US Foods, Inc.

Trademark Trial and Appeal Board

Mar 26, 2021

88369657 (T.T.A.B. Mar. 26, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re US Foods, Inc.
_____

Serial No. 88369657

_____

Clay A. Tillack of Greenberg Traurig LLP,
for US Foods, Inc.

Oreoluwa Alao, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____

Before Zervas, Mermelstein and Heasley,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
US Foods, Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark SCOOP for the following goods and services:
“Downloadable electronic publication in the nature of
magazines in the fields of food, kitchen supplies, and
cooking” in International Class 9;
“Magazines in the field of food, kitchen supplies, and
cooking” in International Class 16;
“Providing a website featuring consumer product
information useful to food service professionals, namely,
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information in the field of food product descriptions” in
International Class 35; and
“Providing a website featuring information useful to food
service professionals in the field of food preparation” in
International Class 43.1
The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to
cause confusion with the mark , registered on the
Principal Register for:
“providing a non-downloadable electronic newsletter
featuring information and social media posts concerning
sweeteners, recipes, cooking and baking” in International
Class 41.2
After the refusal was made final, Applicant appealed and filed a request for
reconsideration. The Board suspended the appeal and remanded the application to
the Examining Attorney for consideration of the request for reconsideration. The
Examining Attorney denied the request for reconsideration, the appeal resumed and
Applicant and the Examining Attorney filed briefs. We affirm the refusal to register.

1 Application Serial No. 88369657, filed on April 3, 2019 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming first use and first use in commerce for the goods
or services of each International Class on August 1, 2011.
2 Registration No. 4753380, which registered on June 9, 2015. The registration describes the
mark as consisting of “the words ‘The Sweet Scoop’ in plain dark blue letters with a larger
enhanced capital letter ‘S’ beginning the words ‘Sweet and Scoop’ all on a yellow background”
and states, “[t]he color(s) dark blue and yellow is/are claimed as a feature of the mark.”
Serial No. 88369657
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Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services] and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976).
We consider each DuPont factor that is relevant or for which there is argument
and evidence of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019). “Not all of the [DuPont] factors are relevant to every case,
and only factors of significance to the particular mark need be considered.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed.
Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010)).
a. Similarity of the Goods and Services, and Trade Channels
We begin our analysis with the DuPont factors considering “[t]he similarity or
dissimilarity and nature of the goods or services as described in an application or
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registration,” and “the similarity or dissimilarity of established, likely-to-continue
trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051-
52 (Fed. Cir 2018) (quoting DuPont, 177 USPQ at 567). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed.
Cir. 2014).
Goods and services need not be identical or even competitive to find a likelihood
of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d
1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods and services] emanate from the same source.” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)).
We evaluate the relatedness of the respective goods and services based on their
identifications in the subject application and cited registration. Stone Lion Capital
Partners, 110 USPQ2d at 1162; see also Octocom Sys. Inc. v. Hous. Comput. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion
that the question of registrability of an applicant’s mark must be decided on the basis
of the identification of goods [or services] set forth in the application regardless of
what the record may reveal as to the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of purchasers to which the sales
of goods [or services] are directed.”); Paula Payne Prods. v. Johnson Publ’g Co., 473
Serial No. 88369657
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F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the respective descriptions of
goods [or services]”). When we consider the similarity of Applicant’s and Registrant’s
goods and services, it is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by Applicant’s identifications of
goods and services in a particular class in the application. Tuxedo Monopoly, Inc. v.
Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123
USPQ2d 1744 (Fed. Cir. 2017).
We agree with the Examining Attorney that the respective goods and services
encompass the same subject matter. Specifically, the publications in the “fields of food
… and cooking” in Applicant’s International Class 9 and 16 identifications of goods,
and the “information useful to food service professionals in the field of food
preparation” in Applicant’s International Class 43 identification of services, include
the same “information concerning recipes, cooking and baking” found in Registrant’s
identification of services. The “information in the field of food product descriptions”
useful to food service professionals featured on Applicant’s website (residing in
International Class 35) is encompassed within the information on “recipes, cooking
and baking” in Registrant’s “electronic newsletter.” We see little commercial
difference in the way the information is presented - Applicant provides its
information in downloadable electronic publications, in magazines and on a website,
Serial No. 88369657
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while Registrant provides its information in a non-downloadable electronic
newsletter.3
In addition, the Examining Attorney submitted third-party registrations and
webpage printouts to demonstrate that Applicant’s and Registrant’s services are
commercially related. Third-party registrations based on use in commerce that
individually cover a number of different goods or services may have probative value
to the extent that they serve to suggest that the listed goods or services are of a type
that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988), aff’d mem., 864 F.2d 149 (Fed. Cir. 1988). See, e.g., the
following use-based, third-party registrations:
• Reg. No. 4860400 for the mark FOODSTAND for:
International Class 9: Downloadable computer application
software for use on mobile devices for transmitting and
sharing information and content in the field of food;
International Class 35: providing online databases
featuring consumer product information relating to food;
International Class 41: online publications, namely, blogs,
newsletters and magazines featuring information in the
fields of sustainability, recipes, food, cooking, wine,
beverages, entertaining, allergies, and nutrition;

3 A “newsletter” is a “printed report giving news or information of interest to a special group.”
(https://www.ahdictionary.com/word/search.html?q=newsletter, accessed March 23, 2021,
based on The American Heritage Dictionary of the English Language (5th ed. 2020)). We take
judicial notice of this definition. The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist
in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).
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International Class 43: Providing online databases
featuring information in the field of recipes and cooking.
• Reg. No. 4726640 for the mark THE NEW POTATO for:
International Class 41: Non-downloadable electronic
publications in the nature of magazines in the field of
aesthetic of food, restaurants and chefs, recipes, restaurant
guides;
International Class 43: Providing a website featuring
information in the field of recipes and food preparation.
• Reg. No. 5492613 for the mark SLIMMING WORLD (stylized) for:
International Class 9: downloadable electronic
publications, namely, magazines, recipes, directories,
featuring food recipes, eating plans, diet plans, nutritional
information, recipes, information and advice relating to
slimming, weight control, diet, dieting, exercise, health,
fitness, recreation, lifestyle, eating habits and well-being;
International Class 16: magazines relating to fitness,
exercise, healthy foods, eating plans, diet plans, nutritional
information, recipes, slimming, weight control, diet,
dieting, exercise, health, fitness, recreation, lifestyle,
eating habits and well-being;
International Class 41: providing on-line non
downloadable electronic publications, namely, magazines,
recipes, featuring healthy foods, relating to healthy foods,
eating plans, diet plans, nutritional information, recipes,
slimming, weight control, diet, dieting, health, recreation,
lifestyle, eating habits and well-being.
• Reg. No. 5397338 for the mark SWEGS for:
International Class 16: Printed matter, namely,
magazines, newsletters, booklets, pamphlets, leaflets,
cards, flyers, circulars, stickers and give-aways in the
nature of coupons on topics featuring food, nutrition,
nutritional healing strategies, nutritional supplements,
wellness, healthy living and eating, exercise, behavior
modification, dieting, moderate lifestyle;
Serial No. 88369657
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International Class 41: Education and entertainment,
namely, an online newsletter covering healthy eating, food
cooking and preparation, lifestyles, dieting, exercise,
moderate living, wellness, holistic health, nutritional
supplements, nutritional healing strategies and behavior
modification;
International Class 43: providing a website to provide
information regarding food preparation, beverages,
cooking techniques and recipes, and menus; providing
personalized meal planning services via a website, namely,
providing a website that allows a customer to build their
own meal plan for delivery based on healthy choices and/or
lifestyle.4
Third-party evidence obtained from the Internet may also be used to support a
determination under Section 2(d) that services are related. See, e.g., In re G.B.I. Tile
& Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc.,
84 USPQ2d 1660, 1668 (TTAB 2007). The Examining Attorney submitted the
following webpage printouts to demonstrate that a single entity provides the goods
and services of the kind identified in Applicant’s and Registrant’s identifications of
goods and services under a single trademark:
• Country Living (https://www.countryliving.com)
information about food, cooking food preparation and
kitchen supplies, and providing recipes for savory and
sweet foods via an online website, digital magazine and
newsletter (June 21, 2019 Office Action, TSDR 10-15);

