Sovena U.S.A. Inc.

Trademark Trial and Appeal Board

Oct 5, 2009

No. 76599644 (T.T.A.B. Oct. 5, 2009)

Mailed:
Oct. 5, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sovena U.S.A. Inc.
________

Serial No. 76599644
_______

Mary Helen Sears for Sovena U.S.A. Inc.

Florentina Blandu, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Hairston, Grendel and Holtzman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Sovena U.S.A. Inc., (applicant) seeks registration on
the Principal Register of the mark PARADISE (in standard
character form) for goods identified in the application as
“imported and domestic olive oil and vegetable oils,” in
Class 29.1

1 Serial No. 76599644, filed on June 29, 2004. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). May 18, 1950 is alleged in the application to
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76599644
2
The Trademark Examining Attorney has issued a final
refusal of registration on the ground that applicant’s
mark, as applied to the goods identified in the
application, so resembles the mark CHEF’S PARADISE depicted
below,

previously registered on the Principal Register for
numerous goods specifically including “olive oil” in Class
29,2 as to be likely to cause confusion. Trademark Act
Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal. Applicant
filed an appeal brief and, with the Board’s permission, a
supplemental appeal brief. The Trademark Examining
Attorney then filed her brief.
After careful consideration of the evidence of record
and the arguments of counsel, we affirm the refusal to
register.

be the date of first use of the mark anywhere and the date of
first use of the mark in commerce.

2 Reg. No. 2685700, issued on February 11, 2003 from an
application filed on October 10, 2001. Section 8 affidavit
accepted; Section 15 affidavit acknowledged.
Ser. No. 76599644
3
Initially, we sustain the Trademark Examining
Attorney’s objection, made in her brief, to the evidence
submitted by applicant for the first time with its appeal
brief and its supplemental brief. This evidence is
untimely and shall not be considered. See Trademark Rule
2.142(d), 37 C.F.R. §2.142(d). If applicant wished to
submit additional evidence after the filing of the notice
of appeal, applicant should have requested that the Board
suspend the appeal and remand the application for
consideration of the additional evidence. Id.3
We turn now to the Section 2(d) refusal. Our
likelihood of confusion determination under Section 2(d) is
based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the likelihood of
confusion issue (the du Pont factors). See In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA

3 It appears from applicant’s arguments that much of the untimely
evidence consists of printouts from its own website and the
registrant’s website which, according to applicant, demonstrate
the differences in which the respective marks are actually used
in the marketplace on labels etc. We note generally that this
evidence would have been irrelevant even if properly submitted,
because our likelihood of confusion determination in this case
determining the registrability of applicant’s mark must be based
solely on the marks as they are set forth in the application and
the registration, respectively. See Kimberly-Clark Corporation
v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541
(Fed. Cir. 1985); Vornado, Inc. v. Breuer Electric Mfg. Co., 156
USPQ 340 (CCPA 1968); Hercules Inc. v. National Starch and
Chemical Corp., 223 USPQ 1244 (TTAB 1984).

