Thomas H. Wilson

Trademark Trial and Appeal Board

Jan 19, 2001

No. 75285881 (T.T.A.B. Jan. 19, 2001)

1/19/01
Paper No. 15
Bottorff
UNITED S
Trad
Andrew C. Wilson,
Christopher S. Adk
Office 101 (Christ
Before Quinn, Buch
Judges.
Opinion by Bottorf
Applicant see
of the mark PINE C
for goods identifi
“California standa
1 Trademark Examinin
supplemental appeal
Examining Attorney
Attorney handled th
initial briefing on
IS
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE TTABTATES PATENT AND TRADEMARK OFFICE
________
emark Trial and Appeal Board
________
In re Thomas H. Wilson
________
Serial No. 75/285,881
_______
Esq. for Thomas H. Wilson
ins,1 Trademark Examining Attorney, Law
opher Wells, Managing Attorney)
_______
er and Bottorff, Administrative Trademark
f, Administrative Trademark Judge:
ks registration on the Principal Register
ONE BRAND and design, as depicted below,
ed in the application, as amended, as
rd packed containers of fresh oranges,
g Attorney Adkins submitted the Office’s
brief in this case, and thus is the Trademark
of record. A different Trademark Examining
e prosecution of the application and the
behalf of the Office.
Ser. No. 75/285,881
2
lemons and grapefruits for wholesalers and storeowners.”2
Applicant has disclaimed the exclusive right to use the
word BRAND and “the pictorial representation of fresh
fruit” apart from the mark as shown.
The Trademark Examining Attorney refused registration
on the ground that applicant’s mark, as applied to
applicant’s identified goods, so resembles the mark PINE
CONE, which is registered for “canned peaches, apples,
stringless beans, lima beans, corn, sweet potatoes,
2 Serial No. 75/285,881, filed May 5, 1997. Applicant alleges
April 2, 1997 as the date of first use of the mark anywhere, and
April 14, 1997 as the date of first use of the mark in commerce.
Ser. No. 75/285,881
3
tomatoes, and tomato products,”3 as to be likely to cause
confusion, to cause mistake, or to deceive. See Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
When the refusal was made final, applicant filed this
appeal. The appeal has been fully briefed, but no oral
hearing was requested. We affirm the refusal to register.
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 likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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).
We turn first to the issue of whether applicant’s mark
and registrant’s mark, when compared in their entireties in
terms of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
3 Registration No. 200,845, issued January 27, 1925. Section
12(c) affidavit filed; Sections 8 and 15 affidavits accepted and
acknowledged; third Section 9 renewal July 14, 1985. The
registered mark is depicted in minimally-stylized lettering.
Ser. No. 75/285,881
4
test 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. 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
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Registrant’s mark is PINE CONE, a designation which,
on this record, appears to be wholly arbitrary as applied
to the relevant goods. We find that the dominant feature
in the commercial impression created by applicant’s mark
is, likewise, the arbitrary designation PINE CONE. The
remaining, disclaimed elements of applicant’s mark, i.e.,
the word BRAND and the illustration of pine cones and fresh
fruit, do not add anything of significance to the
commercial impression of applicant’s mark. BRAND is devoid
of source-indicating significance, the illustration of
Ser. No. 75/285,881
5
fresh fruit merely describes the goods, and the
illustration of pine cones merely reinforces the dominance
of the arbitrary designation PINE CONE. In sum, we find
that applicant’s mark and registrant’s mark, when viewed in
their entireties, are quite similar in terms of appearance,
sound, and connotation, and that they create essentially
identical overall commercial impressions. These findings
under the first du Pont evidentiary factor weigh in favor
of a conclusion that confusion is likely.
We further find, under the sixth du Pont evidentiary
factor, that there is no evidence of any third-party use of
similar “PINE CONE” marks on similar goods, a fact which
further supports our finding that PINE CONE is an arbitrary
and strong mark entitled to a broad scope of protection.
