Fry's International Holdings Pty Ltd.

Trademark Trial and Appeal Board

Jun 7, 2021

88629831 (T.T.A.B. Jun. 7, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 7, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Fry’s International Holdings Pty Limited
_____
Serial No. 88629831
_____
Gregory P. Gulia of Duane Morris LLP
for Fry’s International Holdings Pty Limited

Kristin Williams, Trademark Examining Attorney, Law Office 105,
Jennifer Williston, Managing Attorney.
_____
Before Cataldo, Lynch, and Lebow,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
Serial No. 88629831
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I. Background
Fry’s International Holdings Pty Limited (“Applicant”) seeks registration on the
Principal Register of the mark , with “FOOD CO,” “EST. 1991,”
and “PLANT PROTEINS” disclaimed, for the following goods:
Preserved, frozen, dried, and cooked fruits and vegetables;
Vegetable-based meat substitutes; Vegetarian prepared
meals consisting primarily of meat substitutes and
vegetables, namely, vegetarian burgers, vegetarian
sausages, chicken-style vegetarian meals, vegetarian
jerky, fish substitutes, and vegetarian pizza; Dairy-free
and egg-free vegan meals consisting primarily of meat
substitutes and vegetables; Milk substitutes, namely,
coconut milk, soy milk, almond milk, and rice milk; Dairy-
free yogurt; Vegan cheese; None of the foregoing covering
retail store services or grocery store services in
International Class 29; and
Vegan and vegetarian pies and pastries; Vegetarian
gravies and sauces, namely, plant-based vegan processed
sauces made from vegetables, grains, beans, sea
vegetables, and fruit; Processed buckwheat; Baked goods,
namely, bread, pastries, cookie dough, cookies, pizza, and
croissants; Edible ices; None of the foregoing covering
retail store services or grocery store services in
International Class 30.1

1 Application Serial No. 88629831 was filed September 25 2019, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on alleged use of the mark in commerce. The
application includes the following description: “The mark consists of a shaded triangle in the
upper portion of the mark, with the term ‘FRY'S’ overlaid on the triangle in stylized text, and
two concentric circles forming the bottom portion of the mark, with the term ‘THE FRY
FAMILY FOOD CO’ in the center of the circles, and the term ‘EST. 1991’ arranged vertically
Serial No. 88629831
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The Examining Attorney has refused registration under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with numerous previously
registered marks on the Principal Register that belong to the same owner. We focus
on the following cited registration, which we consider most relevant for the likelihood
of confusion analysis:
FRY’S in standard characters, with a claim of acquired
distinctiveness under Section 2(f), for “Retail grocery store
services” in International Class 35.2
We consider this registration most relevant because the other cited marks include
other matter in addition to FRY’S and cover the same services, or services less related
to food products, such as drug store services. If we do not find likelihood of confusion
as to the FRY’S standard-character registration, we would not find it as to the other
cited registrations. Conversely, if we find likelihood of confusion as to the FRY’S
standard-character registration, we need not reach the other cited registrations. See
N. Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB 2015)
(citing In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)).
After the Examining Attorney made the refusal final, Applicant requested
reconsideration and appealed. The Examining Attorney denied the request for
reconsideration, and the appeal proceeded, with Applicant and the Examining

to the right of the ‘FRY FAMILY’ term, and the term ‘NATURE’S PLANT PROTEINS’ along
the bottom, inner curvatures of the circles.” Color is not claimed as a feature of the mark.
2 Registration No. 5405364 issued February 20, 2018. The other cited registrations (Reg. Nos.
1861273, 2591652, 3230647, 3262051, 5405363, 5405366, 5405367) include the marks FRY’S
FOOD AND DRUG, FRY’S MARKETPLACE, FRY’S MERCADO, and FRY’S FOOD
STORES, all for the same or similar services.
Serial No. 88629831
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Attorney submitting briefs.3
For the reasons set forth below, we affirm the refusal to register.
II. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, referred to as “DuPont factors”); 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. 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 and services. 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

3 To the extent Applicant attached evidence to its Brief that was not submitted for the record
during prosecution, we sustain the Examining Attorney’s objection to such new evidence. See
37 C.F.R. § 2.142(g) (the record in an application must be complete prior to appeal); In re
Hollywood Lawyers Online, 110 USPQ2d 1852, 1856-57 (TTAB 2014) (refusing to consider
new evidence attached to the brief). The proper procedure for an applicant or examining
attorney to introduce evidence after an appeal has been filed is to submit a written request
with the Board to suspend the appeal and remand the application for further examination.
See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). See also TBMP § 1207.02 and authorities
cited therein.

