Paper Petals, LLC

Trademark Trial and Appeal Board

Sep 11, 2007

No. 78672003 (T.T.A.B. Sep. 11, 2007)

Mailed:
September 11, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Paper Petals, LLC
________

Serial No. 78672003
_______

Annette P. Heller and Morris E. Turek of Heller &
Associates for Paper Petals, LLC

Priscilla Milton, Trademark Examining Attorney, Law Office
110 (Chris Pederson, Managing Attorney)
_______

Before Seeherman, Walsh and Kuhlke, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Paper Petals, LLC has appealed from the final refusal
of the Trademark Examining Attorney to register PAPER
PETALS, with PAPER disclaimed, depicted in the stylized
form shown below, for the following goods:
Greeting cards, stationery, stationery
boxes, envelopes, notepads, gift tags,
note cards, postcards, recipe cards,
invitation cards, wrapping paper, gift
boxes and bands, gift bags, diaries,
writing instruments, writing tablets,
calendars, posters, prints, scrapbooks,
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Ser No. 78672003
2
photograph albums, correspondence cards
(Class 16).1

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant's mark, when used in connection with the
identified goods, so resembles the following marks,
previously registered by the same entity, that, when used
in connection with applicant's identified goods, it is
likely to cause confusion or mistake or to deceive:
PETALS, in typed form, for “greeting
cards” (Class 16);2 and

for “greeting cards” (Class 16).3
Applicant and the Examining Attorney have filed appeal
briefs, and applicant filed a reply brief.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative

1 Application Serial No. 78672003, filed July 17, 2005, and
asserting first use and first use in commerce as of August 1,
2001.
2 Registration No. 2732719, issued July 1, 2003.
3 Registration No. 2732809, issued July 1, 2003.
Ser No. 78672003
3
facts in 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).
We first consider the goods. We must determine the
question of the similarity of the goods as they are
identified in applicant’s application and the cited
registrations. Applicant has identified its goods as
"greeting cards, stationery, stationery boxes, envelopes,
notepads, gift tags, note cards, postcards, recipe cards,
invitation cards, wrapping paper, gift boxes and bands,
gift bags, diaries, writing instruments, writing tablets,
calendars, posters, prints, scrapbooks, photograph albums,
correspondence cards." The registrant's goods are
identified as "greeting cards." Applicant’s identified
goods are, thus, identical in part to the registrant's
identified goods, greeting cards.
Ser No. 78672003
4
Further, the evidence of record shows that the
additional goods identified in applicant’s application are
related to greeting cards. Specifically, the Examining
Attorney has made of record a number of third-party
registrations, based on use in commerce, showing that a
single mark has been registered by various entities for
both the goods identified in applicant’s application and
those identified in the cited registrations.4 These third-
party registrations include Registration No. 0959401 for
CURRENT and design for, inter alia, greeting cards and
recipe cards; Registration No. 2691063 for WHEELY AMAZING
ART and design for, inter alia, greeting cards and gift
boxes; Registration No. 2740405 for FRIENDLY FACES for,
inter alia, greeting cards, envelopes, note cards and
invitation cards; Registration No. 2877349 for IOTA for,
inter alia, greeting cards, blank notepads and envelopes;
Registration No. 2985030 for BLUE MARMALADE for, inter
alia, greeting cards, stationery and wrapping paper; and
Registration No. 3054472 for VAP for, inter alia, greeting
cards, diaries and scrapbooks. Third-party registrations

