Premium Sweets & Restaurant, Inc.Download PDFTrademark Trial and Appeal BoardSep 14, 2015No. 85953120 (T.T.A.B. Sep. 14, 2015) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 14, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Premium Sweets & Restaurant, Inc. _____ Serial No. 85953120 _____ Shahrina Ankhi-Krol of Ankhi-Krol Law for Premium Sweets & Restaurant, Inc. Laura Golden, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney). _____ Before Shaw, Masiello, and Hightower, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Premium Sweets & Restaurant, Inc. (“Applicant”) has filed an application1 to register on the Principal Register the mark shown below: 1 Application Serial No. 85953120, filed June 6, 2013 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), stating November 10, 2010 as the date of first use and first use in commerce for all classes. Serial No. 85953120 2 The colors red, yellow, gold, and black are claimed as features of the mark. The non- Latin characters in the mark are Bengali letters that transliterate to PREMIUM SWEETS and are “the phonetic equivalent of the English wording ‘PREMIUM SWEETS.’” Applicant has disclaimed the exclusive right to use PREMIUM SWEETS and the non-Latin characters apart from the mark as shown.2 Applicant seeks to register its mark for the following goods and services: Bakery products, namely, sweet bakery goods for retail and wholesale distribution and consumption on or off the premises, in International Class 30; Restaurant services, namely, providing of food and beverages for consumption on and off the premises, in International Class 43. The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection with Applicant’s goods and services, so resembles the registered mark shown below as to be likely to cause confusion, or to cause mistake, or to deceive: 2 Applicant submitted its disclaimer and its statement regarding the non-Latin characters in the body of its appeal brief. The Board treated such submission as a request for remand, and remanded the application to the Examining Attorney for consideration of these statements. The Examining Attorney accepted the statements and they are now properly of record. Serial No. 85953120 3 Color is not a claimed feature of the cited registered mark, and Registrant has disclaimed the exclusive right to use SWEETS apart from the mark as shown. The cited mark is registered on the Supplemental Register for the services set forth below: Wholesale food distributorship services featuring packaged foods for supermarkets and grocery stores; wholesale distributorships featuring packaged foods for supermarkets and grocery stores, in International Class 35; Catering services for airlines; Indian restaurants; party catering services, in International Class 43.3 The Examining Attorney made her refusal final, and Applicant has appealed. Applicant and the Examining Attorney have filed briefs. Our determination 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 as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the Examining Attorney have also submitted arguments regarding trade channels, customers, and conditions of sale. 3 Reg. No. 4401880, issued September 10, 2013. Serial No. 85953120 4 1. The goods and services. We will first consider the similarity or dissimilarity of the goods and services as identified in the application and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s services in Class 43, “Restaurant services, namely, providing of food and beverages for consumption on and off the premises,” are identified with sufficient breadth to encompass Registrant’s more specifically identified “Indian restaurants.” To this extent, the services of Applicant and Registrant are, in part, legally identical. Applicant’s goods in Class 30 are, in brief, “sweet bakery goods.” The cited mark is registered for services, not goods. However, it is recognized that goods and services may be related for purposes of determining whether there is a likelihood of confusion. In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). In such a context, likelihood of confusion can be found if the respective goods and services are related in some manner or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. See, e.g., In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). The Examining Attorney points out that Registrant’s “wholesale food distributorship services featuring packaged foods for supermarkets and grocery Serial No. 85953120 5 stores” are a channel through which goods like those of Applicant would travel.4 Although we agree with this contention, it is not self-evident that the production of baked goods and the commercial distribution of foods for others are the types of activities that relevant customers would expect to emanate from a single business. The Examining Attorney has presented no evidence on this point. The Examining Attorney has focused on demonstrating that Applicant’s bakery goods are related to Registrant’s “party catering services.” In this regard the Examining Attorney has submitted web pages of businesses that produce sweet baked goods and also provide catering services. Among these, we note the following: Sweet Confections Bakery Catering: Offering cookies, pastries, doughnuts, pies, specialty cakes and birthday cakes; and offering catering featuring party trays and snacks, salads and appetizers.5 Magnolia Bakery Offering cupcakes and other baked goods; and catering of corporate events, special events, and weddings.6 Main Street Bakery & Catering Offering baked goods; and “Catering.”7 French Meadow Bakery & Café Organic bakery offering desserts; and catering featuring tarts, cupcakes, wedding cakes, and cookies.8 Rasraj Restaurant Indian restaurant with full menu of sweets; the menu also offers “Catering.”9 4 Examining Attorney’s brief, 9 TTABVUE 9. 