Serial No. 88629831
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by § 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”).
A. Strength of the Cited Mark
Under the fifth and sixth DuPont factors, we first consider the strength of the cited
registered mark, and the extent to which that strength may be attenuated by “[t]he
number and nature of similar marks in use on similar … goods [and services].”
DuPont, 177 USPQ at 567. “A mark’s strength is measured both by its conceptual
strength (distinctiveness) and its marketplace [or commercial] strength (secondary
meaning).” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed.
Cir. 2010). For likelihood of confusion purposes, a mark’s strength “varies along a
spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)).
Applicant contends that the cited mark FRY’S merits a narrowed scope of
protection because it is “diluted and weak in the food products category.”4 In support
of this argument, Applicant first relies on search results of “FRY’S” from the USPTO
TESS database.5 However, when Applicant submitted the TESS lists during
prosecution, the Examining Attorney objected to the TESS results and explained to

4 8 TTABVUE 17 (Applicant’s Brief).
5 TSDR March 26, 2020 Response to Office Action at 20-25.
Serial No. 88629831
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Applicant that this did not suffice to make the registrations of record.6 Applicant did
not rectify the record by introducing the registrations themselves. Mere listings of
registrations are not sufficient to make the registrations of record. See In re Jonathan
Drew, Inc., 97 USPQ2d 1640, 1644 n. 11 (TTAB 2011); In re Carolina Apparel, 48
USPQ2d 1542, 1543n.2 (TTAB 1998). To the extent we consider the lists themselves,
given the limited information shown on the face of the lists, which lack even the
corresponding goods and services, the lists are not probative of the strength of the
cited mark. Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012)
(TESS listing has little, if any, probative value).
However, Applicant did submit copies of several third-party registrations for
marks that consist of or include FRY or FRY’S. However, some are for unrelated goods
and services that are not persuasive to show weakness of the cited mark. Omaha
Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686 (Fed.
Cir. 2018) (error to rely on third-party evidence of similar marks for dissimilar goods,
as Board must focus “on goods shown to be similar”); In re i.am.symbolic, llc, 866 F.3d
1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations
for goods in other classes where the proffering party “has neither introduced evidence,

6 We reject Applicant’s suggestion in its Brief that the registrations should be considered
because the Examining Attorney addressed them during prosecution “without explicitly
objecting to them.” 8 TTABVUE 18 n.2. We find that in the April 28, 2020 Office Action, the
Examining Attorney only addressed the registrations for which “applicant has submitted
printed or electronic copies,” and not the lists. And in the November 11, 2020 Denial of
Reconsideration, the Examining Attorney clearly conveyed that “applicant’s evidence in
support of this refusal has not properly been made of record and therefore will not be
considered. Applicant has submitted a list of registrations. However, the mere submission of
a list of registrations or a copy of a private company search report does not make such
registrations part of the record.”
Serial No. 88629831
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nor provided adequate explanation to support a determination that the existence of I
AM marks for goods in other classes, … support a finding that registrants’ marks are
weak with respect to the goods identified in their registrations”). For example,
FRYS.COM (stylized, Section 2(f)-in-part) for “online retail store services featuring
consumer electronics and general consumer merchandise related to electronics,”7 and
EMERSON FRY for a variety of goods in Classes 18, 24, and 25, as well as online
retail and wholesale store services “featuring clothing, shoes accessories, and
homegoods”8 recite unrelated services.
With THE BEST FRY CO. on the Supplemental Register with FRY CO.
disclaimed, for “restaurant services featuring the sale of french fries”9 and FRY DOE
on the Supplemental Register for “restaurant services featuring specialized
doughnut-like food items,”10 Applicant has made no showing that restaurant services
are related to grocery stores, and precedent dictates that restaurant services are not
necessarily related to food items, absent a showing of “something more,” Jacobs v.
Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982); In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003), which Applicant has
not provided. In addition, the identifications reflect that the sense in which FRY is
used in those marks describes fried food items served at the restaurants, and