Ser. No. 76599644
4
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In each case, we need consider and weigh only those
factors as to which there is pertinent evidence of record.
See In re Majestic Distilling Co., 315 F.3d at 1315, 65
USPQ2d at 1204 (“Not all of the DuPont factors may be
relevant or of equal weight in a given case, and ‘any one
of the factors may control a particular case,’” quoting In
re Dixie Restaurants, Inc., 105 F.3d at 1406-07, 41 USPQ2d
at 1533; In re National Novice Hockey League, Inc., 222
USPQ 638 (TTAB 1984).
In this case, we note that applicant has discussed
essentially all of the du Pont factors, so we shall do
likewise, albeit summarily as to some of the factors.
Because applicant’s arguments on several of the du
Pont factors are based in part on the alleged dealings
between applicant and registrant, we shall begin our
analysis with the tenth du Pont factor regarding the market
interface between applicant and registrant. We note that
this appeal was suspended by the Board on August 7, 2006 on
applicant’s motion, pending the outcome of a cancellation
Ser. No. 76599644
5
proceeding (Cancellation No. 92046118) applicant had filed
against the registration cited by the Trademark Examining
Attorney in this appeal as a Section 2(d) bar to
registration of applicant’s mark. Applicant’s petition to
cancel was dismissed with prejudice on January 2, 2009, and
this appeal was resumed by order of the Board dated January
26, 2009.
Applicant, in its supplemental appeal brief filed
after resumption of the appeal, contends (without timely
proof, as noted above) that during the course of the
cancellation proceeding, applicant and registrant had
arrived at a final draft of a coexistence agreement to
settle the proceeding in which the parties agreed, inter
alia, that there had been no actual confusion between the
marks, that confusion was unlikely to occur, that the
parties would undertake measures that would preclude any
such confusion, and that registrant would consent to
applicant’s registration of its mark. However, the
agreement was never finalized because, according to
applicant, the parties could not agree on the issue of
attorneys’ fees.
However, applicant contends that the parties’ final
draft agreement on the merits of the dispute shows that
registrant believes that there is no likelihood of
Ser. No. 76599644
6
confusion between the parties’ marks. We are not
persuaded. We note that when applicant attempted to
withdraw the petition to cancel without prejudice subject
to registrant’s future compliance with the substantive
provisions of the draft agreement, registrant did not
consent to such withdrawal. In view of that lack of
consent from registrant, the Board dismissed the
cancellation with prejudice pursuant to Trademark Rule
2.114(c), 37 C.F.R. §2.114(c).
In short, we find that these facts do not support a
finding that registrant has admitted or believes that there
is no likelihood of confusion, or that registrant has
consented to the issuance to applicant of the unrestricted
registration applicant seeks. We will not assume such
belief or consent on registrant’s part. See In re
Association of the United States Army, 85 USPQ2d 1264 (TTAB
2007); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
For these reasons, we find that the tenth du Pont
factor regarding the market interface between the applicant
and registrant is neutral in this case. We also reject as
unfounded applicant’s stated reliance, with respect to
other of the du Pont factors discussed below, on
registrant’s alleged belief that confusion is unlikely.
Ser. No. 76599644
7
We turn now to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first
du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Finally, in cases such as this (see discussion below),
where the applicant’s goods are identical to the goods in
Ser. No. 76599644
8
the cited registration, the degree of similarity between
the marks which is required to support a finding of
likelihood of confusion is less than it would be if the
goods were not identical. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
Applying these principles in the present case, we find
as follows. First, we find that the only significant
difference between applicant’s mark PARADISE (in standard
character form) and the cited registered mark CHEF’S
PARADISE (in slightly stylized form) is the presence of the
word CHEF’S in the cited registered mark. The stylization
of the cited registered mark (i.e., the basic script font
and the simple rectangular black background element) is too
slight to significantly distinguish the marks. Moreover,
because applicant seeks to register its mark in standard
character form, any such registration would entitle
applicant to display the mark in any reasonable manner,
including the slightly stylized manner in which the
registered mark is displayed. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
Next, we find that the word PARADISE in both marks is
highly distinctive as applied to the goods at issue here,
being at best only slightly suggestive of the high quality
Ser. No. 76599644
9
of the goods. PARADISE comprises the whole of applicant’s
mark, and we find that it is the dominant feature in the
commercial impression created by the cited registered mark.
This is because, as applied to food products, the word
CHEF’S would be seen as merely a highly suggestive modifier
of the distinctive word PARADISE. For this reason, we
accord more weight to the word PARADISE in the registered
mark in our comparison of applicant’s and registrant’s
marks. See In re Chatam International Inc., supra.
Comparing the marks in terms of appearance, we find
that they are differentiated only by the presence of the
word CHEF’S in the cited registered mark. As noted above,
the slight stylization of the cited registered mark does
not significantly distinguish the marks in terms of
appearance. Thus, although the marks are not identical in
terms of appearance, we find that they are similar due to
the presence of the word PARADISE in both of them.
In terms of sound, the only difference between the
marks is the presence of the word CHEF’S in the cited
registered mark. Although the marks thus are not identical
in terms of sound, we find them to be similar due to the
presence in both marks of the word PARADISE.
In terms of connotation, we find that the presence of
the possessive modifier CHEF’S in the cited registered mark
Ser. No. 76599644
10
lends a slightly different connotation to the cited
registered mark, in that it suggests a paradise inhabited
or enjoyed by a chef, i.e., a “chef’s paradise.” However,
we find that the similarity in connotation resulting from
the presence of the highly distinctive word PARADISE
outweighs any difference in connotation resulting from the
presence of the word CHEF’S in the cited registered mark, a
word which is highly suggestive as applied to the goods.
Both marks connote a “paradise.”
In terms of overall commercial impression, we find,
again, that the marks are similar because they both evoke
