Trinidad Benham Corp.

Trademark Trial and Appeal Board

May 21, 2007

No. 78446099 (T.T.A.B. May. 21, 2007)

Mailed: May 21, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Trinidad Benham Corp.
________

Serial No. 78446099
_______

James L. Brown and Thomas D. Bratschun of Swanson & Bratschun,
L.L.C. for Trinidad Benham Corp.

Renee D. McCray, Trademark Examining Attorney, Law Office 115
(Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Hohein and Drost, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Trinidad Benham Corp. has filed an application to
register the mark "SOLFRESCO" in standard character form on the
Principal Register for "dry beans, peas and lentils" in
International Class 29.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that, under the doctrine of foreign equivalents, applicant's
mark, when used in connection with its goods, so resembles the

1 Ser. No. 78446099, filed on July 6, 2004, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
mark translates into English as "sun cool" or "sun fresh."

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78446099
2
mark "SUNFRESH," which is registered in standard character form
on the Principal Register by the same registrant for both
"chilled or processed foods sold in sealed containers, namely
fruit or fruit mixtures as slices, sections, chunks or tidbits"
in International Class 292 and "chilled or processed foods,
namely fruit or fruit mixtures as slices, sections, chunks or
tidbits sold in containers" in International Class 29,3 as to be
likely to cause confusion, or to cause mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
reverse the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.4

2 Reg. No. 1,990,676, issued on August 6, 1996, which sets forth a date
of first use of the mark anywhere and in commerce of July 1988;
renewed.

3 Reg. No. 2,009,258, issued on October 22, 1996, which sets forth a
date of first use of the mark anywhere and in commerce of July 25,
1988; renewed.

4 The court, in particular, pointed out that: "The 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."
192 USPQ at 29.

Ser. No. 78446099
3
Applicant contends in its initial brief that confusion
is not likely, arguing that the marks at issue are dissimilar and
the respective goods are not related. In particular, as to the
marks, applicant argues that the doctrine of foreign equivalents
is inapplicable because the Examining Attorney has offered no
evidence that customers for applicant's goods would be likely to
stop and translate its "SOLFRESCO" mark into an English
equivalent and would, instead, simply take the mark as it is. In
support of its position, applicant notes that "[t]he doctrine of
foreign equivalents was recently revisited by the Federal
Circuit" in Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005), and submits that:
[As t]he Federal Circuit confirmed, "The
doctrine of foreign equivalents is not an
absolute rule and it should be viewed merely
as a guideline." The Federal Circuit does
make it quite clear that, "when it is
unlikely that an American buyer will
translate the foreign mark and will take it
as it is, then the doctrine of foreign
equivalents will not be applied." Id[.] at
p. 1377. ....

Here, applicant asserts, the "Examining Attorney's
application of the doctrine of foreign equivalents begins and
ends with the conclusion that SOLFRESCO would be translated as
"sun fresh," with the basis for such conclusion resting solely
upon her statement in the final refusal that the "large number of
Americans who speak Spanish make it very likely that the Spanish
terms comprising the mark would be translated." In addition,
applicant insists that:
Ser. No. 78446099
4
Applicant's mark, SOLFRESCO, is a
fanciful combination of two Spanish roots -
sol and fresco. It is important to note that
the combination SOLFRESCO has no Spanish
meaning. More importantly, "sol fresco" is
not a grammatically proper construction which
would ever be used in Spanish.

