Ingles Markets, Inc.

Trademark Trial and Appeal Board

May 8, 2007

No. 76580348 (T.T.A.B. May. 8, 2007)

Mailed:
May 8, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ingles Markets, Inc.
________

Serial No. 76580348
_______

Richard M. Moose of Dority & Manning for Ingles Markets,
Inc.

Patricia M. Evanko, Trademark Examining Attorney, Law
Office 117 (Loretta Beck, Managing Attorney).
_______

Before Quinn, Hairston and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Ingles Markets, Inc. seeks registration on the
Principal Register of the mark SAV-MOR FOOD & DOLLAR
(standard character claimed) for services identified as
“retail grocery store services” in International Class 35.1
Registration has been refused under Section 2(d) of

1 Application Serial No. 76580348, filed March 11, 2004, alleging
first use and use in commerce on May 12, 2004 under Trademark Act
Section 1(a). 15 U.S.C. §1051(a).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76580348
2
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified services,
so resembles the registered mark SAVE MORE (in typed form)
for “retail store services featuring convenience store
items and gasoline” in International Class 35 as to be
likely to cause confusion, mistake or deception.2 In
addition, the examining attorney also made final her
requirement that applicant disclaim the wording FOOD &
DOLLAR on the ground that it is merely descriptive of
applicant’s goods within the meaning of Section 2(e)(1) of
the Trademark Act, 15 U.S.C. 1052(e)(1). While applicant
submitted a disclaimer for the word FOOD, applicant did not
agree to a disclaimer of the entire phrase FOOD & DOLLAR.
Consequently, pursuant to Section 6(a) of the Trademark
Act, the examining attorney has issued a final refusal of
registration. 15 U.S.C. 1056(a).
When the refusals were made final, applicant appealed
and briefs have been filed. We affirm the refusals to
register.
We first consider the disclaimer requirement. An
examining attorney may require an applicant to disclaim an
unregistrable component of a mark otherwise registrable.

2 Registration No. 2638469, issued October 22, 2002.

Serial No. 76580348
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Trademark Act Section 6(a). Merely descriptive terms are
unregistrable, under Trademark Act Section 2(e)(1), and,
therefore, are subject to disclaimer if the mark is
otherwise registrable. Failure to comply with a disclaimer
requirement is grounds for refusal of registration. See In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185
USPQ 46 (CCPA 1975); In re National Presto Industries,
Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool
Industries, Inc., 157 USPQ 114 (TTAB 1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973).
Serial No. 76580348
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Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
In support of the refusal, the examining attorney
submitted the following dictionary definitions:
Food: 1. source of nutrients: material that
provides living things with the nutrients they
need for energy and growth 2. sold nourishment:
substances, or a particular substance, providing
nourishment for people or animals, especially in
solid as opposed to liquid form.

Dollar Store: store selling inexpensive items: a
retail establishment selling inexpensive items,
many at one dollar or less.

Dollar: 1. common unit of currency: a unit of
currency used in the United States, Canada,
Australia, New Zealand, and several other
countries.

Encarta World English Dictionary North American
Edition (2005).

