Sherwood Development Group LLC

Trademark Trial and Appeal Board

Nov 22, 2011

No. 77784128 (T.T.A.B. Nov. 22, 2011)

Mailed:
November 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sherwood Development Group LLC
________

Serial No. 77784128
_______

Mark S. Bicks of Roylance, Abrams, Berdo & Goodman LLP for
Sherwood Development Group LLC.

Ada P. Han, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Bucher, Wellington, and Kuczma,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Sherwood Development Group LLC, applicant, filed an
application to register the mark NOURISH KIDS (in standard
character form) on the Principal Register for goods
ultimately identified as:
Frozen, prepared or packaged meals consisting
primarily of meat, fish, poultry, vegetables,
processed fruit, and cheese and cracker combinations;
food package combinations consisting primarily of
dairy-based snack foods excluding ice cream, ice milk
and frozen yogurt; yogurt drinks in International
Class 29; and

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 77784128
2
Frozen, prepared or packaged meals consisting
primarily of pasta or rice; food package combinations
consisting primarily of bread, crackers and/or
cookies; snack mix consisting primarily of crackers,
pretzels, candied nuts and/or popped popcorn in
International Class 30.1

The examining attorney has refused registration of
applicant's mark pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark
is likely to be confused with the previously registered
mark NOURISH (in typed characters) that is the subject of
two registrations (owned by the same entity) for the
following goods:
Breakfast, lunch and dinner entrees, and snacks
containing meat, fish and poultry, eggs, milk and milk
products, namely, cream cheese spread, cheese spread,
cottage cheese, sour cream used in conjunction with a
weight management program, dried and cooked fruits and
vegetables, jellies, sauces, namely, applesauce, snack
dips and soups; protein based nutrient-dense snack
bars in International Class 29;2 and

Milkshakes and puddings used in conjunction with a
weight management program, breakfast, lunch, dinner
entrees, snacks and desserts, namely, cereals, cereal
bars, namely, ready to eat, cereal derived food bars,
muffins, breads, dessert bars, namely, brownies,
coffee flavored dessert bars, chocolate crunch bars,
peanut butter, caramel and mint chewy chocolate bars,
fruit bars, nut bars, rice, sauces, namely, salsas and
tomato sauces, gravies, salad dressings, frozen bars
and ices, namely fudge bars, creamsicles and ice pops,
food beverages with a coffee, tea or cocoa base,
namely, coffee based beverages containing milk, cocoa

1 Application Serial No. 77784128 is an intent-to-use application
filed under Section 1(b) of the Trademark Act.
2 Registration No. 3261204 issued July 10, 2007.
Serial No. 77784128
3
based beverages containing milk, iced teas in
International Class 30.3

Registration has also been finally refused pursuant to
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a),
based on applicant’s failure to comply with the requirement
to disclaim the word KIDS because the term is merely
descriptive of applicant’s goods within the meaning of
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1).
Applicant appealed the final refusals. Briefs were
filed, including a reply brief from applicant. For the
following reasons, we affirm the refusals to register.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
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,
however, two key, although not exclusive, considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,