Next, we shall determine “the similarity or
dissimilarity of the established and likely-to-continue
trade channels” for applicant’s and registrant’s respective
goods, under the third du Pont evidentiary factor, and “the
conditions under which and buyers to whom sales are made,
i.e., ‘impulse’ vs. careful, sophisticated purchasing,”
under the fourth du Pont evidentiary factor. We note that
applicant’s identification of goods, as originally filed,
was “fresh citrus fruit.” Applicant subsequently amended
the identification to read “California standard packed
Ser. No. 75/285,881
6
containers of fresh oranges, lemons and grapefruits for
wholesalers and storeowners.” The purpose of the amendment
was to clarify that applicant’s citrus fruit is sold under
applicant’s mark only to the trade, i.e., to wholesalers
and to retailers/storeowners, and not to the general
consuming public. Applicant asserts that its fruit bears a
different mark when it is offered for sale by retailers to
the general public, i.e., applicant’s “T.H. WILSON” mark.
Accordingly, for purposes of our likelihood of confusion
analysis, we assume that the relevant classes of purchasers
for applicant’s goods are limited to wholesalers and
storeowners, and that they do not include the general
purchasing public.4
The goods identified in the cited registration are
“canned peaches, apples, stringless beans, lima beans,
corn, sweet potatoes, tomatoes, and tomato products.” This
identification includes no limitation as to trade channels
or classes of purchasers. Accordingly, we must presume
that registrant’s goods are marketed in all normal trade
channels for such goods and to all normal classes of
4 We reject the Trademark Examining Attorney’s argument that the
relevant classes of purchasers for applicant’s goods include
members of the general public shopping at “wholesale” or “club”
stores such as Costco, Sam’s Club and BJ’s. Rather, we agree
with applicant’s argument that such purchasers essentially are
retail consumers and that, as such, they are outside the ambit of
applicant’s amended identification of goods.
Ser. No. 75/285,881
7
purchasers for such goods. See In re Elbaum, 211 USPQ 639
(TTAB 1981). We find that the normal trade channels and
classes of customers for registrant’s identified goods
include wholesalers and retailers/storeowners, and that
applicant’s and registrant’s trade channels and classes of
purchasers therefore are identical, to that extent. These
overlaps in trade channels and classes of purchasers weigh
in favor of a finding of likelihood of confusion, under the
third and fourth du Pont evidentiary factors.
Applicant argues that wholesalers and storeowners, the
relevant classes of purchasers in this case, are
sophisticated and careful purchasers, under the fourth du
Pont factor. We will assume that this is true,
notwithstanding the absence of any specific evidence in the
record to support applicant’s counsel’s assertion (at page
6 of applicant’s Supplemental Reply Brief) that sales of
applicant’s goods “involve significant amounts of money,”
and notwithstanding the fact that the “storeowner”
purchasers of applicant’s and registrant’s respective goods
must be deemed to include owners of small “mom-and-pop”
stores, who would not necessarily be purchasing large
and/or expensive quantities of the respective goods on a
regular basis.
Ser. No. 75/285,881
8
Thus, we find that the fourth du Pont factor weighs in
applicant’s favor in our likelihood of confusion
determination. However, in view of our findings on the
other relevant du Pont factors, as discussed elsewhere in
this opinion, we also find that the sophistication and care
of purchasers under the fourth du Pont factor is not
controlling in this case, and that it does not render these
purchasers immune to source confusion arising from use of
these highly similar marks on these related goods. The
Court’s analysis of this issue in In re Research and
Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed.
Cir. 1986) is appropriate here as well:
That the relevant class of buyers may
exercise care does not necessarily impose on
that class the responsibility of
distinguishing between similar trademarks for
similar goods. “Human memories even of
discriminating purchasers … are not
infallible.” Carlisle Chemical Works, Inc.
v. Hardman & Holden Ltd., 434 F.2d 1403,
1406, 168 USPQ 110, 112 (CCPA 1970).
Sophistication of buyers and purchaser care
are relevant considerations, but are not
controlling on this factual record.
Bearing in mind our findings as to the trade channels,
purchasers and conditions of sale with respect to the
respective goods identified in applicant’s application and
in the cited registration, we now turn to a determination,
Ser. No. 75/285,881
9
under the second du Pont factor, of the similarity or
dissimilarity between, and the nature of, those respective
goods themselves. For purposes of our analysis under this
factor, applicant’s goods are, essentially, fresh citrus
fruits,5 and registrant’s goods are canned fruits and
vegetables, i.e., peaches, apples, stringless beans, lima
beans, corn, sweet potatoes, tomatoes, and tomato products.