In view thereof, and inasmuch as the term "SOLFRESCO," as noted
later in this opinion, "could possibly be translated as either
'sun cool' or 'sun fresh,' applicant urges that "a Spanish
speaking American would be confused as to how to translate this
mark." Applicant thus "submits that it is unlikely that the mark
would be translated by an American buyer at all."
Furthermore, applicant maintains that, even if its mark
were to be translated by purchasers and prospective customers,
confusion with registrant's mark would not be likely. While, in
this regard, there is no dispute that the Spanish term "sol"
means "sun" in English, applicant points out that two of three
sources for translations which it made of record list "cool" as
the meaning of the Spanish term "fresco" before setting forth its
other meaning of "fresh" (with, we note, it being the converse
which is true with respect to the third source). Applicant
argues, in consequence thereof, that under the doctrine of
foreign equivalents, its mark would most likely be translated
into English as "sun cool" rather than "sun fresh," stating that:
The first element of Applicant's
fanciful combination, sol, indisputably
translates as "sun." Fresco, however, does
not have a single meaning. Applicants [sic]
have previously made of record ... three
separate Spanish to English translations of
the word "fresco." Two of the references are
internet based translation dictionaries. The
third is a published Spanish to English
Dictionary. According to Word Reference.com,
Ser. No. 78446099
5
the primary translation of "fresco" is
"cool." "Cool" is the second definition
listed according to the Larouse Spanish to
English Pocket Dictionary [with "fresh" being
the first definition listed]. "Cool" is the
first definition listed according to the
Houghton-Mifflin Spanish to English
Dictionary as reported by Yahoo.

Admittedly, the secondary definition of
fresco is "fresh." However, a Spanish
speaking American confronted with Applicant's
mark SOLFRESCO would be as likely to
translate that mark as "sun cool" as they
would be to translate the mark as "sun
fresh." Applicant contends that "sun cool"
is a more likely translation since "fresco"
as an adjective means "cool" when describing
a temperature. The sun is obviously hot and
thus, SOLFRESCO results in the fanciful
contradiction "sun cool." Thus, a Spanish
speaking American would be confused as to how
to translate this mark, and at a minimum
would require a mental pause. ....

Relying, also, on In re Sarkli, Ltd., 721 F.2d 353, 220
USPQ 111 (Fed. Cir. 1983), in which the Federal Circuit reversed
the Board's holding that the term "REPECHAGE" was the French
equivalent of the English words "second chance," contends that:
The Federal Circuit concluded that in certain
instances REPECHAGE has the same meaning as
"second chance" but that REPECHAGE was not a
strict equivalent of "second chance." The
Federal Circuit's ruling is supported by the
fact that REPECHAGE has multiple translated
meanings, none of which is an unambiguous
equivalent to "second chance." The Sarkli
court's analysis can be extended to the
present matter where the potential
translation of SOLFRESCO to "sun fresh" is
ambiguous.

In view thereof, and in light of the aural and visual differences
which are readily apparent between the marks "SOLFRESCO" and
"SUNFRESH," applicant maintains that "the differences in the
marks as a whole in appearance, sound, connotation and commercial
Ser. No. 78446099
6
impression leads to the inescapable conclusion that there is no
likelihood of confusion between the respective marks."5

5
Applicant, referring to the du Pont factor of the number and nature
of similar marks in use on similar goods, additionally points to
several "currently coexisting third-party registrations ... for marks
including the elements SUN and FRESH or SOL and FRESCO ... for foods
or beverages." Applicant argues that such registrations, which cover
the marks "SUNFRESH" for "coffee," "SUNFRESH" for "fruit juices sold
exclusively to manufacturers," "DRINK SUN-FRESH BEVERAGES" for "non-
alcoholic maltless soft drinks" and "SUNSWEET FRESH" for "fresh
vegetables, fresh fruit, [and] raw and unprocessed nuts," as well as
its own subsisting registration for the mark "SOLFRESCO" for "rice and
husked barley," are evidence that such marks "are weak marks entitled
to only a narrow scope of trademark protection" because "consumers are
capable of differentiating between the various marks." Interestingly,
applicant never mentions three other third-party registrations, two of
which are owned by the same entity, for the marks "SUNFRESH," with and
without a design, for "fresh potatoes and onions" and "SUN FRESH" and
design for "retail grocery store and supermarket services," which had
additionally been cited by the Examining Attorney as a Section 2(d)
bar to registration but which were withdrawn as references in the
final refusal even though still subsisting and coexisting with the two
cited registrations which are the basis for the final refusal.

