New Morning Country Store, LLC

Trademark Trial and Appeal Board

Oct 23, 2009

No. 77181494 (T.T.A.B. Oct. 23, 2009)

Mailed:
October 23, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re New Morning Country Store, LLC
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Serial No. 77181494
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Anthony F. Lo Cicero of Amster, Rothstein & Ebenstein LLP
for New Morning Country Store, LLC.

Heather A. Biddulph, Trademark Examining Attorney, Law
Office 104 (Michael Baird, Managing Attorney).
_______

Before Drost, Zervas and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

New Morning Country Store, LLC (“applicant”) filed a
use-based application to register the mark NEW MORNING, in
standard character form, for services ultimately identified
as “retail grocery store services, expressly excluding the
retail sale of cookies,” in Class 35.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the mark NEW
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77181494
2
MORNING, in typed and standard character form, owned by
U.S. Mills, LLC, for the following goods in Class 30:
Breakfast cereal;1
Crackers;2 and,
Cookies.3
Preliminary Issues
A. Applicant’s proposed amendment to its description of
services.

In its appeal brief, “[a]pplicant respectfully
requests that it be allowed to amend its identification of
services to expressly exclude crackers and breakfast cereal
as well, thus removing the refusal based on the other two
Cited Marks.”4 The Examining Attorney did not acknowledge
or address applicant’s request to amend its description of
services.
“The record in the application should be complete
prior to the filing of an appeal. . . . After an appeal is
filed, if the appellant or the examiner desires to
introduce additional evidence, the appellant or the
examiner may request the Board to suspend the appeal and to
remand the application for further examination.” Trademark

1 Registration No. 1470855, issued December 29, 1987; Sections 8
and 15 affidavits accepted and acknowledged; renewed.
2 Registration No. 2694473, issued March 11, 2003; Sections 8 and
15 affidavits accepted and acknowledged.
3 Registration No. 3316957, issued October 23, 2007.
4 Applicant’s Brief, p. 3 n.1.
Serial No. 77181494
3
Rule 2.142(d). Generally, the Board will refuse to
consider applicant’s proposed amendment because it was not
timely, nor did applicant follow the proper procedure for
bringing it to our attention by filing a request to suspend
and to remand. However, because the Examining Attorney
summarily dismissed applicant’s exclusion of cookies in the
description of services as a basis for avoiding likelihood
of confusion,5 we assume that the Examining Attorney would
have summarily dismissed the applicant’s exclusion of
crackers and breakfast cereal as well. Accordingly, for
purposes of determining likelihood of confusion, we will
consider applicant’s description of services to read as
follows: “retail grocery store services, expressly
excluding the retail sale of cookies, crackers and
breakfast cereal.”
B. Applicant’s evidence attached to its reply brief.
Applicant attached excerpts of websites to its reply
brief purportedly to show that “groceries sell their
private label products under a mark which is different from
their store name.”6 As indicated above, Trademark Rule
2.142(d) provides that “the record in the application
should be complete prior to the filing of an appeal,” and

5 Examining Attorney’s Brief, p. 6.
6 Applicant’s Reply Brief, p. 3 and Exhibits A and B.
Serial No. 77181494
4
that if the applicant desires to introduce additional
evidence, the [applicant] . . . may request the Board to
suspend the appeal and to remand the application for
further examination.” Because applicant did not request
the Board to suspend the appeal and to remand the
application, we will not consider the evidence attached to
the reply brief.
C. The Examining Attorney’s evidence.
1. Third-party registrations.
In the April 2, 2008 Office Action, the Examining
Attorney submitted 19 third-party registrations purportedly
registered for cereal, crackers, and/or cookies, as well as
for retail grocery store services. In the November 11,
2008 Office Action, the Examining Attorney submitted
another 22 third-party registrations. However, 14 of the
22 registrations had been previously submitted in the April
2, 2008 Office Action. We do not give any additional
weight to these duplicate registrations.
Furthermore, of the 19 third-party registrations
submitted with the April 2, 2008 Office Action, one did not
include retail grocery store services and one did not
include the relevant goods.

