Modern Italian Bakery of West Babylon, Inc.

Trademark Trial and Appeal Board

Jan 31, 2001

No. 74375061 (T.T.A.B. Jan. 31, 2001)

1/31/01 Paper No. 25
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Modern Italian Bakery of West Babylon, Inc.
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Serial No. 74/375,061
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Patricia A. Wilczynski of Scully, Scott, Murphy & Presser
for Modern Italian Bakery of West Babylon, Inc.
Kimberly N. Reddick, Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
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Before Hanak, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Modern Italian Bakery of West Babylon, Inc. has filed
an application to register the mark MODERN and design, in
the format depicted below, for “bread, rolls and bagels.”1
1 Serial No. 74/375,061, filed April 1, 1993, claiming first use
dates of 1959.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 74/375,061
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the registered mark LA MODERNA for
“macaroni, pasta, spaghetti, cookies and crackers.”2
The final refusal has been appealed and both applicant and
the Examining Attorney have filed briefs.3 An oral hearing
was not requested.4
We make our determination of likelihood of confusion
on the basis of those of the du Pont factors5 which are
relevant under the circumstances at hand and for which
evidence is of record. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used. See In re Azteca Restaurant Enterprises,
2 Registration No. 1,828,454, issued March 29, 1994, Section 8 &
15 affidavits accepted and acknowledged, respectively. The term
LA MODERNA has been translated as “the modern.”
3 Although the prior Examining Attorney had also cited a second
registration belonging to the same entity, the reliance upon this
registration (Reg. No. 1,605,821) was withdrawn by the newly
assigned Examining Attorney in her brief.
4 Applicant requested in its reply brief that decision be
suspended in view of the apparent failure of the registrant to
timely file a Section 8 affidavit for Registration No. 1,828,454.
This request is moot, however, in that a Section 8 affidavit was
filed by applicant within the 6 month grace period and has been
accepted by the Office. See Section 8(c)(1) of the Trademark
Act.
5 See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser No. 74/375,061
3
Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited
therein.
Insofar as the respective marks are concerned, the
Examining Attorney maintains that applicant’s mark is not
only similar to registrant’s mark in appearance and sound,
but also in meaning or connotation. Relying upon the
doctrine of foreign equivalents, the Examining Attorney
argues that literal portion of applicant’s mark MODERN is
the equivalent in connotation to registrant’s mark LA
MODERNA, which translates to “the modern.” Thus, she
argues, the marks as a whole evoke the same commercial
impression.
Applicant, on the other hand, contends that the marks
are neither phonetically nor visually similar in view of
the extra letters and words in registrant’s mark and of a
design element in applicant’s mark. Applicant further
argues that although LA MODERNA translates to “modern,” the
term LA MODERNA would connote an Italian, Spanish, or
Mexican origin for the foods with which it is being used,
whereas applicant’s mark would create a much different
commercial impression.
Under the doctrine of foreign equivalents, foreign
words from common languages are translated into English in
determining similarity of meaning and connotation for
Ser No. 74/375,061
4
purposes of likelihood of confusion. However, even if the
non-English word and its English counterpart have a similar
meaning and connotation, this is only one prong of the
sight, sound, and meaning trilogy of analysis. Thus,
similarity in meaning may be outweighed by differences in
appearance, sound or other factors in reaching the final
conclusion on likelihood of confusion. See J. T. McCarthy,
McCarthy on Trademarks and Unfair Competition, § 23:36-37
(2000); In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111
(Fed. Cir. 1983).
Here there is no question but that the English
translation of registrant’s mark LA MODERNA is “the
modern,” which would likely be shortened to “modern.”6
Considering the relatively large portion of the United
States population which is familiar with Spanish, it is
reasonable to assume that an appreciable segment of the
population would readily translate registrant’s mark. But
even if unfamiliar with Spanish, LA MODERNA is so similar
to the English word “modern” that many purchasers would
attach such a connotation to the mark. See In re American
6 We do not consider the article “the” to be required in
translating the Spanish term into the equivalent English term.
See In re Hub Distributing, Inc., 218 USPQ 284, 285 fn. 1 (TTAB
1983)(“Sun” the equivalent of EL SOL).
Ser No. 74/375,061
5
Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987)(BUENOS DIAS
viewed as the equivalent of GOOD MORNING).
Moreover, there are no significant differences in
these marks with respect to appearance or sound. The major
visual impact of registrant’s mark is the word MODERNA and
of applicant’s mark is the word MODERN. The commonplace
oval background used by applicant is clearly of minimal
visual significance in the mark as a whole. The sound of
the two marks is also highly similar, one admittedly having
a foreign cast, but nonetheless being close to the English
term “modern.”
The only other issue is whether the marks as a whole
create different commercial impressions, when used on the
particular goods of applicant and registrant. Applicant
insists that since registrant is using its foreign language
mark with goods such as macaroni, pasta, spaghetti, cookies
and crackers, the mark evokes a suggestion of goods of an
ethnic or international nature. Applicant’s mark is said
to create a much different commercial impression.
We cannot find a viable basis for making such a
distinction. In the first place, registrant’s mark is in