It is well settled, however, that third-party registrations are
not evidence of what happens in the marketplace or that the purchasing
public is familiar with the use of the marks which are the subjects
thereof and has therefore learned to distinguish those marks by the
differences therein. See, e.g., National Aeronautics & Space Admin.
v. Record Chemical Co., 185 USPQ 563, 567 (TTAB 1975). Such
registrations therefore do not show that the subject marks are
actually being used, much less that the extent of their use is so
great that customers are accustomed to encountering the marks in the
marketplace and will differentiate among them. See, e.g., Smith
Brothers Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d 1004,
177 USPQ 462, 463 (CCPA 1973); and AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973), in which
the court indicated that:

[L]ittle weight is to be given such registrations in
evaluating whether there is likelihood of confusion. The
existence of these registrations is not evidence of what
happens in the market place or that customers are familiar
with them nor should the existence on the register of
confusingly similar marks aid an applicant to register
another likely to cause confusion, mistake or to deceive.

See also Olde Tyme Foods, Inc. v. Roundy's Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992) [third-party registrations "may not
be given any weight" (emphasis in original) as to the strength of a
mark]; and In re Hub Distributing, Inc., 218 USPQ 284, 285-86 (TTAB
1983). Accordingly, the du Pont factor which concerns the number and
nature of similar marks in use on similar goods is considered to be
neutral rather than in applicant's favor.

Ser. No. 78446099
7
The Examining Attorney, on the other hand, argues that
the marks at issue are "strikingly similar" in sound, appearance,
connotation and commercial impression." In particular, with
respect to sound and appearance, she contends that "SOLFRESCO is
strikingly similar to SUNFRESH, with both marks comprising the
same letters, i.e., 'S' and 'F,' and the same overall
construction." As to connotation and commercial impression, she
maintains that "the mark SOLFRESCO comprises Spanish terms that
directly translate into English as SUNFRESH" and that "[t]he
doctrine of foreign equivalents is applicable in this case
because it is likely that, given the appreciable number of
purchasers in the United States who speak or understand Spanish,
the ordinary American purchaser, upon encountering applicant's
mark, would stop and translate it into its English equivalent."
This is so, according to the Examining Attorney, because "the
relevant goods in this case all comprise closely related
processed fruits and vegetables" and the "slight suggestive
significance" of applicant's mark in relation to its goods in
that the mark SOLFRESCO "conveys that the goods are SUN-ripened
and FRESH." In addition, she essentially notes that applicant's
mark is a cognate in that "SOLFRESCO comprises Spanish terms that
directly translate into English as SUNFRESH," pointing out that
"as conceded by applicant and supported by the [dictionary]
evidence of record, the term SOL means SUN in English, and the
term FRESCO means FRESH."
As to applicant's contention that its mark would
instead primarily translate as "SUNCOOL," she asserts that "there
Ser. No. 78446099
8
is no evidence to support the argument that, with respect to a
purchaser of these goods, the term FRESH is only a secondary
meaning while the primary meaning is COOL" and that, "given that
the relevant goods comprise produce, it is more likely that the
term would be translated as FRESH." In fact, we note in this
regard that, in response to an Office action, applicant tellingly
admitted that "'fresco' when used as a Spanish adjective to
modify a food item would be generally translated as 'fresh,'"
even though it further argued that, because its mark incorporates
the term "sol" rather than the name of a food item, purchasers
would view such mark as meaning "sun cool" if translated or, at
the least, would be confused as to the English meaning of the
mark and thus would not regard it as the foreign equivalent of
registrant's SUNFRESH mark. Nonetheless, because the Examining
Attorney finds that "the mark SOLFRESCO is the Spanish-language
equivalent of the literal portions of the cited registered mark,
SUNFRESH," she maintains that it is the "equivalent in terms of
connotation and commercial impression" of the registrant's mark.
Contemporaneous use of such marks, she insists, in connection
with related goods would therefore be likely to cause confusion
as to source or sponsorship.
While concededly a close question, we agree with the
Examining Attorney that, in light of the goods at issue, the
doctrine of foreign equivalents is applicable and that
applicant's mark "SOLFRESCO" would be regarded as the foreign
equivalent of registrant's mark "SUNFRESH." As recently set
forth by our primary reviewing court in Palm Bay Imports Inc. v.
Ser. No. 78446099
9
Veuve Clicquot Ponsardin Maison Fondee En 1772, supra at 73
USPQ2d 1696, in reversing the finding by this Board of a
likelihood of confusion between the marks "VEUVE ROYALE" and "THE
WIDOW":6
Under the doctrine of foreign
equivalents, foreign words from common
languages are translated into English to
determine genericness, descriptiveness, as
well as similarity of connotation in order to
ascertain confusing similarity with English
word marks. See In re Sarkli, Ltd., 721 F.2d
353 [220 USPQ 111]] (Fed. Cir. 1983); In re
Am. Safety Razor Co., 2 U.S.P.Q.2d 1459, 1460
(T.T.A.B. 1987) (finding BUENOS DIAS for soap
confusingly similar to GOOD MORNING for
shaving cream). When it is unlikely that an

