Concord Business Inc.

Trademark Trial and Appeal Board

Mar 23, 2021

87806964 (T.T.A.B. Mar. 23, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Concord Business Inc.
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Serial No. 87806964
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Vivian Ortiz Ponce of Marcas Estados Unidos for Concord Business Inc.

Faith Beaudry-Torres, Trademark Examining Attorney, Law Office 126,1
Andrew Lawrence, Managing Attorney.
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Before Zervas, Wolfson, and Johnson,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Concord Business Inc. (“Applicant”) seeks registration on the Principal Register
of the mark depicted below:

1 In this proceeding, Ms. Beaudry-Torres represented the Office with respect to the
application at briefing. Examining Attorneys Sara Anne Helmers and Alexandra K. Chaffin
were responsible for the application during prosecution.
Serial No. 87806964
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for “downloadable mobile applications for the users to create profiles where they can
save and share with friends and followers their favorite places to eat around the world
and post pictures and notes for each place,” in International Class 9.2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the registered standard character mark YUMMI for goods identified in
relevant part as “downloadable mobile applications for publishing and peer-to-peer
sharing of food images or descriptions of edible contents and recipes,” in International
Class 9,3 as to be likely, when used in connection with the goods identified in the
application, to cause confusion, to cause mistake, or to deceive relevant consumers.
Applicant appealed the Examining Attorney’s final refusal and filed a Request for
Reconsideration. Following the Examining Attorney’s denial of Applicant’s Request
for Reconsideration, this appeal resumed. The Office then re-assigned the
application, and the Board granted the newly assigned Examining Attorney’s request
for remand to allow her to introduce new evidence. This appeal resumed following the

2 Application Serial No. 87806964 was filed on February 22, 2018 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. The mark is described as “an orange cartoon creature with
black outer border, black eyes with a white small circle and a small gray circle in each eye
and a black open mouth with two white teeth and a pink tongue. Below the cartoon appears
the word ‘YUMME’ in black stylized letters.” The colors black, orange, white, pink, and gray
are claimed as a feature of the mark.
3 Registration No. 5201048, issued on May 9, 2017. The registration includes additional Class
9 goods, as well as services in International Classes 42 and 45.
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issuance of an Office Action (to which no response was due) introducing the new
evidence.4
Applicant and the Examining Attorney have filed briefs.5 We affirm the refusal 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.
§ 1052(d). Our determination 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”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003).
The Board considers only those DuPont factors for which there is evidence and
argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed.

4 The Board, in its December 27, 2019 order granting the Examining Attorney’s request for
remand, indicated that in any subsequent final Office Action, the six-month response clause
should be omitted. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 1207.02. Accordingly, upon issuance of the January 29, 2020 Final Office Action, the file
was returned to the Board.
5 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page number(s) of the docket entry where the cited materials
appear. Citations in this opinion to the application record are to pages in the Trademark
Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark
Office (“USPTO”).
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Cir. 2019); see also Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d
994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (“Not all DuPont factors are relevant in
each case . . . .”). Two key considerations are the similarities between the marks and
the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1945 (Fed. Cir. 2004); 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.”).
A. Similarities of the Marks; Strength of Registrant’s Mark
Under the first DuPont factor, we compare the marks “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imps. v.
Veuve Cliquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Inn at
St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx.
516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We
assess not whether the marks can be distinguished in a side-by-side comparison, but
rather whether their overall commercial impressions are so similar that confusion as
to the source of the goods offered under the respective marks is likely to result. Coach
Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
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Registrant’s mark YUMMI is in standard characters and Applicant’s mark is a
composite of the term YUMME and a design. The marks are similar in appearance
and pronunciation as four of the five letters in the literal portions of the marks are
identical and in the same letter order. The only difference in the lettering of the marks
is that Applicant’s mark includes an “I” as the fifth letter while Registrant’s mark
includes an “E” as the fifth letter. Although Applicant’s mark contains a design
element, when evaluating a composite mark consisting of words and a design, the
word portion is normally accorded greater weight because it is likely to make a
greater impression upon purchasers, be remembered by them, and be used by them
to refer to or request the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1911 (Fed. Cir. 2012) (“the literal component of brand names likely will appear alone
when used in text and will be spoken when requested by consumers”); Joel Gott
Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (“In the
case of marks consisting of words and a design, the words are normally given greater
weight because they would be used by consumers to request the products.”).
Consumers are likely to perceive Applicant’s mark as the depiction of an orange
cartoon creature named “Yumme,” and be more likely to remember the mark as
YUMME. Moreover, because Registrant’s mark is in standard characters, Registrant
is free to use its mark in the cursive font style of the word “yumme” in Applicant’s
mark, thus potentially increasing the similarity between the marks. In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018).
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Although neither term (YUMME or YUMMI) are English words, both marks
conjure up the word “yummy,” an English word that is found in the Merriam-Webster
Dictionary.6 Consumers are likely to perceive both YUMME and YUMMI as
misspellings of YUMMY. Because “yummy” means “highly attractive or pleasing,
especially delicious, delectable,” since the marks identify mobile applications with a
focus on food, the marks convey similar connotations and similar overall commercial
impressions.
Applicant argues that the Examining Attorney is trying to grant the cited
registered mark a “monopoly of all words that may sound like YUMMY.” 9 TTABVUE
7. Applicant’s argument accomplishes very little because likelihood of confusion is
determined on the basis of the goods set forth in Applicant’s application and
Registrant’s registration. “Registrability of a mark is always considered in
conjunction with the identified goods or services, for an applicant cannot obtain rights
in a mark in the abstract, only in connection with specified goods or services.” In re
ALP of S. Beach, Inc. 79 USPQ2d 1009, 1019 (TTAB 2006). To hold otherwise “would
result in recognizing a right in gross, which is contrary to principles of trademark
law.” Univ. of Notre Dame du Lac v. J. C. Gourmet Food Imps. Co., Inc., 703 F.2d
1372, 217 USPQ 505, 507 (Fed. Cir. 1983), cited in In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1088 (TTAB 2016). Since registration does not grant monopoly rights, we give
Applicant’s argument no further consideration.

