Del Campo Y Asociados, S.A. de C.V.

Trademark Trial and Appeal Board

Sep 28, 2007

No. 76633971 (T.T.A.B. Sep. 28, 2007)

Mailed: September 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Del Campo Y Asociados, S.A. de C.V.
________

Serial No. 76633971
_______

David B. Kirschstein of Kirschstein, Ottinger, Israel &
Schiffmiller, P.C. for Del Campo Y Asociados, S.A. de C.V.

Paula B. Mays, Trademark Examining Attorney, Law Office 106 (Mary
I. Sparrow, Managing Attorney).
_______

Before Hairston, Holtzman and Kuhlke, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Del Campo Y Asociados, S.A.
de C.V. (applicant) to register the mark shown below for goods
ultimately identified as "organic fresh round tomatoes" in Class
31.1

1 Serial No. 76633971, filed March 11, 2005, based on an allegation of
a bona fide intention to use the mark in commerce.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 76633971
2

The phrase "DEL CAMPO" is translated in the application as
"from the fields."
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the mark DEL CAMPO (typed form) registered on the Principal
Register for "canned goods, namely vegetables, hearts of palm,
and tropical fruits" in Class 29 and "tropical fruit nectars" in
Class 32, as to be likely to cause confusion.2 The term "DEL
CAMPO" is translated in the registration as "from the fields."
When the refusal was made final, applicant appealed. Briefs
have been filed.
As a preliminary matter, we note that the examining attorney
states in her final action, and applicant states in its appeal
brief, that the word ORGANICS has been disclaimed. However, we
can find no such disclaimer in the record. Nevertheless, since
applicant has, in effect, agreed to disclaim the word, and since,
as will be discussed later in this decision, ORGANICS is generic

2 Registration No. 1960775; issued March 5, 1996; affidavits under 8
and 15 accepted and acknowledged.
Serial No. 76633971
3
for the identified goods and a disclaimer of that word is
appropriate, the disclaimer of ORGANICS will be entered in the
application.
We turn then to the merits of this case. Our determination
under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We consider first the goods, keeping in mind that the
question of likelihood of confusion is determined on the basis of
the identification of goods as set forth in the application and
registration, without limitations or restrictions that are not
reflected therein. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed.
Cir. 1990).
Applicant argues, pointing to the definition of "tomato" in
The American Heritage Dictionary of the English Language,3 that

3 Although applicant did not supply a copy of the entry from the
dictionary, we take judicial notice that "tomato" is defined in that
Serial No. 76633971
4
tomatoes are fruits, not vegetables, and further, that canned
products, including canned vegetables, are different from fresh
produce, such as fresh tomatoes.
To begin with, the question is not whether purchasers can
differentiate the goods, but rather whether purchasers are likely
to confuse the source of the goods. See Helene Curtis Industries
Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Thus,
goods need not be similar or competitive in nature to support a
finding of likelihood of confusion. Id. It is sufficient if the
respective goods are related in some manner and/or that the
conditions surrounding their marketing are such that they would
be encountered by the same persons under circumstances that
could, if similar marks are used thereon, give rise to the
mistaken belief that they emanate from or are associated with,
the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
Furthermore, the entry for "tomato" in The Columbia
Encyclopedia (2004)4 makes it clear that a tomato is, in fact,
considered both a fruit and a vegetable:

dictionary as "1a. A widely cultivated South American plant
(Lycopersicon esculentum) having edible, fleshy, usually red fruit. b.
The fruit of this plant." From the website credoreference.com. The
Board may take judicial notice of dictionary definitions, including
online dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).

4 From the website credoreference.com. We take judicial notice of this
reference.
Serial No. 76633971
5
...[The tomato] was reintroduced to the United States as a
food plant c.1800 and now ranks third among our vegetable
crops. It is very popular as a salad vegetable, yet three
quarters of the crop is processed into juice, canned
tomatoes, soups, catsup, and tomato pastes. It is the most
widely used canned vegetable. ... Technically the tomato is
a fruit, although it is commonly considered a vegetable
because of its uses. .... (Emphasis added.)