the distinctive concept “paradise.” This fundamental
similarity in the source-indicating commercial impression
created by both marks is not altered by the presence in the
cited registered mark of the highly suggestive word CHEF’S.
Even if purchasers, with their imperfect recollections,
notice and recall that one of the marks includes the word
CHEF’S as a possessive modifier of PARADISE, they certainly
will recall that both marks include the distinctive word
PARADISE.
For all of these reasons, we find that applicant’s
mark PARADISE and the cited registered mark CHEF’S PARADISE
are similar when viewed in their entireties. As noted
above, in cases where the goods are identical (as they are
Ser. No. 76599644
11
here; see below), the degree of similarity between the
marks which is required to support a finding that the marks
are similar under the first du Pont factor declines. We
find that applicant’s mark and the cited registered mark,
when applied to identical goods, are sufficiently similar
that the first du Pont factor clearly weighs in favor of a
finding of likelihood of confusion in this case.
We turn next to the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
the goods as identified in the application and in the cited
registration, respectively. “Likelihood of confusion may
be found based on any item that comes within the
identification of goods in the involved application and
registration.” In re La Peregrina Ltd., 86 USPQ2d 1645,
1647 (TTAB 2008). In comparing the goods identified in the
application and in the cited registration, respectively,
“…it is the identification of goods that controls, not what
extrinsic evidence may show about the specific nature of
the goods. ... An applicant may not restrict the scope of
the goods covered in the cited registration by argument or
extrinsic evidence.” Id., 86 USPQ2d at 1646.
Applicant’s goods as identified in the registration
are “imported and domestic olive oil and vegetable oils.”
The goods identified in the cited registration include
Ser. No. 76599644
12
“olive oil.” We find that these respective goods are
identical. The second du Pont factor weighs in favor of a
finding of likelihood of confusion in this case.
Under the third du Pont factor, we consider evidence
pertaining to the trade channels in which the respective
goods, as identified, are marketed. Because applicant’s
“olive oil” and registrant’s “olive oil” are identical
goods, we presume that they are or could be marketed in
identical trade channels. In re Smith & Mehaffey, 31
USPQ2d 1531 (TTAB 1994). Moreover, there are no trade
channel restrictions or limitations in either applicant’s
identification of goods or registrant’s identification of
goods as to “olive oil,” and we therefore must presume that
the goods are or could be marketed in all normal trade
channels for such goods. In re Elbaum, 211 USPQ 639 (TTAB
1981). Applicant’s argument that it actually or currently
markets its olive oil only in bulk to wholesalers or to
large institutional food service customers, while
registrant currently markets its goods only through a
single retail store in Los Angeles, California, is
unavailing. The third du Pont factor weighs in favor of a
finding of likelihood of confusion in this case.
Under the fourth du Pont factor, we consider evidence
pertaining to the conditions under which the goods are
Ser. No. 76599644
13
purchased. We find that olive oil is an ordinary consumer
item sold at supermarkets or other food retailers, which is
purchased by ordinary consumers without a great deal of
care which might mitigate the likelihood of confusion.
Applicant’s contention that its actual customers are
wholesalers and institutions which would be knowledgeable
and careful purchasers is unavailing, given the absence of
any such purchaser restrictions in applicant’s
identification of goods. Moreover, it is well-settled that
even sophisticated purchasers who are knowledgeable as to
the goods are not necessarily knowledgeable in the field of
trademarks or immune to source confusion arising from the
use of confusingly similar marks on or in connection with
identical goods. See Giersch v. Scripps Networks Inc., 90
USPQ2d 1020 (TTAB 2009); In re Wilson, 57 USPQ2d 1863 (TTAB
2001); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). For these
reasons, we find that the fourth du Pont factor weighs in
favor of a finding of likelihood of confusion in this case.
Under the fifth du Pont factor regarding fame of the
prior mark, applicant notes that there is no evidence that
the cited registered mark is famous. However, it is
settled that the absence of such evidence is not
particularly significant in the context of an ex parte
proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11
Ser. No. 76599644
14
(TTAB 2006). Moreover, “[i]t is not necessary that a
registered mark be famous to be entitled to protection
against a confusingly similar mark.” In re Big Pig Inc.,
81 USPQ2d 1436, 1439 (TTAB 2006). We find that the fifth
du Pont factor is neutral in this case.
Under the sixth du Pont factor, as applicant notes,
there is no evidence of any use by third parties of similar
marks on similar goods. We find that the sixth du Pont
factor therefore is neutral in this case.
We consider next the seventh du Pont factor (nature
and extent of any actual confusion) and the related eighth
du Pont factor (extent of the opportunity for actual
confusion). Applicant asserts that it is not aware of any
instances of actual confusion in the marketplace between
applicant’s mark and registrant’s mark despite fifteen
years of contemporaneous use. However, “[t]he fact that an
applicant in an ex parte case is unaware of any instances
of actual confusion is generally entitled to little
probative weight in the likelihood of confusion analysis,
inasmuch as the Board in such cases generally has no way to
know whether the registrant likewise is unaware of any
instances of actual confusion...” In re Opus One Inc., 60
Ser. No. 76599644
15
USPQ2d at 1817.4 Moreover, “[i]t should also be noted that
competent evidence of actual confusion is difficult to come
by where as here both applicant and registrant may be
performing their respective activities in a commendable or
exemplary fashion.” In re Opus One, 60 USPQ2d at 1818,
quoting from In re Richard Bertram & Co., 203 USPQ 286, 291
(TTAB 1979).
In any event, even if there is no evidence of actual
confusion under the seventh du Pont factor, there likewise
is no basis on this record for finding, under the related
eighth du Pont factor, that there has been a significant
opportunity for actual confusion to have occurred. That
is, there is no competent evidence that the nature and
extent of applicant’s and registrant’s actual use of their
marks in the marketplace, including the extent of
geographical overlap, has been so substantial as to render
the apparent absence of actual confusion legally
significant. See In re Thomas, 79 USPQ2d at 1028; In re
Continental Graphics Corp., 52 USPQ2d 1377 (TTAB 1999);
Gillette Canada, Inc. v. Ranir, 23 USPQ2d 1768 (TTAB 1992).