6 See merriam-webster.com/dictionary/yummy, accessed March 18, 2021. The Board may take
judicial notice of online dictionaries that exist in printed format. E.g., In re S. Malhotra &
Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018).
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Applicant argues that because “yummy” is associated with food, and the
Registrant’s mobile applications are focused on food, the cited mark YUMMI “is
clearly weak in the context of these goods.” 9 TTABVUE 7. Applicant has not
supported its assertion with any evidence to show that “yummy” would be considered
weak, let alone that YUMMI would be taken as its equivalent in terms of strength.
Conceptually, because the cited mark issued on the Principal Register without a
claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
§1052(f), the registration is entitled to the presumption of validity provided for under
Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), including that the mark
YUMMI is inherently distinctive. Even if users of Registrant’s mobile application
share food images or describe food they depict as tasting “yummy,” the record does
not demonstrate that the term YUMMI would immediately convey, without
speculation or conjecture, any feature, characteristic, function, purpose or use of the
goods. Rather, the term YUMMI is arbitrary of a mobile application that allows users
to share images of food, recipes, or descriptions of edible contents of meals (both tasty
and bland).
With regard to the commercial strength of Registrant’s mark, in an ex parte
appeal, the owner of the cited registration is not a party, and the Examining Attorney
is under no obligation to demonstrate exposure to or recognition of the cited mark in
the marketplace. In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016).
For that reason, and because there is no evidence of record regarding the commercial
strength of the cited mark YUMMI, this consideration is neutral.
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Based on the totality of the record evidence, we find that the registered mark is
arbitrary, and thus inherently distinctive as applied to the identified goods. The mark
YUMMI is entitled to the normal scope of protection to which inherently distinctive
marks are entitled. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of
confusion fame varies along a spectrum from very strong to very weak).
Given their overall resemblance in appearance, sound, connotation and
commercial impression, we find Applicant’s mark and Registrant’s mark similar. This
DuPont factor favors a finding of likelihood of confusion.
B. Relatedness of the Goods
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir 2018) (quoting DuPont,
177 USPQ at 567). The goods need not be identical, but “need only be related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)).
Applicant identifies its goods as “downloadable mobile applications for the users
to create profiles where they can save and share with friends and followers their
favorite places to eat around the world and post pictures and notes for each place,”
while the cited registration identifies “downloadable mobile applications for
Serial No. 87806964
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publishing and peer-to-peer sharing of food images or descriptions of edible contents
and recipes.”
The Examining Attorney argues that “[s]ince applicant’s and registrant’s mobile
applications are not limited to – nor exclude – the field of restaurants, . . . registrant’s
identification of goods is broad enough to encompass applicant’s goods[.]” 18
TTABVUE 10. We agree with the Examining Attorney. Applicant’s mobile
applications are designed for “users to create profiles.” Registrant’s mobile
applications are designed for “publishing and peer-to-peer sharing,” which includes
sharing by users who have created profiles on the application. Moreover, Applicant’s
broadly worded description of “post pictures” encompasses Registrant’s more
narrowly worded “sharing of food images.” Where the description of goods in an
application or registration broadly identifies the products, we must presume that the
goods encompass all products of the type identified. See, e.g., In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”). The goods are in-part legally identical and
otherwise closely related.
Evidence of relatedness may include “copies of use-based registrations of the same
mark for both the applicant’s [goods] and the goods listed in the cited registration.”
In re Country Oven, Inc., 2019 USPQ2d 443903, *5 (TTAB 2019). The Examining
Attorney submitted copies of four third-party registrations7 for similar goods as those