It can also be seen from this evidence that fresh tomatoes
are frequently processed into canned tomatoes. These are not
different goods; they are simply different forms of the same food
products. Registrant's "canned vegetables" which, as identified,
are not limited to any particular type of vegetable, must be
deemed to include canned organic tomatoes. See, e.g., Packard
Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352 56 USPQ2d 1351,
1355 (Fed. Cir. 2000) ("Packard's registration broadly describes
electronic data processing, and contains no restrictions limiting
the services to electronic transmission of data to provide
commercial printing services."). We find that applicant's fresh
organic tomatoes and registrant's canned version of the identical
products are very closely related goods.5

5 The arguments by applicant and the examining attorney concerning the
normal areas of expansion for registrant are not relevant. As the
Board observed in In re 1st USA Realty Professionals, Inc.
____USPQ2d_____ , Serial No. 78553715 (TTAB August 7, 2007), "the
concept of expansion of trade is generally addressed in the context of
the issue of priority in an inter partes proceeding." Priority of use
is not an issue in an ex parte proceeding. See In re Calgon
Corporation, 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971). As explained
in 1st USA, the doctrine, in an ex parte context, essentially requires
application of the traditional related goods and services analysis.
Serial No. 76633971
6
There is no question that the respective food products would
be sold in the same channels of trade, such as grocery stores.
Furthermore, the fact that fresh tomatoes and canned vegetables,
as applicant points out, may be found in different sections of
the grocery store is not significant since the two products can
be purchased in the same stores, by the same purchasers, often at
the same time, during the same shopping trip. Furthermore, these
products are inexpensive, frequently replaceable food items that
are likely to be purchased on impulse. It has often been stated
that purchasers of such products are held to a lesser standard of
purchasing care and, thus, are more likely to be confused as to
the source of the goods. See Specialty Brands, Inc., 748 F.2d
669, 223 USPQ 1281 (Fed. Cir. 1984); and In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984). It is clear that purchasers would be likely to be
confused as to the source of these products if they are offered
under similar marks.
We turn then to the marks. In determining the similarity or
dissimilarity of marks, we must consider the marks in their
entireties in terms of sound, appearance, meaning and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While
marks must be compared in their entireties, one feature of a mark
may have more significance than another, and in such a case there
Serial No. 76633971
7
is nothing improper in giving greater weight to the dominant
feature. See In re National Data Corp., 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985).
When we compare applicant's mark DEL CAMPO ORGANICS and
design with registrant's mark DEL CAMPO in their entireties,
giving appropriate weight to the features thereof, we find that
the differences in the marks are far outweighed by their
similarities.
The phrase DEL CAMPO is registrant's entire mark. The
identical phrase DEL CAMPO is the dominant portion of applicant's
mark. Although applicant's mark also includes the word ORGANICS,
that word is given little weight in our comparison of the marks
because it is generic for the goods and of no significance as an
indication of source.6 See In re National Data Corp., supra at
751 ("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."). Furthermore, it is the wording DEL CAMPO, rather than
the design element in applicant's mark, that is more likely to

6 Applicant's identification of goods expressly states that the
tomatoes are "organic." In addition, we take judicial notice of the
dictionary definition of "organic" as meaning "of, marked by, or
involving the use of fertilizers or pesticides that are strictly of
animal or vegetable origin: organic vegetables; an organic farm."
(Italics in original.) The American Heritage Dictionary of the
English Language, supra. The examining attorney submitted a
definition of "organic" with her appeal brief; however, it is not clear
whether that dictionary exists in printed format.
Serial No. 76633971
8
have a greater impact on purchasers and be remembered by them.7
See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983) ("in a composite mark comprising a design and words,
the verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed."). The word
portion of a composite word and design mark is generally accorded
greater weight because it is used to call for and refer to the
goods. See, e.g., In re Dixie Restaurants Inc., 105 F.3d 1405,
1407, 41 USPQ2d 1531 (Fed. Cir. 1997). See also In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Because the term DEL CAMPO, which is registrant's entire
mark, and DEL CAMPO, the dominant portion of applicant's mark are
identical, the marks are similar in sound. See Giant Food, Inc.
v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983) ("Another factor weighing heavily in our
decision is that the dominant portion of both parties' marks
sounds the same when spoken.").