7 March 26, 2020 Response to Office Action at 32-33.
8 Id. at 34-35.
9 Id. at 26.
10 Id. at 27.
Serial No. 88629831
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therefore the impression differs from the impression of a surname in the cited
registration, given the use of the possessive in FRY’S.
The only three third-party registrations with services related to those in the cited
registration are two owned by Fry’s Electronics Inc. – FRY’S for services that include
retail and wholesale store services featuring a wide variety of goods including candy
and cookies,11 and FRY’S for retail and wholesale store services featuring a wide
variety of goods including food and beverages12 -- and another registration of the
mark YOU BUY WE FRY for services that include “retail grocery and prepared food
stores.”13 In the latter registration, we find that FRY carries a different impression,
referring to fried food purchased by the consumer, rather than the surname
impression that the cited FRY’S mark conveys.
As to the remaining two FRY’S registrations, they are relevant to the conceptual,
rather than commercial, strength of the cited mark. That is, “[u]se evidence may
reflect commercial weakness, while third-party registration evidence that does not
equate to proof of third-party use may bear on conceptual weakness if a term is
commonly registered for similar goods or services.” Tao Licensing, LLC v. Bender
Consulting Ltd., 125 USPQ2d 1043, 1057 (TTAB 2017) (citing Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976)). See also, In re
Guild Mortg. Co., 2020 USPQ2d 10279 *3 (TTAB 2020) (“[E]vidence of third-party

11 Id. at 28.
12 Id. at 30-31.
13 Id. at 36.
Serial No. 88629831
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registrations is relevant to ‘show the sense in which . . . a mark is used in ordinary
parlance.’”). These two registrations bear on the surname significance of the cited
FRY’S mark, for which the registrant made a Section 2(f) claim in the registration.
While this indicates that the cited mark is not inherently distinctive, a mark that is
registered on the Principal Register is entitled to all Section 7(b) presumptions,
including that the mark is distinctive. See Tea Bd. of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1889 (TTAB 2006).
Although Applicant also argues weakness based on alleged third-party common
law uses of FRY or FRY’S, Applicant did not introduce evidence of any such uses. As
the Examining Attorney advised Applicant during prosecution, “[A]pplicant provided
only their web addresses and/or hyperlinks, which is not sufficient to introduce the
underlying webpages into the record. See In re ADCO Indus. – Techs., L.P., 2020
USPQ2d 53786, at *2 (TTAB 2020) (citing In re Olin, 124 USPQ2d 1327, 1331 n.15
(TTAB 2017); In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB
2012); TBMP §1208.03); TMEP §710.01(b).” Thus, there is insufficient evidence of
record regarding the purported commercial weakness of the cited FRY’S mark and
we accord it a normal scope of protection.
We therefore find the fifth and sixth DuPont factors to be neutral factors in the
likelihood of confusion analysis.
B. Similarity of the Marks
We next turn to comparing the marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot
Serial No. 88629831
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Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691 (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) (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).
We first compare Applicant’s mark to the cited mark FRY’S,
and find that the marks look and sound similar in large part because of the identical
word FRY’S that forms the entirety of the cited mark and the dominant part of
Applicant’s mark. The term FRY’S is by far the largest wording in Applicant’s mark,
and its placement at the top of Applicant’s mark adds to its prominence. In re Detroit
Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “[t]he
identity of the marks’ two initial words is particularly significant because consumers
typically notice those words first”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (first part of a mark “is most likely to be impressed
upon the mind of a purchaser and remembered”). The similarity of the marks
Serial No. 88629831
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increases because in the cited standard-character mark, FRY’S could appear in
exactly the same font as in Applicant’s mark. Citigroup Inc. v. Capital City Bank Grp.
Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (registrant “entitled to
depictions of the standard character mark regardless of font style, size, or color”).
As urged by Applicant, we compare the marks in their entireties. However, for
rational reasons, we may give more or less weight to a particular feature of a mark,
such as a common dominant element, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012). The dominance of FRY’S in Applicant’s
compound mark is strengthened because most of the other wording is merely
descriptive or generic for Applicant’s goods and therefore has been disclaimed.14 This
reduces its significance in the likelihood of confusion analysis because consumers are
less likely to rely on descriptive or generic wording to indicate source. See In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (in comparing
THE DELTA CAFÉ to DELTA, the generic term CAFÉ lacks sufficient
distinctiveness to create a different commercial impression). The other non-
disclaimed wording consists of FRY FAMILY, which reinforces the larger and more
prominent FRY’S by emphasizing that it is the possessive form of a family name, or
surname, and NATURE’S, which appears in relatively small font and modifies the
disclaimed, descriptive wording PLANT PROTEINS.