Applicant’s and registrant’s respective
identifications of goods both include fruits. Applicant is
correct in pointing out that its fruits are citrus fruits
while registrant’s fruits are not, and that its fruits are
fresh while registrant’s fruits are canned.6 However, it is
5 We have considered the other wording in applicant’s amended
identification of goods, i.e., “California standard packed
containers” and “for wholesalers and storeowners,” in connection
with the third and fourth du Pont factors, supra. That
additional wording does not pertain to the nature of applicant’s
goods, per se. It does, however, render moot applicant’s
argument that applicant’s and registrant’s goods are dissimilar
because they are sold in different areas of supermarkets. That
fact would be pertinent if retail consumers were the relevant
class of purchasers; in this case, they are not. For the same
reason, it is not particularly relevant (even assuming it is
true) that applicant’s and registrant’s goods might not be
complementary food items which would be purchased and used
together by retail consumers, and applicant’s argument to that
effect accordingly is not persuasive in this case.
6 We are not persuaded by applicant’s argument that we should
accord significant or dispositive weight to the fact that
registrant’s food products are “processed” while applicant’s are
not. The Court’s dicta in In re Mars, Incorporated, 741 F.2d
395, 222 USPQ 938 (Fed. Cir. 1984), relied on by applicant, does
not mandate such an analysis, nor has a “processed vs.
unprocessed” distinction been dispositive in the past. See,
e.g., Midwest Biscuit Co. v. John Livacich Produce, Inc., 203
Ser. No. 75/285,881
10
not necessary that the respective goods be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods are related in some manner or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association or connection between the producers of the
respective goods. See In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
The Trademark Examining Attorney has submitted ten
third-party registrations in which the identifications of
goods include both fresh fruits and canned fruits and/or
canned vegetables.7 Although these registrations are not
USPQ 628 (TTAB 1979)(fresh strawberries, avocados and vegetables
vs. cookies, crackers, macaroni, spaghetti, cakes and candy), a
case which the Court cited with approval in In re Mars, supra.
See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re The Vim
Corporation, 161 USPQ 58 (TTAB 1969); Gentry Canning Company v.
Blue Ribbon Growers, Inc., 138 USPQ 536 (TTAB 1963); and Francis
H. Leggett & Co. v. Cowin and Ryan, 69 USPQ 174 (Comm’r Pats.
1946).
7 See especially Registration Nos. 2,127,407, 1,152,401,
1,109,594, 984,626, 856,109, 803,190, 715,869, 1,501,506,
1,369,602, and 1,568,638 combined with 1,334,608. We have given
little or no probative value to the remaining registrations made
Ser. No. 75/285,881
11
evidence that the marks shown therein are in commercial
use, or that the public is familiar with them, they
nevertheless are probative evidence to the extent that they
suggest that such goods are of a type which may emanate
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
Applicant has presented no evidence to the contrary.
We find this evidence sufficient to establish that
applicant’s fresh citrus fruits and registrant’s canned
fruits and vegetables, although not precisely identical,
are nonetheless similar under the second du Pont
evidentiary factor. Generally, the greater the degree of
similarity between the parties’ marks, the lesser the
degree of similarity required in the parties’ goods to
support a finding of likelihood of confusion. Moreover,
where, as here, the parties’ marks are essentially
identical in terms of their overall commercial impressions,
there need be only a viable relationship between their
respective goods in order to find that a likelihood of
of record by the Trademark Examining Attorney. Some of the
remaining registrations are for “house marks” which cover a wide
variety of food and non-food items. The remainder are
registrations which indicate that the types of goods at issue
here were included in their identifications of goods when the
registrations were originally issued, but were deleted from the
identifications by subsequent amendment.
Ser. No. 75/285,881
12
confusion exists. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
We find that the requisite relationship between applicant’s
and registrant’s goods exists in this case, and that the
second du Pont factor accordingly weighs in favor of a
finding of likelihood of confusion.
We also find that the ninth du Pont factor, “the
variety of goods on which a mark is or is not used,” weighs
in favor of a likelihood of confusion finding in this case.
