Creative Cookie, ETC, LLC

Trademark Trial and Appeal Board

Nov 26, 2003

No. 76301290 (T.T.A.B. Nov. 26, 2003)

Mailed:
November 26, 2003
Paper No. 12
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Creative Cookie, ETC, LLC
________
Serial No. 76301290
_______
Sherry H. Flax of Saul Ewing LLP for Creative Cookie, ETC,
LLC.
Georgia Ann Carty, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Hohein, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Creative Cookie, ETC, LLC seeks registration on the
Principal Register for the mark shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76301290
- 2 -
for “fortune cookies” in International Class 30.1
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
CREATIVE CROISSANTS, which is registered for “baked goods,
namely croissants, rolls, breads, muffins, buns, cookies
and pastries sold for consumption on or off the premises,”
also in International Class 30,2 as to be likely to cause
confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal but applicant did not request an
oral hearing.
We affirm the refusal to register.
Applicant contends that the United States Patent and
Trademark Office has registered numerous marks in
International Class 30 having the word “Creative” in the
marks; that applicant sells pre-packaged fortune cookies
through card and gift shops, so that the goods and channels
1 Application Serial No. 76301290 was filed on August 20,
2001 based upon applicant’s claim of use in commerce since at
least as early as December 1, 1979. Applicant has voluntarily
disclaimed the word “Cookie” apart from the mark as shown.
2 Registration No. 1562410, issued on October 24, 1989;
Section 8 affidavit accepted. The word “Croissants” is
disclaimed apart from the mark as shown.
Serial No. 76301290
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of trade are easily distinguishable; that registrant’s and
applicant’s respective goods have coexisted for almost
twenty years without any confusion; and finally, that the
Trademark Examining Attorney has not proven that the
registered mark is famous.
In turn, the Trademark Examining Attorney argues that
the marks are confusingly similar because the words
“cookie” and “croissants” are generic, applicant’s design
feature is not especially distinctive as applied to these
goods, and the one literal element used to call for both of
these goods is identical; that registrant’s goods include
“cookies,” which must be read to include “fortune cookies”;
and that applicant has failed to demonstrate that the word
“Creative” is weak as applied to these goods.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Serial No. 76301290
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When considering the relatedness of the respective
goods, we look first to registrant’s goods as listed in the
identification of goods in the cited registration. That
listing of “baked goods” includes “cookies.” Contrary to
applicant’s arguments, when analyzing this prong of the
Federated Foods pair of interrelated factors, the explicit
listing of “cookies” among the goods on which the mark is
used is in no way diminished by the fact that registrant’s
mark includes the word “Croissants.” Furthermore, even if
“fortune cookies” may not be the first image conjured up
for many consumers upon hearing the word “cookies,” we
agree with the position of the Trademark Examining Attorney
that registrant’s “cookies” must be read to include
“fortune cookies.” Accordingly, for purposes of our
likelihood of confusion analysis, the goods herein must be
deemed to be identical.
Applicant argues that it actually sells its pre-
packaged fortune cookies in card and gift shops. Hence,
applicant contends, consumers can easily distinguish its
goods from a variety of freshly-baked goods, and that
applicant is moving its goods through distinctly different
channels of trade than those used by registrant. However,
as noted by the Trademark Examining Attorney, neither
registrant nor applicant has placed any restrictions on how
Serial No. 76301290
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the goods are packaged or into which channels of trade the
goods are placed. As a result, in the absence of any
specific limitations, we must presume that both applicant’s
cookies and registrant’s cookies will be moving in all of
the usual channels of trade for such goods. In re Elbaum,
211 USPQ 639 (TTAB 1981).
We turn next to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound and connotation. As our
principal reviewing court, the Court of Appeals for the
Federal Circuit, has pointed out, “[w]hen marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). In summarizing her comparison of the
involved marks, the Trademark Examining Attorney argues
that these two marks are “substantially similar” as to
overall commercial impression.
While we compare the marks in their entireties, the
Court of Appeals for the Federal Circuit has also held that
in articulating reasons for reaching a conclusion on the
question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
Serial No. 76301290
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less weight has been given to a particular feature or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987), and In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). In this
vein, the Trademark Examining Attorney argues that inasmuch
as the words “Cookie” and “Croissants” are generic and
hence disclaimed, one should accord little weight to these
