Vudo, Inc.

Trademark Trial and Appeal Board

Mar 31, 2005

No. 76467337 (T.T.A.B. Mar. 31, 2005)

Mailed: March 31, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vudo, Inc.
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Serial No. 76467337
_______

Nguyen Hong Nhuan of Law Offices of Nguyen Hong Nhuan for Vudo,
Inc.

Susan Leslie Dubois, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______

Before Hohein, Chapman and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Vudo, Inc. has filed an application to register on the
Principal Register the mark "LILY'S BAKERY" and design, as shown
below,

for goods identified as "cake."1

1 Ser. No. 76467337, filed on November 15, 2002, which is based on an
allegation of a date of first use anywhere and in commerce of June 15,
2000. The word "Bakery" is disclaimed.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76467337
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "LILY BAKERY" and design, as reproduced below,

which is registered for "cakes, sponge rusk, cup cakes, mini
cakes, pastries, and crackers,"2 as to be likely to cause
confusion, or to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, 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 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

2 Reg. No. 2,607,707, issued on August 13, 2002, which sets forth a
date of first use anywhere and in commerce of March 30, 1994.

Ser. No. 76467337
3
dissimilarity of the respective marks in their entireties.3
Here, inasmuch as applicant's "cake" and registrant's "cakes" and
"mini cakes" are legally identical goods which therefore would be
sold through the same channels of trade to the same classes of
customers,4 the focus of our inquiry is accordingly on the
similarity or dissimilarity of the respective marks.

3 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.

4
It is noted that applicant argues in its brief that the respective
goods are not similar because its product "includes French,
Vietnamese, and Chinese styles" and that "[t]hese kinds of cakes are
peculiar in the United States." The Examining Attorney, citing
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987) and Paula Payne Products
Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973), nonetheless properly points out in her brief that
"[l]ikelihood of confusion is determined on the basis of the goods ...
as they are identified in the application and the registration." In
view thereof, she further correctly observes that:

Since the identification of the [applicant's] goods is very
broad, no limits on the type of cakes offered by applicant
will be assumed. .... However, this argument would still
be unpersuasive even if the applicant's identification [of
goods] were to be limited to a particular type of cake.
The respective goods would still be considered identical
because no such limitation exists on the cakes offered by
the registrant.

Moreover, it also should be noted that where the goods of an applicant
and a registrant are broadly described as to their nature and type, it
is presumed in each instance that in scope the application and
registration respectively encompass not only all goods of the nature
and type described therein, but that the identified goods are
available through all channels of trade which would be normal for
those goods and that they would be purchased by all potential buyers
thereof. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In
addition, because it is well settled that a refusal under Section 2(d)
is proper if there is a likelihood of confusion involving the goods
listed in the application and any of the goods set forth in the cited
registration, it is unnecessary to rule with respect to the other
goods listed in the cited registration. See, e.g., Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137
USPQ 881, 883 (CCPA 1963).

Ser. No. 76467337
4
Turning, therefore, to such issue, applicant argues in
its brief that its mark consists of a "[d]esign of two fanciful
lily flowers and the words 'LILY'S BAKERY.'" Such mark,
applicant insists, "does not resemble" registrant's "LILY BAKERY"
and design mark because, when considered in their entireties:
(1) The spelling[s] of the two marks are
different, one with an "s" after the word
Lily, and the other without; and (2) The
drawing[s] of the two marks are also
different. [The] [m]ark "Lily's Bakery"
contains a design of two fanciful lily
flowers while [the] mark "Lily Bakery"
includes a design of a female cook or baker
with a hat in an oval carrier.