6 Specifically, the Federal Circuit noted that:

The Board held that Palm Bay's VEUVE ROYALE was
confusingly similar to VCP's mark THE WIDOW, in part because
under the doctrine of foreign equivalents, an appreciable
number of purchasers in the U.S. speak and/or understand
French, and they "will translate" applicant's mark into
English as "Royal Widow." Veuve Clicquot Ponsardin, slip
op. at 36. The Board erred in so finding.

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, supra at 73 USPQ2d 1695-96. Although nonetheless also affirming
this Board's finding of a likelihood of confusion in such case between
the mark "VEUVE ROYALE" and the marks "VEUVE CLICQUOT PONSARDIN" and
"VEUVE CLICQUOT," the Federal Circuit observed that the Board had been
inconsistent in its application of the doctrine of foreign
equivalents, stating that:

In comparing VEUVE ROYALE with VEUVE CLICQUOT
PONSARDIN and VEUVE CLICQUOT, the Board found that "an
appreciable number of purchasers are unlikely to be aware
that VEUVE means 'widow' and are unlikely to translate the
marks into English." Veuve Clicquot Ponsardin, slip op. at
11 (emphasis added). In comparing VEUVE ROYALE with THE
WIDOW, however, the Board found that "[A]n appreciable
number of purchasers in the United States speak and/or
understand French, and they will translate applicant's mark
into English as ROYAL WIDOW." Id., slip op. at 14 (emphasis
added). An appreciable number of U.S. consumers either will
or will not translate VEUVE into "widow," and the Board was
inconsistent in its application of the doctrine of foreign
equivalents.

Id. at 73 USPQ2d 1696.

Ser. No. 78446099
10
American buyer will translate the foreign
mark and will take it as it is, then the
doctrine of foreign equivalents will not be
applied. In re Tia Maria, Inc., 188 U.S.P.Q.
524 (T.T.A.B. 1975) (no likelihood of
confusion between TIA MARIA for a Mexican
restaurant and AUNT MARY's for canned
vegetables).

....

Although words from modern languages are
generally translated into English, the
doctrine of foreign equivalents is not an
absolute rule and should be viewed merely as
a guideline. In re N. Paper Mills, 64 F.2d
998, 999 (C.C.P.A. 1933); McCarthy on
Trademarks, at §11:34. The doctrine should
be applied only when it is likely that the
ordinary American purchaser would "stop and
translate [the word] into its English
equivalent." In re Pan Tex Hotel Corp., 190
U.S.P.Q. 109, 110 (T.T.A.B. 1976). This
court agrees with the T.T.A.B. that it is
improbable that the average American
purchaser would stop and translate "VEUVE"
into "widow." Substantial evidence does not
support the Board's finding regarding the
doctrine of foreign equivalents. This court,
therefore, reverses the Board's finding of
likelihood of confusion for THE WIDOW.

While neither the Federal Circuit in Palm Bay Imports
nor applicant in either of its briefs have provided any
indication as to what evidence would suffice to support the
application of the doctrine of foreign equivalents in a
particular case, it would appear from the court's decision in
Palm Bay Imports that applicant is correct that the mere fact
that an appreciable number of purchasers in the United States
speak and/or understand the particular modern foreign language of
which an applicant's mark is allegedly the equivalent of the
registrant's English language mark (or vice versa) is not
necessarily sufficient to constitute substantial evidence showing
Ser. No. 78446099
11
that such purchasers will stop and translate the foreign language
mark into English. Nevertheless, there is no question that
Spanish, like French, is a common or modern foreign language
which is spoken or understood by an appreciable segment of
purchasers of applicant's and registrant's goods in the United
States and applicant does not argue to the contrary. See, e.g.,
In re Thomas, 79 USQP2d 1021, 1024-25 (TTAB 2006) [in finding
that "the marks BLACK MARKET MINERALS and MARCHE NOIR, while
decidedly different in sound and appearance, have the same
connotations" inasmuch as the record showed that "MARCHE NOIR is
the exact French equivalent of the English idiom BLACK MARKET,"
the Board also noted that French not only "is a common foreign
language spoken by an appreciable segment of the population," but
that the evidence revealed that, "of the foreign languages with
the greatest number of speakers in the United States, French is
ranked second only to Spanish"].
Also present in this case, however, is the fact that
applicant's mark "SOLFRESCO" and registrant's mark "SUNFRESH" are
cognates in that, in sound and appearance, each mark readily
suggests the meaning or connotation of the other. While it
appears to be true that, as argued by applicant, there is no
Spanish word "solfresco" per se, that fact no more slows or
precludes recognition of its constituent terms "sol" and "fresco"
and their respective connotations than the compound term
"sunfresh" hampers or prevents understanding of the component
words "sun" and "fresh" and their associated meanings. Moreover,
it is clear, as applicant has conceded in the translation set
Ser. No. 78446099
12
forth in the application, that "sun fresh" is not only one
probable meaning for the mark "SOLFRESCO," but such meaning,
unlike "sun cool," is the connotation which the mark would
unambiguously and most likely have due to the fact, as applicant
has also admitted, that "'fresco' when used as a Spanish
adjective to modify a food item would be generally translated as
'fresh.'"7 Simply put, it strains credibility to believe that
customers for and potential purchasers of applicant's "dry beans,
peas and lentils" would ascribe a meaning of "sun cool" to the
mark "SOLFRESCO" when used in connection therewith. Produce
items are not typically described as being "cool"; rather, such
goods are more often commonly described favorably as being
"fresh." While applicant's contention that "'sun cool' is a more
likely translation since 'fresco' as an adjective means 'cool'
when describing a temperature" might have some plausibility if,
for instance, its goods were air conditioners or fans or perhaps
even soft drinks, we fail to see why the mark "SOLFRESCO results

7 Such situation is analogous to the circumstances in In re Perez, 21
USPQ2d 1075, 1076-77 (TTAB 1991), in which the mark "GALLO," despite
having several meanings in Spanish, was found by the majority to be
the foreign equivalent of the word "ROOSTER" due to the picture of a
rooster on the packaging for the associated goods. Specifically, the
Board majority observed that:

Undercutting applicant's argument that the Spanish
word "gallo" has meanings other than "rooster", and, thus,
is not the foreign equivalent of registrant's mark, is the
usage of applicant's mark[s] in the commercial marketplace,
as evidenced by the specimens of record. The specimens
depict applicant's marks with a prominent representation of
a rooster. While the rooster design is not a feature of the
marks sought to be registered and, of course, cannot be
considered when comparing the marks, the design would
certainly reinforce to consumers in the marketplace the
"rooster" translation of "gallo" as opposed to the other
English meanings of "gallo."