14 The Examining Attorney attached supporting evidence for the disclaimer requirement in
her October 23, 2019 Office Action.
Serial No. 88629831
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The design elements in Applicant’s mark do not serve as points of distinction. The
triangle and circle are background carriers for the wording, and the small plant
design merely illustrates that Applicant’s goods are made from PLANT PROTEINS,
as indicated in the mark. It is well-settled that with a composite mark comprising a
design and words, the word portion of the mark is usually the one most likely to
indicate origin. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983); see also Viterra, 101 USPQ2d at 1908. This is particularly true here, where the
design elements are minimal, and would not be vocalized. In re Electrolyte Labs., Inc.,
913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990). Overall they contribute to the
dominance of FRY’S, which is identical to the cited mark.
So, while we acknowledge that the additional elements in Applicant’s mark create
some visual and phonetic difference between the cited mark and Applicant’s mark,
we find that the marks in their entireties look and sound similar. As to the cited
standard-character mark on which we focus the comparison of marks, we need not
take into account Applicant’s arguments about color or font in some of the other cited
marks. Those elements cannot serve to distinguish Applicant’s mark from the mark
in standard character form. See Viterra, 101 USPQ2d at 1909. We also do not agree
with Applicant that its mark includes “tongue-twisting” elements that give it “a
distinctive sonority and pronunciation.”15
Turning to the marks’ connotations and commercial impressions, we find them to
be similar. Consumers would derive the same impression – the possessive form of a

15 8 TTABVUE 7 (Applicant’s Brief).
Serial No. 88629831
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surname – from the shared word FRY’S in Applicant’s mark as they would in the
cited mark. While Applicant points to the additional elements in its mark as
contributing to an impression that it provides “plant-based products,”16 we still find
the overall impressions of the marks similar. Applicant contends that the commercial
impression of its mark includes an “old-fashioned stamp-like look and feel,” and
creates “an enhanced focus on the applied-for goods, namely plant-based products.”17
To the extent the circular design resembles a stamp, it gives the impression of FRY’S
stamp, i.e. the stamp of the FRY FAMILY. And Applicant’s additional generic or
descriptive wording, as well as the use of NATURE’S to modify PLANT PROTEINS,
and the relatively insignificant design elements in Applicant’s mark add to the
meaning and impression only by emphasizing the nature of the goods. We also find
that they do not alter the impression of FRY’S, the portion of the mark consumers
would most likely focus on for source-indication. Thus, Applicant’s mark in its
entirety has a connotation and commercial impression similar to the cited mark
FRY’S.
While we have considered the likelihoood of confusion cases cited by Applicant, we
do not find the nature of their comparison of the marks applicable here. We do not
agree that the other cases offer helpful guidance in our analysis “because the critical
facts of different cases almost always differ substantially,” as they do here. In re Gen.
Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1027 (TTAB 2017).

