commonly originate from the same source and because the
goods are offered together in that coffee is often an
ingredient in chocolate. The examining attorney submitted
copies of sixteen use-based third-party registrations for
marks that cover coffee, on the one hand, and candy and/or
chocolate, on the other hand. The examining attorney has
also submitted Internet web pages showing coffee and candy
emanating from a singe source and available for purchase at
the same location and Internet evidence showing that coffee
is used as a component of candy.
We find that coffee identified in applicant’s
application is sufficiently related to candy and chocolates
identified in the cited registration, and that confusion is
likely to result from the use thereon of the substantially
similar marks in this case. In the absence of any
limitations to the identifications of goods, we must
presume that these kinds of goods are sold in the same
Ser No. 76549215

8
channels of trade, such as specialty shops, grocery stores
and general merchandise stores, to the same class of
purchasers, namely the general public.
Further, with respect to the relatedness of the goods,
the evidence of record includes copies of sixteen third-
party registrations which include in their respective
identification of goods, inter alia, coffee, on the one
hand, and candy and/or chocolate, on the other hand.
Although these registrations are not evidence that the
marks shown therein are in use; or that the public is
familiar with them, they nevertheless are probative
evidence to the extent that they suggest that the goods
identified therein are of a type which may emanate from a
single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Also of record are Internet web pages showing that coffee
and candy and/or chocolate emanate from a single source and
that coffee is sometimes a component of candy. We find
this evidence is probative evidence of the requisite
relationship between applicant’s coffee and registrant’s
candy and chocolate.
As to applicant’s unsupported statement that consumers
of registrant’s and applicant’s goods are sophisticated
Ser No. 76549215

9
purchasers and thus there is no likelihood of confusion
between applicant’s mark and the cited mark, we find the
contention speculative. That is, nothing in the record
suggests that purchasers of applicant’s coffee and
registrant’s candy and chocolate are sophisticated
purchasers. In any event, even if that were the case, the
fact that consumers may need to exercise some care or
thought in choosing the respective products “does not
necessarily preclude their mistaking one trademark for
another” or that they otherwise are entirely immune from
confusion as to source or sponsorship. Wincharger Corp. v.
Rinco, Inc. 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962).
See also In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB
1988); and In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983).
In view of the foregoing, we conclude that consumers
familiar with registrant’s candy and chocolate offered
under the mark DEMONTE could reasonably assume, upon
encountering applicant’s substantially similar mark CAFÉ
DEMONTE and design for the related good of coffee, that
such goods emanate from, or are sponsored by or affiliated
with the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.