Ser. No. 78446099
13
in the fanciful contradiction 'sun cool'" when used for
applicant's dried beans, peas and lentils.
Accordingly, instead of it being the case that "a
Spanish speaking American would be confused as to how to
translate" applicant's mark, as argued by applicant, we concur
with the Examining Attorney that because, in essence, the marks
at issue are cognates, even persons with a minimum exposure to
Spanish, much less those who are also fluent therein, would
immediately understand that, when used in connection with
applicant's dried beans, peas and lentils, the mark "SOLFRESCO"
means "sun fresh" and thus, when translated, is the foreign
equivalent of registrant's mark "SUNFRESH" in connotation.
Furthermore, while such marks are not substantially similar in
overall sound or appearance, they nonetheless share some aural
and visual similarities and are structured the same in that both
are compound terms which consist of words which, in each
instance, start with the letters "S" and "F," as pointed out by
the Examining Attorney. Such similarities add to the likelihood
that customers for applicant's goods would stop and translate its
"SOLFRESCO" mark as "SUNFRESH" rather than taking the mark as it
is. Overall, the respective marks engender substantially similar
commercial impressions. Consequently, in light of the doctrine
of foreign equivalents, the du Pont factor of the similarity or
dissimilarity of the marks at issue in their entireties as to
appearance, sound, connotation and commercial impression favors a
finding that confusion is likely if the marks "SOLFRESCO" and
"SUNFRESH" were to be used in connection with the same or related
Ser. No. 78446099
14
goods. Nonetheless, it is obvious that such marks, when used in
connection with the particular goods at issue herein, are highly
suggestive and therefore would generally be entitled to
protection only if the respective goods would be considered to be
commercially related by purchasers and prospective customers for
those products.
Turning, therefore, to consideration of whether
applicant's dried beans, peas and lentils are indeed commercially
related to registrant's chilled or processed fruit or fruit
mixtures sold in sealed containers as slices, sections, chunks or
tidbits, applicant contends that such products are dissimilar,
arguing that registrant's goods "are packaged and sold in ready-
to-eat condition" and thus are "not likely to be used as the
ingredients of more complex preparations." Such goods, applicant
points out, "are also most likely to be presented to the buying
public in the refrigerated or canned fruits section of a
supermarket." Applicant maintains that, by contrast, its
products "are staple goods" which "are virtually inedible as
delivered to the consumer and have undergone minimal processing."
Applicant stresses that its goods "are specifically sold to be
incorporated as an ingredient into more complex preparations, and
a good deal of effort must be undertaken to prepare the goods for
consumption." In particular, applicant points out that, unlike
registrant's goods, "dried beans, peas and lentils must be re-
hydrated by soaking, boiling or other methods" before they are
ready for consumption. "Typically," applicant further notes, its
"dried beans, peas and lentils will be sold in plastic bags and
Ser. No. 78446099
15
located in a section of the supermarket separate from canned
fruits or [a] refrigerated section." Specifically, applicant
asserts that its goods "would be displayed along with other
staple goods such as bagged rice." In light of such differences,
applicant contends that the goods at issue are not commercially
related and thus "no mistaken belief that the goods come from a
common source is likely to arise in the mind of a consumer."
The Examining Attorney, however, insists that the goods
at issue are related in a commercial sense because they "are all
similar food products, specifically, produce in the nature of
processed fruits and vegetables that, as shown in the copies of
third-party registrations provided by the Examining Attorney, are
typically offered by the same source" under the same mark. She
argues that while applicant "contends that the goods are
processed in different ways and may be sold in different sections
of the supermarket, it has offered no evidence to show that the
goods are not in fact sold through the same trade channels or
otherwise marketed in such a way that purchasers would not be
lead [sic] to believe that the goods emanate from the same
source." According to the Examining Attorney, "the evidence of
record amply demonstrates that processed produce in the nature of
packaged fruits and vegetables, irrespective of the type or
degree of processing, typically emanate from the same source and
are marketed and sold through the same trade channels to the same
class of purchasers." In particular, she asserts that she "has
... previously made of record multiple excerpts of articles
obtained from the Internet and Lexis-Nexis which overwhelmingly
Ser. No. 78446099
16
demonstrate the overlapping nature of the respective trade
channels and the sale and marketing of the relevant goods to the
same class of purchasers." Lastly, she urges that the goods at
issue are inexpensive items and thus would be selected with less
care: "In this case, the parties' goods may all be considered
low-price 'impulse goods'." She consequently maintains that
