Marigold Commodi-ties Corp.

Trademark Trial and Appeal Board

Sep 10, 2003

No. 76221729 (T.T.A.B. Sep. 10, 2003)

Mailed:
9/10/03
Paper No. 14
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Marigold Commodities Corporation
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Serial No. 76/221,729
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Lawrence E. Abelman of Abelman, Frayne & Schwab for
Marigold Communications Corporation.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111.
Before Cissel, Hanak and Holtzman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On March 8, 2001, applicant, a corporation organized
and existing under the laws of the Philippines, filed the
above-referenced application to register the mark shown
below on the Principal Register for “spices and sauces,” in
Class 30.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/221,729
2
The application was based on applicant’s assertion that it
possessed a bona fide intention to use the mark in commerce
in connection with these products.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that applicant’s mark so resembles the mark
shown below,
which is registered1 for “condiments, namely, seasonings for
foods,” in Class 30, that if applicant were to use the mark
it seeks to register in connection with spices and sauces,
confusion would be likely. She reasoned that the two marks
are similar and that the goods with which applicant intends
to use its mark are identical to the goods set forth in the
cited registration. In addition to refusing registration
based on likelihood confusion, she required applicant to
1 Reg. No. 2,304,361, issued to Colina and Son, Inc., a Florida
Corp., on December 28, 1999. The registration provides a
translation of the “ESPIGA DE TERESITA” as “the twig of little
Teresa,” and a disclaimer of “condiment” and “Excellent for rice,
soups, stews, chicken, meat & fish” apart from the mark as shown.
Ser No. 76/221,729
3
amend the application to state that the stippling shown on
the drawing is a feature of the mark and is not intended to
indicate color, if that were the case.
Applicant responded to the first Office Action by
amending the application to identify the goods with which
it intends to use the mark it seeks to register as “spices,
namely, garlic powder, pepper corns, ground pepper; soy
sauce, hot sauce, gravy, salsa.”
Applicant also argued against the refusal to register
based on likelihood of confusion. Applicant took the
position that the overall commercial impressions of the
marks are different; that because “Teresita” is a personal
name which translates as “little Teresa,” it is not a
strong mark; that the goods specified in the registration
differ from the goods listed in the application, as
amended; and that the cited registration was issued
notwithstanding the existence of a registration for “ LA
TERESITA RESTAURANT”2 for restaurant services, further
evidencing the limited scope of protection conferred by the
Office on “Teresita” marks.
In addition to arguing against the refusal to
2 Reg. No. 1,915,694, issued on the Principal Register to La
Teresita, Inc. on August 29, 1995. A copy of this registration
was attached to applicant’s response.
Ser No. 76/221,729
4
register, applicant amended the application to state
that the stippling shown in the drawing is a feature of the
mark and is not intended to indicate color. Applicant also
stated that the name and picture in the mark identify
Teresita R. Reyes, and submitted a written consent from her
for the use of her name and likeness.
The Examining Attorney accepted the amendments, but
was not persuaded by applicant’s arguments on the issue of
likelihood of confusion. The refusal to register under
Section 2(d) of the Act was made final in the second Office
Action.
Applicant timely filed a Notice of Appeal, followed by
a request to suspend Action on the appeal and remand the
application to the Examining Attorney for consideration of
additional evidence, namely three third-party registrations
and three third-party applications to register, all for
marks consisting of or including the name “Teresa” or
“Theresa’s.”
An erroneous dismissal for failure to file a brief
timely was vacated. Then the Board granted applicant’s
request for suspension and remanded the application for
reconsideration by the Examining Attorney. Holding that
the third-party registrations and applications were
entitled to little weight and noting that none of the marks
Ser No. 76/221,729
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in the registrations or applications submitted by applicant
to consists of or includes “TERESITA,” she maintained the
final refusal to register and returned the application to
the Board for resumption of action on the appeal.
Both applicant and the Examining Attorney filed
briefs, but applicant did not request an oral hearing
before the Board. Accordingly, we have resolved this
appeal based on the written record and arguments of
applicant and the Examining Attorney.
The sole issue before us on appeal is whether
confusion would be likely if applicant were to use its
“Teresita’s” and design mark in connection with “spices,
namely, garlic powder, pepper corns, ground pepper; soy
sauce, hot sauce, gravy, salsa,” in view of the registered
mark, which also includes the name “Teresita,” and which is
registered for “condiments, namely food seasonings.” We
hold that these two marks, when considered in their
entireties, create similar overall commercial impressions,
that the goods set forth in the application are encompassed
within the identification-of-goods clause in the
registration, and therefore, that if applicant were to use
its mark in connection with the goods listed in the
application, confusion within the meaning of Section 2(d)
of the Lanham Act would be likely.
Ser No. 76/221,729
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In the case of E.I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973), the predecessor to our
primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among these factors are the similarity of the marks
as to appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods as set forth in
the application and the cited registration, respectively.
It is well settled that although the marks must be
considered in their entireties, under appropriate
circumstances, one element or feature of the mark may have