16 8 TTABVUE 12 (Applicant’s Brief).
17 8 TTABVUE 12 (Applicant’s Brief).
Serial No. 88629831
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Given the resemblance in sound, appearance, connotation and commercial
impression when the marks are considered in their entireties, the marks are similar,
and the first DuPont factor weighs in favor of likely confusion.
C. The Relatedness of the Goods and Services
In analyzing the second DuPont factor, we look to the identifications in the
application and cited registration. See Detroit Ath. Co., 128 USPQ2d at 1051; Stone
Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). “[L]ikelihood of confusion can be found ‘if the
respective goods [and services] are 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 (internal citations omitted). It is sufficient for a refusal based on likelihood of
confusion that relatedness is established for any good encompassed by the
identification in a particular class in the application. Tuxedo Monopoly, Inc. v.
General Mills Fun Grp, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 123 USPQ2d 1744.
Applicant’s goods in Classes 29 and 30 consist of various food products, while the
cited registration recites retail grocery store services. The Examining Attorney first
points out that Registrant’s stores feature products such as Applicant’s. Retail store
services and the goods that may be sold through those services often are deemed
related goods and services for the purpose of determining likelihood of confusion. See
Serial No. 88629831
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In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988) (“general
merchandise store services” related to furniture because the stores sell furniture); In
re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (retail jewelry store services and
jewelry are “competitive, inherently related goods and services”); Fortunoff Silver
Sales, Inc. v. Norman Press, Inc., 225 USPQ 863, 866 (TTAB 1985) (“there is little
question that jewelry store services and jewelry are highly related goods and
services”). In Detroit Athletic Co., 128 USPQ2d at 1051, the Federal Circuit stated,
“[i]t is therefore well established that ‘confusion may be likely to occur from the use
of the same or similar marks for goods, on the one hand, and for services involving
those goods, on the other.’” In that case, likely confusion was found between the
applicant’s DETROIT ATHLETIC CO. mark for sports apparel retail services and the
cited registration of DETROIT ATHLETIC CLUB for clothing. Id. at 1053.
This principle also has been applied in the context of food-related goods and
services. See, e.g., In re Country Oven, Inc., 2019 USPQ2d 443903 (TTAB 2019)
(Applicant's COUNTRY OVEN for bread buns was likely to cause confusion with the
cited registration for COUNTRY OVEN for retail bakery shops. “[T]he relevant line
of case law holds that confusion may be likely to occur from the use of the same or
similar marks for goods, on the one hand, and for services involving those goods, on
the other.”). “Where the services consist of retail sales services, likelihood of confusion
is found when another mark is used on goods which are commonly sold through such
a retail outlet.” MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:25 (5th ed.
March 2021 update).
Serial No. 88629831
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To show the relatedness of goods such as Applicant’s identified food products to
the retail grocery services in the cited registration, the Examining Attorney
introduced numerous examples of third parties that offer under the same mark both
retail grocery services and some of the same types of food products as Applicant,
including:
 The Trader Joe’s website promotes its retail grocery services under the Trader
Joe’s mark, as well as Trader Joe’s apple cider cookies, Trader Joe’s Vegan,
Kale, Cashew & Basil Pesto and Trader Joe’s Autumnal Harvest Sauce, which
are both vegetarian sauces.18
 The Harris Teeter website advertises its grocery stores of that name, as well
as its own “Harris Teeter Brand” and “Harris Teeter Organics” brand of private
label products.19
 The Giant Eagle grocery store offers its own food brands under the same Giant
Eagle mark, with products including bread and cookies.20
 Under the Kroger mark, the Kroger website promotes grocery store services
and Kroger Brand food products including bread, fruit, and pizza.21
 The Thrive Market website promotes its grocery services and its Thrive
products including coconut milk and vegetarian sauces.22

18 TSDR October 23, 2019 Office Action at 26-44 (traderjoes.com).
19 Id. at 45-52 (harristeeter.com).
20 Id. at 53-60 (curbsideexpress.gianteagle.com).
21 TSDR April 28, 2020 Office Action at 2-7 (kroger.com).
22 Id. at 8-22 (thrivemarket.com).
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 The HEB grocery website features its own HEB branded food products
including vegetarian prepared meals, vegetarian sauces, bread, and almond
milk.23
This evidence supports the relatedness of the goods in the application and services in
the cited registration by showing that consumers are accustomed to encountering
such goods and services offered under the same mark. See Detroit Ath. Co., 128
USPQ2d at 1050 (crediting relatedness evidence that third parties use the same mark
for the goods and services at issue because “[t]his evidence suggests that consumers
are accustomed to seeing a single mark associated with a source that sells both”);
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) (stating that evidence that “a single company sells the goods and
services of both parties, if presented, is relevant to a relatedness analysis”).
We find the evidence of third-party use of the same marks for goods such as
Applicant’s and services such as Registrant’s quite persuasive to establish their
relatedness. Applicant also introduced third-party registrations, including one for
retail grocery store services, as for “food products and related goods and services.”24
Applicant argues without evidentiary support that its products “would typically
be limited to health-conscious or dietary-restricted areas of the store,”25 but the area
of the store in which the goods would be sold is not determinative. Moreover,