4 It is noted that the Examining Attorney provided a large number
of third-party registrations as evidence, directing us in a
footnote to “See the attachments to the Office action dated
2/07/2006 in the Office electronic records.” Brief, p. 2. In
view of the large number of third-party registrations, it would
have been helpful if the Examining Attorney had pointed out in
her brief those that were most probative.
Ser No. 78672003
5
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
In view thereof, we find that applicant’s goods are
identical in part and otherwise related to the registrant’s
identified goods. Thus, the du Pont factor of the
similarity of the goods favors a finding of likelihood of
confusion.
Moreover, to the extent that the goods are legally
identical, as they are here since both applicant’s and the
registrant’s goods include greeting cards, they must be
deemed to be sold in the same channels of trade and to the
same classes of customers. Thus, the du Pont factor of the
channels of trade also favors a finding of likelihood of
confusion.
Although the factor of the conditions of purchase have
not been discussed by applicant or the Examining Attorney,
we note that this factor also favors a finding of
likelihood of confusion. The goods are sold to the general
public, who would not be particularly sophisticated about
the goods. Moreover, greeting cards, note pads, post cards
and the other goods identified in applicant’s application
Ser No. 78672003
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can be inexpensive and therefore are not likely to be
purchased with a great deal of attention to the trademarks
for such items. In fact, some of these goods must be
regarded as impulse purchases.
This brings us to the similarity of the marks, keeping
in mind that when marks would appear on virtually identical
goods, as they do here, the degree of similarity necessary
to support a conclusion of likely confusion declines.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). It is
a well-established principle that, in articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For instance, as our
principal reviewing court has observed, "[t]hat a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark."
Id.
Ser No. 78672003
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The two cited registrations consist of (1) the term
PETALS in typed form, and (2) the term PETALS in stylized
font encircled by a design element composed of what appear
to be petals.
Applicant’s mark is PAPER PETALS. With respect to the
cited registration for PETALS per se, applicant has in
essence simply added the descriptive term PAPER to the
registrant's mark.5 Applicant concedes that “PETALS is the
more significant and dominant portion of Applicant’s mark,”
and that the word PAPER “is descriptive and has been
disclaimed.” Brief, p. 8. We agree. Because the
additional word PAPER in applicant’s mark is highly
descriptive of the greeting cards and paper products
identified in the application, it is not sufficient to
distinguish applicant’s mark from the registrant’s.
As for the cited registration for PETALS and design,
because the word PETALS in the design mark is the portion
of the mark that can be articulated, and therefore will be
used by purchasers to request or refer to the goods, it is
this element that is entitled to greater weight. See In re