more significance in determining the overall commercial
impression of the mark, and may accordingly be given more
weight in determining whether confusion is likely.
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976). In the instant case, each mark is
dominated by the name “Teresita.”
In the cited registered mark, the descriptive word
“condiment” has been disclaimed, along with the descriptive
phrase “Excellent for rice, soups, stews, chicken, meat &
fish.” When the minor design features and these non-
source-identifying terms have been appropriately
discounted, the term “ESPIGA DE Teresita” remains, but the
name “Teresita” is displayed in letters twice as large as
Ser No. 76/221,729
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the term “ESPIGA DE.” “Teresita” plainly plays the
dominant role in creating the commercial impression
engendered by this mark.
In a similar sense, the cited registered mark is
dominated by the same name. This mark utilizes the
possessive form of the name “Teresita” and includes a
drawing of a lady with the name “Teresita” displayed in
print directly beneath it. It is the name “Teresita” which
plays the dominant role in creating the commercial
impression this mark engenders. The picture of her only
amplifies and reiterates her name, which is what would be
used to order the products bearing this mark. This name is
what would be recalled and used to reorder or recommend the
goods to others.
As the Examining Attorney points out, the issue is not
whether the marks could be distinguished from one another
if they were evaluated on a side-by-side basis, but rather
whether they create the same overall commercial impression
in view of the fact that ordinary consumers normally retain
general, rather than specific, impressions of trademarks.
Visual Information Institute, Inc. v. Vicon Industries
Inc., 209 USPQ 179 (TTAB 1980); Chemtron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979).
Ser No. 76/221,729
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Because when they are considered in their entireties,
these marks create similar commercial impressions, our
analysis must turn to the relationship between the goods
set forth in the cited registration and those listed in the
application. We agree with the Examining Attorney that
applicant’s “spices, namely garlic powder, pepper corns,
ground pepper; soy sauce, hot sauce, gravy and salsa” are
closely related to the “condiments, namely seasonings for
foods” specified in the cited registration. The Examining
Attorney notes that the dictionary definitions submitted
with her brief (and of which the Board may take judicial
notice) define the words “pepper” as “any of various
condiments made from the more pungent varieties of Capsicum
frutescens…”; “soy sauce” as “a salty brown liquid
condiment…”; “gravy the as “a sauce made by thickening and
seasoning … juices”; “salsa” as “a spicy sauce”;
“condiment” as “a sauce, relish, or spice used to season
food”; and “seasoning” as “something, such as a spice or
herb, used to flavor food.”3 With the possible exceptions
of gravy and salsa, all of applicant’s goods are seasonings
for foods, so the goods specified in the application are
3 The American Heritage Dictionary of the English Language, Third
Edition, Houghton Mifflin Company, 1992.
Ser No. 76/221,729
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encompassed within the identification-of-goods clause in
the cited registration.
It is well settled that when the marks in question are
used on virtually identical goods, the degree of similarity
between the marks which is necessary to support the
conclusion that confusion is likely declines. Century 21
Real Estate Corp. v. Century Life of America,0 F.2d 874, 23
USPQ 1698 (Fed. Cir. 1982). In view of the overlap in the
goods at issue in this appeal, the overall similarities
between the marks in their entireties clearly provide a
sufficient basis upon which to conclude that confusion
would be likely if applicant were to use the mark it seeks
to register.
Applicant’s arguments to the contrary not persuasive
the different conclusion. Applicant contends that the
marks are sufficiently dissimilar to avoid the likelihood
confusion, but although each mark combines the name
“Teresita” with other elements which are not present in the
other mark, when the source-identifying significances of
the various components in each of the marks are considered,
overall, these marks are similar.
With regard to the third-party registrations submitted
by applicant in support of its contention that “Teresita”
is weak in source-identifying significance, as the
Ser No. 76/221,729
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Examining Attorney notes, only one of these registrations
incorporates the name “Teresita,” and that mark is
registered for restaurant services, not spices or
condiments. The Examining Attorney cites In re Mucky Duck
Mustard Co., Inc., 6 USPQ 2d 1467 (TTAB 1988) in support of
the proposition that marks with common terms in them which
are used to identify both restaurant services and food
items are not necessarily determined to be so similar that
confusion is likely. She also notes that third-party
registrations, by themselves, are not entitled to much
weight in determining whether confusion is likely, citing
In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983), and
argues that such registrations are not evidence of what
happens in the marketplace or that the public is so
familiar with the use of such marks that the other elements
are emphasized in order to allow purchasers to distinguish
among such marks. National Aeronautics and Space
Administration v. Record Chemical Co., 185 USPQ 563 (TTAB
1975). In any event, marks which consist of or include the
name “Teresa” can hardly be the basis for concluding that
“Teresita” is a weak trademark.
When the issue before us is whether confusion is
likely, we must resolve any doubt in favor of the prior
user and registrant, and against applicant, who, as the
Ser No. 76/221,729
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newcomer, has a duty to select a mark which is unlikely to
cause confusion with a mark already in use in the same
field of commerce. Burroughs Wellcome Co. v. Warner-
Lambert Co., 203 USPQ 191 (TTAB 1979). In the case at
hand, applicant did not live up to this obligation.
DECISION: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.