According to the cited registration, registrant uses its
PINE CONE mark on a variety of different fruits and
vegetables. We find it likely that purchasers, when
encountering additional fruits such as applicant’s marketed
under the arbitrary PINE CONE mark, would assume that a
source, sponsorship or other connection exists.
Applicant argues that the tenth du Pont evidentiary
factor requires consideration of “laches and estoppel
attributable to owner of prior mark and indicative of lack
of confusion,” that evidence of such laches or estoppel
exists in this case, and that this evidence weighs in
applicant’s favor in the likelihood of confusion analysis.
Specifically, applicant contends that the mark it seeks to
register is a revival and reproduction of an old orange box
Ser. No. 75/285,881
13
label that was in use since at least as early as 1901 by a
third party, Highland Orange Association, but subsequently
abandoned;8 that such use of the label by the Highland
Orange Association predates the 1925 filing date of the
cited registration, as well as the 1925 date of first use
alleged therein, and that accordingly “the mark for oranges
is the prior mark”;9 that the Southern California Fruit
Exchange (a citrus growers’ cooperative which was the
predecessor of the Sunkist organization, according to
applicant), on behalf of its member the Highland Orange
Association, marketed oranges under the Pine Cone brand in
“most if not all markets of the United States” since at
least as early as 1901; and that
inherent in registrant’s decision in 1925 to
begin to use and to apply to register “Pine
Cone” for certain canned fruits and
vegetables would be a good faith belief on
the part of registrant that there would be no
likelihood of confusion arising from his use
of the mark. This would give rise to
judicial estoppel, if not ordinary estoppel.
(Applicant’s brief, p. 16.)
8 Applicant admits that it is not the successor to, nor otherwise
in privity with, the Highland Orange Association. Applicant
contends that many of these old, abandoned labels have been
revived and adopted as marks by citrus growers today.
9 Priority is not an issue in this case, nor in any other ex
parte Section 2(d) refusal.
Ser. No. 75/285,881
14
We are not persuaded by applicant’s argument. We find
that the evidence of record is insufficient to prove that
the owner of the cited registration knew of the Highland
Orange Association’s Pine Cone label when it filed its
application in 1925, and thus there is no basis for
attributing any laches or estoppel to the owner of the
cited registration. Applicant has submitted excerpts from
a book published in 1915 entitled Citrus Fruits, by J.E.
Coit, which includes at page 299 an illustration of the
Highland Orange Association’s Pine Cone label above the
caption “A typical orange box label.” However, there is no
evidence regarding the circulation of this book, nor, given
the specialized subject matter of the book,10 any other
evidentiary basis for finding that registrant, which was
not in the citrus trade, would have been aware of it.11
10 The book is subtitled “An Account of the Citrus Fruit Industry
with Special Reference to California Requirements and Practices
and Similar Conditions.” J.E. Coit is identified, on the title
page, as “Professor of Citriculture in the University of
California and Citriculturist to the University of California
Agricultural Experiment Station Formerly Superintendent in Charge
Citrus Experiment Station Riverside, California.”
11 The illustration of the Highland Orange Association label in
this 1915 book includes the designation “Registered Trade Mark,”
but there is no evidence in the record, nor in the Office’s
records, that the label, or the PINE CONE brand, was federally
registered in 1915. As discussed infra at footnote 16, there is
evidence in the record that the Highland Orange Association
obtained a federal registration of the PINE CONE mark in 1933.
Ser. No. 75/285,881
15
Similarly, applicant has submitted excerpts from a
February 1901 publication entitled Brands of Oranges and
Lemons Controlled by the Southern California Fruit
Exchange.12 The label applicant seeks to register, among
other labels, is reproduced on page 61 of this publication.
Applicant asserts that “this publication was circulated
among the trade to show labels controlled by Sunkist.”
(Applicant’s April 16, 1998 response to first office
action, at p. 2. Emphasis added.) However, it does not
appear from the record that the owner of the cited
12 The introduction to this publication includes the following
text (at pp. 10 and 13):
The Southern California Fruit Exchange was incorporated in
1895. It is a cooperative organization, established by the
orange and lemon growers for the purpose of marketing their
products. During the four seasons ending with that of 1899-
1900, the Exchange marketed nearly 15,000 carloads of oranges
and lemons. The gross sales during this period were over
$13,000,000. The system of marketing established by the
Exchange is rapidly gaining favor with the growers. During
the current season the Exchange will market approximately 9000
carloads of citrus fruits. The Exchange system of selling
delivered [sic] is not only in favor with the growers, but
equally popular with the trade, affording them an opportunity
to examine the goods before purchasing. As shown by the
following list, the Exchange has its own agents in every
important market on the continent, and is prepared through
these agents to offer the very best goods at all times.