7 Applicant's reliance on In re Electrolyte Labs, Inc., 929 F.2d 645,
16 USPQ2d 1239 (Fed. Cir. 1990) is misplaced. That case involved
composite marks featuring letters which, as the Court noted, can be
close to design marks and therefore may or may not be vocalized. Here,
we are dealing with a composite mark that features a clearly
identifiable and pronounceable word. Another case cited by applicant,
Omaha National Bank v. Citibank (South Dakota), N.A., 633 F.Supp. 231,
229 USPQ 51 (D. Neb. 1986), is similarly unpersuasive. The court made
no finding as to the similarity or dissimilarity of the word portions
of the marks in that case and, in any event, that case does not compel
a finding that the design in this case is sufficient to distinguish the
marks.
Serial No. 76633971
9
The marks are also similar in appearance. The word ORGANICS
appears in somewhat larger lettering than DEL CAMPO, and
applicant argues that its "prominence" in the mark should be
considered. However, that word is generic and, in any event, the
difference in size is not that substantial. DEL CAMPO, although
smaller than ORGANICS, is still a visually significant part of
the mark. The design element in applicant's mark, which
applicant describes as a tomato vine, is not sufficient to
distinguish one mark from the other. As we noted, it is the
literal portion of a mark, rather than the design component,
which is more likely to be recalled by purchasers, and this
design is not so significant that it detracts from the visual
impact of DEL CAMPO.
Further, the marks convey a similar, if not the same,
meaning and commercial impression in relation to the respective
goods. The phrase, DEL CAMPO which is translated as "from the
fields" in both marks suggests the fresh quality of the food
products. The design of the tomato vine in applicant's mark
reinforces this image. Moreover, the word ORGANICS does not
change the commercial impression of DEL CAMPO, alone. The term
simply informs applicant's customers that this is an "organic"
product.
Applicant argues that the registered mark DEL CAMPO "is used
frequently in trademarks for food" and that the term is therefore
Serial No. 76633971
10
entitled to a limited scope of protection. In support of this
contention, applicant has submitted nine third-party
registrations for marks that consist of or include the phrase DEL
CAMPO or some variation of that phrase.8
Contrary to applicant's contention, third-party
registrations are not evidence of use, and merely because other
marks containing the term exist on the register does not mean the
public could distinguish the two marks at issue here. Further,
while third-party registrations may be given some weight to show
a mark's meaning in same way that dictionaries are used, the
registrations in this case are unpersuasive.9 For the most part,
the registrations are for dissimilar marks and/or marks which
create commercial impressions that differ from the commercial
impression of the cited mark. For example: Reg. No. 3211598 for
the mark CAMPO DEL DRAGO for wine, translated as "field of the
dragon"; Reg. No. 2828551 for the mark CASA DE CAMPO for wine,
translated as "house of the village"; and Reg. No. 2829791 for

8 Applicant also submitted two third-party applications. However,
applications are not probative of anything except that they were filed
on a certain date. We note that several of the third-party
registrations were submitted by applicant for the first time with its
appeal brief. However, because the examining attorney did not object
to the timeliness of this evidence, we have considered these
registrations as properly of record.

9 Unlike Puma-Sportschuhfabriken Rudolf Dassler K.G. v. Superga S.p.A.,
210 USPQ 316 (TTAB 1980) and General Mills Inc. v. Health Valley Foods,
24 USPQ2d 1270 (TTAB 1992) on which applicant relies, there is no
evidence in this record of third-party use of DEL CAMPO, let alone
evidence of widespread use.
Serial No. 76633971
11
the mark DE MI CAMPO for processed herbs, translated as "from my
fields." Arguably relevant registrations are Reg. No. 3011669
for the mark DEL CAMPO for seasonings, translated as "from the
fields"; Reg. No. 2361025 for the mark DEL CAMPO for cheese,
translated as "in the field" or "of the field"; and Reg. No.
2978839 for the mark SABOR DEL CAMPO for dry beans, peas and
lentils, translated as "taste of the field." However, the
existence of a few registrations is insufficient to show that DEL
CAMPO has been frequently registered for its suggestive meaning
or that it would have a readily understood meaning to consumers.
Nevertheless, even without the third-party registrations, it
is apparent that DEL CAMPO is somewhat suggestive of registrant's
goods, and therefore not entitled to the broadest scope of
protection. However, the mark is at least entitled to protection
from registration of applicant's very similar mark for closely
related goods. See In re Colonial Stores, Inc., 216 USPQ 793
(TTAB 1992). See also King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of
confusion is to be avoided as much between weak marks as between
strong marks).
In view of the foregoing, and because highly similar marks
are used in connection with closely related goods, we find that
confusion is likely.
Serial No. 76633971
12
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.