Spanish and the only “ethnic”-type goods on which the mark
is being used are Italian in nature. Furthermore,
applicant is also using its mark with goods which may be
Ser No. 74/375,061
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considered “ethnic” in nature. We note particularly the
specimen of record showing use of applicant’s mark on
Italian bread. We are convinced that the overall
commercial impressions created by the two marks LA MODERNA
and MODERN, as used on the identified goods, would be
highly similar.
Turning to the goods, the Examining Attorney argues
that the respective food items are closely related, relying
mainly on the “cookies and crackers” of the registration in
comparison with applicant’s “bread, rolls, and bagels.”
As support for this position, the Examining Attorney refers
to copies of several third-party registrations earlier made
of record showing registration by a single entity of the
same mark for both cookies or crackers and bread, rolls or
bagels.
Applicant insists that the goods are distinguishable
on the basis that registrant’s goods are “durable” foods
whereas applicant’s “fresh baked goods” are perishable in
nature. Applicant also argues that the goods travel in
different channels of trade, in view of this distinction
between perishable bakery goods and durable foodstuffs.
As a general principle, the issue of likelihood of
confusion must be determined on the basis of the goods as
identified in the application and registration. Canadian
Ser No. 74/375,061
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Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). It is not necessary
that the goods be similar or even competitive to support a
holding of likelihood of confusion; it is sufficient if the
respective goods are related in some manner and/or that the
conditions surrounding their marketing are such that they
would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
they emanate from the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) and the
cases cited therein. If there are no restrictions in the
application or registration as to the channels of trade,
the goods must be assumed to travel in all the normal
channels of trade for goods of this nature. See Kangol v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992).
There are no restrictions in applicant’s application
limiting its bake goods to “fresh” or highly “perishable”
products. In fact, as pointed out by the Examining
Attorney, one of the specimens of record shows use of
applicant’s mark on frozen bread. Even though applicant
argues that such a product would still have a short shelf
life, we cannot see how applicant’s baked goods can be
Ser No. 74/375,061
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distinguished from the cookies of registrant, which could
be sold in a packaged form with an equally short shelf
life.
Similarly, there is no limitation in applicant’s
application to any particular channels of trade, such as
independent bakeries as opposed to general food stores.
Neither does the fact that certain of registrant’s goods
may be “ethnic” in nature in any way limit registrant’s
channels of trade. Obviously, products such as cookies and
crackers, as well as pasta and macaroni, may be sold in the
same retail stores to the same purchasers as the bakery
products of applicant.
Moreover, not only would the respective goods be
likely to be sold in the same retail outlets, but there is
a close relationship between baked goods such as bread,
rolls and bagels and baked goods such as cookies and
crackers. The third-party registrations introduced by the
Examining Attorney are fully adequate to show that these
are the types of foods products which may emanate from the
same source. See In re Albert Trostel & Sons Co, supra; In
re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988). Thus,
when the highly similar marks involved herein are used on
the respective baked goods, purchasers may well assume a
common source. While applicant insist that we must take
Ser No. 74/375,061
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into consideration the entire description of registrant’s
goods in making this comparison, this is not the case.
Likelihood of confusion may be found if the public would be
likely to believe that applicant’s goods originate from the
same source as any of the goods recited in the
registration. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 208 USPQ 987 (CCPA 1981).
Finally, applicant raises the issue of lack of actual
confusion, despite the marks coexistence on the market for
almost fifteen years. This factor can be given little
weight, however, because registrant has not had the
opportunity to be heard from on this point.7 See In re
National Novice Hockey League, Inc., 222 USPQ 638 (TTAB
1984). In addition, as has often been stated, the test
under Section 2(d) is likelihood of confusion, not actual
confusion. See Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
Although applicant attributes the “peaceful concurrent
use” to the fact that applicant and registrant use
different color combinations in their packaging, this is
not a factor which can be taken into consideration in
7 We would note that although examination was suspended for a
period of time in order for applicant to obtain a consent
agreement from registrant, such a consent was never forthcoming.
Ser No. 74/375,061
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making our determination of likelihood of confusion. While
trade dress may provide evidence that a word mark projects
a confusingly similar commercial impression, the opposite
is not true, since trade dress may be changed at any time.
See Speciality Brands, Inc. v. Coffee Bean Distributors,
inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984). The
differences in the present-day trade dress of applicant and
registrant cannot be relied upon to obviate a likelihood of
confusion.
Accordingly, upon weighing all the relevant du Pont
factors, we find confusion likely.
Decision: The refusal to register under Section 2(d)
is affirmed.