7 Five were submitted but one has since been cancelled.
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of both Applicant and Registrant to show that they are of a kind that may emanate
from a single source under a single mark. January 8, 2019, Final Office Action, TSDR
pp. 2-15. Three of these are illustrative:
 Reg. No. 4493409 for the mark
for, inter alia, “computer application software for
mobile phones and tablet computers, namely,
software for obtaining recipes, food and beverage
information and restaurant reviews;”
 Reg. No. 4969289 for the mark for,
inter alia, “Downloadable software in the nature of
a mobile application for providing instruction,
information, text, audio and video content in the
fields of eating, drinking, cooking, food, ingredients,
alcohol, beverages, recipes, restaurants, chefs, bars
and the culinary arts;” and
 Reg. No. 4751746 for the mark SUGGESTIC for
“Downloadable mobile applications for restaurant
and meal recommendations, food recommendations,
nutritional recommendations, view, read and share
recipes,” in International Class 9.
In addition to third-party registrations, the Examining Attorney submitted
webpages showing that users of mobile applications post images of food on third-party
websites such as Yelp. For example:
At https://www.yelp.com/biz_photos/old-ebbitt-grill:8

8 Attached to January 29, 2020 Office Action at TSDR 4.
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and https://www.yelp.com/biz/founding-farmers:9

9 Id. at 3.
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.
These screenshots demonstrate that users of mobile applications post pictures of
food they order at favorite restaurants, as identified in Applicant’s identification of
goods, and engage in peer-to-peer sharing of food images, as identified in Registrant’s
identification of goods.
Applicant argues that its goods refer to restaurants “by definition.” 9 TTABVUE
8. “The concept ‘places to eat around the world’ can only be interpreted to refer to
restaurants. A place to eat is a restaurant.” 9 TTABVUE 8. In contrast, Applicant
asserts, Registrant’s mobile application “centers on food and recipes for home
cooking.” 9 TTABVUE 8. Contrary to Applicant’s argument, its mobile application is
not limited to pictures of restaurant food (one’s favorite place to eat may be one’s
home); even assuming that Applicant’s application is so limited, however, does not
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obviate the relatedness of the goods because Registrant’s “food images” may likewise
be of food sold in restaurants or cooked at home. Screenshots from Registrant’s
website illustrate that Registrant’s mobile application is used to share pictures of and
information about restaurants.10

10 At https://www.yummi.me/, attached to June 13, 2018 Office Action, TSDR 7.
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The record shows that downloadable mobile applications for users to “save and
share with friends and followers their favorite places to eat around the world and
post pictures and notes for each place,” are functionally equivalent to downloadable
mobile applications that enable “peer-to-peer sharing of food images.”
The second DuPont factor favors a finding of likelihood of confusion.
C. Trade Channels and Classes of Consumers
The third DuPont factor considers “the similarity or dissimilarity of established,
likely-to-continue trade channels.’” Id. at 1052 (quoting DuPont, 177 USPQ at 567).
See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161-63 (Fed. Cir. 2014).
Where, as here, the respective identifications list legally identical goods without
restrictions as to channels of trade or classes of purchasers, those legally identical
goods are presumed to travel in the same channels of trade to the same classes of
purchasers. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 USPQ2d
10914, *14 (TTAB 2020) (citing 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)); DeVivo v. Ortiz, 2020 USPQ2d 10153, *13
(TTAB 2020) (applying presumption to identical and closely-related goods) (citing
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002)).
The third DuPont factor favors a finding of likelihood of confusion.
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II. Summary
The marks are similar in sight, sound, meaning and overall commercial
impression and the goods are in-part legally identical and otherwise closely related.
Accordingly, they are presumed to travel in part through identical trade channels to
the same classes of prospective purchasers. Consumers familiar with the registered
mark YUMMI for downloadable mobile applications for “publishing and peer-to-peer
sharing of food images or descriptions of edible contents and recipes” who
subsequently encounter Applicant’s downloadable mobile applications for
users “to create profiles where they can save and share with friends and followers
their favorite places to eat around the world and post pictures and notes for each
place,” could easily believe, mistakenly, that Applicant’s goods are produced by, or
are affiliated with, Registrant.
Decision: The refusal to register is affirmed.