3 Registration No. 3261209 issued July 10, 2007.
Serial No. 77784128
4
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
We first consider the du Pont factors regarding the
goods, trade channels and classes of purchasers. In an ex
parte appeal, likelihood of confusion is determined on the
basis of the goods as they are identified in the
application and the cited registration(s). Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002); In re Elbaum, 211 USPQ 639, 640
(TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ 47,
48 (TTAB 1976).
Applicant’s and registrant’s goods in International
Class 29 are legally identical, in part, because
applicant’s “frozen, prepared or packaged meals” are
essentially the same as, and are encompassed by,
registrant’s “breakfast, lunch and dinner entrees.” Both
applicant’s meals and registrant’s entrees are identified
as consisting primarily of “meat, fish and poultry.”
Registrant’s identification of goods is not limited to the
manner in which its entrees will be prepared and thus may
be “frozen, prepared and packaged” in the same manner as
applicant’s meals. Likewise, applicant’s “food package
combinations consisting primarily of dairy-based snacks”
is broad enough to include registrant’s “milk products,
Serial No. 77784128
5
namely, cream cheese spread, cheese spread, cottage cheese,
sour cream used in conjunction with a weight management
program.” The primary ingredients of applicant’s food
package combinations are dairy-based snacks and may include
many of the same dairy-based items listed in the
registration.
As to International Class 30, applicant’s “food
package combinations consisting primarily of bread,
crackers and/or cookies” are closely related, if not
identical, to registrant’s “cereal derived food bars,
muffins, breads, dessert bars, namely, brownies, coffee
flavored dessert bars, chocolate crunch bars, peanut
butter, caramel and mint chewy chocolate bars, fruit bars,
[and] nut bars.” (The underlining is added for emphasis to
underscore potentially identical goods). We further note
that registrant prefaces certain goods in International
Class 30 as “snacks and desserts” and the application lists
a “snack mix consisting primarily of crackers, pretzels,
candied nuts and/or popped popcorn.”
We conclude that the application lists certain food
products in International Class 29 that are identical to
those identified in one of the two cited registrations.
With respect to International Class 30, the applicant has
some food products that are very closely related, if not
Serial No. 77784128
6
identical, to those identified in the other cited
registration. Accordingly, this factor therefore weighs
strongly in favor of finding a likelihood of confusion.
Because the goods in the application and the cited
registrations are, in part, identical, we must presume that
the channels of trade and classes of purchasers at least in
part are the same. Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). Even where the goods are not identical, they
are very closely related food items and the common trade
channels for these goods will be the same. For example,
registrant’s and applicant’s goods, such as snack foods,
desserts, cookies, etc., will be found in the same sections
of the same grocery stores. Likewise, the classes of
purchasers for these goods will also be the same, including
the ordinary consumer exercising an ordinary amount of
Serial No. 77784128
7
care. To the extent that the registrant’s goods may be
directed to consumers interested in weight management or
nutritionally balanced food items, we note that applicant’s
identification of goods does not contain any restrictions
thereto and thus may also be geared to the same consumers
with similar interests. Thus, the du Pont factors
involving trade channels and classes of purchasers also
favor a finding of likelihood of confusion.
This brings us to the similarity of the marks. We
keep in mind that when marks would appear on identical
goods, as they partially do here, the degree of similarity
necessary to support a conclusion of likely confusion
declines with respect to that class of goods (in this case,
International Class 30). Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Our focus is on whether the marks are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). 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
Serial No. 77784128
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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 example, merely
descriptive matter may be accorded subordinate status
relative to the more distinctive portions of a mark. In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997).
Here, applicant has adopted the registered mark,
NOURISH, and added the term KIDS. As a result, the essence
of this appeal is a disagreement between applicant and the
examining attorney regarding whether the addition of the
term sufficiently distinguishes applicant’s proposed mark,
NOURISH KIDS, from the registered mark, NOURISH.
Applicant contends that the common element, NOURISH,
is so suggestively weak in connection with food products
that the addition of KIDS is sufficient for purposes of
distinguishing the two marks. In support, applicant
submitted copies of several third-party registrations and
applications for marks that contain the term NOURISH and
cover food-related goods or services. Applicant argues
that in view of the weakness of NOURISH, it is the latter
element KIDS that dominates its mark in terms of the
commercial impression of the entire mark. Applicant argues
that KIDS is not descriptive but only “suggestive” and, in
Serial No. 77784128
9
traversing the disclaimer requirement, argues that “mature
thought and imagination and multi-step reasoning are
necessary to make a connection between the meaning of
NOURISH KIDS and the nature of applicant’s goods.” Brief,
p. 13. In support of this latter point, applicant has
submitted copies of third-party registrations and published
applications for marks containing the term KIDS without a
disclaimer thereof and covering food products. Ultimately,
applicant urges the term KIDS should not be disclaimed and
its mark as a whole is distinguishable from the registered
mark.
The examining attorney responds in her brief that she
“does not disagree that the term ‘NOURISH’ is weak and
diluted on the trademark register for food related goods
and services.” Brief, p. 9. However, she takes issue with
the significance of the third-party registrations and
applications because they are not evidence of actual use in
commerce. She also asserts that even weak marks are
entitled to protection and applicant has “simply added the
merely descriptive term ‘KIDS’ to the cited mark.” Id. at
p. 10. In support of this argument, and her disclaimer
requirement, she submitted the dictionary definition of the
term “kids,” – “a young person; especially: CHILD – often
used as a generalized reference to one especially younger
Serial No. 77784128
10
or less experienced...”4 In the context of applicant’s
goods and the mark as a whole, she argues that “kids” is
“synonymous with ‘children,’ [and] merely describes
features of applicant’s food goods. Kids are the target
consumer, the very individuals who will eat the products.”
Id. at p. 13. The examining attorney has also supplied
copies of registrations containing a disclaimer of the term
KIDS and covering food products.
In determining degree of similarity between the marks,
we initially address the significance of the term KIDS.
Based on the record, we agree with the examining attorney
that KIDS is merely descriptive of applicant’s identified
goods because it informs the consumer that the food items
are intended for consumption by children, e.g., in terms of
portion-size, nutritional value, etc. The term is defined
as being synonymous with “children” and the examining
attorney has provided printouts from third-party websites
indicating that the nutritional intake of “kids” is a
matter of concern.5 Thus, consumers encountering
applicant’s food products will understand the term KIDS as