5 We recognize that applicant’s mark uses a stylized type font,
but we do not consider this difference to be distinguishing. The
registered PETALS mark in typed form could be displayed in the
same font used by applicant. As for the registered PETALS design
mark and applicant’s mark, the fonts in neither mark are so
unusual that they would make a particular impression, or cause
consumers to distinguish the marks on this basis.
Ser No. 78672003
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Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Moreover, because the design element only reinforces the
term PETALS, it does not serve as a distinguishing feature
of the mark.
As a result, although applicant’s mark contains the
additional word PAPER, because of the descriptive nature of
this word and the lesser weight to which it is entitled as
we compare the marks in their entireties, applicant’s mark
and the registrant’s marks are still similar in appearance,
and connotation, and they are substantially the same in
connotation and commercial impression.
Applicant argues that because of the presence of the
term PAPER in its mark, its mark creates a distinct
commercial impression from the registered marks and that
the Examining Attorney improperly dissected the mark by
dismissing the significance of the term PAPER. Applicant
relies principally on In re Hearst Corp., 982 F.2d 493, 25
USPQ2d 1238 (Fed. Cir. 1992), which applicant argues is
factually indistinguishable from this case, stating that
“just as the applicant in Hearst added the descriptive (and
disclaimed) term ‘girl’ to the registered mark VARGA, [sic]
Applicant, in this case, has added the descriptive term
‘paper’ to the registered mark PETALS.” Brief, pp. 8-9;
reply brief, p. 2. We believe Hearst is distinguishable
Ser No. 78672003
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from the facts at hand and does not control our
determination in this case. In Hearst, the mark VARGA GIRL
for calendars was held not to be confusingly similar to
VARGAS for, inter alia, calendars. The Court found that
“the Board erred in its diminution of the contribution of
the word ‘girl’” and that “[w]hen GIRL is given fair
weight, along with VARGA, confusion with VARGAS becomes
less likely.” 25 USPQ2d at 1239. Contrary to applicant’s
assertions, in Hearst the applicant did not add a
descriptive and disclaimed term to the registered mark, as
applicant has done here. Rather, the registered mark was
VARGAS (emphasis added), while the applicant’s mark was
VARGA GIRL (without an “S”), and the word GIRL was not
disclaimed. See Registration No. 3232049. Moreover, the
Court in Hearst explicitly recognized that the weight to be
given terms in a mark is “not entirely free of
subjectivity” and provided examples to “illustrate the
fact-dependency of such determinations.” Id. The Court
confirmed, in In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004), that the
determination is highly fact-specific (affirming the
Board’s decision that JOSE GASPAR GOLD for tequila was
likely to cause confusion with GASPAR'S ALE for beer and
ale). As we noted supra, the Court has also recognized
Ser No. 78672003
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"[t]hat a particular feature is descriptive ... with
respect to the involved goods ... is one commonly accepted
rationale for giving less weight to a portion of a mark."
In re National Data Corp., 224 USPQ at 751. Accordingly,
there is nothing improper in giving less weight to the
descriptive term PAPER and more weight to the dominant term
PETALS as we consider the similarity of the marks in their
entireties.
Applicant also asserts that the registered marks are
weak and thus entitled to only a narrow scope of
protection, referring to the following four third-party
registrations for goods in International Class 16: PRETTY
PETALS for “stationery-type portfolios and wirebound
notebooks” (Reg. No. 2967635); POETICPETALS for “custom
designed notes pads, note cards, invitations and stickers”
(Reg. No. 2991984); PETAL PROFUSION for “greeting cards and
note cards” (Reg. No. 2449224); and PETAL POINT for
“artists’ materials, namely ink pads and stamp pad inks”
(Reg. No. 2027789). We disagree. Third-party
registrations, of course, are not evidence that the marks
shown therein are in use or that the public is aware of
them. See AMF Incorporated v. American Leisure Products,
Inc., 177 USPQ 268, 269 (CCPA 1973) ("little weight is to
be given such registrations in evaluating whether there is
Ser No. 78672003
11
likelihood of confusion."). We recognize that third-party
registrations may be used in the manner of dictionary
definitions, to show that a term has a significance for
particular goods. However, we are unable to conclude from
these four registrations that PETALS has a suggestive or
highly suggestive meaning.6 More importantly, even if the
cited registrations were to be considered “weak” marks,
weak marks are entitled to protection from the registration
of a highly similar mark for identical and closely related
goods. See In re Colonial Stores, Inc., 216 USPQ 793 (TTAB
1992); see also King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between
weak marks as between strong marks.)
We have concentrated our analysis on the du Pont
factors that have been discussed by applicant and the
Examining Attorney. To the extent that any other factors
are applicable, we have treated them as neutral.

6 Applicant, although recognizing that the Board cannot consider
a collateral attack on a cited registration, has made such an
attack by asserting that PETALS is merely descriptive and that
the registration for PETALS “should have never issued to
registration on the Principal Register, and that PETALS, in
Registrant’s design mark (Reg. No. 2,732,809), should have been
disclaimed.” Brief, p. 5. Registrations are presumed valid and
are entitled to the presumptions of Section 7(b) of the Trademark
Act. 15 U.S.C. §1057(b). See In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Thus, we have given no
consideration to this argument.
Ser No. 78672003
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After considering all the relevant du Pont factors and
all the relevant evidence of record, we find that the
Examining Attorney has demonstrated that applicant’s mark
PAPER PETALS for its identified goods is likely to cause
confusion with the registered marks PETALS and PETALS and
design.
Decision: The refusal of registration is affirmed.