Goody Industria De Alimentos LTD

Trademark Trial and Appeal Board

Feb 29, 2008

No. 78770730 (T.T.A.B. Feb. 29, 2008)

Mailed: February 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Goody Industria De Alimentos LTD
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Serial No. 78770730
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Morton Rosenberg of Rosenberg, Klein & Lee for Goody
Industria De Alimentos LTD.

Sally Shih, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
____________

Before Walters, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Goody Industria De Alimentos LTD has filed an
application to register the mark shown below on the
Principal Register for “fruit pulp juices; fruit drinks;
fruit juices; nectar; soft drinks; fruit flavored soft
drinks; fruit flavored beverages,” in International Class
32.1 The application includes the following description of
the mark: “the mark consists of the highly stylized word

1 Serial No. 78770730, filed December 10, 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. 78770730

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‘GOODY’ with three tear drop contours above the second
letter ‘O.’”

The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark GOODY, previously registered for “fresh citrus
fruits,” in International Class 31,2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.3 We affirm the
refusal to register.
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

2 Registration No. 0535954 issued January 9, 1951. The mark was renewed
for a period of ten years on January 9, 2001; Section 15 affidavit
acknowledged. The registration includes a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f).

3 The examining attorney objected to third-party registrations submitted
by applicant with its brief. It appears that these same registrations
were submitted by applicant in a timely manner with its response of
December 12, 2006, and these exhibits have been considered. To the
extent that the brief includes exhibits that were not previously
submitted, such exhibits have not been considered because they are
untimely. The record must be complete prior to appeal. See, 37 CFR
2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
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confusion issue. 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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and 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
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); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. While the marks at
issue must be considered in their entireties, it is well
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). We
Serial No. 78770730

4
note, further, that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impressions that confusion
as to the source of the goods or services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant contends that the shared term GOODY is
inherently weak and entitled to only a limited scope of
protection; that the design aspect of its mark distinguishes
it from the registered mark; that the tear drop design
element suggests liquid drinks, applicant’s identified
goods; and that the examining attorney has improperly
dissected its mark. In support of its position that the
marks are weak, applicant submitted copies of ten third-
party registrations for various marks including “GOOD” as a
root for a variety of food items.4
However, we agree with the examining attorney and find
that the marks are substantially similar. While the
registered mark GOODY may be a weak mark, it is registered

4 Two additional submissions include an abandoned application and a
cancelled registration, neither of which are of any probative value.

Serial No. 78770730

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under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f),
on the ground that it has acquired distinctiveness, and,
even weak marks are entitled to protection.
Both marks before us include the identical word GOODY,
although applicant’s mark includes a design element. The
two marks are identical in sound, as the word GOODY will be
used by prospective purchasers in asking for applicant’s
goods and, thus, is likely make a greater impression on
purchasers. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593
(TTAB 2001) (“words are normally accorded greater weight
because they would be used by purchasers to request the
goods”). See also, e.g., In re Appetito Provisions Co., 3
USPQ2d 1553 (1987).
Applicant’s design consists of stylized lettering with
three small “tear drops” above the second letter “O.” We
find the design element to be a relatively minor aspect of
the appearance and overall commercial impression of
applicant’s mark. The teardrop design is very small and,
even though it may connote liquid to prospective purchasers,
this connotation is as likely to relate to the juice of
registrant’s citrus fruit as it is to applicant’s drinks.
Similarly, we do not find the stylized lettering in
applicant’s mark to be a distinguishing factor. The
registered mark appears in standard character format and,

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thus, registrant could conceivably display its mark in any
lettering style, including that of the word GOODY in
applicant’s mark. 37 C.F.R. § 2.52(a); In re Pollio Dairy
Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988) (when
registering mark in block letters, registrant remains free
to change the display of its mark at any time). We find
applicant’s argument that the examining attorney “ignored”
the stylized lettering and design elements of its mark to be
unpersuasive. See e.g., Sunnen Products Co. v. Sunex Int’l
Inc., 1 USPQ2d 1744 (TTAB 1987) (styling of letters is
irrelevant to the issue of confusion where applicant seeks
to register mark without any special form of lettering or
design).
Therefore, we conclude that the word GOODY is the
dominant feature of applicant’s mark, which is identical to
registrant’s mark in its entirety; and that the design
elements are insufficient to distinguish it from the
registered mark.
We reach this conclusion as to the similarities of the
marks despite applicant’s third-party registration evidence.
The marks and/or the goods identified in these third-party
registrations are different from the marks and goods herein
and we do not draw any conclusion regarding the issue of
likelihood of confusion between applicant’s mark and the
mark in the cited registration, as applied to the respective
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goods, from the co-existence on the register of the noted
third-party registrations. See, In re National Novice
Hockey League, Inc., 222 USPQ 638, 642 (TTAB 1984).
Moreover, we must decide each case on its own facts and we
cannot be bound by prior decisions of the USPTO in
registering a mark. In re Nett Designs Inc., 57 USPQ2d 1564
(Fed. Cir. 2001).
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
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used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein; and Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
The examining attorney contends that the respective
goods are closely related, stating that the products are
inexpensive goods subject to impulse purchases and consumed
on a daily basis; that they are likely to be sold in the
same stores and travel through the same trade channels. In
support of her position, the examining attorney submitted
copies of three third-party registrations which include both
applicant’s and registrant’s goods in the same
registration.5
Applicant contends that the respective products, fresh
citrus fruits and soft drinks, are “entirely separate and
disparate fields” (brief, p. 15); that, even if sold in the
same stores, they would be sold in entirely different
departments; and “there is absolutely no foundation for
suggesting that the buying public would confuse a soft drink
with ‘fresh fruit’” (id.).

5 The examining attorney submitted a total of ten registrations.
However, seven of these registrations are not based on use in commerce
and, thus, are of no probative value and have not been considered.
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We begin by noting that the question is not whether
prospective customers will confuse the goods themselves, but
whether prospective purchasers are likely to believe that
fresh citrus fruits and applicant’s juices and soft drinks
identified by confusingly similar marks could come from the
same source. Applicant’s fruit pulp juices, fruit drinks,
fruit juices, nectar, fruit flavored soft drinks and fruit
flavored beverages, in particular, encompass citrus-flavored
drinks. The examining attorney has not given us a great
deal of evidence, but she has submitted several third-party
registrations including both fruit and fruit drinks and soft
drinks registered under the same mark. While third-party
registrations which cover a number of differing goods and/or
services, and which are based on use in commerce, are not
evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
they may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467 (TTAB 1988).
We find this evidence sufficient to conclude that the
respective goods are related. Moreover, a significant

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ingredient in some of applicant’s various fruit drinks would
be registrant’s fresh citrus fruits. In fact, it is likely
that consumers purchase fresh citrus fruits to make their
own juice at home. We add that, given the nature of these
food and drink items, both applicant's and registrant’s
goods are likely to be purchased by members of the general
public and they are likely to purchase these goods in at
least some of the same stores.
We have considered the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, including those arguments not
specifically addressed herein, and we conclude that in view
of the substantial similarity in the commercial impressions
of applicant’s GOODY design mark and registrant’s mark,
GOODY, their contemporaneous use on the related goods
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.