4 Merriam-Webster Online Dictionary. Printout attached to
September 13, 2009 office action.
5 Attached to September 13, 2009 office action.

Serial No. 77784128
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indicating that the food products are intended for
children.
As to the dueling third-party registrations and
applications where a disclaimer of KIDS was or was not
required, these may be used as evidence, albeit not
conclusive, of whether the term is descriptive. See, e.g.,
Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1797 n.1 (Fed. Cir. 1987). In this
regard, the third-party registrations submitted by the
examining attorney far outnumber those submitted by
applicant. Moreover, with regard to many of the
registrations submitted by applicant, the absence of a
disclaimer of the term KID or KIDS may be readily explained
based on USPTO examination policy to not require a
disclaimer if an otherwise descriptive term is employed in
a unitary fashion with other elements in the mark such that
the mark as whole creates a commercial impression that is
not descriptive and thus registrable. See Trademark Manual
of Examining Procedure (TMEP) § 1213.05(a)-(g) (“Unitary
Marks”) (8th Ed. rev. October 2011). For example, in
contrast to applicant’s mark, the term KID is used in a
unitary fashion in the following third-party registered
Serial No. 77784128
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marks submitted by applicant: CAN DO KID (Reg.
No. 3633112), CAP’N KID (Reg. No. 2942175), and
the stylized mark at right (Reg. No. 2827226).
In view of the descriptive nature of the term KIDS, it
must be disclaimed and, for purposes of determining the
mark’s overall commercial impression, it is less likely to
be perceived as having source identifying significance. In
re Dixie Restaurants Inc., 41 USPQ2d 1534. In other words,
consumers viewing the mark NOURISH KIDS in connection with
applicant’s food products are likely to understand the term
KIDS as merely describing a feature of applicant’s food
products, i.e., they are intended for children’s
consumption; the same consumers will focus more attention
on the initial, non-descriptive element, NOURISH. In
addition, because the term NOURISH appears first, it is
even more likely to be impressed upon the mind of a
purchaser and will be remembered and used when calling for
the goods. See Presto Products, Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Indeed, consumers
who are already familiar with registrant’s use of the
NOURISH on food products and encounter applicant’s NOURISH
KIDS mark on the same type of goods may mistakenly believe
that the latter is simply an additional line of
Serial No. 77784128
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registrant’s goods designed or being touted for consumption
by children.
As to applicant’s argument that the registered mark
NOURISH is “weak” and “diluted” and thus should be accorded
a narrow scope of protection, we note that the two cited
registrations are on the Principal register and must
therefore be presumed valid and not descriptive. Trademark
Act Section 7(b). In addition, the record is devoid of
evidence showing any actual third-party use of marks
containing the term NOURISH. Rather, as support for its
contention that NOURISH is weak, applicant relies on four
third-party registrations and on an application for marks
containing the term NOURISH and covering food and/or
beverages. The pending application has “no probative value
other than as evidence that the application was filed” and
has not been further considered. Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1403 n.4 (TTAB
2010), citing, In re Phillips Van Heusen Corp., 63 USPQ2d
1047, 1049 n.4 (TTAB 2002). We note that several of the
registered marks employ the term NOURISH in a much longer
phrase, e.g., NOURISH YOUR BODY AND MIND (Reg. No. 296588)
and NOURISH ALL AREAS OF YOUR LIFE (Reg. No. 2784863).
Nevertheless, in conjunction with the defined meaning of
Serial No. 77784128
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the term,6 we find that the term NOURISH has some suggestive
connotation when used in connection with food products.
Although the registered mark NOURISH may be suggestive
of food products, we disagree with applicant that the
addition of the descriptive term KIDS suffices for purposes
of distinguishing the marks, especially when considering
that the two marks will be used on identical or closely
related food products. Even allowing for some weakness of
the registered mark, the marks remain confusingly similar.
We have long held that even weak marks are entitled to
protection against registration of similar marks for
closely related goods and/or services. See King Candy Co.
v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Applicant, in its brief, repeatedly cites to two Board
decisions in support of its argument that the marks NOURISH
and NOURISH KIDS are not confusingly similar; however, the
circumstances surrounding the marks in the cited decisions
are significantly different from this proceeding. In
Rocket Trademarks Pty Ltd. v Phard S.p.A., 98 USPQ2d 1066
(TTAB 2011), the Board found the mark ZU ELEMENTS