5 Office Action of June 2, 2014 at 76-77. 6 Id. at 78-82. 7 Id. at 83-85. 8 Id. at 70-75. 9 Id. at 55-58. Serial No. 85953120 6 In order to further demonstrate that Applicant’s sweet bakery goods and Registrant’s party catering services are related, the Examining Attorney has made of record seven third-party registrations that cover both sweet baked goods and catering services.10 Third-party registrations that are based on use in commerce and which individually cover a number of different goods and services may have some probative value to the extent that they serve 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 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). We note in particular the following: Reg. No. Relevant goods and services. 3538923 Bakery desserts; catering services for food and beverages. 4004786 Bakery desserts; sweet bakery goods, etc.; catering services. 4028030 Bakery products, namely pastries; catering services. 4348787 Sakkarpora in the nature of sweet flour cookies; catering services; catering services featuring desserts. 4527748 Almond cake; Apple turnovers; Baked goods, namely, crumbles; bakery goods and dessert items, namely, cheesecakes, etc.; Catering services. 4406010 Bakery products, namely, sweet bakery goods; Catering services. 4536562 Almond cake; Apple fritters; Apple turnovers; Babkas; Baked goods, namely, crumbles; Bakery desserts, etc.; Catering. The Examining Attorney also made of record two other registrations that cover catering services as well as bakery goods, with no indication that those bakery 10 Id. at 9-54. Serial No. 85953120 7 goods are of the sweet variety.11 We give these registrations somewhat less weight than the others, as the goods in those registrations are not clearly the same as those of Applicant. We find the Examining Attorney’s evidence sufficient to demonstrate commercial relatedness, such that relevant customers would believe that sweet baked goods and party catering services offered under similar marks may emanate from the same source. In reaching this conclusion, we consider that the nature of “catering”12 is the provision of foods, which may include dessert foods such as sweet baked goods. Thus, there is some inherent degree of commercial relatedness between Applicant’s goods and Registrant’s party catering services. Accordingly, we find, with respect to Applicant’s goods in Class 30 and Applicant’s services in Class 43, that the du Pont factor relating to the similarity or dissimilarity of the goods and services weighs in favor of a finding of likelihood of confusion. 2. The marks. We next consider the similarity or dissimilarity of the marks at issue in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side 11 See Reg. Nos. 4486949 and 4447119. 12 We take judicial notice of the following definition of “cater”: “to provide food, service, etc., as for a party or wedding: to cater for a banquet.” Dictionary.com Unabridged. Based on the Random House Dictionary (2015). http://dictionary.reference.com/browse/catering (accessed: September 11, 2015). Serial No. 85953120 8 comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). We bear in mind that when marks would appear on virtually identical services, as they would in the case of Applicant’s restaurant services and Registrant’s Indian restaurant services, “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); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering- Plough HealthCare Prods. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Applicant correctly urges that we must avoid “dissection” of the marks and must consider the marks at issue in their entireties in reaching our ultimate conclusion. However, there is nothing improper in giving more or less weight to a particular feature of a mark, for rational reasons. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis appears to be unavoidable.” Id. In appearance, the two marks have many distinguishing features, because the design elements of the marks and their overall styles of presentation are quite different. However, the marks resemble each other visually in that each includes a Serial No. 85953120 9 prominent presentation of the words PREMIUM SWEETS, albeit in different styles of lettering. The Examining Attorney argues that we should give the wording PREMIUM SWEETS more weight as an indicator of source than the graphic design elements of the marks because customers would use this wording in calling for the goods or services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant portion. … This makes sense given that the literal component of brand names likely will appear alone when used in text and will be spoken when requested by consumers.”); see also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Serv., Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). We do take into consideration the fact that the wording PREMIUM SWEETS is merely descriptive and laudatory with respect to the goods and services of Applicant and Registrant, indicating that in both marks this wording is lacking in inherent strength as a source indicator. We also note that Applicant has disclaimed the exclusive right to use PREMIUM SWEETS and the Bengali lettering that transliterates to “premium sweets.” However, as the Federal Circuit stated in In re Viterra: [W]e previously have found that the dominant portion of a composite word and design mark is the literal portion, even where the literal portion has been disclaimed. Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1570-71 [218 USPQ 390] (Fed. Cir. 1983) (finding that the term “GIANT” was the dominant portion of a mark consisting of the words GIANT HAMBURGERS with a large background design, even though the applicant Serial No. 85953120 10 disclaimed “GIANT HAMBURGERS.”). In addition, in the ultimate determination of similarity of the marks, the Board must consider the [mark] in its entirety, including the disclaimed portion. See Giant Food, 710 F.2d at 1570 (“[I]t is well settled that the disclaimed material still forms a part of the mark and cannot be ignored in determining likelihood of confusion.”). 101 USPQ2d 1911. Despite the inherent weakness of the component PREMIUM SWEETS, we agree with the Examining Attorney that PREMIUM SWEETS is the dominant component of each mark. While we acknowledge the visual differences between the marks (including Applicant’s stylized P within a hexagonal design and the Bengali lettering), this wording constitutes a significant visual similarity. In sound, the two marks are essentially identical; as the words PREMIUM SWEETS are common words in English, there is no question as to their pronunciation. It is unlikely that customers would pronounce the stylized letter P in Applicant’s mark, as this would be recognized merely as a monogram design associated with the word PREMIUM. As the application shows, the Bengali lettering transliterates to “premium sweets”; therefore, this element does not vary the pronunciation of the mark, being merely redundant of the words in Latin lettering. In literal meaning, the two marks are also identical. In each case, PREMIUM SWEETS has the meaning of a dessert, sweet dish, or confection of superior quality.13 Applicant has stated that the Bengali lettering is the phonetic equivalent 13 See definitions “premium” and “sweet” submitted with the Office Action of September 27, 2013 at 27-32. Serial No. 85953120 11 of “premium sweets,” but has not stated that it has any meaning in Bengali. If there is any such meaning, it was incumbent on Applicant to disclose it, inasmuch as the Examining Attorney required a translation of the foreign wording in the mark.14 Considering the overall commercial impressions created by the marks in their entireties, we note that each mark uses its design elements to give special prominence to the term PREMIUM SWEETS. We find that, in both marks, PREMIUM SWEETS would be perceived as the primary source indicator for the goods or services, and that for this reason the overall commercial impressions they create are quite similar. While we appreciate the two marks’ differences in appearance, in this case, the similarities in appearance, sound and meaning outweigh the differences. We bear in mind that the marks ‘must be considered … in light of the fallibility of memory …,’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014), and that the proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013). We therefore find that the du Pont factor of the similarity or dissimilarity of the marks weighs in favor of a finding of likelihood of confusion. 3. Customers; Conditions of sale. As Applicant’s restaurant services are legally identical to Registrant’s Indian restaurant services, we must presume that they are offered to the same classes of customers. See In re Viterra Inc., 101 USPQ2d at 1908; American Lebanese Syrian 14 Office Action of September 27, 2013 at 7. Serial No. 85953120 12 Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). With respect to Applicant’s sweet bakery goods, Applicant argues as follows: The use of Bengali writing in Applicant’s mark demonstrates that the Applicant sells its goods primary to Bengali consumers. The Applicant’s goods are not sold or intended to be sold wholesale to grocery stores or supermarkets. … The Registrant sells to supermarkets and grocery stores on a wholesale basis, and not to the end consumer directly. Further, catering services for airlines and parties also prevent the Registrant’s goods from reaching its