Poppies International NV

Trademark Trial and Appeal Board

Feb 7, 2008

No. 78519947 (T.T.A.B. Feb. 7, 2008)

Mailed:
February 7, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Poppies International NV
________

Serial No. 78519947
_______

Mark P. Vrla of Jenner & Block LLP for Poppies International
NV.

Robin M. Mittler, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Seeherman, Bucher and Zervas, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Poppies International NV seeks registration on the
Principal Register of the following mark:

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78519947
- 2 -
for goods identified in the application as “bakery goods,
pastries, cookies, cakes, biscuits, éclairs, cream puffs,
donuts, waffles, frozen desserts and confections” in
International Class 30.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register applicant’s mark based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney asserts that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
POPPIES (in standard character format), which is registered
for “bakery products; namely, bread, bagels, pastry and
bialys” in International Class 30 and “retail bakery shop,
restaurant and catering services” in Class 42,2 as to be
likely to cause confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney
submitted briefs. We affirm the refusal to register.

1 Application Serial No. 78519947 was filed by Poppies
International NV, a Belgian corporation, on November 19, 2004
based upon applicant’s allegation of first use anywhere and first
use in commerce at least as early as August 31, 1990.

2 Registration No. 2018578 issued to Rachael, Inc., DBA
Poppies Restaurant and Delicatessen, on November 26, 1996;
renewed.

Serial No. 78519947
- 3 -
In arguing for registrability, applicant contends that
its mark is not confusingly similar to the cited mark; that
applicant and registrant rely upon different trade channels;
and that despite almost fifteen years of contemporaneous
use, there have been no reported instances of actual
confusion between applicant’s and registrant’s marks.
By contrast, the Trademark Examining Attorney contends
that the marks are similar in sound, appearance, connotation
and commercial impression; that the goods and services are
in part identical and otherwise closely related; and that
the lack of evidence of actual confusion does not preclude a
finding that confusion is likely.
Our determination under Section 2(d) is based upon 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, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods and/or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Serial No. 78519947
- 4 -
Goods
We turn first to the du Pont factor focusing on the
relationship of the goods and services herein. In this
context, while the cited registration includes goods and
services, we concentrate herein on registrant’s identified
goods in International Class 30. As pointed out by the
Trademark Examining Attorney, applicant’s “pastries” are
legally identical to registrant’s “bakery products; namely …
pastry ….” Applicant’s “bakery goods” would appear to be
broad enough to encompass registrant’s “bakery products;
namely, bread, bagels, pastry and bialys.”
Moreover, the Trademark Examining Attorney has made of
record third-party registrations demonstrating that goods as
identified in applicant’s application and registrant’s
registration come from the same source. These
registrations, summarized below, have probative value to the
extent that they serve to suggest that the goods listed
therein are of a kind that may emanate from a single source.
In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB
2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc.,
6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
Serial No. 78519947
- 5 -
PASTRY ART for “pastries, cookies, cakes,
breads” in International Class 30;3

for “bagels, bread, … pastries,
donuts, …” in International Class
30;4

for, inter alia, “… bread, …
cakes, cookies, … pastries …” in
International Class 30;5
Boulangerie
Pierre &
Pâtisserie
for “bread, cakes and cookies” in
International Class 30;6

3 Registration No. 3062164 issued on February 28, 2006. No
claim is made to the word “Pastry” apart from the mark as shown.

4 Registration No. 3119620 issued on July 25, 2006. No claim
is made to the exclusive right to use the words "bagels” and “New
York’s best bagels” apart from the mark as shown.

5 Registration No. 3162684 issued on October 24, 2006.

6 Registration No. 3170988 issued on November 14, 2006. No
claim is made to the exclusive right to use the words
“Boulangerie” and “Patisserie” apart from the mark as shown.

Serial No. 78519947
- 6 -

for “bagels, bakery goods, … cakes,
… cookies, crepes, éclairs, …
frozen custards, frozen yogurt,
gelato, ice cream, iced cakes, …
pastries …” in International Class
30;7

for, inter alia, “… cakes, … bread,
cookies …” in International Class
30;8

for, inter alia, “… cookies,
pastries and bread, …” in
International Class 30;9
CITY BREW for “bread, … cakes, cookies, …
pastries, … bagels …” in
International Class 30;10

7 Registration No. 3171284 issued on November 14, 2006. No
claim is made to the exclusive right to use the word “Patisserie”
apart from the mark as shown.