In addition, the examining attorney submitted a
listing of search result summaries from the Google search
engine. While search result summaries are of limited
Serial No. 76580348
5
probative value, In re Fitch IBCA, Inc., 64 USPQ2d 1058
(TTAB 2002), given the context provided by some of the
summaries that place use of FOOD & DOLLAR under the
headings “Discount Stores” (Mlps Food & Dollar Store
Market), “Dallas Groceries” (Davis Food & Dollar Store),
“Grocery Stores” (Issa Food & Dollar) and “Shopping
Directory” (M Food & Dollar Plus), this summary has some
probative value, particularly in combination with the
dictionary definitions of “Food” and “Dollar Store.” We
find that the examining attorney has made a prima facie
case that the phrase FOOD & DOLLAR used in connection with
applicant’s retail grocery store services is descriptive.
We are not persuaded by applicant’s argument that there is
an incongruity with & DOLLAR juxtaposed against FOOD to
convey a suggestive rather than descriptive commercial
impression. There is nothing incongruous about FOOD &
DOLLAR. This phrase clearly describes a feature of the
grocery store services, namely, that they provide food at
an inexpensive price or discount. Thus, the disclaimer
requirement is appropriate.
We now turn to the refusal under Section 2(d). Our
determination of the issue of likelihood of confusion is
based on an analysis of all of the probative facts in
Serial No. 76580348
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evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
As to the services, we find that they are related.
The evidence of record clearly establishes the relatedness
of the services such that use of similar marks in
connection with the respective services would create a
likelihood of confusion. It is well settled that services
need not be similar or competitive in nature to support a
finding of likelihood of confusion. The question is not
whether purchasers can differentiate the services
themselves, but rather whether purchasers are likely to
confuse the source of the services. See Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB
1989). Further, we must consider the applicant’s services
and the cited registrant’s services as they are described
Serial No. 76580348
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in the application and registration. See Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1987).
In support of her position, the examining attorney
submitted evidence in the form of third-party use-based
registrations to show that applicant’s retail grocery
stores are related to registrant’s retail store services
featuring convenience store items and gasoline. See, e.g.,
Reg. No. 1993729 (ALL STAR EXPRESS for retail grocery store
services; namely, convenience store services); Reg. No.
2016307 (FARM STORES EXPRESS for retail convenience stores
and retail grocery stores services); Reg. No. 2274501 (NOT
JUST IN YOUR COMMUNITY BUT PART OF IT for retail grocery
and convenience store services); Reg. No. 2604604 (DODGE’S
for retail grocery and convenience store services); Reg.
No. 2933570 (KWIK FARMS for grocery and convenience store
services); and Reg. No. 2964520 (YOU CAN’T BEAT…WAGNER’S
MEAT for, inter alia, retail store services featuring
convenience store items and gasoline, and retail grocery
store services). Third-party registrations which
individually cover a number of different services, and
which are based on use in commerce, may serve to suggest
Serial No. 76580348
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that the listed services are of a type which may emanate
from a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993).
We find the third-party registrations sufficiently
persuasive to conclude that applicant’s and registrant’s
services are related. We are not persuaded by applicant’s
argument that “the particular specifying language of
‘convenience store items’” has meaning such that it
includes only “pre-prepared or otherwise ‘ready to eat’
food items” and excludes “a sack of flour or sugar...such
as one would expect to find at a grocery store.” Br. p.
10. Even if we apply this interpretation of “convenience
items,” such items are also available at a grocery store;
it simply does not serve to distinguish the services.
Considering the channels of trade, inasmuch as there
are no limitations in the registration we presume that the
services will be provided in some of the same channels of
trade and share the same classes of purchasers. See
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
In view of the above, the du Pont factors of the
similarity of the services and the channels of trade favor
Serial No. 76580348
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a finding of likelihood of confusion as to the cited
registration.
We now consider whether applicant’s mark, SAV-MOR FOOD
& DOLLAR, and the mark in the cited registration, SAVE
MORE, are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. In making this determination, we
recognize that the closer the relationship between the
goods or services, “the degree of similarity [between the
marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992).
Examining the marks in terms of their appearance,
sound, meaning, and commercial impression, we find the
marks to be similar. The test of likelihood of confusion
is not whether the marks can be distinguished when
subjected to a side-by-side comparison. The question is
whether the marks create the same overall impression.
Visual Information Inst., Inc. v. Vicon Indus. Inc., 209
USPQ 179 (TTAB 1980). We must determine whether the marks
are sufficiently similar that there is a likelihood of
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
Serial No. 76580348
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who normally retains a general, rather than specific,
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark encompasses the whole of the mark in
the cited registration. The SAV-MOR element in applicant’s
mark is phonetically identical to the mark in the cited
registration. The only distinguishing features of this
element are the absence of the E and the addition of the
hyphen in applicant’s mark. Trademarks may be confusingly
similar in appearance despite the addition, deletion or
substitution of letters. Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 81 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987). In addition, it is undisputed that
SAVE MORE and SAV-MOR have the same meaning in the context
of grocery and convenience stores, i.e., consumers can save
money shopping in those stores. We find that because
applicant’s mark begins with the mark in the cited
registration, the marks have the same overall commercial
impression and the addition of the descriptive wording FOOD
& DOLLAR in applicant’s mark does not serve to distinguish
the marks. This wording, FOOD & DOLLAR, merely serves to
underscore the overall connotation of both marks to further
describe the services, i.e., stores where consumers save
money buying food. We are not persuaded by applicant’s
Serial No. 76580348
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argument that FOOD & DOLLAR is incongruous and distinctive.
As discussed above, this phrase is used to merely describe
a type of store.
Applicant also argues that the mark in the cited
registration is weak. Applicant’s evidence is of little
probative value inasmuch as it consists of mere listings of
registrations without the goods or services listed. In
addition, most of the listings only contain either SAVE or
MORE. Only five listed registrations combine both SAVE and
MORE, but again, the goods or services are not listed.
However, even if we consider SAVE MORE a suggestive mark,
and, thus, not afforded a broad scope of protection, given
that the services are related and are directed towards the
same general consumers seeking savings and choosing these
services without a great deal of care, the protection
afforded this mark certainly encompasses these
circumstances. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) (even a weak
mark is entitled to protection against the registration of
a similar mark for closely related goods or services).
Finally, applicant’s arguments regarding another
application do not persuade us to a different result.
While consistency in examination is desired, prior
decisions of examining attorneys are not binding on the
Serial No. 76580348
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agency and each case must be decided on its own merits. In
re Sunmarks, Inc., 32 USPQ2d 1470 (TTAB 1994).
In conclusion, we find that because of the related
services and the close similarities in the marks, confusion
is likely between applicant’s mark and the mark in the
cited registration. To the extent there are any doubts, we
resolve them, as we must, in registrant’s favor. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusals to register under Section
2(d) of the Trademark Act and based on applicant’s
failure to disclaim & DOLLAR are affirmed. However,
if applicant submits the required disclaimer of FOOD &
DOLLAR to the Board within thirty days, this decision
will be set aside as to the affirmance of the
disclaimer requirement.3 See Trademark Rule 2.142(g),
37 C.F.R. §2.142.

3 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use FOOD & DOLLAR is
claimed apart from the mark as shown.” TMEP §1213.08(a) (4th ed.
April 2005).