terms as distinguishing elements of the two marks. That
leaves the identical word “Creative” as the only remaining
literal element that would be used to call for both of
these goods. Moreover, the background image of a fortune
cookie in the mark herein, as applied to fortune cookies,
is to be accorded limited weight as a distinguishing
element of the composite mark.
Actually, applicant does not spend much time arguing
that these marks are not similar in overall commercial
impression. Rather, applicant argues that “the PTO [United
States Patent and Trademark Office] has registered numerous
marks containing the word ‘CREATIVE’ for goods in
International Class 30.” In support of its position that
there are “numerous marks” on the federal trademark
register, applicant has set forth in its brief a listing of
Serial No. 76301290
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five (5) third-party registrations containing the word
“CREATIVE” within composite marks where the mark is applied
to goods classified in International Class 30.
However, the Trademark Examining Attorney has
correctly objected to this proffer of evidence inasmuch as
applicant has not properly made copies of these
registrations part of the record and we have not considered
them as evidence in reaching our decision herein. The
Board does not take judicial notice of third-party
registrations and so the mere citation to such purported
registrations “is insufficient to make them of record.”
See In re Hub Distributing, Inc., 218 USPQ 285 (TTAB 1983)
and In re Duofold, Inc. 184 USPQ 638, 640 (TTAB 1974). The
proper procedure, instead, for making information
concerning third-party registrations of record is to submit
either copies of the actual registrations or the electronic
equivalents thereof, i.e., printouts of the registrations
which have been taken from the USPTO’s own computerized
database. See In re Consolidated Cigar Corp., 35 USPQ2d
1290, 1292 n. 3 (TTAB 1995); In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 n. 3 (TTAB 1994); and In re Melville
Corp., 18 USPQ2d 1386, 1388 n. 2 (TTAB 1991).
Nonetheless, even if we were to consider these third-
party registrations, it would clearly not change our
Serial No. 76301290
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decision. As noted by the Trademark Examining Attorney,
when carefully making her arguments in the alternative,
only three of the five registrations listed by applicant
are still live registrations. Of these three [CREATIVE
CREPES for “crepes,” CREATIVE CAKERY for “custom cakes,”
and THE CREATIVE INGREDIENT for “special food ingredients …
for the ice cream, bakery, confectionary and snack food
industries”], the listed goods are all distinctly different
from cookies. Moreover, in the latter two registrations,
the nature of the vendor’s interaction with the consumer is
different and/or the channels of trade are quite different
from those of registrant. Finally, as was correctly noted
by the Trademark Examining Attorney, these registrations do
not indicate actual use of the marks in the marketplace by
the respective registrants, and this Trademark Examining
Attorney cannot be held responsible for any actions taken
by other Trademark Examining Attorneys in earlier cases,
whose earlier judgments we cannot assess inasmuch as these
records are not before us herein.
We turn next to the length of time during and
conditions under which there has been contemporaneous use
without evidence of actual confusion. Applicant argues
that in considering the du Pont factors in this case, we
should consider that registrant’s and applicant’s
Serial No. 76301290
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respective goods have coexisted for almost twenty years
without any confusion. However, 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. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). Such evidence is not a part of this record.
Moreover, we have not had opportunity to hear from the
registrant on this point. Therefore, applicant’s claim
that no instances of actual confusion have been brought to
its attention is not indicative of an absence of a
likelihood of confusion, and we find that this factor
favors neither the position taken by applicant nor that of
the Trademark Examining Attorney.
Finally, we note applicant’s argument that the
Trademark Examining Attorney has not shown that the cited
marks is famous. It is true that given the nature of this
ex parte proceeding, we have no information about the fame
of registrant’s mark. Of course, neither is it incumbent
upon the Trademark Examining Attorney to make such a
Serial No. 76301290
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showing in this context. Because there is simply no
evidence either way as to this particular du Pont factor,
this factor favors neither the position taken by applicant
nor that of the Trademark Examining Attorney.
In conclusion, we find a likelihood of confusion
herein inasmuch as these two marks have the same overall
commercial impressions as applied to identical and
otherwise closely-related goods. We have no reason to
believe the cited mark is weak and hence should be accorded
a narrow scope of protection, nor, on the other hand, do we
have evidence that it is a famous mark. We also do not
find it determinative that applicant alleges almost two
decades of contemporaneous use without reports of actual
confusion.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is hereby affirmed.