Charlie's Enterprises

Trademark Trial and Appeal Board

Sep 21, 2020

88199740 (T.T.A.B. Sep. 21, 2020)

This Opinion is not a
Precedent of the TTAB

Oral Hearing: August 11, 2020 Mailed: September 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Charlie’s Enterprises
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Serial No. 88199740
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Michael Helsley of Wanger Jones Helsley PC,
for Charlie’s Enterprises
Tejbir Singh, Trademark Examining Attorney, Law Office 106,
Mary Sparrow, Managing Attorney.
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Before Shaw, Goodman and Coggins,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Charlie’s Enterprises d/b/a OK Produce (“Applicant”) seeks registration on the
Principal Register of the mark for “Vegetables,
fresh; Fresh kale” in International Class 31.1

1 Application Serial No. 88199740 was filed on November 19, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as July 1, 2018. The word “PRODUCE” and “THE
PICTORIAL REPRESENTATION OF KALE” have been disclaimed. The description of the
mark states: “The mark consists of kale leaves in dark green, light green, and black. To the
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark KALE YEAH! (in standard
characters, KALE disclaimed) for “Salads, namely, vegetable salads containing kale”
in Class 29.2 The Trademark Examining Attorney also refused registration of
Applicant’s mark under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and
1127, and Trademark Rules 2.34(a)(1)(iv) and 2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv) and
2.56(a), on the basis that the specimen does not show the applied-for mark in use in
commerce in connection with any of the International Class 31 goods specified in the
application.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. An oral hearing was held. We affirm the refusals to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.

right is the slogan ‘OH KALE YEAH!’ in dark green. To the right is the stylized wording ‘OK’
in light blue and dark blue, with the top right of the letter ‘K’ in dark green with a leaf design.
Below this is the term ‘PRODUCE’ in dark green.” The color(s) light green, dark green, black,
light blue, and dark blue are claimed as a feature of the mark.

Page references to the application record refer to the pages from the online database of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
on appeal refer to the Board’s TTABVUE docket system.

2 Registration No. 4546140, issued June 10, 2014; Section 8 and 15 affidavits filed and
acknowledged.
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§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which
there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. 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 and other factors are discussed
below.
A. Similarity or Dissimilarity of the Goods, Channels of Trade and Classes of
Purchasers

We first consider the second and third DuPont factors. The second DuPont factor
“considers ‘[t]he similarity or dissimilarity and nature of the goods or services as
described in an application or registration,’” while the third DuPont factor considers
“the similarity or dissimilarity of established, likely-to-continue trade channels.” In
re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018)
(quoting DuPont, 177 USPQ at 567). Our analysis under these factors is based on the
identifications of goods in the application and the cited registration. Id.; Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-
63 (Fed. Cir. 2014).
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Applicant’s goods are “Vegetables, fresh; Fresh kale.” Registrant’s goods are
“Salads, namely, vegetable salads containing kale.” Applicant’s identification of goods
is broad enough to encompass Applicant’s goods.3 Therefore the goods are legally
identical. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1413 (TTAB
2018); In re i.am.symbolic, llc, 127 USPQ2d 1627, 1628-29 (TTAB 2018).
Neither identification includes any limitations with respect to channels of trade,
and the class of purchasers would be the general public. Because the goods described
in the application are legally identical and there are no restrictions as to trade
channels or classes of purchasers in either Applicant’s or Registrant’s identification
of goods, we must presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same).
Applicant argues that Applicant and Registrant operate in different geographic
areas (i.e., California and South Carolina) and that due to the physical distances, the
channels of trade and potential consumers do not overlap. Applicant’s brief, 8
TTABVUE 3-4.

3 A salad is defined as any herb or green vegetable, as lettuce, used for salads or eaten raw.
We take judicial notice of the dictionary definition of “salad.” The Board may take judicial
notice of dictionary definitions in online dictionaries that exist in printed format. In re S.
Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018). RANDOM HOUSE UNABRIDGED
DICTIONARY, https://www.dictionary.com/browse/salad (accessed September 15, 2020).
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However, because Applicant seeks a geographically unrestricted registration
under which it might expand throughout the United States, it is not proper to limit
our consideration to the likelihood of confusion in the areas presently occupied by the
parties. Section 7(b) of the Trademark Act of 1946, 15 U.S.C. § 1057(b), creates a
presumption that the registrant has the exclusive right to use its mark throughout
the United States. Therefore, the geographical distance between the present locations
of the respective businesses of the two parties has little relevance in this case. See
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed.
Cir. 1983).
Accordingly, the DuPont factors of similarity of the goods, trade channels and
classes of purchasers strongly weigh in favor of a finding of a likelihood of confusion.
B. Similarity or Dissimilarity of the Marks