8 Registration No. 3173478 issued on November 21, 2006.

9 Registration No. 3175302 issued on November 21, 2006. No
claim is made to the exclusive right to use the word "Coffee”
apart from the mark as shown.

10 Registration No. 3176319 issued on November 28, 2006. No
claim is made to the exclusive right to use the word "Brew” apart
from the mark as shown.

Serial No. 78519947
- 7 -
Goldie’s for “… bakery goods, … biscuits,
bread, butter biscuits, … cakes, …
donuts, éclairs, frozen breads, …
fruit cakes, ice-cream cakes, onion
or cheese biscuits, … savory and
salted biscuits, sponge cakes,
[and] whole meal bread” in
International Class 30;11
THE WISDOM OF
WHOLE GRAINS
for “bread, … bagels, fresh and
frozen waffles, cookies …” in
International Class 30;12 and
BERTRAND for “frozen breads … sweet cookies,
pastry” in International Class 30.13

Accordingly, from these registrations, we conclude that many
of applicant’s other enumerated goods are related to
registrant’s “bread, bagels, pastry and bialys.” The
Trademark Examining Attorney also submitted pages from a
number of websites showing that bread, bagels, bakery goods,
pastries and desserts are sold by the same entities:
o The George Weston Bakeries, Inc., home page indicates
that it produces, inter alia, cakes, cookies, donuts
and bread. < www.gwbakeries.com >
o The Manhattan Bread & Bagel website shows that it
offers bagels and breads as well as pastries, cakes and
cookies. < www.manhattanbread.com >
o The Dunkin’ Donuts website indicates that it offers
bagels and other bakery items as well as donuts.
< www.dunkindonuts.com >

11 Registration No. 3177126 issued on November 28, 2006.

12 Registration No. 3178246 issued on November 28, 2006. No
claim is made to the exclusive right to use the words "Whole
Grains” apart from the mark as shown.

13 Registration No. 3185567 issued on December 19, 2006.

Serial No. 78519947
- 8 -
Applicant provides no rebuttal to the Trademark
Examining Attorney’s evidence that these identified products
are closely related.
Channels of trade
Turning to the du Pont factors dealing with the
similarity or dissimilarity of established, likely-to-
continue trade channels, we must presume that applicant’s
goods and registrant’s goods will move through all of the
normal channels of trade to all of the usual consumers of
goods of the type recited. See Canadian Imperial Bank of
Commerce, National Association v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). Because
applicant’s identification of goods includes bakery goods
and pastries, and the cited registration includes bread,
bagels and pastry, the channels of trade must be deemed to
be the same. Hence, this du Pont factor favors a finding of
likelihood of confusion.
We note applicant’s contention that the respective
trade channels are, in actuality, quite different.
Applicant sells its products primarily through large retail
grocery store chains and warehouse club stores. By
contrast, according to applicant, registrant sells its
recited products exclusively though a delicatessen in Delray
Serial No. 78519947
- 9 -
Beach, Florida, and has no plans to expand its operations
beyond this single site location. However, there are
several problems with this argument.
First, although applicant points to evidence that
applicant and registrant employ distinct channels of trade,
we cannot resort to such extrinsic evidence in order to
restrict registrant’s goods and services. See, e.g., In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)
[evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or
registration].
Second, inasmuch as applicant seeks a registration that
is nationwide in scope, and the registrant’s registration
entitles it to operate anywhere in the United States, it is
irrelevant under the third du Pont factor that the parties
may presently operate in different geographic locations.
Cf. Trademark Rule 2.133(c), 37 C.F.R. § 2.133(c)
[“Geographic limitations will be considered and determined
by the Trademark Trial and Appeal Board only in the context
of a concurrent use proceeding”].
Serial No. 78519947
- 10 -
Conditions of sale
Whether the sale is consummated in a grocery store, a
bakery, a deli, or other retail establishments that sell
bread, bagels, pastries and other bakery products, the items
listed in applicant’s and registrant’s respective
identifications of goods involve relatively low cost
purchases made without a high degree of care. In fact,
because of the very nature of these items, they may well be
bought on impulse. Hence, this du Pont factor favors the
position of the Trademark Examining Attorney that there
would be a likelihood of confusion herein.
The Marks
The critical du Pont factor that the Trademark
Examining Attorney and applicant discuss at length in their
briefs involves the similarities or dissimilarities in the
appearance, sound, connotation and commercial impression of
the respective marks. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
We note, in discussing this factor, that the Court of
Appeals for the Federal Circuit has held that when marks
appear on “virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
Serial No. 78519947
- 11 -
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
Under actual market conditions, consumers generally do
not have the luxury of making side-by-side comparisons. The
proper test in determining likelihood of confusion is not a
side-by-side comparison of the marks, but rather, the
decision must be based on the similarity of the general
overall commercial impressions engendered by the involved
marks. See Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
Registrant’s mark is simply the word POPPIES shown in
standard character format. Applicant describes its special
form mark as follows: “the words
POPPIES MEESTER BAKKER POPELIER
MAITRE PATISSIER within an oval, with
a rectangular portion extending from
the oval and a poppy flower above the
word ‘POPPIES.’”

