Exotimex S.A. de C.V.

Trademark Trial and Appeal Board

Mar 25, 2008

No. 76660787 (T.T.A.B. Mar. 25, 2008)

Mailed: March 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Exotimex S.A. de C.V.
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Application No. 76660787
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Myron Amer of Myron Amer, PC, for applicant.

Ronald L. Fairbanks, Examining Attorney, Law Office 117
(Loretta C. Beck, Managing Attorney).
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Before Zervas, Mermelstein, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Exotimex S.A. de C.V. filed an application to register
the following mark on the Principal Register? for “boxed
fresh limes” in International Class 31:1

The examining attorney issued a final refusal to
register under Trademark Act § 2(d), 15 U.S.C. § 1052(d), on

1 Filed May 30, 2006, based upon an allegation of first use and
use in commerce of January 1, 2006. Applicant has disclaimed the
exclusive right to use “produce” apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Application No. 76660787
2
the ground that applicant’s mark so resembles the mark JADE
(in standard characters) previously registered2 for
fresh fruits and vegetables, not including
alfalfa, chewings fescue, common vetch, field
corn, rape, soybean, St; [sic] Augustinegrass,
sugar beet, sunflower, wheat, broadbean, chicory,
cornsalad, garden bean, lettuce okra, parsley,
pea, pepper, spinach, squash, and watermelon,

that it would, if used on or in connection with the
identified goods, be likely to cause confusion, to cause
mistake, or to deceive.
Applicant appealed the final refusal to register. Both
applicant and the examining attorney have filed briefs. We
affirm.
I. Applicable Law
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing
on the likelihood of confusion. See In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973);
see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by

2 Registration No. 3053337, issued January 31, 2006.
Application No. 76660787
3
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re
Azteca Rest. Enter., Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Record on Appeal
Relevant to the refusal to register,3 the examining
attorney submitted nine trademark registrations to show a
relationship between the applicant’s goods and the goods in
the cited registration. One of these is owned by
applicant,4 and the remainder by third parties. In
addition, the examining attorney requests in his brief that
we take judicial notice of the definition of “lime” as “the
small globose yellowish green fruit of a widely cultivated
spiny tropical Asian citrus tree (Citrus aurantifolia) with
a usually acid juicy pulp used as a flavoring agent and as a
source of vitamin C.” MERRIAM-WEBSTER DICTIONARY (online
version) http://www.m-w.com/dictionary.
In support of registration, applicant submitted two
declarations of its Chief Executive Officer, Laurent
Chabres, dated January 8, 2007, and May 21, 2007, as well as
pictures of a box bearing the applied-for mark. In its

3 The examining attorney had also refused registration on the
ground that “jade” is a varietal name for the identified goods.
That ground for refusal was withdrawn following amendment to
applicant’s identification of goods.
4 Registration No. 3226536, issued April 10, 2007, for the mark
Application No. 76660787
4
reply brief, applicant cited a definition of “fresh
vegetables” in its reply brief as “...not artificially
preserved ... fresh vegetables ....” Applicant cites “The
World Book Dictionary, a THORNDIKE-BARNHART DICTIONARY” for
this definition. While not explicitly requested, we
construe this citation as a request for judicial notice.
The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983), including online dictionaries
that exist in printed format or have regular fixed editions.
In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Nonetheless, judicial notice is not appropriate in all
situations. As a general matter,
A judicially noticed fact must be one not subject
to reasonable dispute in that it is either (1)
generally known within the territorial
jurisdiction of the trial court or (2) capable of
accurate and ready determination by resort to
sources whose accuracy cannot reasonably be
questioned.

Fed. R. Evid. 201(b). “A court shall take judicial notice
if requested by a party and supplied with the necessary
information.” Fed. R. Civ. P. 201(d)(emphasis added).
Because the examining attorney’s request was
appropriate, we grant his request for judicial notice of the
definition of “lime.” On the other hand, applicant

NATURY for “fresh fruits and vegetables, including limes.”
Application No. 76660787
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furnished neither a copy of the definition nor an indication
of where it can be found electronically, and the excerpt
quoted in applicant’s reply brief provides virtually no
context for the statement. Applicant’s request for judicial
notice is accordingly denied. Nonetheless, we accept the
general proposition that a fresh vegetable is one that is
“not artificially preserved.”
III. Discussion
A. Similarity of the Marks
Applicant states the issue to be decided on appeal as
whether the goods of Registration No. 3,053,337
and the goods of the application, alleged by the
Examining Attorney to be related, and, based on
such allegation of being related, travel through
the same channels of trade to the ultimate
consumer....

App. Br. at 1.
Applicant makes no mention of the similarities or
differences of the marks in either its main brief or its
reply, apparently conceding the issue. In any event, we
find the marks highly similar for purposes of our analysis.
Applicant’s mark is JADE PRODUCE and design. While we
must consider the marks in their entireties, we agree with
the examining attorney that JADE is the dominant portion of
applicant’s mark. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985)(“there is nothing
improper in stating that, for rational reasons, more or less
Application No. 76660787
6
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of
the marks in their entireties”). The disclaimed term
“produce” carries little source-identifying significance, as
it is descriptive or generic for the identified goods. In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997). Moreover, when a mark consists of
words and a design, it has often been said that the literal
portion of the mark is more significant, because it is the
words which will be used in calling for the goods or
otherwise referring to them. E.g., In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). In
addition, the word JADE in applicant’s mark is visually the
largest portion of the mark, and therefore most likely to
create an impression in the mind of the consumer.
The mark in the cited registration is JADE, which is
identical to the dominant element in applicant’s mark. The
cited mark is in standard character form, and could thus be
used in any form, including one similar to the word “jade”
in applicant’s mark. Given these similarities, purchasers
of these goods may well believe that applicant’s words and
design mark are merely a different version of the prior
registrant’s mark.
Application No. 76660787
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Considered as a whole, we find applicant’s mark
substantially similar to that of the prior registrant, a
factor which supports the refusal to register.
b. Similarity of the Goods
Applicant’s goods are identified as “boxed fresh
limes,” while the cited mark is registered for “fresh fruits
and vegetables,” excluding a number of items. The examining
attorney’s definition of “lime” makes clear the obvious,
namely, that a lime is a fruit. Because a fresh lime is a
fruit, it is necessarily included in the prior registrant’s
“fresh fruits and vegetables.” Accordingly, we find
applicant’s goods to be included within the scope of the
cited registration, and to that extent, legally identical.5
Nonetheless, applicant argues that we should find these
goods unrelated, citing statements from the declaration of
applicant’s CEO:
2. I participated in the selection of the
packaging of the firm’s boxed fresh limes
and, being an imported product, recognized
the need for proper handling in transit that
the selected packaging be able to withstand
the abuse of the handling that would be
involved;