consumers in a direct manner, unlike the Applicant’s goods. … Additionally, the Registrant’s target end consumer is the Indian population, not the Bengali population.15 For the avoidance of confusion, we must point out that the cited registration does not relate to any goods. To the extent that Registrant’s services are directed to “supermarkets and grocery stores,” we assume that Applicant is referring to Registrant’s “wholesale distributorship services.” Although Applicant claims that its bakery goods are not sold to such stores, the application identifies these goods as being “for retail and wholesale distribution,” which indicates that they are, indeed, intended to be distributed to third-party retailers like supermarkets and grocery stores. While Applicant’s goods may be primarily for sale to consumers, we note that Registrant’s Indian restaurant and party catering services would also be directed to individual consumers. We cannot give any weight to Applicant’s contention that its consumers are Bengali as opposed to Registrant’s consumers who are Indian, because neither Applicant’s identification of goods nor Registrant’s recitation of 15 Applicant’s brief at 6-7, 4 TTABVUE 7-8. Serial No. 85953120 13 services contains any such limitation as to target customers. It would be unreasonable to assume that only persons of Indian heritage would dine in an Indian restaurant or use Registrant’s party catering services; nor can we assume that only persons of Bengali heritage would purchase baked goods bearing a mark that happens to include some Bengali lettering in it. With respect to the conditions of sale, Applicant contends as follows: [Applicant’s] bakery products, sweet bakery goods, and foods and beverages are sold and intended to be sold directly to consumers who travel to the premises of the restaurant to purchase the good for consumption on and off the premises. Therefore, in order for a consumer to obtain the goods sold by the Applicant, the consumer must have some form of personal knowledge and/or contact with the Applicant’s restaurant, from which the goods are being sold. The Applicant’s Mark is clearly posted on the awning of the restaurant …, on the packaging of the goods …, and on its menu of goods….16 Applicant’s identification of goods does not support Applicant’s contention that its goods are available to customers only at its restaurant. Applicant’s goods are, in part, “for retail and wholesale distribution,” meaning that they may be distributed to, and available for purchase at, all kinds of retail establishments that normally carry such goods. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1825 (TTAB 2015) (“[A]bsent any explicit restriction in the application or registration, we must presume the parties’ identified goods to travel through all normal channels of trade for goods of the type identified …”), citing Coach Services Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722. 16 Id. Serial No. 85953120 14 We find that there is no persuasive evidence of record relating to the conditions under which sales are made by either Applicant or Registrant. However, the du Pont factor relating to the classes of customers to which sales are made favors a finding of likelihood of confusion with respect to Applicant’s goods and services, because they, as well as certain services of Registrant, would be offered to ordinary consumers of no special sophistication. 4. Trade channels. As Applicant’s restaurant services are legally identical to those of Registrant, we must presume that those services of Applicant and Registrant move in the same channels of trade. See In re Viterra Inc., 101 USPQ2d at 1908. With respect to Applicant’s goods, the fact that Registrant’s wholesale food distributorship services constitute a channel through which Applicant’s goods would travel is a point of proximity that increases the likelihood of confusion. Accordingly, we find that this du Pont factor weighs in favor of a finding of likelihood of confusion with respect to both classes of Applicant’s goods and services. 5. Conclusion. We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant du Pont factors. In view of the legal identity of the restaurant services of Applicant and Registrant; the degree of commercial relatedness between Applicant’s baked goods and Registrant’s party catering services; and the substantial overlap with respect to the relevant customers and trade channels, Applicant’s mark encroaches even the limited scope Serial No. 85953120 15 of protection accorded to the cited mark registered on the Supplemental Register. See In re Smith & Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1994); King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (“Confusion is confusion. The likelihood thereof is to be avoided, as much between ‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’ mark.”). Accordingly, we find that Applicant’s mark so resembles the cited registered mark as to be likely to cause confusion, mistake or deception as to the source of Applicant’s goods and services. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation