Tootsie Roll Industries, LLCv.Keelen and Breckenfeld

Trademark Trial and Appeal Board

Oct 5, 2015

No. 91212895 (T.T.A.B. Oct. 5, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Tootsie Roll Industries, LLC
v.
Keelen and Breckenfeld
_____

Opposition No. 91212895
to Application Serial No. 85755320
_____

Douglas R. Wolf and Christina M. Licursi of Wolf, Greenfield & Sacks for Tootsie
Roll Industries, LLC.

Jerome P. Keelen, Esq. for Kate E. Keelen and Nicolas W. Breckenfeld.
_____

Before Quinn, Wellington and Lykos, Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Kate E. Keelen and Nicolas W. Breckenfeld (“Applicant”) filed an application to
register the mark FLUFF IT UP (in standard characters) for “natural cotton candy”
in International Class 30.1
Tootsie Roll Industries, LLC (“Opposer”) opposed registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark,

1 Application Serial No. 85755320, filed October 16, 2012 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere on October 1, 2012, and
first use in commerce on October 10, 2012.
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when used in connection with Applicant’s goods, so resembles Opposer’s previously
used and registered marks FLUFFY STUFF (in typed letters)2 and FLUFFY
STUFF COTTON CANDY POPS (in standard characters) (“COTTON CANDY
POPS” disclaimed),3 both for “cotton candy” in International Class 30, as to be likely
to cause confusion.
Applicant, in the answer, admitted Opposer’s priority, but denied the salient
allegations comprising Opposer’s claim of likelihood of confusion.4
The parties agreed, during a telephone conference with the Board on October 2,
2014, to proceed with this case by way of Accelerated Case Resolution (“ACR”),
which the Board approved in an order dated October 17, 2014. (9 TTABVUE).5
Pursuant to their agreement, the parties filed, on November 12, 2014, materials
captioned “Joint Stipulated Facts and Submissions of Evidence.” (10 TTABVUE).
The parties agreed that:
[T]he facts set forth in this document are undisputed and
true and the exhibits attached hereto are genuine, and
the facts set forth in those exhibits are undisputed and
true, that neither Opposer nor Applicant may now or in
the future object to the truthfulness or admissibility of
any of the following facts in connection with this
proceeding, that this stipulation is offered to show such
facts without the necessity of, and in lieu of, offering

2 Registration No. 1860481, issued October 25, 1994; renewed. Prior to November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (July 2015).
3 Registration No. 2869460, issued August 3, 2004; renewed.
4 Applicant also asserted several “Alternative Statements of Defense,” which are
amplifications of its denials.
5 Citations to the record reference TTABVUE, the Board’s online docketing system.
Specifically, the number preceding “TTABVUE” corresponds to the docket entry number,
and the number(s) following “TTABVUE” refer to the page number(s) of that particular
docket entry where the cited materials appear.
Opposition No. 91212895

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witnesses or additional documentary evidence, and that
the [Board] and any court to or in which either party may
appeal or commence de novo proceedings may render
judgment based on the stipulated facts and attached
exhibits. (10 TTABVUE 29).

The parties filed briefs on the case.
The stipulation and accompanying exhibits establish the following facts
pertinent to the likelihood of confusion issue before us.
Standing
With respect to standing, the parties stipulate that Opposer has standing to
oppose Applicant’s application. ¶ 17.
Priority
At to priority, the parties stipulate that priority is not in dispute; each of
Opposer’s marks was used and registered prior to Applicant’s first use. ¶¶ 14, 16.
The Parties
Opposer is one of the country’s largest candy companies, with nationwide
operations. ¶ 3. Among its many products, Opposer manufactures and sells some of
the country’s most popular confectionary brands. ¶ 4. Opposer began use of its mark
FLUFFY STUFF in connection with cotton candy in February, 1993; and began use
of its mark FLUFFY STUFF COTTON CANDY POPS in connection with cotton
candy in January, 2001. Such uses have been continuous to the present day. ¶¶ 6a-
b.
Opposer is the largest producer of cotton candy in the United States. ¶ 18 and
Ex. A. Based on sales and marketing data, Opposer’s products bearing its FLUFFY
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STUFF marks are in the top 3 of national sales in the cotton candy segment. ¶ 20
and Ex. C (confidential).
Opposer’s marks and goods sold thereunder have been promoted on the
internet, at trade shows, catalogs and in point of sale materials. ¶¶ 21-22. More
recently, Opposer has expanded its promotional efforts to include social media.
¶¶ 23.
Applicant first used its mark in commerce on October 10, 2012. ¶ 47. Applicant’s
labels indicate that its goods are “organic, fair trade cotton candy.” ¶ 48. Total sales
under the mark in 2013 were $6,000, and as of June in 2014, $5,200. ¶ 55.
Applicant has advertised its goods in Zocalo Magazine. ¶ 57.
Likelihood of Confusion
Our 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. In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Of Opposer’s two pleaded registered marks, we will confine our decision to a
consideration of the likelihood of confusion between its FLUFFY STUFF mark
shown in Registration No. 1860481 and Applicant’s mark. We do so on the basis
that this registration for the mark and identified goods, when considered vis-à-vis
the applied-for mark and identified goods, is most likely to support a finding of
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likelihood of confusion. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010).
The Goods
As to the second du Pont factor, when analyzing the similarity of the goods,
likelihood of confusion can be found “if the respective products are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.”
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1721-22 (Fed. Cir. 2012) (citing 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)). The issue here, of course, is not whether purchasers would confuse
the goods, but rather whether there is a likelihood of confusion as to the source of
these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re
Rexel Inc., 223 USPQ 830 (TTAB 1984). Applicant, in its brief, conceded that there
“could be some overlap [between the parties’] products and consumers.” (14
TTABVUE 8).
Opposer’s cotton candy includes ingredients such as artificial flavors, chemical
preservatives, and food coloring. ¶ 9. Opposer has not sought approval for organic
labeling or fair trade certification. ¶¶ 10-11. Natural cotton candy is a type of cotton
candy. ¶ 37. Applicant’s natural cotton candy is of “artisan quality”; Applicant’s
product is sought out by event planners, chefs and consumers because it does not
contain preservatives or artificial colors. ¶ 39.
Opposition No. 91212895

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Although we have noted the specific differences between “regular” cotton candy
such as Opposer’s and “natural” cotton candy such as Applicant’s, in making our
determination regarding the relatedness of the goods we must look to the goods as
identified in Opposer’s registration and Applicant’s application. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011). Both Opposer and Applicant offer cotton candy
under their respective marks, albeit Applicant’s product is “natural.”
Opposer’s identification of goods, “cotton candy,” does not include any
limitations. Where the goods in a cited registration are broadly described and there
are no limitations in the identification of goods as to their nature, type, channels of
trade or classes of purchasers, it is presumed that the scope of the registration
encompasses all goods of the nature and type described, that the identified goods
move in all channels of trade that would be normal for such goods, and that the
goods would be purchased by all potential customers. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). Thus, Opposer’s identification of goods is broad enough to
encompass both “regular” cotton candy and “natural” cotton candy.
In view of the legal identity of the goods, this factor weighs heavily in favor of a
finding of likelihood of confusion.

Opposition No. 91212895

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Trade Channels and Purchasers
Opposer’s cotton candy is sold under the marks to the general public in
supermarkets, warehouse and membership stores, drug stores and convenience
stores. ¶ 27. Unlike Applicant, Opposer does not offer a fresh hand-spun cotton
candy at live venues such as weddings and local fairs, and does not offer customized
catering of its cotton candy products for banquets, fund raisers and other private
and public events. ¶¶ 32-33. Applicant has sold its goods through its internet
website, Facebook and Etsy. ¶ 56. Applicant also has sold goods as a vendor at
festivals, private birthdays and weddings, art shows and other events. ¶ 58.
Again, although we have noted the specific differences in the way the parties’
cotton candy is sold, neither of the identifications of goods is limited with respect to
trade channels or classes of purchasers. In any event, “regular” cotton candy and
“natural” cotton candy may be sold in the same stores, including grocery stores.
¶¶ 34-36. Further, given the legal identify of the goods, we presume that the goods
travel through all usual channels of trade and are offered to all normal potential
purchasers. These trade channels would include the same stores, including grocery
stores, as reflected in the parties’ stipulated facts. See In re Yawata Iron & Steel
Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101
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USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion). The classes of purchasers
would include ordinary consumers.
The identity in trade channels and purchasers are factors that weigh heavily in
favor of a finding of a likelihood of confusion.
The Marks
With respect to the first du Pont factor, we must compare the marks in their
entireties as to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du Pont de Nemours & Co., 177
USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). In comparing the marks when used in connection with
Opposer’s and Applicant’s goods, we are mindful that where, as here, the goods are
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legally identical, the degree of similarity between the marks necessary to find
likelihood of confusion need not be as great as where there is a recognizable
disparity between the services. Coach Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
“Fluff” is a noun or verb that has a common root with the adjective “fluffy.” ¶ 45.
The term FLUFF is an important and integral term in Applicant’s mark; Applicant
chose FLUFF IT UP because the proposed mark has a “fun and engaging hook, and
describes what [Applicant] is doing”; Applicant sometimes refers to its cotton candy
as “fluff.” ¶¶ 42-44. FLUFF and FLUFFY are related terms with related meanings.
¶ 52. FLUFF is either the noun or verb form and FLUFFY is the adjective form. To
FLUFF something is take a physical action. FLUFF when included in the phrase
FLUFF IT UP is a verb. FLUFFY in FLUFFY STUFF is an adjective that modifies
a noun. ¶ 53. Applicant’s and Opposer’s marks begin with the letters F-L-U-F-F. ¶
54.
The marks are similar in appearance to the extent that they each begin with the
same letters F-L-U-F-F, that is, FLUFFY and FLUFF, respectively. To that extent,
the marks also sound alike. The remainder of each mark, however, is different,
resulting in marks that are somewhat different in appearance and sound as a
