Hy-Vee, Inc.

Trademark Trial and Appeal Board

Jun 2, 2009

No. 77408380 (T.T.A.B. Jun. 2, 2009)

Mailed:
June 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hy-Vee, Inc.
________

Serial No. 77408380
_______

Timothy J. Zarley of Zarley Law Firm, P.L.C. for Hy-Vee,
Inc.

Dannean J. Hetzel, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Cataldo and Ritchie, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Hy-Vee, Inc. (applicant) seeks registration on the
Principal Register of the mark depicted below for services
recited in the application as “educational demonstrations,
namely meal preparation.”1

1 Serial No. 77408380, filed on February 28, 2008. The
application is based on applicant’s asserted bona fide intent to
use the mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77408380
2

The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the services recited in the
application, so resembles the mark DINNER DONE, previously
registered on the Principal Register (in standard character
form) for services recited in the registration as “food
service operation, whereby customers assemble pre-prepped
and prepared ingredients to make meals and pick up pre-
assembled meals.”2
Applicant has appealed the final refusal. The appeal
is fully briefed.
After careful consideration of the evidence of record
and the arguments of counsel, we affirm the refusal to
register.
Initially, we sustain the Trademark Examining
Attorney’s objection to the third-party registration
Ser. No. 77408380
3
evidence which applicant referenced for the first time in
its appeal brief. This evidence is untimely and will not
be considered. See Trademark Rule 2.142(d), 37 C.F.R.
§2.142(d).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & 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., 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).
Under the first du Pont factor, we determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Palm Bay Imports, Inc., supra.
The test, under the first du Pont factor, 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

