St. Nicholas Music Inc.v.Lolly-Jolly, Inc.

Trademark Trial and Appeal Board

Aug 24, 2005

No. 91155371 (T.T.A.B. Aug. 24, 2005)

Mailed:
August 24, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

St. Nicholas Music Inc.
v.
Lolly-Jolly, Inc.
_____

Opposition No. 91155371
to application Serial No. 76222927
filed on March 12, 2001
_____

Michael Chiappetta of Fross Zelnick Lehrman & Zissu for St.
Nicholas Music Inc.

Edgar W. Averill, Jr. of Averill & Varn for Lolly-Jolly,
Inc.
______

Before Walters, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Lolly-Jolly, Inc., seeks registration of the
mark LOLLY-JOLLY (standard character form) for goods
identified in the application as “candy” in International
Class 30.1

1 Serial No. 76222927, filed March 12, 2001. The application is
a use based application under Trademark Act Section 1(a), 15
U.S.C. §1051(a) and alleges a first use date of January, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91155371
2
Opposer, St. Nicholas Music Inc., opposed registration
of applicant’s mark, on the grounds that, as applied to
applicant’s goods, the mark so resembles opposer’s
previously used and registered mark HOLLY JOLLY2 for a wide
variety of goods and services, including fruit-based snacks,
as to be likely to cause confusion, to cause mistake, or to
deceive under Trademark Act Section 2(d), 15 U.S.C.
§1052(d).3
Applicant filed an answer by which it denied the
salient allegations of the notice of opposition.4
The evidence of record includes the pleadings herein,
the file of the opposed application and the declaration of
Emily Dowdall, with accompanying exhibits submitted by
opposer, to which applicant stipulated its consent, pursuant
to Trademark Rule 2.123(b). In addition, opposer submitted,
under a notice of reliance and pursuant to applicant’s
stipulation of admissibility and authenticity of evidence,
applicant’s responses to opposer’s first set of

2 Opposer pleaded two registrations, Registration Nos. 2282905
and 26131194.

3 The notice of opposition also includes a claim of dilution
under Trademark Act Section 43(c). However, this claim was not
pursued in opposer’s brief and was essentially withdrawn in its
reply brief. In view thereof, the Board considers the dilution
claim to have been deleted from the opposition.

4 We note applicant’s reference in its brief to a petition to
cancel opposer’s pleaded Registration No. 22282905. This
cancellation proceeding, Cancellation No. 92043127, was dismissed
based on a motion filed under Fed. R. Civ. P. 12(b)(6), and,
therefore, has no bearing on this proceeding.
Opposition No. 91155371
3
interrogatories and requests for admission, opposer’s
copyright registration for the song “A Holly Jolly
Christmas,” printouts from the USPTO TESS database of
several third-party registrations, various documents
produced by applicant including photographic representations
of applicant’s packaging, advertising and product
catalogues, photographic representations of packaging used
by opposer’s predecessor in interest, and status and title
copies of opposer’s pleaded registrations.5 The pleaded
registrations, both of which are in full force and effect
and owned by opposer St. Nicholas Music Inc.,6 are
summarized as follows:

- Registration No. 2282905, which is of the
mark HOLLY JOLLY (in typeset form) for “fruit-
based snacks” in International Class 29 filed
April 10, 1998, issued on October 5, 1999;

- Registration No. 2613194, which is of the
mark HOLLY JOLLY (in typeset form) for “song
books” in International Class 16, for “plush
dolls, musical toys” in International Class 28,
and “entertainment, namely, production of
musical projects” in International Class 41,
filed on February 24, 1999 issued on August 27,
2002.

5 Applicant did not take any testimony or submit any evidence.

6 The Board notes that opposer also submitted status and title
copies of Registration Nos. 2767167 and 2806762. However, these
registrations were not pleaded in the notice of opposition nor
does the record support a finding that likelihood of confusion as
to these two registrations was tried by the implied or express
consent of the parties. We therefore have given no consideration
to these unpleaded registrations.
Opposition No. 91155371
4
Because opposer has made its two pleaded registrations
of record, and because its likelihood of confusion claim is
not frivolous, we find that opposer has established its
standing to oppose registration of applicant’s mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Additionally, because opposer has made its two pleaded
registrations of record, priority is not an issue in this
proceeding. See King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) 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 and 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
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by §2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Moreover the
goods need not be identical or directly competitive in order
for there to be a likelihood of confusion. Rather, the
Opposition No. 91155371
5
respective goods need only be related in some manner or the
conditions surrounding their marketing be such that they
could be encountered by the same purchasers under
circumstances that could give rise to the mistaken belief
that the goods come from a common source. In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
We turn to the first du Pont factor, i.e., whether
applicant’s mark and opposer's mark are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. 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
impressions 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
Opposition No. 91155371
6
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
The parties’ marks are depicted in standard character
form. The marks are substantially similar visually,
differing by one letter, the first letter in the first word
of each two-word mark. The marks also sound substantially
similar because they both consist of two rhyming words with
the word JOLLY in the second position. The marks have the
same rhyme and cadence. The connotations of the two marks
differ only to the extent that the meaning of the first word
in applicant’s mark, LOLLY,7 differs from the meaning of the
first word in opposer’s mark, HOLLY.8 As used in each mark,
the connotation of JOLLY is likely to be the same and
applicant has not argued otherwise.
Further, we find the overall commercial impressions of
the two marks are substantially similar because the

7 We take judicial notice of the following definition:
Lolly: chiefly British, 1. a. A piece of candy especially hard
candy. b. lollipop. The American Heritage® Dictionary of the
English Language, (4th ed. 2000). University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). From this
definition it is clear that LOLLY is, at a minimum, highly
suggestive of a type of candy.

8 We take judicial notice of the following definition: Holly:
1. a. Any of numerous trees or shrubs of the genus Ilex, usually
having bright red berries and glossy evergreen leaves with spiny
margins. b. Branches of these plants, traditionally used for
Christmas decoration. The American Heritage® Dictionary of the
English Language, (4th ed. 2000).
Opposition No. 91155371
7
difference in meaning of the first word in the parties’
marks is overshadowed by the visual and phonetic
similarities, particularly the similar rhyming qualities of
two words within each of the respective marks. We find, on
balance, that the similarities in appearance, sound and
commercial impression of the respective marks outweighs the
dissimilarity which results from the different first letter
and, thus, first word in each mark. We conclude that the
parties’ marks are substantially similar.
In cases such as this, where the applicant’s mark is so
similar to the mark in the cited registration, the degree of
relationship between the goods and services that is required
to support a finding of likelihood of confusion is less than
it would be if the marks were not so similar. In re
Concordia International Forwarding Corp., 222 USPQ 352 (TTAB
1983); In re International Telephone and Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
Turning, now, to consider the goods and services, we
find that “candy,” as identified in applicant’s application,
is related to “fruit-based snacks,” as identified in
opposer’s Registration No. 2282905. As shown by applicant’s
packaging and catalogues its candies include fruit-flavored
jelly lollipops which could be considered to be a fruit-
based snack. The packaging of opposer’s fruit-based snack
sold under the HOLLY JOLLY mark depicts little gummy-type
Opposition No. 91155371
8
pieces that look similar to candy. In addition, several
USPTO TESS printouts of third-party registrations submitted
by opposer include candy or gummy products and fruit-based
snacks or fruit snacks. While these third-party
registrations are not evidence that the marks shown therein
are in use on a commercial scale or that the public is
familiar with them, they may nevertheless have some
probative value to the extent that they may serve to suggest
that such goods or services are of a type which may emanate
from a single source. See In re Mucky Duck Mustard Co.,
Inc., 6 USPQ2d 1467, 1470 n. 6(TTAB 1988). Given the
absence of any restrictions or limitations in the parties’
respective identifications of goods, we also find that the
parties’ respective goods, candy and fruit-based snacks,
would be marketed in the same trade channels and to the same
classes of purchasers. We also find that the parties’
respective goods, candy and fruit-based snacks, are ordinary
consumer items which would be purchased without a great deal
of care, by ordinary consumers. These findings under the
second, third and fourth du Pont factors all weigh
significantly in opposer’s favor in our likelihood of
confusion analysis.
With regard to the goods and services identified in
opposer’s other pleaded registration, Registration No.
2613194, we find that the record does not establish that
Opposition No. 91155371
9
such goods and services are sufficiently similar or related
to applicant’s identified goods that, if used on or in
connection with confusingly similar marks, confusion as to
source is likely. There is no evidence of record regarding
any possible relationship between applicant’s candy and
opposer’s song books or musical project production services.
Although opposer did submit USPTO TESS printouts of third-
party registrations that include both candy and toys, and a
handful of printouts of third-party internet websites
marketing both candy and toys, several of these examples
include a wide variety of goods (e.g., Knott’s, Atlantis the
Lost Empire) and, as such, are of limited probative value as
regards candy and toys specifically.9
With regard to applicant’s argument that there is no
evidence of actual confusion, it is not clear from the
record if there has been any meaningful opportunity for
actual confusion to occur, i.e., the extent to which the
parties’ sales have overlapped. Moreover, a lack of
evidence of actual confusion does not mean that there is no
likelihood of confusion. Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed.

9 Evidence of opposer’s copyright in, and the fame of, the song
titled “A Holly Jolly Christmas” is of little probative value in
determining likelihood of confusion in this case. Opposer has
not established any trademark rights in the title of the song or
a link between the song and any derivative fame from the song and
opposer’s HOLLY JOLLY trademark for the identified goods and
services.
Opposition No. 91155371
10
Cir. 1983); J&J Snack Foods Corp. v. McDonald’s Corp., 932
F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991).
Finally, we note opposer’s argument regarding
applicant’s possible intent in adopting the mark. To the
extent opposer is arguing that applicant acted in bad faith,
applicant’s prior knowledge of the existence of opposer’s
marks is not, in itself, sufficient to constitute bad faith.
See Action Temporary Services Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307 (Fed. Cir. 1989). Establishing
bad faith requires a showing that applicant intentionally
sought to trade on opposer’s good will or reputation. See
Big Blue Products Inc. v. International Business Machines
Corp., 19 USPQ2d 1072 (TTAB 1991). There has been no such
showing made in this case.
We conclude that the evidence of record as it pertains
to the relevant du Pont factors clearly supports a finding
of likelihood of confusion as to opposer’s Registration No.
2282905 only, and that registration of applicant’s mark,
therefore, is barred under Trademark Act Section 2(d).
While we do not find a likelihood of confusion with respect
to opposer’s Registration No. 2613194, such a determination
is not necessary in this case.
Decision: The opposition is sustained.