23 TSDR November 11, 2020 Denial of Reconsideration at 21-27 (heb.com).
24 8 TTABVUE 17 (Applicant’s Brief).
25 8 TTABVUE 14 (Applicant’s Brief).
Serial No. 88629831
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Applicant’s goods include ordinary food products such as “baked goods, namely,
bread, pastries, cookie dough, cookies, pizza, and croissants, and edible ices,” as well
as frozen fruits and vegetables, none of which are specially identified as for the
health-conscious or those with dietary restrictions. “The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which sales of the goods are directed.” Octocom
Sys., 16 USPQ2d at 1787.
The second DuPont factor weighs in favor of likely confusion.
D. The Trade Channels and Classes of Consumers
Turning to the trade channels and classes of consumers, the third-party retail
website evidence discussed above establishes that goods such as Applicant’s are sold
through stores such as Registrant’s, such that they travel in some of the same
channels of trade to the same classes of consumers, who include members of the
general public. While Applicant added a rather illogical restriction to its identification
of goods in an attempt to overcome the refusal – that none of the food products
“cover[s] retail store services or grocery store services,” the record reflects that the
food products are sold by grocery stores. Applicant’s own specimen appears to show
its goods for sale in a grocery store.
Thus, the third DuPont factor weighs in favor of likely confusion.
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E. Conditions Under Which and Buyers to Whom Sales Are Made
The fourth DuPont factor involves “[t]he conditions under which and buyers to
whom sales are made, i.e., impulse vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. Applicant contends, without pointing to any evidence, that because
its goods supposedly are plant-based, they would be subject to a higher degree of care
in purchasing. However, Applicant’s identified goods in both classes include goods
that are described as ordinary food products such as “bread, pastries, cookie dough,
cookies, pizza and croissants,” and frozen fruits and vegetables. Nothing about these
goods, on the face of the identification, suggests any heightened degree of care in
purchasing. Similarly, the grocery store services in the cited registration encompass
ordinary shopping for food done by most consumers. We have no basis to find that
ordinary consumers purchasing Applicant’s food products, or shopping at the
registrant’s grocery stores, would exercise more than an ordinary degree of care. This
factor is neutral.
F. Actual Confusion
Under the seventh and eighth factors, the record lacks evidence regarding the
absence of actual confusion, and regarding contextual evidence “such that we could
make a finding as to the ‘length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.’” In re Guild Mortg. Co.,
2020 USPQ2d 10279 *25 (TTAB 2020). Although Applicant makes assertions in its
Brief that no actual confusion has occurred during its two years of use of its proposed
mark, “[a]ttorney argument is no substitute for evidence.” Cai v. Diamond Hong, Inc.,
Serial No. 88629831
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901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc.
v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)). We also note that “in this ex
parte context, there has been no opportunity to hear from Registrant about whether
it is aware of any reported instances of confusion.” Guild Mortg., 2020 USPQ2d 10279
at *23. We find these factors neutral.
G. Thirteenth DuPont Factor
The thirteenth DuPont factor considers “any other established fact probative of
the effect of use.” DuPont, 177 USPQ at 567. Applicant relies on In re Strategic
Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012) to argue that its ownership
of a prior registration weighs against likely confusion in this case. However, the
registration on which Applicant relies, for the mark , was cancelled in
2018 because Applicant failed to file the required maintenance documents.26 It thus
is not entitled to any of the presumptions of Section 7(b) of the Trademark Act, 15
U.S.C. § 1057(b). See Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46,
47 (CCPA 1973) (“Whatever benefits a registration conferred upon appellee were lost
by him when he negligently allowed his registration to become canceled.”); In re
Hunter Publ’g Co., 204 USPQ 957, 963 (TTAB 1979) (cancellation “destroys the
Section [7(b)] presumptions and makes the question of registrability ‘a new ball game’
which must be predicated on current thought.”). Unlike the situation in Strategic

26 Registration No. 3975216.
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Partners, Applicant’s earlier, now-cancelled registration is not an “existing registered
mark.” 102 USPQ2d at 1400 (emphasis added). Thus, Strategic Partners does not
apply.27
We consider this factor neutral in our analysis of the likelihood of confusion.
III. Conclusion
The overall similarity of the marks for related goods and services that move in
some of the same channels of trade to the same classes of customers renders confusion
likely.
Decision: The refusal to register Applicant’s mark is affirmed.

27 Furthermore, even if we considered the dead registration, Applicant’s scenario does not fit
within Strategic Partners, which requires that the prior registration be for a mark that does
not materially differ from the mark in the application, and we find that the marks in question
here materially differ.