…
The following pages will show the Exchanges and Associations
for which the Southern California Fruit Exchange acts as
marketing agent: Nearly 200 well-known and guaranteed brands
are exclusively under the control of the Exchange. These
brands are invariably packed under the same management, and
from the same orchards, and the trade can therefore rely upon
them for uniformity in quality and packing.
Ser. No. 75/285,881
16
registration was in the citrus trade, and thus there is no
basis for finding that he would have been aware of this
publication. Likewise, we cannot impute any such knowledge
of Highland’s label to registrant from the fact that the
Southern California Fruit Exchange marketed citrus products
bearing that label, apparently among some 200 other labels,
to the citrus trade in all major markets of the United
States. Again, there is no evidence that registrant was in
the citrus trade in 1925 or at any other time.
In sum, the evidentiary record does not support
applicant’s contention that registrant, when it filed its
application in 1925, was aware of Highland Orange
Association’s PINE CONE label, much less that registrant’s
filing of the application in 1925 operates as an estoppel
or otherwise is evidence that registrant believed that
confusion was unlikely. There is no evidence of “laches or
estoppel attributable to owner of prior mark and indicative
of lack of confusion,” and the tenth du Pont factor
accordingly is neutral in this case.13
13 Given the lack of sufficient evidence in the record to
establish “laches or estoppel attributable to the owner of the
prior mark,” we need not reach the more fundamental question of
whether applicant is entitled to rely on the tenth du Pont factor
at all in this case. Arguably, the “laches and estoppel”
provision set forth in subsection (d) of the tenth du Pont factor
must be read in conjunction with the introductory language of the
tenth factor. That is, “laches and estoppel attributable to
owner of prior mark and indicative of lack of confusion” is
Ser. No. 75/285,881
17
relevant only as an example of “the market interface between
applicant and the owner of a prior mark.” No such market
interface between applicant and registrant exists in this case;
applicant relies solely on an alleged (but unproven) market
interface between registrant and the Highland Orange Association,
an entity with which applicant admittedly (see supra at footnote
8) shares no privity. This construction of the “laches and
estoppel” provision of the tenth du Pont factor is consistent
with the well-settled general rule, in inter partes cases, that
laches and estoppel are personal defenses which may not be
asserted by a third party, such as applicant in this case, who
lacks privity with the person entitled to assert the defense.
See, e.g., The Procter & Gamble Company v. Keystone Automotive
Warehouse, Inc., 191 USPQ 468 (TTAB 1976). But see Interstate
Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198
USPQ 151, 154 (CCPA 1978)(party’s prior statement, in unrelated
proceedings, of opinion on legal issue which is contrary to
position taken in present proceeding is not an estoppel, but is
relevant to the extent that it may be “illuminative of shade and
tone in the total picture confronting the decision maker”).
Additionally, and aside from the privity issue, we have
found no reported cases in which the “laches and estoppel”
provision of the tenth du Pont factor was applied in the context
of an ex parte appeal, nor has applicant cited any such cases.
It is true that du Pont itself was an ex parte case, but it did
not involve laches or estoppel, on its facts. The only reported
ex parte case we have found in which the applicant attempted to
overcome a Section 2(d) refusal by asserting estoppel is the pre-
du Pont case of In re National Distillers and Chemical
Corporation, 132 USPQ 271 (CCPA 1962). The Court rejected the
applicant’s estoppel argument in that case, and held that laches,
estoppel and acquiescence are applicable only in inter partes
proceedings, not in the context of ex parte appeals:
We think that the clear intent of Congress was
that section 19 [Trademark Act Section 19, 15
U.S.C. §1069] be limited to inter partes
proceedings, and this for the very sound reason
that the equitable principles of laches, estoppel
and acquiescence are based on facts and should not
be applied either in favor of or against one not a
party to the proceeding. An ex parte proceeding
arising from the refusal of the Patent Office to
register a trademark does not become an inter
partes proceeding in the sense of section 19 of
the Lanham Act (15 U.S.C. 1069), as urged by
applicant, merely because the applicant and the
Patent Office appear many times in opposing roles.