4 As noted above in connection with the tenth du Pont factor, we
reject as unfounded on this record applicant’s assumption that
registrant necessarily is unaware of any instances of actual
confusion.

Ser. No. 76599644
16
Applicant itself contends that there has been no such
actual overlap in the marketplace.
In short, the fact (under the seventh du Pont factor)
that there apparently has been no actual confusion must be
considered together with the fact (under the eighth du Pont
factor) that there apparently has been no significant
opportunity for actual confusion to have occurred. In
these circumstances, we find that the seventh and eighth du
Pont factors pertaining to the issue of actual confusion
are essentially neutral in this case.
There is no evidence in the record pertaining to the
ninth du Pont factor, i.e., the variety of goods. We find
that the ninth du Pont factor is neutral in this case.
Under the eleventh du Pont factor, we consider
evidence pertaining to the extent to which applicant has a
right to exclude others from use of its mark on its goods.
Applicant argues (again, without timely proof) that its
predecessor in interest first began using the mark on the
goods in 1950 and that the mark has been used continuously
since then. Applicant argues that respondent’s predecessor
also owned a registration (Reg. No. 1962751, issued on
March 19, 1996), of the same PARADISE mark for the same
goods covered in applicant’s current application, which was
cancelled on December 21, 2002 due to an allegedly
Ser. No. 76599644
17
inadvertent failure to file a Section 8 affidavit. Based
on these facts, applicant states that it “believes that as
a matter of law ... it has the right to exclude others from
using ‘Paradise’ alone as a trademark for edible oil
products.” (Applicant’s supplemental brief at 9.)
Contrary to applicant’s argument, applicant’s
predecessor’s ownership of a now-cancelled registration of
the mark does not establish applicant’s right to exclude
others from use of the mark. A cancelled registration is
not entitled to any of the statutory presumptions of
Section 7(b) of the Trademark Act, including the
presumption of an exclusive right to use the mark. See In
re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re Hunter
Publishing Co., 204 USPQ 957 (TTAB 1979).5 Nor does
applicant’s assertion of a long period of common-law use of
its mark suffice in itself to establish in this case that

5 Several times in its brief, applicant contends that by filing
its current application it is seeking merely to “reregister” its
mark. However, as the Board stated in In re Ginc Uk Ltd., 90
USPQ2d at 1480:

Nor does applicant's cancelled registration justify
registration of its current application. A cancelled
registration is not entitled to any of the statutory
presumptions of Section 7(b) of the Trademark Act.
See, e.g., In re Hunter Publishing Company, 204 USPQ
957, 963 (TTAB 1979) (cancellation “destroys the
Section [7(b)] presumptions and makes the question of
registrability ‘a new ball game’ which must be
predicated on current thought.”).

Ser. No. 76599644
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applicant has any significant right to exclude others from
use of the mark. For these reasons, we find that the
eleventh du Pont factor is neutral in this case.
Under the twelfth du Pont factor (the potential for
confusion, i.e., whether de minimis or substantial), we
find that the goods involved here are the type of goods
that would be marketed to and purchased by significant
numbers of ordinary purchasers, and that the potential for
confusion therefore cannot be deemed to be de minimis. The
twelfth du Pont factor is neutral, at best.
Having considered all of the evidence of record as it
pertains to the du Pont likelihood of confusion factors, we
conclude that a likelihood of confusion exists. In
particular, we conclude that applicant’s mark is similar to
the cited registered mark, such that confusion is likely to
result from contemporaneous use of the marks on the legally
identical goods identified in the application and
registration (“olive oil”), which we presume to be marketed
in legally identical trade channels and to the same classes
of purchasers, including to ordinary consumers shopping for
this inexpensive food product.
We have considered applicant’s arguments to the
contrary (including any arguments not specifically
discussed in this opinion), but we find them to be
Ser. No. 76599644
19
unpersuasive. To the extent that any doubts might exist as
to the correctness of our conclusion that confusion is
likely, we resolve such doubts against applicant. See In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984).

Decision: The refusal to register is affirmed.