We next turn to the first DuPont factor, which requires us to determine the
similarity or dissimilarity of the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial impression. Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). The test, under the first DuPont factor, 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 that confusion as to the source of the goods offered under the respective
marks is likely to result.
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Furthermore, although the marks at issue 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 Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). When considering a composite mark containing both
words and a design, the word portion is generally more likely to indicate origin, and
accorded greater weight, because it is that portion of the mark that consumers use
when referring to or requesting the goods or services. See In re Viterra Inc., 101
USPQ2d at 1908; In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001)
(“words are normally accorded greater weight because they would be used by
purchasers to request the goods”).
Applicant’s mark is (with the picture of the kale
and “produce” disclaimed) and Registrant’s mark is KALE YEAH!
The literal portion of Applicant’s mark is the dominant portion because the picture
of the kale in Applicant’s mark would be seen and understood by customers as
reinforcing the word KALE in the mark. Therefore, the addition of the picture of kale
in the composite mark does not add significantly to the overall commercial impression
of the mark. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, *4-5 (TTAB 2020)
(citing, inter alia, Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1380 (Fed. Cir. 2002) (“This design connotes a crossword puzzle, which
reinforces the connotation created by the words of the mark. . . . [I]t serves only to
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strengthen the impact of the word portion in creating an association with crossword
puzzles.”)).
The phrase KALE YEAH! is Registrant’s entire mark. The identical phrase KALE
YEAH! is a significant component of Applicant’s mark. KALE YEAH! and OH KALE
YEAH! incorporate interjections or use an exclamatory phrase to express affirmative
emotions. In both Applicant’s and Registrant’s mark YEAH! means yes, and the
connotation in both is to say yes to kale, or express approval of kale. The addition of
the interjection “Oh,” in Applicant’s mark, also is used to express emotion. It does not
change the connotation of Applicant’s mark but creates further affirmance in the use
of the interjection or exclamatory phrase “yeah!”. Thus, the addition of “Oh” has no
meaningful impact on the overall commercial impression. Cf. In re Thor Tech, Inc.,
90 USPQ2d 1634, 1635 (TTAB 2009) (definite article “The” at the beginning of a mark
has no trademark significance); In re Burlington Indus., Inc. 196 USPQ 718, 719
(TTAB 1977) (An exclamation point does not serve to identify the source of the goods).
The additional difference in Applicant’s mark to Registrant’s mark is the addition
of (produce disclaimed). The leaf design element incorporated within the letter
“k” reinforces the produce portion of this term as something that has been grown. The
OK PRODUCE portion of Applicant’s mark is separable from the OH KALE YEAH!
literal portion and is used in the nature of a trade name or house mark.
Applicant argues that confusion would be eliminated due to the addition of
Applicant’s company name at the end of the slogan. Applicant’s brief, 8 TTABVUE 4.
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However, it is generally held that the addition of a house mark or other such matter
to one of two otherwise confusingly similar marks will not serve to avoid a likelihood
of confusion. See, generally, In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985)
(LE CACHET DE DIOR for shirts confusingly similar to CACHET for dresses); In re
Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY’S ACCUTUNE and design
for automotive service center confusingly similar to ACCUTUNE for automotive
testing equipment); and In re C. F. Hathaway Co., 190 USPQ 343 (TTAB 1976)
(HATHAWAY GOLF CLASSIC for knitted sports shirts confusingly similar to GOLF
CLASSIC for men’s hats). Consumers are likely to view Applicant’s mark as a
variation of Registrant’s mark, in which Registrant has used only the product mark
without the house mark. We find that the presence of Applicant’s house mark OK
PRODUCE would not avoid a likelihood of confusion.
“Finally, when the goods are identical or virtually identical, as we have in this
case, the degree of similarity between the marks necessary to support a
determination that confusion is likely declines.” In re i.am.symbolic, llc, 127 USPQ2d
at 1630 (citing, inter alia, Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673
F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra, 101 USPQ2d at
1908).
While there are obvious differences between Applicant’s mark and the registered
mark, when viewed as a whole, they are more similar than dissimilar in appearance
and sound, connotation, and commercial impression. We find the first DuPont factor
weighs in favor of a finding of likelihood of confusion.
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C. Conclusion as to likelihood of confusion
In view of the similarity of the marks, the goods, the trade channels, and the
classes of purchasers, we find confusion likely.
II. Specimen refusal
For completeness, we also address the refusal based on the specimen of use.
Applicant submitted the following specimen with its application (filed November 19,
2018) and resubmitted the same specimen on September 6, 2019, in its Response to
Office Action:

In the TEAS application, Applicant identified the specimen as “picture of
trademark phrase in use as a trailer wrap.” In its September 6, 2019 response to office
action, Applicant described the resubmitted specimen as the original specimen.
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Applicant also stated in its response that the “specimen submitted, originally
submitted, consists of a picture of the phrase in use as a trailer wrap” and that the
specimen is a picture of “the side of a trailer used to transport the goods in commerce.”
Response to Office Action at TSDR 1. Applicant argued that this type of specimen is
acceptable to demonstrate use of the mark in commerce because it is considered
commercial packaging for the goods, referencing the case, In re E.A. Miller & Sons
Packing Co., 225 USPQ 592 (TTAB 1985). Response to Office Action at TSDR 1.
In its appeal brief, Applicant submits that “the USPTO has approved prior truck
wrappings” as specimens of use. Applicant states that it “does not sell fruit or
vegetables,” instead, it “is a broker, and stores, ripens and maintains and then
delivers the fruit and vegetables [of others] to retail stores.” Applicant’s brief, 8
TTABVUE 5. Applicant states that the Examining Attorney’s view of its specimen is
too narrow a view and lacks understanding of its business. Id. Applicant reiterates
that its “business has nothing to do with selling fruit” and that “it is a broker who
delivers other’s fruit and vegetables.” Id.
The Examining Attorney argues that
Based on Applicant’s own statement, Applicant is not
providing fruit and vegetables as a product, but is instead
providing brokerage, storage, distribution, and related
services in the field of fruits and vegetables. The provided
specimen could not and does not demonstrate a connection
between the mark and Applicant’s goods because Applicant
itself has now stated in the record that it is providing
services, not goods.
Examining Attorney’s brief, 10 TTABVUE 10.
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The Examining Attorney also argues that even if Applicant were offering fruits
and vegetables, the trailer wrap would not be an acceptable specimen for those goods.
The Examining Attorney submits that Applicant has not submitted evidence that a
trailer wrap is a “normal mode of use for the goods at issue.” Id. at 11. The Examining
Attorney points to the evidence in the record that shows that common packaging for
fruits and vegetables is a label or wrapper on the produce itself. See September 18,
2019 Office Action at TSDR 2-8, 11-19, 23-24, 26-27, 29-31, 33, 41, 43-51, 54, 57, 59-
62.
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a trademark is used in
commerce when “it is placed in any manner on the goods or their containers or the
displays associated therewith or on the tags or labels affixed thereto, or the nature of
the goods makes such placement impracticable, then on document associated with
the goods or their sale ....” See Trademark Rule 2.56(b)(1), 37 C.F.R. § 2.56(b)(1) (“A
trademark specimen is a label, tag, or container for the goods, or a display associated
with the goods. The Office may accept another document related to the goods or the
sale of the goods when it is impracticable to place the mark on the goods, packaging
for the goods, or displays associated with the goods.”).
In assessing the specimens, consideration must be given not only to the
information provided by the specimen itself, but also to any explanations offered by
Applicant clarifying the nature, content, or context of use of the specimen that are
consistent with what the specimen itself shows. See e.g., In re Osterberg, 83 USPQ2d
1220, 1224 (TTAB 2007) (finding that applicant’s mere statement in a signed
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declaration that copies of the web page were distributed at sales presentation lacked
sufficient detail to transform the web page from an advertisement into a display
associated with the goods). Thus, in assessing the acceptability of materials which
have been submitted as specimens of use, the facts and surrounding circumstances
must be fully evaluated to determine the acceptability of the preferred specimens.4
A specimen showing use of the trademark on a vehicle in which the goods are
marketed to the relevant purchasers may constitute use of the mark on a container
for the goods, if this is the normal mode of use of a mark for the particular goods.
TMEP Section 904.03(c). In E.A. Miller & Sons, the Board found that
[T]he trademark purpose is fulfilled when the wholesaler
accepts delivery of appellant’s beef from the refrigerated
trailer plainly marked MILLER’S OF UTAH BLUE
RIBBON BEEF on the exterior panel of the trailer. Both
the function of identifying source and the guarantee
function of the trademark are fulfilled in the transaction at
this point in the same way as terms function as trademarks
when placed on exterior packages of products ordered out
of a mail order catalogue. The attachment by means of
painting on the exterior panels of the trailer is reasonably
permanent, visible, and placed so that the purchasers of
appellant’s goods can readily identify the origin of the
butchered beef. . . . There is little question that appellant’s
refrigerated trailers serve primarily as transportation and
secondarily as storage of its goods under refrigeration, . . .
where the container, the refrigerated trailer, is an essential
part of the total marketing transaction between appellant
and the purchasers of its butchered beef.
225 USPQ at 597-99.

4 Although Applicant mentions the approval of other applications showing use in connection
with trailer wrap, each case must be decided on its own set of facts. In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Prior determinations of registrability
by Examining Attorneys, involving different marks for the same or similar goods, are not
controlling in this case.
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The Examining Attorney’s evidence shows that common packaging for fruits and
vegetables is a label or wrapper on the produce itself, and Applicant has not
established that a trailer with a wrap is a common manner of use of a trademark for
fresh vegetables or fresh kale. Moreover, Applicant indicates that it stores,
maintains, and delivers the goods, but it does not take ownership of the goods, which
always remain the property of the growers or their customers. Applicant’s dominion
over the goods is that of a bailee confined to the specific task to store, maintain and
transport the goods, without title passing to Applicant. Such use of the mark in
connection with the refrigerated trailer wrap would not be trademark use in
connection with the goods because the container used for transportation has no part
to play in the trade or marketing of the produce. This informs the analysis, and differs
considerably from the situation in E. A. Miller & Sons, 225 USPQ at 598-99 (valid
trademark usage for container for goods where the transportation was deemed part
of the marketing transaction between seller and purchaser).
Therefore, we conclude that Applicant’s trailer wrap specimen is not acceptable to
show trademark use on fresh vegetables and fresh kale.
Decision: The Section 2(d) refusal and the Section 1 and 45 specimen refusal are
affirmed.