Applicant is correct in noting that allegedly
conflicting marks must be compared in their entireties under
any Section 2(d) analysis. Nevertheless, one feature of a
mark may be recognized as more significant in creating a
commercial impression. Greater weight is given to that
Serial No. 78519947
- 12 -
dominant feature in determining whether there is a
likelihood of confusion. See In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) [marks THE CASH
MANAGEMENT EXCHANGE and CASH MANAGEMENT ACCOUNT have very
similar overall commercial impressions; “Cash Management” is
the dominant feature of both marks]; and In re J.M.
Originals Inc., 6 USPQ2d 1393 (TTAB 1987) [J M COLLECTABLES and
JM ORIGINALS are confusingly similar].
Applicant points out that its mark has six words.
However, the Trademark Examining Attorney notes that
applicant has disclaimed the descriptive terms “Meester
Bakker” and “Maitre Patissier,” both of which translate as
“master pastry chef.” Although disclaimed, descriptive
wording within a mark certainly cannot be ignored, the non-
disclaimed portion of the mark may be more significant in
creating a commercial impression. In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533
(Fed. Cir. 1997); [likelihood of confusion
between DELTA and The Delta Café (at right)];
In re National Data Corporation, 224 USPQ at 752; and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002) [HEWLETT PACKARD confusingly
similar to PACKARD TECHNOLOGIES].
Serial No. 78519947
- 13 -
Accordingly, when considering marks for purposes of a
likelihood of confusion determination under Section 2(d) of
the Trademark Act, it is appropriate for us to find that
disclaimed matter such as “Meester Bakker” and “Maitre
Patisserie” is entitled to lesser weight.
Moreover, when a mark consists of words and designs,
the word portion is more likely to be impressed upon a
purchaser’s memory and to be used in calling for the goods
or services. Therefore, the word portion is normally
accorded greater weight in determining likelihood of
confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593,
1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987) [Mark having the word “Appetito” in block
letters, prominently
displayed between broad
geometric stripes as applied
to Italian sausages, likely
to cause confusion with

versus
"Appetito’s" printed in
small script letters across
a large capitalized letter

and
Serial No. 78519947
- 14 -
“A” and "Appetito’s Inc."
with a large capitalized
letter “A” and the design
of a sandwich, for
restaurant services].

Our primary reviewing court has also found that the
words, rather than the design features of the respective
logos, will create a greater impression on customers. Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390, 395 (Fed. Cir. 1983) [the difference design of
the GIANT hamburger mark does not serve to avoid confusion
with the four claimed marks of Giant Food]:

GIANT
FOOD

SUPER
GIANT

As to the image of a poppy, if prospective consumers
even notice this small design, it will merely serve to
reinforce the dominant literal portion of the mark,
“Poppies.” While applicant argues that the “medallion and
ribbon design” within applicant’s mark contributes to its
distinct commercial impression, we view these common
geometric backgrounds (an oval and a rectangle) as carrier
devices without source-indicating significance. Seabrook
Foods, Inc., v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ
Serial No. 78519947
- 15 -
289 (CCPA 1977); Guess? Inc. v. Nationwide Time Inc.,
16 USPQ2d 1804 (TTAB 1990); and In re Anton/Bauer Inc.,
7 USPQ2d 1380 (TTAB 1988).
In the final analysis, clearly, the dominant and most
distinctive element of applicant’s mark is the word
“Poppies.” It is located in the very center of the oval, is
made more prominent with shadowing features, and is
significantly larger than any of the other wording.
Applicant argues that several features in its composite
suggest a sophisticated, European style of baking. For
example, applicant points to the various European languages
appearing within the mark – the wording “Meester Bakker”
(Dutch or Flemish) and “Maitre Patisserie” (French) – as
well as the poppy flower design portion of applicant’s mark,
which applicant argues evokes associations with European war
veterans (a well-known poem, “In Flanders Fields the Poppies
Blow” by John McRae, commemorates a World War I battlefield
and the poppy flowers that grow there).
However, even if we were to accept these associations
as readily apparent to the average consumer in the United
States, we agree with the Trademark Examining Attorney that
we must presume that registrant’s POPPIES mark, identical to
the dominant portion of applicant’s mark, could well create
these same connotations and commercial impressions.
Serial No. 78519947
- 16 -
Furthermore, even if prospective consumers of bakery
products were to notice some of the differences applicant
points out between applicant’s mark and the registered mark,
the consumers could still reasonably assume, due to the
overall similarities in commercial impressions created by
the respective marks, that applicant’s goods constitute a
new product line from the same source as the goods sold
under the POPPIES mark with which they are acquainted, or
simply that it is a variation of the established POPPIES
mark. See SMS, Inc. v. Byn-Mar Inc., 228 USPQ 219, 220
(TTAB 1985) [applicant’s marks ALSO ANDREA and ANDREA SPORT
were “likely to evoke an association by consumers with
opposer’s preexisting mark [ANDREA SIMONE] for its
established line of clothing.”).
In sum, peripheral differences between the marks as to
sound and appearance notwithstanding, we find that the marks
are quite similar when compared in their entireties as to
connotation and commercial impression. In re Chatam
International Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944,
1946 (Fed. Cir. 2004) ["Viewed in their entireties with non-
dominant features appropriately discounted, the marks
[GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila]
become nearly identical”]; Hewlett-Packard Co. v. Packard
Press Inc., 62 USPQ2d at 1004; In re El Torito Restaurants
Serial No. 78519947
- 17 -
Inc., 9 USPQ2d 2002 (TTAB 1988) [MACHO COMBOS for food items
and MACHO for sandwich is likely to cause confusion].
In making our determination on this critical du Pont
factor, we find that the dominant portion of applicant’s
mark is identical to registrant’s mark, and the additional
wording and designs in applicant’s mark alter neither its
connotation nor commercial impression.
Period of contemporaneous use without actual confusion

Finally, we turn to the du Pont factor dealing with the
length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.
Applicant argues that coexistence over a period of fifteen
years provides strong evidence that confusion is not likely
to occur in the future. As to whether there has been
sufficient opportunity for confusion to occur, the record
contains no indication of the level of sales or advertising
by applicant. The absence of any instances of actual
confusion is a meaningful factor only where the record
indicates that, for a significant period of time, an
applicant’s sales and advertising activities have been so
appreciable and continuous that, if confusion were likely to
happen, any actual incidents thereof would be expected to
have occurred and would have come to the attention of one or
Serial No. 78519947
- 18 -
both of these trademark owners. We also noted earlier that
applicant claims that registrant is using its mark in a
limited geographic area. This fact may explain the lack of
evidence of actual confusion. However, in our determination
of likelihood of confusion, we have to consider the
registrant’s goods to be unrestricted geographically and to
be sold in all appropriate channels of trade for the goods.
All of these enumerated factors materially reduce the
probative value of applicant’s argument regarding asserted
lack of actual confusion. Therefore, applicant’s claim that
no instances of actual confusion have been brought to
applicant’s attention is not indicative of an absence of a
likelihood of confusion. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
In any event, we are mindful of the fact that the test
under Section 2(d) of the Act is likelihood of confusion,
not actual confusion.
Conclusion: Likelihood of Confusion
In conclusion, the du Pont factors favoring a finding
of likelihood of confusion include the fact that the goods
are identical or otherwise closely related; these are
inexpensive, impulse items purchased with a lowered standard
of care; we must presume that the respective goods will move
Serial No. 78519947
- 19 -
through the same channels of trade; and we find that the
marks are quite similar due to the fact that the dominant
portion of applicant’s mark is identical to registrant’s
mark.
Decision: The refusal to register this mark based upon
Section 2(d) of the Lanham Act is hereby affirmed.