Serial No. 77181494
5
2. Internet evidence.
The Examining Attorney submitted third-party websites
purportedly to “show retail grocery store services,
breakfast cereals, crackers and cookies offered under the
same mark.”7
In the September 6, 2007 Office Action, the Examining
Attorney submitted excerpts from the ExpressLane website
(mywebgrocer.com) purportedly to show that HARRIS TEETER
grocery stores sells HARRIS TEETER branded breakfast cereal
and crackers. However, there is nothing in the website
that identifies HARRIS TEETER as a grocery store and, thus,
we cannot conclude that a HARRIS TEETER grocery store sells
HARRIS TEETER breakfast cereal and crackers.
In the November 11, 2008 Office Action, the Examining
Attorney submitted excerpts from the WHOLE FOODS website
(no url provided) purportedly to show that WHOLE FOODS
grocery stores sells WHOLE FOODS branded breakfast cereal,
cookies and crackers. We can infer from the website that
WHOLE FOODS is a grocery store chain because there are
references to “Find your store,” “Stores,” and “Store
Departments: Bakery, Cheese, Coffee & Tea . . .” However,
the website excerpt is ambiguous at best as to whether

7 Examining Attorney’s Brief, p. 7.
Serial No. 77181494
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WHOLE FOODS is used for a mark for both goods and services.
For example, in the excerpt from the website shown below,
it is not clear whether “Our Whole Foods Market products”
refers to the variety of third-party products sold by Whole
Foods or products identified by the WHOLE FOODS MARKET
trademark.

Because of the ambiguity, the WHOLE FOODS website has
little, if any, probative value.
The Examining Attorney submitted excerpts from the
DILLONS (dillons.com), RALPHS (ralphs.com), SMITH’S
(smithsfoodanddrug.com) and KROGER (Kroger.com) websites.
None of these websites show the use of the same mark for
grocery store services and food products. However, the
DILLONS, RALPHS and SMITH’S websites refer to “Kroger
Brands.”

Serial No. 77181494
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Our Exclusive Brands
Kroger Brand
Bring home the goodness. Our standards are high
so that you know you’re getting the quality
products you want at affordable price.

* * *
Kroger Value
When you buy Kroger Value for the basics you
need, you can save money for things you want.
That’s smart shopping!

The copyright notice on the websites identifies The Kroger
Co. as the owner. However, we cannot tell from the
websites whether and the extent to which consumers
associate Dillons, Ralphs, and Smiths with Kroger.
Moreover, while the websites indicate that there are KROGER
and KROGER VALUE brands, there is no indication as to
whether the products include crackers, cookies, and
breakfast cereal. To the extent that these websites have
any probative value, they show that a supermarket may sell
another supermarket’s branded product.
Likelihood of Confusion
Our determination of likelihood of confusion 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 issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
Serial No. 77181494
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177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. The marks are identical
- - NEW MORNING.
B. The similarity or dissimilarity and nature of the
goods and services described in the application and
registrations.

It is well settled that applicant’s retail grocery
store services and the registrant’s breakfast cereal,
crackers and cookies do not have to be identical or
Serial No. 77181494
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directly competitive to support a finding that there is a
likelihood of confusion. It is sufficient if the
respective goods and services 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 in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In addition, the greater the degree of similarity
between the marks, the less similarity between the services
is required to support a finding of likelihood of
confusion. Where as here, the marks are identical, there
need be only a viable relationship between the goods and
services to find that a likelihood of confusion exists. In
re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
As discussed above, the Examining Attorney submitted
25 use-based, third-party registrations for grocery store
services and crackers (10 registrations), cookies (22
registrations) and breakfast cereal (9 registrations). A
Serial No. 77181494
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third-party registration which individually covers a number
of different goods and services that is based on use in
commerce may have some probative value to the extent that
it serves to suggest that the listed goods and services are
of a type which may emanate from the same source. In re
Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).
In addition, the Examining Attorney submitted excerpts
from websites, discussed below, that show third parties
using the same mark to identify online grocery store
services and cookies, crackers and/or breakfast cereal.
1. Safeway website (safeway.com) shows SAFEWAY used
for online grocery store services and breakfast cereal and
crackers.
2. PEAPOD by GIANT website (peapod.com) shows GIANT
used for online grocery store services and breakfast cereal
and crackers.
3. Giant website (no url provided) shows GIANT used
for online grocery store services and breakfast cereal and
crackers.
4. Stop&Shop website (no url provided) shows
STOP&SHOP used for online grocery store services and
breakfast cereal, cookies and crackers
Serial No. 77181494
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In view of the foregoing, we find the respective goods
and services are related. Applicant argues that grocery
store services and food products are not necessarily
related because “[t]he Federal Circuit has held that
confusion is not automatically likely between restaurant
services on the one hand, and food or beverages on the
other, notwithstanding the fact that some restaurants sell
their own private label food and beverages,” citing In re
Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir.
1340) (beer and restaurant services are not sufficiently
related since the fact that restaurants sell food and
beverages is not alone sufficient to show that beverages
and restaurant services are related for purposes of
likelihood of confusion).8 In other words, applicant is
arguing that the Examining Attorney must “show something
more than that similar or even identical marks are used for
food products and for restaurant services.” Jacobs v.
International Multifoods Corp., 668 F.2d 1234, 212 USPQ
641, 642 (CCPA 1982). Contrary to applicant’s argument,
the Jacobs “something more” requirement is not applicable
to a case involving the relatedness of food items and
grocery store services. Retail store services and the
goods that may be sold through those services are related