applicant's and registrant's goods are commercially related
products and thus a likelihood of confusion as to source or
sponsorship would exist if such goods were marketed under their
respective marks.
As to the several use-based third-party registrations
relied upon by the Examining Attorney, seven specifically appear
to pertain to marks which are registered for, inter alia, the
goods at issue herein in that they respectively include the
following pairs of items: (i) "canned fruits, bottled fruits,
... [and] fruit salads" and "dried beans"; (ii) "fruits in jars
... [and] fruit salad" and "processed beans, ... and dried
beans"; (iii) "canned ... fruits ..., namely, ... apricots, ...
baby apples, ... grapefruit, kiwifruit, kumquats, ... mandarin
oranges, mango, pineapple, mixed tropical fruits, fruit cocktail,
tropical fruit salad, ... papaya, ... [and] pears" and "dried ...
vegetables, namely, ... dried beans, ... [and] peas"; (iv)
"bottled, [and] canned ... fruits ... [and] fruit salads" and
"dried beans, peas and lentils"; (v) "canned fruits ... [and]
canned fruit cocktail" and "dried beans"; (vi) "bottled, [and]
canned ... fruits" and "dried beans, peas and lentils"; and (vii)
"bottled, [and] canned ... fruits" and "dried beans, peas and
Ser. No. 78446099
17
lentils." However, of those seven third-party registrations, on
their face only two or three appear to be owned by grocery or
supermarket stores while the rest seem to be owned by food
distributors or processors (including the three owned by the same
company).
Moreover, with respect to what the Examining Attorney
has characterized as "multiple excerpts of articles obtained from
the Internet and Lexis-Nexis which overwhelmingly demonstrate the
overlapping nature of the respective trade channels and the sale
and marketing of the relevant goods to the same class of
purchasers," there are pages from only two supermarket or grocery
store circulars and one on-line grocery shopping service. None
of the excerpts, however, shows both applicant's and registrant's
goods advertised together or otherwise therein and only the
excerpts from the on-line grocery shopping service even list such
"Dry Grocery" items as "Lentils Dry" and various "Beans Dry."
While, once again, we are faced with an admittedly
close question, we cannot agree with the Examining Attorney that
applicant's dry beans, peas and lentils have been shown to be
related in a commercial sense to registrant's chilled or
processed fruit or fruit mixtures sold in sealed containers as
slices, sections, chunks or tidbits. To be sure, it is well
settled that goods need not be identical or even competitive in
nature in order to support a finding of likelihood of confusion,
it being sufficient, instead, that the goods simply are related
in some manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be encountered by
Ser. No. 78446099
18
the same persons in situations that would give rise, because of
the marks employed in connection therewith, to the mistaken
belief that they originate from or are in some way associated
with the same producer or provider. See, e.g., Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). While there are a variety of ways in which such may
be demonstrated, including excerpts from the "LEXIS-NEXIS"
database or from the Internet, another method which is often used
is to submit copies of use-based third-party registrations for
marks which, in each instance, are registered for the applicant's
goods, on the one hand, and the registrant's products, on the
other. Although such registrations are not evidence that the
different marks shown therein are in use or that the public is
familiar with them, they nonetheless have some probative value to
the extent that they serve to suggest that the goods listed
therein are of the kinds which may emanate from a single source.
See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 (TTAB 1988) at n. 6.
In this case, while the seven use-based third-party
registrations which the Examining Attorney has made of record are
indeed some evidence which tends to suggest that applicant's and
registrant's goods could be regarded by ordinary, retail level
customers or consumers for such products as commercially related
Ser. No. 78446099
19
goods,8 by contrast their probative value is lessened by the
telling fact that, in this case, none of the "multiple excerpts
of articles obtained from the Internet and Lexis-Nexis" database
serves to "overwhelmingly" or even otherwise demonstrate the
assertedly "overlapping nature of the respective trade channels
and the sale and marketing of the relevant goods to the same
class of purchasers" as contended by the Examining Attorney. To
be sure, excerpts from food store flyers and similar advertising
materials, as well as excerpts from on-line supermarket or
grocery store shopping services, may be used to show that various
food items are sold in the same channels of trade to the same
classes of purchasers. Here, however, such evidence is not only
insufficient to show that applicant's and registrant's goods are
commercially related, but it tends to undercut whatever probative
value the third-party registrations may otherwise have.
Specifically, the excerpts made of record by the
Examining Attorney, as previously pointed out, are from only two
supermarket or grocery store circulars and one on-line grocery

