Turtle Mountain, Inc.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75635762 (T.T.A.B. Jun. 19, 2001)

06/19/01 Paper No. 10
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Turtle Mountain, Inc.
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Serial No. 75/635,762
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Allan I. Zackler of Zackler & Associates for Turtle
Mountain, Inc.
Jon Schiffrin, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
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Before Walters, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Turtle Mountain, Inc. has filed a trademark application
to register the mark SOY DELICIOUS for, as amended, “frozen
soy-based non-dairy confections.”1 The record includes a
disclaimer of SOY apart from the mark as a whole.
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark DELICIOUS, previously registered on the
Supplemental Register for “ice cream, ice milk, frozen
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/635,762
2
yogurt and sherbet,”2 that, if used on or in connection with
applicant’s goods, it would be likely to cause confusion or
mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not 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 Section
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); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in

1 Serial No. 75/635,762, in International Class 30, filed February 5,
1999, based on use in commerce, alleging first use and use in commerce
as of July 15, 1998.
2 Registration No. 1,640,081 issued April 2, 1991, to Driggs Farms of
Indiana, Inc., in International Class 30. [Section 8 affidavit
accepted; renewal application filed.]
Serial No. 75/635,762
3
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The 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
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The Examining Attorney contends that the marks are
“very similar”; that applicant merely added the descriptive
term SOY to registrant’s mark; and that the commercial
impressions of applicant’s mark, SOY DELICIOUS, and
registrant’s mark, DELICIOUS, are substantially similar.
Applicant contends, essentially, that it is the
descriptive, informational, significance of SOY that
distinguishes its mark from the registered mark, especially
for consumers seeking a non-dairy frozen confection.
Applicant also alleges that DELICIOUS is a weak mark. In
support of this allegation, applicant submitted a list of
registered marks containing the term DELICIOUS.3

3 Although this list of marks is from the trademark database of the
United States Patent and Trademark Office (PTO), it is merely a list of
registration numbers and marks. This is not proper evidence of these
registrations. However, the Examining Attorney did not object to this
Serial No. 75/635,762
4
There is no question that the term “delicious” is
laudatory in connection with food items and, thus, weak as a
source identifier. We note, in this regard, that
registrant’s mark is on the Supplemental Register. However,
even marks registered on the Supplemental Register are
entitled to protection under Section 2(d) of the Trademark
Act. In re Research & Trading Corp., 793 F.2d 1276, 230
USPQ 49 (Fed. Cir. 1986); and In re Clorox, 578 F.2d 305,
198 USPQ 337 (CCPA 1978).
Contrary to applicant’s contentions, we find that the
additional descriptive term SOY does not adequately
distinguish applicant’s mark from registrant’s mark. We
conclude that applicant’s mark, SOY DELICIOUS, and
registrant’s mark, DELICIOUS, engender substantially similar
commercial impressions.
Turning to consider the goods involved in this case, it
is a general rule that goods or services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that goods
or services are related in some manner or that some
circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under

evidence until the brief and, in fact, addressed the content of the list
in the final refusal. Therefore, we have considered this list as part
of the record of this application. Having so concluded, we add that
this evidence is of little probative value because we can determine
almost nothing about the registrations from this list.
Serial No. 75/635,762
5
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
While both applicant’s and registrant’s goods are
frozen confections, applicant correctly points to a
difference in the goods. Registrant’s ice cream, ice milk,
frozen yogurt and sherbet are, by their very nature, dairy-
based products. By contrast, applicant’s goods are limited
to soy-based products.4 However, this difference does not
automatically lead us to the conclusion that confusion as to
source is unlikely.
One of applicant’s principal contentions is that the
respective goods are “legally” different and consumers “seek
out non-dairy based frozen desserts.” While there is no
question that the goods are not identical, applicant has
submitted no evidence regarding channels of trade, classes
of purchasers or consumer habits and perceptions of
different categories of frozen desserts.
On the other hand, the Examining Attorney has submitted
evidence of third-party marks that are registered for both

4 Applicant submitted evidence with its brief, which is manifestly
untimely and has not been considered. We note that even if we had
considered this evidence as part of the record, it would not alter our
decision on the issue of likelihood of confusion.
Serial No. 75/635,762
6
dairy and non-dairy frozen confections. Third-party
registrations which cover a number of differing goods and/or
services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
may nevertheless have some probative value to the extent
that they may serve to suggest that such goods or services
are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988).
In this case, both applicant’s goods and registrant’s
goods are frozen confections and the record indicates that
such goods, even if dairy and non-dairy products, may be
identified by the same mark and emanate from the same
source. Thus, the goods herein are closely related for
purposes of determining likelihood of confusion.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, SOY DELICIOUS, and registrant’s mark, DELICIOUS, their
contemporaneous use on the closely related goods involved in
this case is likely to cause confusion as to the source or
sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.