2 Registration No. 3216931, issued on March 13, 2007.
Ser. No. 77408380
4
impression that confusion as to the source of the goods
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). Furthermore, although
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
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
as follows.
First, we find that the wording DINNER? DONE! is the
dominant source-indicating feature of applicant’s mark. It
is this wording in the mark, capable of being read and
verbalized, that purchasers would most readily perceive and
recollect in connection with applicant’s services offered
under the mark. The words are depicted in very large and
prominent lettering. We find that the fork and circle
design element of the mark is likely to be perceived as a
Ser. No. 77408380
5
dinner plate, and thus would be seen primarily as
reinforcing the significance of the wording itself. We do
not disregard the design element of the mark, but we find,
for these reasons, that it is entitled to relatively less
weight in our analysis of the commercial impression of
applicant’s mark and in our comparison of applicant’s mark
to the cited registered mark.
We next find that applicant’s mark is visually similar
to the cited registered mark to the extent that both marks
prominently feature (applicant’s mark) or consist wholly of
(the cited registered mark) the words DINNER DONE.
Applicant’s mark is visually different to the extent that
it includes the design element and the punctuation marks
after each of the words. However, we find on balance that
these points of dissimilarity are outweighed by the basic
similarity between the marks arising from the presence of
the prominent words DINNER DONE.
We find that the marks are essentially identical in
terms of sound.
We find that the marks are highly similar in terms of
connotation and commercial impression. Both marks convey
the idea that applicant’s and registrant’s services enable
and assist the purchaser to successfully prepare dinner.
We are not persuaded by applicant’s argument that the
Ser. No. 77408380
6
punctuation marks in its mark suffice to distinguish the
marks in terms of connotation and commercial impression.
The punctuation marks in applicant’s mark do not
significantly change the meaning and commercial impression
of the words themselves. Any difference in connotation or
commercial impression which arises from the punctuation
marks is slight, at best. Cf. In re Litehouse Inc., 82
USPQ2d 1471 (TTAB 2007)(punctuation marks in the mark
CAESAR!CAESAR! do not significantly change commercial
impression of the mark and do not suffice to cure mere
descriptiveness of the mark for salad dressing).
Comparing the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
we find that the marks are similar. The first du Pont
factor weighs in favor of a finding of likelihood of
confusion.
We turn next to the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
services as identified in the application and in the cited
registration, respectively. It is settled that it is not
necessary that these respective services be identical or
even competitive in order to find that the they are related
for purposes of our likelihood of confusion analysis. That
is, the issue is not whether consumers would confuse the
Ser. No. 77408380
7
services themselves, but rather whether they would be
confused as to the source of the services. See In re Rexel
Inc., 223 USPQ 830 (TTAB 1984). It is sufficient that the
services be related in some manner, or that the
circumstances surrounding their use be such, that they
would be likely to be encountered by the same persons in
situations that would give rise, because of the marks used
with the respective services, to a mistaken belief that
they originate from or are in some way associated with the
same source or that there is an association or connection
between the sources of the respective services. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978). For purposes of
this proceeding involving the registrability of applicant’s
mark, our comparison of the services must be based solely
on the services as they are recited in the application and
the cited registration, respectively, not on any extrinsic
evidence or argument regarding the nature of the services.
In re Shell Oil Co., 9902 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993); In re La Peregrina Ltd., 86 USPQ2d 1645 (TTAB
2008); In re Jump Designs LLC, 80 USPQ2d 1370 (TTAB 2006).
Finally, “[l]ikelihood of confusion may be found based on
Ser. No. 77408380
8
any item that comes within the identification of goods [or
services] in the involved application and registration.”
In re La Peregrina Ltd., supra, 80 USPQ2d at 1646.
Applying these principles in this case, we find as
follows.
We find that the broadly-worded “educational
demonstrations, namely meal preparation” recited in
applicant’s application are similar and related to the
services recited in the cited registration as “food service
operation, whereby customers assemble pre-prepped and
prepared ingredients to make meals…”. Applicant’s services
and registrant’s services both serve the same general
purpose, i.e., to assist customers in the preparation of
meals. The customer could attend a meal preparation
demonstration like applicant’s and then, whether in
conjunction with the demonstration or at a later time,
utilize services like registrant’s to assemble the
ingredients and prepare the meal.
Applicant argues that its services and registrant’s
services are different in that applicant’s services, but
not registrant’s, are educational in nature. However, even
if the respective services were deemed to differ in that
respect, they still are complementary and thus related. As
noted above, the respective services need not be identical
Ser. No. 77408380
9
in order to be related for purposes of the second du Pont
factor.
Moreover, the Trademark Examining Attorney has
submitted evidence showing that there in fact is an
educational component to services like registrant’s. For
example, the website of a company like registrant’s called
Let’s Eat (www.letseatdinner.com) explains how these
services work (emphasis added):3
On your first visit to our professional kitchen
our friendly staff will welcome you with a quick
tour and a printout of your menu selections for
the session. You will also receive a Let’s Eat!
Entrée label for each dish you are preparing that
contains cooking instructions, a suggested side
dish and wine selection. … The ingredients are
prepared for you and are placed in the order
given in the recipe. In 6 to 10 minutes you can
assemble your first meal…it’s that easy!... Don’t
know how to cook? Don’t worry! Our Let’s Eat!
staff is always available to answer your
questions.

Similarly, the website of a company called
Dream Dinners Experience (www.dreamdinners.com) explains
(emphasis added):4
… Our staff will provide you with an order
summary, recipe labels and help you get started
with a brief orientation. … Assembling your
dinners is fun and easy. Assembly stations are
organized so that guests rotate from one to the
next. Each station has all the ingredients
needed for a particular dinner, from main

3 June 16, 2008 Office action.

4 December 4, 2008 Office action.

Ser. No. 77408380
10
ingredients to sauces to seasonings. Easy-to-
follow instructions are posted …”.

Also, the website of a company called Dinner Zen
(www.dinnerzen.com) explains its services as follows
(emphasis added):5
Your first visit you’ll receive a brief
orientation to the store layout, how to use the
stations and basic food safety guidelines. Next
you’ll proceed to the studio floor where you’ll
find workstations stocked with all the
ingredients you’ll need for each entrée, along
with simple assembly instructions.

