Victory Foodservice Distributors Corp.

Trademark Trial and Appeal Board

Feb 14, 2001

No. 75460669 (T.T.A.B. Feb. 14, 2001)

2/14/01
Paper No. 12
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Victory Foodservice Distributors Corp.
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Serial No. 75/460,669
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Michael A. Cornman of Schweitzer Cornman Gross & Bondell
LLP for Victory Foodservice Distributors Corp.
Elizabeth A. Hughitt, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney)
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Before Seeherman, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Victory Foodservice Distributors Corp. has appealed
from the final refusal of the Trademark Examining Attorney
to register the mark shown below, hereafter referred to as
VICTORY FOODSERVICE, for “wholesale food distributorship
services” in Class 35.1 The words FOODSERVICE and WHOLESALE
FOOD DISTRIBUTORS have been disclaimed.
1 Application Serial No. 75/460,669, filed April 1, 1998, and
asserting a bona fide intention to use the mark in commerce. It
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/460,669
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground of
likelihood of confusion with three marks registered by
Victory Markets, Inc. for “wholesale and retail supermarket
services.” One mark is VICTORY MARKETS per se2 and two are
VICTORY MARKETS and design marks, shown below. In each,
the word MARKETS had been disclaimed.
is noted that there was some confusion about the identification
and classification of the services. Applicant had originally
identified its services as “wholesale food distribution services”
in Class 42. The Examining Attorney required that the word
“distribution” be changed to “distributorship, and that the
classification be changed to Class 35. In its response to the
Office action, applicant amended the classification, and appeared
to intend to comply with the Examining Attorney’s requirement as
to the amendment of the services, but in fact offered an
amendment that was identical to the original identification.
With its appeal brief applicant requested that the application be
remanded to the Examining Attorney in order to comply with her
requirement for an acceptable identification. The application
was remanded, and the Examining Attorney entered the amendment,
but noted that applicant had, again apparently inadvertently,
identified its services as being in Class 42. Accordingly, and
because classification decisions are an administrative matter,
the Examining Attorney corrected the classification by Examiner's
Amendment. Accordingly, the identification and classification
now reads as shown above.
2 Registration No. 1,413,793, issued February 26, 1986; Section
8 affidavit accepted; Section 15 affidavit received.
Ser. No. 75/460,669
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3
4
Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
3 Registration No. 1,413,800, issued October 14, 1986; Section 8
affidavit accepted; Section 15 affidavit received. In addition
to the word MARKETS, INC. has also been disclaimed.
4 Registration No. 1,419,547, issued December 2, 1986; Section 8
affidavit accepted; Section 15 affidavit received.
Ser. No. 75/460,669
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Turning first to the services, applicant’s services
are identified as “wholesale food distributorship services”
while the registrant’s are for “wholesale and retail
supermarket services.” Applicant has focused on the retail
supermarket services of the cited registrations, and has
from that viewpoint constructed a series of arguments that
the services are offered through different channels of
trade to different classes of consumers. However,
applicant has essentially ignored the fact that the cited
registration includes “wholesale supermarket services.”
These services are extremely similar to applicant’s, both
involving the sale of food products at wholesale prices.
Moreover, these services, like applicant’s, would be
directed to commercial buyers in the food industry. Such
consumers are likely to assume a connection between
wholesale supermarket services and wholesale food
distributorship services if they were sold under
confusingly similar marks.5
As an aside, we note that applicant, during the
prosecution of its application, asserted that the
registrant’s wholesale supermarket services referred to the
5 In view of our finding that applicant’s services are related
to the registrant’s wholesale supermarket services, we need not
reach the question of likelihood of confusion with respect to the
registrant’s identified retail supermarket services.
Ser. No. 75/460,669
5
stocking of registrant’s retail stores. Applicant did not
make this argument in its brief, but we think it necessary
to point out that it is without merit. The identification
in the cited registrations does not limit the registrant’s
services to the stocking of its own stores; in fact, it is
not clear that such an activity would constitute a service
for which registration could be obtained, since a service
must be an activity for others, not an activity a party
performs only for its own benefit.
With respect to the marks, we concur with applicant
and the Examining Attorney that marks must be compared in
their entireties. However, as the Examining Attorney has
pointed out, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Here, we
find that the word VICTORY is the dominant element of
applicant’s mark and at least of the registrant’s word
mark. In applicant’s mark, VICTORY is visually the largest
part of the mark, and the portion with the strongest
source-indicating value. The rest of the mark consists of
the descriptive/generic words FOODSERVICE and WHOLESALE
FOOD DISTRIBUTORS and, in much smaller letters, the
laudatory slogan THE QUALITY YOU DESIRE, THE SERVICE YOU
Ser. No. 75/460,669
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REQUIRE, with the design of a cornucopia framing the “V” in
VICTORY and emphasizing that word. Applicant has stated
that the size limitations of the Office’s drawing
requirements resulted in the small size of the slogan but,
as the Examining Attorney pointed out, however much the
mark might be enlarged, the relative size of the word
VICTORY would still be much larger, and would dominate the
word visually. Moreover, it is this word, rather than the
descriptive words or slogan by which consumers are likely
to refer to applicant’s services, and consequently it is
this word which they will note and remember.
VICTORY is also the dominant element of the word mark
VICTORY MARKETS, since the disclaimed word MARKETS is
obviously a generic word for the services. Although the
initials “V” and “VM” are visually strong in the other
cited marks, it is still by the word VICTORY that consumers
will refer to the source of the services. Further, the
letter designs in the marks, because they are the initials
of the words, reinforce the word portions.
As a result, the commercial impression of applicant’s
mark and the registered marks is the same.
Applicant asserts that a comparison of all of the
marks yields more differences than similarities. However,
it is the point of similarity, the arbitrary word VICTORY,
Ser. No. 75/460,669
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which has the strongest source-indicating value, and is the
portion of the marks most likely to be noticed and
remembered by purchasers. Under actual marketing
conditions consumers do not have the luxury to make side-
by-side comparisons between marks, and instead they must
rely on hazy past recollections. Dassler KG v. Roller
Derby Skate Corporation, 206 USPQ 255 (TTAB 1980). In this
case, even if consumers were to recognize the differences
in the marks, they are likely to believe that applicant’s
mark is merely a variation of the registrant’s other design
marks.
Although neither applicant nor the Examining Attorney
has discussed the other duPont factors, we note that there
is no evidence of any third-party registrations or use of
VICTORY marks for related goods or services, thus
supporting our view that the registrant’s marks are strong
marks which are entitled to a broad scope of protection.
Further, in reaching our decision we have considered that
applicant’s and the registrant’s wholesale food services
will be offered to retail supermarkets and grocers, and
that such purchasers are more sophisticated than the
general public. However, given the strength of the
registrant’s marks, the similarities of the marks, and the
Ser. No. 75/460,669
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relatedness of the services, even sophisticated purchasers
are likely to be confused as to the source of the services.
Decision: The refusal of registration is affirmed.