8 The Examining Attorney variously refers to such customers in her
brief as "the ordinary American purchaser" and "an American consumer,"
making it clear that the focus of her theory of a likelihood of
confusion is on the retail grocery store and supermarket level rather
than the food wholesaler and distributor level. Given the obvious
sophistication of purchasers at the latter level, coupled with the
high degree of suggestiveness of the marks at issue herein and the
specific differences in the respective goods, confusion by buyers of
such products as inventory items for grocery stores and supermarkets
would not appear to be likely to occur. See, e.g., Federated Foods,
Inc. v. Fort Howard Paper Co., supra at 192 USPQ 29 at n. 11 [court
noted that even though "all of the goods might also be carried by
distributors, ... in our opinion, confusion between the marketed goods
would be even less likely at the distributor level than in the
supermarket where the goods might actually be displayed in
proximity"].

Ser. No. 78446099
20
shopping service, and none of the excerpts shows conjoint
advertising of applicant's and registrant's goods. In fact, only
the excerpts from the on-line grocery shopping service even list
such dry grocery items such as lentils and various beans and
there is no mention of respondent's goods. If it were the case
that the goods at issue herein were commercially related, we
would expect to see at least some examples where such goods were
advertised or otherwise promoted together. Here there are none.
Furthermore, as cogently argued by applicant, the
respective goods are specifically different in that, among other
things, registrant's chilled or processed fruit or fruit mixtures
sold in sealed containers as slices, sections, chunks or tidbits
"are packaged and sold in ready-to-eat condition." Consequently,
as applicant notes, registrant's goods are generally "not likely
to be used as the ingredients of more complex preparations" and
"are also most likely to be presented to the buying public in the
refrigerated or canned fruits section of a supermarket." By
contrast, applicant's dry beans, peas and lentils are considered
"staple goods" which, as applicant observes, "are virtually
inedible as delivered to the consumer and have undergone minimal
processing." Applicant, moreover, notes that its goods "are
specifically sold to be incorporated as an ingredient into more
complex preparations, and a good deal of effort must be
undertaken to prepare the goods for consumption," pointing out
that, unlike registrant's goods, "dried beans, peas and lentils
must be re-hydrated by soaking, boiling or other methods" before
they are ready to be eaten.
Ser. No. 78446099
21
Accordingly, while it is nonetheless undisputed that
the goods at issue in this appeal are sold to ordinary consumers
through such identical channels of trade as grocery stores and
supermarkets, it is well established that there is no per se rule
that all food products are related goods simply by their nature
or virtue of capability of being sold in the same food markets.
See, e.g., Interstate Brands Corp. v. Celestial Seasonings, Inc.,
576 F.2d 926, 198 USPQ 151, 152-53 (CCPA 1978); and Federated
Foods, Inc. v. Fort Howard Paper Co., supra at 192 USPQ 29.
Thus, even assuming, as contended by the Examining Attorney, that
both applicant's and registrant's goods are "inexpensive items
and ... would be selected with less care,"9 common experience
reveals that, as asserted by applicant, its "dried beans, peas
and lentils will be sold in plastic bags and located in a section
of the supermarket separate from canned fruits or [a]
refrigerated section." Specifically, applicant's goods, as
previously noted, "would be displayed along with other staple
goods such as bagged rice." In light of such differences, we are
not persuaded by the limited evidence presented by the Examining
Attorney that customers for the goods at issue herein would
consider such goods to be commercially related.
We therefore conclude that, on this record, confusion
has not been demonstrated to be likely, based on the doctrine of

9 Although there is no information of record to indicate the retail
price of registrant's goods and like products sold by third parties,
the record shows that goods like the dried beans, peas and lentils
which applicant intends to market are offered for sale in 16 oz. bags
at prices of $0.95 for dry baby lima beans, $0.69 for dry black beans,
$0.79 for dry light red kidney beans, $0.69 for dry navy beans and
$0.55 for dry lentils.
Ser. No. 78446099
22
foreign equivalents. In particular, while we find that the mark
"SOLFRESCO," when used in connection with applicant's dried
beans, peas and lentils, is the foreign equivalent of the mark
"SUNFRESH," as used for registrant's chilled or processed fruit
or fruit mixtures sold in sealed containers as slices, sections,
chunks or tidbits, we further find that in view of the highly
suggestive nature of such marks and the specific differences in
the respective goods, confusion as to source or sponsorship is
not likely to occur.
Decision: The refusal under Section 2(d) is reversed.