whole. We find, however, that the overall similarities in appearance and sound
outweigh the differences.
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The parties agree that the terms FLUFFY and FLUFF have related meanings,
and each mark conveys the suggestion that the respective cotton candy product is
fluffy.
Because of the similarities in appearance, sound and meaning of the marks
FLUFFY STUFF and FLUFF IT UP, we find that the marks in their entireties
engender similar overall commercial impressions.
Applicant’s argument that Opposer’s packaging prominently features the brand
name CHARMS with Opposer’s mark FLUFFLY STUFF, thereby mitigating the
likelihood of confusion, is immaterial to our determination. Simply put, we must
compare Opposer’s registered mark as shown in the registration certificate to
Applicant’s mark as shown in the drawing in the application. Opposer’s registered
mark does not include CHARMS. Further, the differences in packaging, trade dress
and labeling also do not factor into the analysis. See Specialty Brands, Inc. v. Coffee
Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (trade
dress can be changed at any time).
The similarity of the marks, especially when considered in the context of
identical goods, is a factor that weighs in favor of finding a likelihood of confusion.
Conditions of Sale
Opposer’s goods are sold in bags in two sizes, 1 ounce and 2.5 ounce. The
suggested retail price for the 1 ounce bag is $2. ¶ 61. Applicant’s goods cost $5 for a
freshly spun serving (available at live events) and $2 for a 0.5 ounce bag. ¶ 61.
Traditional cotton candy is often purchased on impulse. ¶ 38.
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Cotton candy, whether regular or natural, is inexpensive and clearly subject to
impulse purchase. “When products are relatively low-priced and subject to impulse
buying, the risk of likelihood of confusion is increased because purchasers of such
products are held to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 223 USPQ at 1282. As indicated earlier, purchasers
would include ordinary consumers, who would be expected to exercise nothing more
than ordinary care in purchasing cotton candy.
This du Pont factor favors a finding of likelihood of confusion.
Third-Party Uses/Registrations
The sixth du Pont factor focuses on the number and nature of similar marks in
use on similar goods.
Other than Opposer’s two marks, there are no other FLUFF or FLUFFY-
formative marks in use and/or registered in connection with cotton candy. ¶ 24.
Neither FLUFF nor FLUFFY are descriptive for cotton candy. ¶ 25. In fact, based
on the popularity of products sold under Opposer’s FLUFFY STUFF marks,
Opposer’s marks are well-known. ¶ 40.
Applicant has not shown that either of Opposer’s marks is weak or diluted for
cotton candy. Rather, Opposer’s FLUFFY STUFF marks are distinctive in the candy
industry.
Further, in response to one of Applicant’s arguments, the lack of a survey
regarding the level of public or consumer recognition or fame of Opposer’s marks is
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of no consequence. The Board does not require surveys in inter partes proceedings,
and we do not draw any negative inferences from a party’s failure to offer survey
evidence in a proceeding before the Board. See Schering-Plough HealthCare Prods.
Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1328 (TTAB 2007).
The distinctiveness of Opposer’s mark is a du Pont factor favoring a finding of
likelihood of confusion.
Actual Confusion
Neither party is aware of any instances of actual confusion. ¶ 62.
The absence of actual confusion does not compel a different result in the
likelihood of confusion analysis. Although each party is unaware of any actual
confusion, there has been contemporaneous use of the marks for only a relative
short period of time (less than 3 years). In any event, evidence of actual confusion is
not essential to proving a case of likelihood of confusion. Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983).
This factor is neutral or, at best, weighs only slightly in Applicant's favor.
Conclusion
In the present case, the similarity of the marks, the identity of the goods, the
presumed identity of trade channels and purchasers, the conditions of sale, and the
distinctiveness of Opposer’s mark are factors that weigh in favor of a finding of
likelihood of confusion.
We conclude that purchasers familiar with Opposer’s “cotton candy” sold under
the marks FLUFFY STUFF would be likely to mistakenly believe, upon
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encountering Applicant’s mark FLUFF IT UP for “natural cotton candy,” that the
goods originate from or are associated with or sponsored by the same entity.
Decision: The opposition is sustained and registration to Applicant is refused.