Ser. No. 75/285,881
18
Applicant also appears to be arguing that the absence
of actual confusion during “decades” of simultaneous use by
registrant and the Highland Orange Association (and its
successors-in-interest) of their respective PINE CONE
marks14 is evidence that there is no likelihood of confusion
in this case. (Applicant’s brief at 16.) However,
inasmuch as we have heard from neither registrant nor the
Highland Orange Association in this appeal, we cannot
conclude that, in fact, no instances of actual confusion
ever occurred. Moreover, there is no evidence in the
record from which we can determine that a meaningful
opportunity for actual confusion ever existed. We do not
know the amount and extent of registrant’s sales of its
goods under the mark, nor is there any evidence regarding
the amount and extent of Highland Orange Association’s
sales under its mark. It appears that, as of 1901,
Highland Orange Association’s label was one of many
132 USPQ at 276. It is unclear whether this statement of the law
was implicitly overruled by the Court in du Pont. However, that
question, as well as the privity question, are moot in this case
because the evidence of record does not demonstrate any laches or
estoppel attributable to the owner of the registration cited as a
bar to registration of applicant’s mark.
14 According to the allegation of use in the cited registration
registrant commenced use of its mark in 1925. Use of the
Highland Orange Association mark apparently commenced in 1898,
and continued until some undetermined time between 1953, when its
registration was renewed, and the expiration of its registration
in 1973. See infra at footnote 16. Applicant commenced use of
its mark in 1997.
Ser. No. 75/285,881
19
marketed nationally by the Southern California Fruit
Exchange, but we cannot determine how much of the
Exchange’s citrus sales were under that particular label.
In sum, although there is no evidence of actual confusion
in the record, we cannot conclude that such absence is
entitled to any significant weight in our likelihood of
confusion analysis in this case. See In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984).
In summary, and for the reasons discussed more fully
above, we find that applicant’s mark and registrant’s mark
are highly similar in terms of appearance, sound, and
connotation, and that they present essentially the same
overall commercial impression. Likewise, we find that
there are no third parties using similar marks on similar
goods, an indication that registrant’s PINE CONE mark is
arbitrary and strong, and entitled to a relatively broad
scope of protection. We also find that applicant’s goods
and registrant’s goods are sufficiently related to give
rise to source confusion when marketed under these highly
similar marks, and that the likelihood of source confusion
is is heightened by the fact that registrant uses its
arbitrary mark on a variety of fruits and vegetables.
Applicant’s and registrant’s goods are sold in overlapping
trade channels, i.e., to wholesalers and storeowners, and
Ser. No. 75/285,881
20
although we assume that these wholesalers and storeowners
are careful, sophisticated purchasers of the respective
goods, we cannot conclude that they necessarily are immune
to source confusion in these circumstances. There is no
evidence of any laches or estoppel attributable to
registrant and indicative of a lack of confusion. Although
there is no evidence of any actual confusion, there also is
no evidence that a meaningful opportunity for actual
confusion has existed, and the absence of actual confusion
accordingly is entitled to little weight in our likelihood
of confusion analysis.
Having carefully considered and weighed all of the
evidence of record pertaining to the du Pont likelihood of
confusion factors, we conclude that a likelihood of
confusion exists, and that registration of applicant’s mark
is barred under Trademark Act Section 2(d).
In addition to its arguments under Section 2(d),
applicant relies heavily on the administrative law doctrine
of “reasoned decisionmaking” in support of its claim to
entitlement of the registration it seeks. Under this
doctrine, applicant contends, a federal agency must treat
like cases alike, and may not casually ignore its own past
decisions. Those prior decisions are not forever binding
on the agency, but any inconsistency between the prior
Ser. No. 75/285,881
21
decisions and its present decision must be rationally
explained. In support of this argument, applicant cites
Atchison, Topeka & Santa Fe Railway Co. et al. v. Wichita
Board of Trade et al., 412 U.S. 800; 93 S.Ct. 2367, 37
L.Ed.2d 350 (1973); Ricardo Davila-Bardales v. Immigration
and Naturalization Service, 27 F.3d 1 (1st Cir. 1994);
Internal Revenue Service v. Federal Labor Relations
Authority, 963 F.2d 429 (D.C. Cir. 1992); Hall v.