8 Applicant’s Brief, p. 2.
Serial No. 77181494
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goods and services for the purpose of determining
likelihood of confusion. See In re Hyper Shoppes, 837 F.2d
463, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988) (“general
merchandise store services” includes the sale of
furniture); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006)
retail jewelry store services and jewelry are competitive,
inherently related goods and services); Fortunoff Silver
Sales, Inc. v. Norman Press, Inc., 225 USPQ 863, 866 (TTAB
1985) (“there is little question that jewelry store
services and jewelry are highly related goods and
services). In any event, the evidence in this case
satisfies the “something more” evidentiary language because
the marks at issue are identical, strong, arbitrary marks
and applicant concedes that consumers are aware that many
grocery retailers market private label products albeit,
according to applicant, under marks different from the
store name.9

9 Applicant’s Reply Brief, p. 3. Applicant also cites the non-
precedential decision CNL Tampa International Hotel Partnership,
LP v. Laurie A. Gomulka Palazzolo (Opposition No. 91163724, March
7, 2007) (i.e., “if third party registrations alone are
considered sufficient to prove that goods and services are
related, then virtually all consumer products and services would
be related”). First, by definition, non-precedential decisions
are not binding on the board or the trademark examining
attorneys. Second, the facts in CNL are clearly distinguishable.
Opposer alleged that the application for the mark PELAGIA for
shirts was likely to cause confusion with PELAGIA for restaurant
services. However, the only evidence regarding the relationship
between restaurant services and shirts were third-party
Serial No. 77181494
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C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

While applicant has attempted to restrict its
description of services to exclude cookies, crackers and
breakfast cereals, the description of goods in the cited
registrations have no restrictions as to channels of trade.
Because there are no limitations as to channels of trade or
classes of purchasers in the description of goods for the
cited registrations, we must presume that registrant’s
cookies, crackers and breakfast cereals move in all
channels of trade normal for those goods, and that they are
available to all classes of purchasers for the listed goods
and service. In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). The evidence demonstrates that cookies,
crackers and breakfast cereals are sold by grocery stores
and, therefore, we find that cookies, crackers and
breakfast cereals are products that consumers expect to
find in grocery stores. See In re Linkvest S.A., 24 USPQ2d

registrations. The Board explained that the third-party
registrations were insufficient to prove that purchasers
generally expect restaurant services and shirts to emanate from a
single source particularly because shirts are “collateral
merchandising” products. In this case, the evidence regarding
the relationship of the goods and services includes evidence of
third-party use of the same marks for both online grocery store
services and crackers, cookies and breakfast cereal. In
addition, applicant does not dispute that consumers recognize
that grocery stores sell private label products. Finally,
grocery store services and the products in the cited
registrations are not collateral merchandise.
Serial No. 77181494
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at 1716 (registrant’s unrestricted computer programs
encompass applicant’s computer software for data
integration and transfer). Moreover, the evidence also
shows that Ralphs, Dillons, and Smith’s grocery stores sell
KROGER brand products. Thus, consumers encountering NEW
MORNING products at a third-party store may believe that
the products are associated with the NEW MORNING grocery
store.
E. Applicant’s priority argument.
Applicant argues that “[a]pplicant should prevail
since it has priority of use.”10 Priority of use is not
germane in an ex parte proceeding. Section 2(d) does not
reference priority. The Act precludes the registration of
a mark “which so resembles a mark registered in the Patent
and Trademark Office . . . as to be likely, when used on or
in connection with the good of the applicant, to cause
confusion.” In re Calgon Corp., 435 F.2d 596, 168 USPQ
278, 280 (CCPA 1971); In re Cook United, Inc., 185 USPQ
444, 445 (TTAB 1975).
D. Balancing the du Pont factors.
In view of the facts that the marks are identical and
the goods and services are related and move in the same

10 Applicant’s Brief, p. 4.
Serial No. 77181494
15
channels of trade and are sold to the same classes of
consumers, we find that applicant’s mark NEW MORNING for
grocery store services is likely to cause confusion with
the registrant’s mark NEW MORNING for cookies, crackers and
breakfast cereal.
Decision: The refusal to register is affirmed and
registration to applicant is refused.