Reser’s Fine Foods, Inc.

Trademark Trial and Appeal Board

Feb 9, 2001

No. 75621312 (T.T.A.B. Feb. 9, 2001)

2/9/01
Paper No. 10
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Reser’s Fine Foods, Inc.
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Serial No. 75/621,312
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Burton A. Amernick of Pollock, Vande Sande & Amernick,
R.L.L.P for Reser’s Fine Foods, Inc.
Samuel E. Sharper, Jr., Trademark Examining Attorney, Law
Office 101 (Christopher Wells, Managing Attorney)
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Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Reser’s Fine Foods, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
POTATO EXPRESS as a trademark for “precut and precooked
potato products, namely, sliced, diced and chopped
precooked potatoes.”1 The word POTATO has been disclaimed.
Registration has been refused pursuant to Section 2(d) of
1 Application Serial No. 75/621,312, filed January 15, 1999, and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/621,312
2
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark POTATOES EXPRESS
(with the word POTATOES disclaimed), and previously
registered for “dehydrated potatoes,”2 as to be likely to
cause confusion or mistake or to deceive.
Both applicant and the Examining Attorney filed
briefs; an oral hearing was not requested.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
The marks in this case are virtually identical. They
differ only in that applicant’s mark uses the singular form
of POTATO, while the cited mark contains the plural form.
However, this slight difference is not sufficient to
distinguish the marks because consumers are not likely to
2 Registration No. 1,751,429, issued March 17, 1993; Section 8
affidavit accepted.
Ser. No. 75/621,312
3
note or remember this minor difference. Under actual
marketing conditions consumers do not have the luxury to
make side-by-side comparison between marks, and instead
they must rely on hazy past recollections. Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
Moreover, given that the products in question are
relatively low-cost items, consumers are not going to
exercise a great deal of care in examining the marks in
order to ascertain whether the word POTATO is shown in
singular or plural form.
With respect to the goods, they are both potato
products. Applicant points out that there are specific
differences between the goods, since the registrant’s are
dehydrated potatoes while applicant’s are “pre-cooked,
precut, real potatoes ready for consumption right out of
the package.” Brief, p. 1. Applicant also asserts that
the goods would be packaged differently—-registrant’s in a
cardboard box, while applicant’s is intended to be packaged
in a clear propylene bag—-and because of their nature, they
would be sold in different sections of a grocery store—-
registrant’s in the dry grocery section with other shelf-
stable boxed products, while applicant’s would require
refrigeration in order to prevent spoilage.
Ser. No. 75/621,312
4
We have no doubt that applicant is correct when it
states that “due to the different nature of the products,
consumers seeking one product would not be likely to
mistake one product for the other.” Brief, p. 1. However,
the question we must consider is not whether consumers are
likely to confuse the products, but whether they are likely
to confuse the source of the products. We find that such
confusion is likely. Although there are specific
differences in how the potatoes are prepared, and how they
are intended to be packaged and sold, they are still potato
products which are offered to the general public in the
same channels of trade. A consumer is likely to encounter
both products in the same grocery store. Although there
may be differences in the packaging and the section of the
store in which such products are sold, consumers are more
likely to attribute these differences to the different
nature of the products, e.g., one needing refrigeration and
the other not, than to differences in the source of the
products.
Some of the third-party registrations made of record
by the Examining Attorney show that registrants have
registered their marks for different types of potato
products. See, e.g., Registration No. 832,620 for frozen
and dehydrated potatoes; Registration No. 921,623 for,
Ser. No. 75/621,312
5
inter alia, canned potatoes and dehydrated potatoes.
Although these registrations are not evidence that the
marks are in use on these goods, or that the public is
familiar with them, they do indicate that a party may adopt
a particular mark for use on different forms of potatoes.
A consumer familiar with a particular mark used on
dehydrated potatoes is likely, when seeing the virtually
identical mark on pre-cooked, precut refrigerated potatoes,
to believe that the producer of the dehydrated potatoes is
simply selling its potatoes in a refrigerated form.
Applicant has also argued that the word EXPRESS is
“highly diluted as it has been used in numerous marks
related to food products.” Brief, p. 3. There has been
some confusion in the prosecution of this application with
respect to third-party marks supporting this position. In
its response to the first Office action, applicant made
this same argument, and listed what it asserted to be
third-party registrations by mark, goods, and registration
number. In the next, and final Office action, the
Examining Attorney stated that “while the examining
attorney acknowledges that numerous registrations for both
food services and food products contain the term ‘Express,’
no other registration of record, other than the cited
registration, combine both the terms EXPRESS and a
Ser. No. 75/621,312
6
derivation of POTATO(es).” Later in the Office action,
however, the Examining Attorney stated that because
applicant had not provided copies of the registrations
mentioned in the list, they were not part of the record and
were not considered. Applicant apparently recognized that
the registrations were not of record because, at the same
time it filed its appeal brief, it filed a request for
remand “because the examining attorney has stated that the
registrations cited in applicant’s response to Office
Action are not part of the record and were not considered.”
(The request for remand was denied because applicant had
provided no reason why it could not have submitted the
registrations prior to filing the appeal.)
The Examining Attorney was correct that merely listing
third-party registrations is not sufficient to make them of
record, and that copies of the registrations must be
submitted. However, the Examining Attorney also
acknowledged in the Office action that there are numerous
registrations for marks containing the word EXPRESS. This
acknowledgement, in effect, is a recognition of what the
third-party registrations show: EXPRESS is a suggestive
term for food products and food services, and this word is
not entitled to a broad scope of protection. However, our
finding of likelihood of confusion is not based on the
Ser. No. 75/621,312
7
presence of just the word EXPRESS in both marks; it is
based on the fact that the marks consist of the word POTATO
in either singular or plural form, followed by the word
EXPRESS. Thus, the marks as a whole, compared in their
entireties, are virtually identical. The fact that the
initial word in each mark is disclaimed does not affect the
similarity of the marks as a whole. Although the scope of
protection for POTATOES EXPRESS may be limited, we have no
doubt that it extends to prevent the registration of the
virtually identical mark POTATO EXPRESS for very closely
related goods, i.e., goods which are the same product,
potatoes, in different forms. We would also point out that
applicant’s mark is much closer to the cited mark than the
third-party EXPRESS marks referred to by applicant are to
each other.
Decision: The refusal of registration is affirmed.