McLaughlin, 864 F.2d 868 (D.C. Cir. 1989); and Shaw’s
Supermarkets, Inc. v. National Labor Relations Board, 884
F.2d 34 (1st Cir. 1989).
Applicant notes that in 1933, and despite the
existence at that time of the 1925 PINE CONE registration
which has been cited against applicant in the present case,
the Office issued (to the aforementioned Highland Orange
Association) a registration of the PINE CONE mark for fresh
citrus fruits.15 Citing the “reasoned decisionmaking”
15 Registration No. 302,056, issued March 28, 1933. The Board
notes that the physical file of this registration apparently is
no longer available, and that the registration record likewise
does not appear in the Office’s automated database. However,
applicant has submitted a copy of page 886 of the Official
Gazette of May 26, 1931, which shows that the mark was the
subject of application Serial No. 310,563 filed January 30, 1931,
and that 1898 was alleged in the application as the date of first
use. Applicant also has submitted a copy of page 178 of the
Index of Trademarks, 1933, which includes a notice of the
issuance of Registration No. 302,056 on March 28, 1933, and a
copy of page 663 of what appears to be the January 20, 1953 issue
of the Official Gazette, which includes a notice that the
Ser. No. 75/285,881
22
doctrine, applicant argues that the present Section 2(d)
refusal must be reversed unless the Office can provide a
reasonable explanation for its inconsistent treatment of
applicant’s mark, i.e., an explanation as to why the cited
1925 registration should bar registration of applicant’s
PINE CONE mark today but did not bar registration of
essentially the same mark, for the same goods, in 1933.
We have carefully considered applicant’s arguments on
this issue and the cases cited by applicant in support
thereof, but we are not persuaded that the doctrine of
“reasoned decisionmaking” precludes our affirmance of the
Trademark Examining Attorney’s Section 2(d) refusal in this
case.
First, the Office’s 1933 decision to register the mark
applicant now seeks to register is not the type of previous
agency precedential decision that triggers the “reasoned
decisionmaking” doctrine. Applicant cites no authority for
his argument to the contrary. The cases applicant has
cited all involved an agency’s failure to adhere to its
settled “policies,” “norms,” “rules,” “standards” or
registration was renewed on March 28, 1953 to Gold Buckle
Association, the apparent successor-in-interest to Highland
Orange Association, the original registrant. The Board has not
been able to determine from the Office’s records the subsequent
history of Registration No. 302,056. However, it appears that
the registration was not renewed a second time in 1973, and that
it accordingly has expired.
Ser. No. 75/285,881
23
“methods of analysis,” as established in its prior
adjudicated, non-summarily decided precedential cases.
Indeed, in Ricardo Davila-Bardales v. Immigration and
Naturalization Service, supra, the Court explained the
“reasoned decisionmaking” doctrine as follows:
Though the law does not require that all
officials of a large agency “react similarly or
interpret regulations identically” in every
case, it does prohibit an agency from adopting
significantly inconsistent policies that result
in the creation of “conflicting lines of
precedent governing the identical situation.”
…
… the prospect of a government agency treating
virtually identical legal issues differently in
different cases, without any semblance of a
plausible explanation, raises precisely the
kinds of concerns about arbitrary agency action
that the consistency doctrine addresses (at
least where the earlier decisions were not
summary in nature, but, rather, contained fully
reasoned explications of why a certain view of
the law is correct).
27 F.3d at 5 (emphasis added; internal citations omitted).
In all of the cases cited by applicant, the prior
agency decisions with which the complained-of agency
decisions were alleged to be inconsistent were fully
adjudicated decisions made by the agency’s Administrative
Law Judges or equivalent policy-making and adjudicative
personnel. None of the cases cited by applicant involved
an alleged inconsistency between the agency’s complained-of
Ser. No. 75/285,881
24
decision and a prior agency decision which was isolated,
summary, non-adjudicatory, and non-precedential, such as
the Office’s issuance of the 1933 registration relied on by
applicant in this case.