6 Defined as “to provide with food or other substances necessary
for life and growth.” The American Heritage Dictionary of the
English Language (4th Ed. 2000). The Board may take judicial
notice of dictionary definitions. University of Notre Dame du
Serial No. 77784128
15
(stylized) was not confusingly similar to ELEMENTS on
identical clothing goods because the additional term, ZU,
appeared first in the applicant’s mark in a more prominent
manner (it appeared in a larger font) and was arbitrary in
connection with the goods. Likewise, in Knight Textile
Corp. v. Jones Investment Co., 75 USPQ 1313 (TTAB 2005),
the Board found applicant’s mark NORTON MCNAUGHTON
ESSENTIALS not to be confusingly similar to opposer’s mark
ESSENTIALS, despite both marks being used on identical
clothing goods. The Board based the decision on findings
that the registered mark was highly suggestive of clothing
and applicant’s addition of its house mark was significant
because it comprised a combination of arbitrary terms
appearing first in the mark.
The facts before us in this matter are clearly
distinguishable from those in Rocket Trademarks and Knight
Textile. Here, applicant has merely added a descriptive
term, as opposed to an arbitrary one, to a registered mark
and seeks to register this proposed mark for identical and
closely related goods. Moreover, in the two prior Board
proceedings, the Board concluded that the registered marks,
ELEMENTS and ESSENTIALS respectively, were highly

Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 77784128
16
suggestive terms in connection with relevant goods. Here,
the record does not show that the term NOURISH is so highly
suggestive.
When we consider the record and all relevant
likelihood of confusion factors, we conclude that, when
purchasers of registrant’s and applicant’s goods encounter
the marks NOURISH and NOURISH KIDS, respectively, for the
goods, they are likely to believe that the sources of these
goods are in some way related or associated. As a result,
there is a likelihood of confusion.
Disclaimer
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act
Section 2(e)(1) and, therefore, are subject to disclaimer
if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National
Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In
re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB
1968).
Serial No. 77784128
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A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Finally, “[a] mark can be descriptive if it describes the
Serial No. 77784128
18
intended users of the goods or services.” In re
Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).
With the above principles in mind and for reasons
previously explained in this decision’s likelihood of
confusion discussion regarding the similarity of the marks,
the term KIDS is merely descriptive as used in applicant’s
proposed mark and on the identified goods. Upon viewing
the proposed mark on applicant’s identified food products,
consumers will immediately understand the term KIDS as
describing a key feature of those goods, i.e., that the
food products are intended for consumption by children.
We disagree with applicant’s argument that “the
consumer would have to change or include the words NOURISH
FOR KIDS or more accurately NOURISHMENT FOR YOUR KIDS or
even NOURISHMENT FOR YOU TO BUY FOR YOUR KIDS or more
appropriately, NOURISHMENT FOR PARENTS OR GUARDIANS TO BUY
AND PROVIDE TO KIDS in order to immediately understand
information concerning the Applicant’s goods.” Brief, pp.
13-14. (Boldness in original and used to emphasize
additional words that applicant believes are necessary for
the term KIDS to be found descriptive). Applicant
apparently is under the mistaken impression that the mark
must be grammatically correct and spell out to the consumer
the exact nature of the goods in order for the term KIDS to
Serial No. 77784128
19
be determined merely descriptive. However, the test for
whether a term is descriptive is not whether the consumer
can guess what are the goods based on the mark. Rather,
our analysis is based on a consumer being confronted with
the mark in the context of applicant’s identified food
products. With this in mind, we decide whether that same
consumer will understand KIDS as describing a significant
attribute, function or property of the food products.
Again, we conclude that consumers will perceive this term
as describing a key feature of the identified goods and,
accordingly, must be disclaimed.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed. We further
affirm the refusal to register based on applicant’s failure
to comply with the requirement to disclaim the word KIDS.