4 June 21, 2019 Office Action, TSDR 25-41. Page references to the application record refer to
the online database of the USPTO’s Trademark Status & Document Retrieval (“TSDR”)
system. All citations to documents contained in the TSDR database are to the downloadable
.pdf versions of the documents in the USPTO TSDR Case Viewer. See, e.g., In re Peace Love
World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). References to the briefs on appeal
and to Applicant’s Request for Reconsideration refer to the Board’s TTABVUE docket system.
Before the TTABVUE designation is the docket entry number; and after this designation are
the page references, if applicable.
Serial No. 88369657
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• Southern Living (https://www.southernliving.com)
information about food, cooking and food preparation, and
providing recipes for savory and sweet foods via an online
website, digital magazine and newsletter (June 21, 2019
Office Action, TSDR 16-20);
• Taste of Home (https://www.tasteofhome.com)
information about food, cooking and food preparation, and
also providing recipes for savory and sweet foods via an
online website, digital magazine and newsletter (June 21,
2019 Office Action, TSDR 21-24);
• Cook’s Illustrated (https://www.cooksillustrated.com)
information about food, cooking, food preparation and
kitchen supplies, and providing recipes for savory and
sweet foods via an online website, digital magazine and
newsletter (January 8, 2020 Office Action, TSDR 3-7);
• Food Network (https://www.foodnetwork.com/magazine)
providing information about food, cooking, food
preparation and kitchen supplies, and providing recipes for
savory and sweet foods via an online website, digital
magazine, newsletter and social media (January 8, 2020
Office Action, TSDR 8-14);
• The Art of Eating (https://artofeating.com) providing
information about food, cooking and food preparation, and
providing recipes for savory and sweet foods via an online
website, digital magazine, newsletter and access to social
media (January 8, 2020 Office Action, TSDR 15-20);
• Food & Wine (https://www.foodandwine.com) providing
information about food, cooking and food preparation, and
providing recipes for savory and sweet foods via an online
website and offering a magazine and access to social media
(January 8, 2020 Office Action, TSDR 21-25); and
• Fine Cooking (https://www.finecooking.com) providing
information about food, cooking, food preparation and
kitchen supplies, and providing recipes for savory and
sweet foods via an online website, and offering a magazine
and access to social media (January 8, 2020 Office Action,
TSDR 26-32).
Serial No. 88369657
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Applicant argues that because there is no reference to sweeteners or sugar in
Applicant’s goods and services description, the goods and services are not related to
Registrant’s services.5 Because Registrant’s services are not limited to sweeteners or
food containing sugar, Applicant’s argument is not persuasive.
Upon consideration of the foregoing, we find that (i) Applicant’s goods and services
are virtually identical to the cited registrant’s goods, as identified in the respective
identifications of goods and services; and (ii) a commercial relationship exists between
Applicant’s goods and services and Registrant’s services. The DuPont factor regarding
the similarity of the goods and services favors a finding of likelihood of confusion.
Turning now to trade channels, in the absence of limitations as to channels of
trade or classes of purchasers in the identified goods and services of the application
and the registration, we must presume that such goods and services move in all
channels of trade normal for, and are available to all potential classes of ordinary
consumers of, such goods and services. In re I-Coat Co., LLC, 126 USPQ2d 1730, 1737-
38 (TTAB 2018)) (citing Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370,
1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).) In this regard,
we note that even though Applicant’s International Class 35 and 43 identifications of
services provide that the information identified be “useful to food service
professionals,” the identifications do not limit the services to food services

5 Applicant’s brief at p. 8, 7 TTABVUE 11.
Serial No. 88369657
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professionals - they encompass members of the general public who are interested in
the same information as food professionals.
Because the goods and services are virtually identical, we presume that the trade
channels and classes of purchasers for Applicant’s goods and services and
Registrant’s services overlap. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
The Examining Attorney’s Internet evidence supports this presumption because it
shows that certain of Registrant’s and Applicant’s goods and services are offered on
the same websites to members of the general public interested in cooking.
The DuPont factors regarding the similarity of the goods and services, trade
channels and classes of consumers hence favor a finding of likelihood of confusion.
b. Similarities of the Marks; Strength of Registrant’s Mark
In this portion of our opinion, we first consider whether Applicant’s and
Registrant’s marks are similar when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression. See Stone Lion Capital
Partners, 110 USPQ2d at 1160 (quoting Palm Bay Imps., 73 USPQ2d at 1689). The
test under this DuPont factor is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the marks are sufficiently
similar that confusion as to the source of the services offered under the respective
marks is likely to result. See i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017); Coach Servs. Inc., 101 USPQ2d at 1721. The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
Serial No. 88369657
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USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089
(TTAB 2016). Also, “when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
While we must consider the marks in their entireties, it is entirely appropriate to
accord greater importance to the more distinctive elements in the marks than to the
less distinctive elements in determining whether the marks are similar. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing
improper in stating that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.”).
Applicant maintains that the commercial impressions of the marks differ because
Registrant’s mark connotes “something sweet, as in a scoop of ice cream” while
Applicant’s mark suggests a new item or event as in information especially of
immediate interest.”6 Applicant provided a definition of “scoop” from MERRIAM-
WEBSTER DICTIONARY providing in relevant part:
1 a : a large ladle
…
c : a usually hemispherical utensil for dipping food
d : a small spoon-shaped utensil or instrument for cutting
or gouging
…
4 a : information especially of immediate interest

6 Applicant’s brief at p. 5, 7 TTABVUE 8.
Serial No. 88369657
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b : BEAT7

Applicant also maintains that SWEET is the dominant term in the registered
mark because (i) it is the first term in the mark, and (ii) it has not been disclaimed in
the registration. The second term, SCOOP, is subordinate, Applicant maintains,
because:
consumers often encounter the term SCOOP in connection
with newsletters, which is recited in the identification of
goods in registrant’s mark, as well goods and services
related to sweet things such as ice cream, desserts or candy
which are related to registrant’s providing of information
regarding sweeteners and baking [as evidenced by] (1) at
least 9 third-party registrations including SCOOP in
trademarks for newsletters, and (2) at least 30 third-party
registrations using SCOOP in connection with ice cream
and dessert-related goods and services.8
According to Applicant, “[t]hese third-party registrations should be afforded
probative value in showing that consumers would look to other elements besides
SCOOP, such as SWEET, THE SWEET SCOOP, or the differences in the goods and
services of the two marks, in order to distinguish the source of the goods or services.”9
See In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996) (“Evidence of
widespread third-party use, in a particular field, of marks containing a certain shared
term is competent to suggest that purchasers have been conditioned to look to the

7 “Beat” is defined in Merriam-Webster’s Dictionary (accessed at https://www.merriam-
webster.com/dictionary/beat on March 23, 2021) in relevant part as “journalism : the
reporting of a news story ahead of competitors.” We take judicial notice of this definition.
8 Applicant’s brief at p. 6-7, 7 TTABVUE 9-10; July 8, 2020 Req. for Recon., 5 TTABVUE 25,
32-66.
9 Applicant’s brief at p. 6, 7 TTABVUE 9.
Serial No. 88369657
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other elements of the marks as a means of distinguishing the source of goods or
services in the field.”).
Among the registrations Applicant relies on are (i) 35 registrations for marks
containing the term SCOOP for goods such as ice cream and desserts, and (ii) the
following registrations:10
MARK Reg. No. GOODS/SERVICES
COLLEGE SCOOPS
COLLEGE TRIPS MADE
EASY and design
5994968 Providing a website featuring blogs and
non-downloadable publications in the
nature of newsletters, articles and images
relating to college/university campuses
EXEC SCOOP 5865550 downloadable electronic newsletters in the
field of real estate
THE SCOOP ON POOP 5761205 providing on-line newsletters in the field of
nutritional supplements, dietary and
nutritional supplements, and digestive
health
THE DAIRY SCOOP 4713686 providing non-downloadable electronic
newsletter providing information and
photographs via e-mail regarding lactose
intolerance, food, dietary supplements for
individuals who are lactose intolerant
and lactose-free dairy products
BEAUTY SCOOP 4651646 magazines featuring products and advice in
health, wellness and beauty; newsletters in
the field of health, wellness and beauty
KIWISCOOP 3365889 providing non-downloadable publications
via the internet in the nature of
newsletters, magazines, information
sheets, and brochures in the field of healthy
living
THE LATEST SCOOP
and design
1895064 newsletter about automobile related events,
activities, and other matters of interest to
automobile enthusiasts
C.B. SCOOPS 1799337 Company newsletter relating to the coffee
retailing industry

10 July 8, 2020 Req. for Recon., TTABVUE 21-31.
Serial No. 88369657
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Third-party registrations based on use can demonstrate “the sense in which the
word is used in ordinary parlance and may show that a particular term has
descriptive significance as applied to certain goods or services.” Institut National Des
Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196
(Fed. Cir. 1992). See also In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB
2006) (“[T]hird-party registrations can be used in the manner of a dictionary
definition to illustrate how a term is perceived in the trade or industry”). The extent
to which third-party use-based registrations bear on our determination of the cited
mark’s strength depends on the number of registrations, the level of similarity
between the involved marks, and the closeness of the goods or services recited in the
third-party registrations vis-à-vis those in the cited registration. Third-party
registrations for unrelated goods, however, are of limited probative value. See In re
i.am.symbolic, 123 USPQ2d at 1751 (disregarding third-party registrations for goods
in other classes where the proffering party “has neither introduced evidence, nor
provided adequate explanation to support a determination that the existence of I AM
marks for goods in other classes, ... support[s] a finding that registrants’ marks are
weak with respect to the goods identified in their registrations”); In re Thor Tech Inc.,
90 USPQ2d 1634, 1639 (TTAB 2009) (third-party registrations for goods that appear
to be in fields which are far removed from the goods at issue are of limited probative
value).
Applicant also submitted the following third-party common law uses of the term
SWEET SCOOP to demonstrate weakness in the registered mark:
Serial No. 88369657
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• the webpages of three stores using the mark SWEET
SCOOP for sales of ice cream, candy and sweet desserts;11
• webpages for a clothing store offering an article of
clothing identified as “Sweet Scoop Sunbubble”;
• webpages for an online store offering “a classic ice cream
scoop” identified as “Sweet Scoop”;
• an article titled “Get the sweet scoop in Stowe” regarding
a stores named “Country Store on Main” and “Stowe
Sweets”;
• an article titled “A Sweet Scoop” regarding two
individuals who created an ice cream business; and
• a blog titled “the sweet scoop” with postings on
desserts.12
The Examining Attorney argues that “term SWEET in the registered mark is not
source indicating; instead it informs consumers who encounter the mark that at least
some of the services under the mark are related to sweets. This renders SCOOP the
dominant portion of registrant’s mark.”13 With regard to the third-party registrations
submitted by Applicant, the Examining Attorney argues that they concern goods and
services unrelated to the goods and services at issue.
In considering Applicant’s and Registrant’s marks, we note that because
Applicant’s mark is displayed in standard-character form, it is not limited to any
special stylization, and we must assume that it could be displayed in a similar font