The Trademark Examining Attorney also has made of
record a printout of a third-party use-based registration
of the mark THE KITCHEN STUDIO (Reg. No. 3433565), which
includes in its recitation of services both educational
meal preparation demonstrations like applicant’s, and meal
preparation and assembly services like registrant’s, i.e.:6
educational and entertainment services in the
culinary field, namely, conducting classes on
meal planning and preparation, nutrition, and the
use of culinary resources, equipment and
supplies; educational cooking demonstrations;

and

…home meal replacement preparation services,
namely, providing meal assembly facilities,
menus, food ingredients, printed meal preparation
instructions and food containers for preparation
of meals by others; in-store meal preparation
services, namely, the provision of ingredients
and recipes for consumers to make their own

5 December 4, 2008 Office action.
6 June 16, 2008 Office action.
Ser. No. 77408380
11
prepared family style meals to take home and
cook/re-heat at mealtimes.

Although third-party registrations are not evidence that
the marks shown therein are in use or that the public is
familiar with them, they nonetheless have probative value
to the extent that they serve to suggest that the goods or
services listed therein are of a kind which may emanate
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Based on this evidence, we find for purposes of the
second du Pont factor that applicant’s services, as recited
in the application, are similar and related to the services
recited in the cited registration. The second du Pont
factor weighs in favor of a finding of likelihood of
confusion.
Under the third du Pont factor, we compare the trade
channels for the services as recited in the application and
in the cited registration, respectively. In this case,
neither applicant’s nor registrant’s recitation of services
includes any restrictions as to trade channels. We
therefore must assume that the respective services are or
would be marketed in all normal trade channels for such
Ser. No. 77408380
12
services. In re Elbaum, 211 USPQ 639 (TTAB 1981). In re
Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Applicant argues that its services are rendered only
in applicant’s grocery stores, but no such restriction is
present in applicant’s recitation of services. Likewise,
there are no trade channel restrictions in the recitation
of services in the cited registration. Given the
similarities between the services themselves as recited in
the application and the in the cited registration, we find
that they are likely to be marketed in similar trade
channels. Nothing in the record supports a finding to the
contrary, i.e., that the normal trade channels for the
respective services are not the same or at least related.
The third du Pont factor weighs in favor of a finding of
likelihood of confusion.
Under the fourth du Pont factor (conditions of
purchase), we find that both applicant’s services as
recited in the application and the services recited in the
cited registration are or would be marketed to ordinary
consumers, who would exercise only a normal degree of care
in purchasing the respective services. Applicant argues
(based on registrant’s website) that registrant’s services
can cost anywhere from $75 to $250. As noted above,
however, our likelihood of confusion determination in this
Ser. No. 77408380
13
proceeding involving the registrability of applicant’s mark
must be based on the services as they are recited in the
cited registration, not on what any extrinsic evidence
might reveal about the services. Moreover, we agree with
the Trademark Examining Attorney’s observation that these
stated prices, which cover the customer’s preparation of a
week’s worth or month’s worth of meals, are not
particularly expensive when considered on a per meal or per
serving basis. For these reasons, we find that the fourth
du Pont factor (conditions of purchase) is at best neutral
in this case; it certainly does not weigh significantly in
applicant’s favor.
We have considered all of the evidence properly made
of record as it pertains to the du Pont likelihood of
confusion factors. For the reasons discussed above, we
conclude that a likelihood of confusion exists. We have
considered all of applicant’s arguments to the contrary
(including those not specifically discussed in this
opinion), but we are not persuaded by them. Finally, to
the extent that any doubts might exist as to the
correctness of our conclusion that confusion is likely, we
resolve such doubts against applicant. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
Ser. No. 77408380
14
(Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe,
Inc., supra.

Decision: The Section 2(d) refusal to register is
affirmed.