For this reason, we find the “reasoned decisionmaking”
doctrine and cases cited by applicant to be inapposite to
the present case. Instead, we shall adhere to the long-
standing, well-settled precedent governing our proceedings,
which holds that the Board is not bound by prior decisions
of Trademark Examining Attorneys, and that each case must
be decided on its own merits and on the basis of its own
record, in accordance with relevant statutory, regulatory
and decisional authority. See, e.g., In re International
Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513
(Fed. Cir. 1999); In re Cooper, 117 USPQ 396 (CCPA
1958)(“…the decision of this case in accordance with sound
law is not governed by possibly erroneous past decisions by
the Patent Office); In re Perez, 21 USPQ2d 1075 (TTAB
1991)(§2(d) refusal based on prior conflicting registration
affirmed, despite fact that the conflicting registration
had not been cited as bar to applicant’s previous
registration (now expired) of same mark for same goods;
Board not bound by decisions of prior Examining Attorneys);
In re BankAmerica Corporation, 231 USPQ 873, 876 (TTAB
Ser. No. 75/285,881
25
1986)(“Section 20 of the Trademark Act, 15 USC §1070, gives
the Board the authority and duty to decide an appeal from
an adverse final decision of the Examining Attorney. This
duty may not and should not be delegated by the adoption of
conclusions reached by Examining Attorneys on different
records”); and In re National Retail Hardware Association,
219 USPQ 851, 854 (TTAB 1983)(“As in Cooper, we do not here
have sufficient facts before us on which to evaluate
whether the previous action of the Examiner which resulted
in issuance of the previous registration was or was not
erroneous. Nevertheless, as Cooper held, it is sufficient
that the facts now before us and the application to them of
sound law persuade us that the mark does not meet the
requirements for registration set forth in Sections 2(d)
and 2(e)(1) of the statute”).
In any event, and even assuming that the “reasoned
decisionmaking” doctrine were applicable to this case, we
find that there is a plausible, rational explanation for
the apparent inconsistency inherent in the Office’s
registration of Highland Orange Association’s PINE CONE
mark in 1933 and its refusal to register applicant’s mark
today. Simply put, the law has changed.
In 1933, the Trademark Act of 1905 governed the
federal registration of marks. Under that statute, a
Ser. No. 75/285,881
26
prerequisite to the refusal of registration on the ground
of likelihood of confusion was that the goods of the
applicant and the prior registrant be “of the same
descriptive properties.” Trademark Act of 1905, Section 5.
The Lanham Act of 1946 replaced that standard with the more
flexible modern “related goods” test, which does not
require that the goods themselves be the same or similar to
each other, but rather requires only that they be
sufficiently related that source or other confusion is
likely. See, e.g., Hunt Foods and Industries, Inc. v. The
Gerson Stewart Corp., 151 USPQ 350 (CCPA 1966); Hollywood
Water Heater Co. v. Hollymatic Corporation, 124 USPQ 452
(CCPA 1960); Pep Boys – Manny, Moe and Jack v. The Edwin F.
Guth Company, 94 USPQ 158 (CCPA 1952); The Alligator
Company v. Larus & Brother Company, Inc., 93 USPQ 436 (CCPA
1952), overruled on other grounds by Popular Merchandise
Co. v. “21” Club, Inc., 145 USPQ 203 (CCPA 1965); and J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §§24:4-24:6 (4th Ed. 1999).
Thus, because the canned goods identified in the 1925
registration were not necessarily “of the same descriptive
properties” as the fresh citrus fruits identified in the
application which matured into the 1933 Highland Orange
Association registration, the 1905 Act did not bar issuance
Ser. No. 75/285,881
27
of the 1933 registration. Under the more flexible standard
set forth in the 1946 Lanham Act and subsequent case law,
however, and for the reasons discussed at length in this
opinion, we find that the goods identified in applicant’s
application are sufficiently closely related to the goods
identified in the cited 1925 registration that source
confusion is likely to result from the use of applicant’s
and registrant’s confusingly similar marks. Based on this
finding and on our findings under the other relevant du
Pont factors, and notwithstanding the Office’s 1933
decision under the Trademark Act of 1905, we conclude that
registration of applicant’s mark is barred under Section
2(d) of the Trademark Act of 1946.
Decision: The refusal to register is affirmed.