11 A fourth store is identified through a Facebook page
(https://www.facebok.com/sweetscopuk/) in Leeds, United Kingdom. This page has limited
probative value because it is unlikely to be accessed by U.S. consumers. (Req. for Recon.,
TTABVUE 74-80).
12 July 8, 2020 Req. for Recon., TTABVUE 58-86.
13 Examining Attorney’s brief, 9 TTABVUE 7.
Serial No. 88369657
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style to Applicant’s marks. See Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a)
(“Standard character” marks are registered “without claim to any particular font
style, size, or color.”). To the extent that they consist of or include the word SCOOP,
we find the marks similar in sound, meaning, appearance and commercial
impression. Indeed, Registrant’s mark incorporates the entirety of Applicant’s mark.
Likelihood of confusion is often found where the entirety of one mark is incorporated
within another. In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016)
(finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and
JAWS confusingly similar); In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (PERRY’S
PIZZA for restaurant services specializing in pizza and PERRY’S for restaurant and
bar services); In re South Bend Toy Mfg. Co., 218 USPQ 479, 480 (TTAB 1983) (LIL’
LADY BUGGY for toy doll carriages and LITTLE LADY for doll clothing). There is
no additional wording in Applicant’s mark that would modify it and so distinguish it
from the registered mark.
With regard to Applicant’s arguments about the term SWEET in Registrant’s
mark, we recognize some weakness in that term due to the fact that the subject
matter of Registrant’s non-downloadable electronic newsletters featuring
information and social media posts is sweeteners, recipes, cooking and baking, which
by nature are or can be sweet in taste. Consumers are more likely to remember the
more distinctive elements of a mark, and for that reason, place less weight on
descriptive or generic terms found in multi-word marks. See, e.g., Anheuser-Busch,
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LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
Applicant’s argument that the term SWEET in the registered mark is the
dominant term because it has not been disclaimed and is the first term in the mark
thus is a red herring. The examining attorney in the
application likely found the mark to be unitary due to the alliteration of SWEET
SCOOP and the large letter “S” in the same font in both terms as they appear in the
mark. See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.05 (Oct.
2018) (“If the matter that comprises the mark or relevant portion of the mark is
unitary, no disclaimer of an element, whether descriptive, generic, or otherwise, is
required.”) Also, as the Examining Attorney has pointed out in her brief, we are not
bound by prior decisions and actions of trademark examining attorneys. See In re
USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 790, 1793 n.10 (TTAB 2017).
With regard to the 35 registrations for marks containing the term SCOOP for ice
cream and desserts, we agree with the Examining Attorney that they have limited
probative value because they concern goods that are dissimilar to Registrant’s
provision of a downloadable electronic newsletter featuring information and social
media posts concerning sweeteners, recipes, cooking and baking. The webpages are
also of limited probative value because they demonstrate only three trademark uses,
and such uses are for goods and services that differ from Registrant’s services.
Turning to the registrations listed in the table, we find them to be probative of the
meaning of SCOOP in connection with the provision of a downloadable newsletter or
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similar goods such as magazines, namely, the MERRIAM-WEBSTER DICTIONARY
definition of “information especially of immediate interest” or “beat” in the context of
journalism. “While these registrations are probative of the meaning of the word
[“scoop”], they do not prove that [“scoop”] is a commercially weak term. Absent
evidence of actual use, third-party registrations have little probative value because
they are not evidence that the marks are in use on a commercial scale or that the
public has become familiar with them.” Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011) (citing Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in the USPTO); In re Hub
Distrib., Inc., 218 USPQ 284, 285 (TTAB 1983)). They also are only eight in number.
Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (at least
fourteen relevant third-party uses or registrations of record); Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (at least
twenty-six relevant third-party uses or registrations of record). Applicant thus has
not established that SWEET is the dominant term in Registrant’s mark.
Registrant’s mark also has a yellow background. The yellow background functions
as a carrier element for the mark and contributes little to the commercial impression
of Registrant’s mark. The wording in Registrant’s mark therefore dominates
Registrant’s mark. When a mark comprises both words and a design, the words are
normally accorded greater weight because they are more likely to be impressed upon
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a purchaser’s memory and would typically be used by purchasers to request the goods
or services. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir.
2012). (“The Board’s conclusion is also in line with our decisions holding that the
verbal portion of a word and design mark likely will be the dominant portion. This
makes sense given that the literal component of brand names likely will appear alone
when used in text and will be spoken when requested by consumers.” (citation
omitted.)).
With regard to the term THE in Registrant’s mark, the Board has found that
inclusion of such a term at the beginning of one of the marks will generally not affect
or otherwise diminish the overall similarity between marks. See In re Thor Tech Inc.,
90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually
identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered
mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223
USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-
MAKERS “virtually identical” marks; the inclusion of the definite article “the” is
“insignificant in determining likelihood of confusion”). Further, in this case, the word
THE in the registered mark is relatively small, and thus visually subordinate. The
term THE hence does not affect the meaning or commercial impression of the
registered mark and has minimal effect on the sound and appearance of the mark.
Applicant also points out the alliterative quality of Registrant’s mark which
“aurally binds the words ‘SWEET’ and ‘SCOOP’ together in consumers’ minds” that
is lacking in Applicant’s mark, and maintains that this sound helps to create a
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distinct commercial impression.14 The only commonality between the two terms is the
initial letter “S” in both words – no other letters are shared in the two terms. The
alliteration therefore is not so distinctive as to suggest to us that consumers would
even notice the alliteration.
In addition, Applicant maintains that “Registrant is also trading on consumers’
knowledge of Registrant’s well-known SPLENDA branded artificial sweetener. By
using the same dark blue color and font style for the two S’s in the SWEET SCOOP
Mark as Registrant does on its packaging for its SPLENDA products … Registrant is
evoking its SPLENDA brand in the minds of consumer.”15 This argument is not
persuasive because the style of the letter “S” in Registrant’s marks is not particularly
notable, and there is no evidence that consumers recognize the similarities in the
letter “S” in THE SWEET SCOOP and SPLENDA (stylized).
Upon consideration of the foregoing, we remain unpersuaded by Applicant’s
arguments that the marks are dissimilar. As we noted above, “when marks would
appear on virtually identical goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines.” Century 21 Real Estate, 23 USPQ2d
at 1700; see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010)
The DuPont factor regarding the similarity or dissimilarity of the marks hence favors
a finding of likelihood of confusion.

14 Reply brief at p. 3-4, 10 TTABVUE 7-8.
15 Id. at p. 4, 10 TTABVUE 8.
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c. Conclusion
We have found Applicant’s and Registrant’s goods and services to be essentially
identical, and otherwise related, and the trade channels and purchasers to overlap.
In addition, we have found the marks to be similar. We therefore conclude that
Applicant’s mark for its identified goods and services would likely be confused with
Registrant’s mark for its identified services.
Decision: The refusal to register under Section 2(d) is affirmed.