5 The third party registrations submitted by the examining
attorney were unnecessary to show that “boxed fresh limes” and
“fresh fruits and vegetables” are related, because, as noted, the
goods are in part identical. Nonetheless, to the extent
applicant argues that “fresh fruits and vegetables” does not
include fresh limes, the third-party registrations clearly
demonstrate that this is incorrect. See, e.g., Registration Nos.
1360907, 2533840, 2969375, 3190784 (“fresh fruits and vegetables
namely, ... limes”). Indeed, Registration No. 3226536, owned by
applicant, identifies its goods as “fresh fruits and vegetables,
including limes.”
Application No. 76660787
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3. what was selected was cardboard construction
material made of cellulose wood pulp fibers
held together with adhesive binder which
manifests itself in a gray color;

4. I was made aware of the goods of Reg. No.
3,053,337 generally for “fresh fruits and
vegetables” but not including a large list of
exceptions and asked to provide my comments;

5. it is my experience that based on the
exceptions and also taking into account our
firm’s packaging, that boxed fresh limes
would be included in the exceptions and not
in the “fresh fruits and vegetables,” and
thus I earnestly believe that applicant’s
imported boxed limes and registrant’s
domestically grown fruits, which stated to
include limes, in my experience would not
include fresh limes and do not travel through
the same channel of trade to the ultimate
consumer, nor are they displayed on the same
shelves in the same section of a retail store
so as to be likely to be encountered by a
purchaser shopping for imported, on the one
hand, and domestically grown, on the other
hand, citrus products....

Chabres Decl. (May 21, 2007).
Mr. Chabres’ declaration is not persuasive, because it
is apparently based on a number of misunderstandings.
First, Mr. Chabres’ comments about the type and color of
applicant's packaging (also made in the January 8, 2007,
declaration) are irrelevant. Applicant has not applied to
register a particular configuration or color of a box; the
only mark at issue is that in the drawing, and we may not
base our decision on any other mark or trade dress.
Next, Mr. Chabres opines – based on the exclusions from
the “fresh fruits and vegetables” identified in the prior
Application No. 76660787
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registration – that applicant’s “boxed fresh limes” would
not be included within the scope of the prior registrant’s
goods. Mr. Chabres does not explain how he arrives at this
conclusion, but it is logically incorrect. None of the
exclusions in the registration includes limes, so the
exclusions cannot provide a basis for this argument.
Further, Mr. Chabres compares “applicant’s imported
boxed limes and registrant’s domestically grown fruits.”
(emphasis added). But neither applicant’s nor registrant’s
goods are so limited. Even if Mr. Chabres’ statement were
supported by the evidence – and it is not – we must construe
applicant’s and registrant’s goods as including both
domestic and imported goods. In re Bercut-Vandervoort &
Co., 229 USPQ 763, 764 (TTAB 1986)(registrant’s goods may
not be limited by evidence or argument).
Mr. Chabres also asserts that applicant’s goods and
those of the prior registrant would travel in different
channels of trade. Again, there is no evidence to support
this fact, and even if there were, we may not read such
restrictions into an application.
Lastly, we note the argument made in applicant’s reply
brief. Seizing on a rhetorical flourish in the examining
attorney’s brief,6 applicant argues that

6 Examining Atty. Br. at 6:
The registrant’s identification makes no mention
of whether its fresh fruits and vegetables are
Application No. 76660787
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[w]hat should have been made of record was the
dictionary definition of FRESH VEGETABLES
(Fruits)(underlining added) which is the full
description of Registrant’s goods.

Such full definition as provided in The World
Book Dictionary, a THORNDIKE-BARNHART DICTIONARY
is “...not artificially preserved ... fresh
vegetables....”

A lime is neither a vegetable nor a fruit
that would be perceived by a purchaser as an
article for purchase at a roadside produce stand
because “the acid juicy pulp” thereof is not
artificially preserved.

Applicant’s point is unclear, but whether a lime would
be sold at a roadside stand seems to us to have minimal
relevance, at best.
We conclude that applicant’s goods, channels of trade,
and classes of consumers, are legally identical to those of
the cited registrant, and that these du Pont factors
strongly support the refusal to register.
IV. Conclusion
After careful consideration of the evidence and
argument of record, we conclude that in view of the similar
marks and the identical goods at issue, applicant’s use of
its mark in connection with “boxed fresh limes” is likely to
cause confusion as to the source or sponsorship of such
goods.

domestically grown, imported, boxed or bagged. A
lime, whether boxed or sold at a roadside produce
stand, is a fruit and would be found in the same
channels of trade as the registrant’s goods.
Application No. 76660787
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Decision: The refusal to register under Trademark Act
§ 2(d) is AFFIRMED.