We agree with the Examining Attorney, however, that
contemporaneous use of applicant's "LILY'S BAKERY" and design
mark and registrant's "LILY BAKERY" and design mark in connection
with, respectively, applicant's "cake" and registrant's "cakes"
and "mini cakes" would be likely to cause confusion as to the
source or sponsorship of such goods. As the Examining Attorney
correctly notes in her brief, "the relevant inquiry regarding
likelihood of confusion is not whether the marks can be
distinguished from one another" on the basis of a side-by-side
comparison. Such a comparison of the respective marks is simply
not the proper test to be used in determining the issue of
likelihood of confusion inasmuch as it is not the ordinary way
that customers will be exposed to the marks. Instead, it is the
similarity of the general overall commercial impression
engendered by the marks at issue which must determine, due to the
fallibility of memory and the concomitant lack of perfect recall,
whether confusion as to source or sponsorship is likely. The
Ser. No. 76467337
5
proper emphasis is accordingly on the recollection of the average
purchaser, who normally retains a general rather than a specific
impression of marks. See, e.g., Grandpa Pidgeon's of Missouri,
Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973);
Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733 (TTAB 1981);
and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Here, as the Examining Attorney observes in her brief,
"[t]he only textual difference between these two marks is the use
of the apostrophe 's' in the applicant's mark, which is used ...
to denote possession." We concur with the Examining Attorney
that "consumers will not take the time to analyze the slight
differences in meaning created by the inclusion of the apostrophe
's'" in applicant's mark and that the presence or absence of an
"apostrophe 's' within the mark[s] as a whole does not alter the
commercial impression of the mark[s] in any appreciable manner,
and the slight difference[s] in sound and appearance are
insignificant." Consequently, as the Examining Attorney further
notes, the inclusion or omission in the marks at issue of "an
apostrophe 's'" is a difference which "cannot obviate the
likelihood of confusion." See, e.g., Scott Paper Co. v. Scott's
Liquid Gold, Inc., 195 USPQ 707, 719 (D. Del. 1977) [when used in
connection with household cleaners, mark "SCOTT'S LIQUID GOLD" is
likely to cause confusion with mark "SCOTT"]; and Mr. Rooter
Corp. v. Morris, 188 USPQ 392, 395 (E. D. La. 1975) [when used in
connection with sewer and drain cleaning services, mark "MR.
ROOTER'S" is likely to cause confusion with mark "MR. ROOTER"].
Ser. No. 76467337
6
As to the differences created by the design features of
the respective marks, the Examining Attorney contends in her
brief that:
The applicant's mark includes scripted
typeface and fanciful scrollwork, while the
registered mark shows a picture of a little
girl. While it is true that the different
designs serve to alter the commercial
impressions, it is not a significant enough
difference to overcome the nearly identical
textual portions of the marks. When a mark
consists of a word portion and a design
portion, the word portion is more likely to
be impressed upon a purchaser's memory and to
be used in calling for the goods .... [In re
Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987).]

In view thereof, the Examining Attorney maintains that, while
"taking into consideration the different designs" in the
respective marks, it is "the common use of the arbitrary term
'LILY' [which] creates the overriding commercial impression" and,
thus, the differences in the designs fail to "obviate the
similarity between the marks."
It is clear that the term "LILY" may mean both a kind
of flower as well as signify a female name. Therefore, as used
in connection with "cakes" and "mini cakes," the phrase "LILY
BAKERY" in registrant's mark engenders the commercial impression
of a bakery named on behalf of a girl or woman named "Lily,"
given the accompanying design of a girl or woman in a baker's
hat. However, applicant's mark is likewise susceptible to
conveying essentially the same or a substantially similar overall
commercial impression since, as used in connection with "cake,"
the possessive phrase "LILY'S BAKERY" connotes a bakery named for
a girl or woman named "Lily," given that the design in
Ser. No. 76467337
7
applicant's mark is not necessarily readily recognizable.
Instead, as argued by the Examining Attorney, consumers seeing
applicant's mark could view the design therein as constituting
"just scrollwork around the text, with no flowers." Moreover,
inasmuch as people rather than plants bake cakes, even if the
design in applicant's mark were to be recognized or regarded, as
applicant asserts, as that of two lilies, the word portion of its
mark, namely, the possessive phrase "LILY'S BAKERY," would still
be taken as connoting, like registrant's mark, a bakery named
after a girl or woman named "Lily," with the flowered design
being mere decoration derived from the double entendre inherent
in the word "LILY."
Consequently, when considered in their entireties, it
is apparent that the literal portions of the respective marks are
substantially similar, if not virtually identical, in sound,
appearance and connotation, and that the differences in the
design elements of such marks are insufficient to distinguish
them. Overall, applicant's mark and registrant's mark convey a
substantially similar commercial impression, particularly since
the word "LILY" appears to be a wholly arbitrary term when used
as an indication of source in connection with any kind of cake.
We accordingly conclude that consumers, who are
familiar or acquainted with registrant's "LILY BAKERY" and design
mark for, inter alia, "cakes" and "mini cakes," would be likely
to believe, upon encountering applicant's substantially similar
"LILY'S BAKERY" and design mark for "cake," that such legally
Ser. No. 76467337
8
identical goods emanate from, or are sponsored by or associated
with, the same source.
Decision: The refusal under Section 2(d) is affirmed.