William E. Berner

Trademark Trial and Appeal Board

Oct 13, 2000

No. 75434577 (T.T.A.B. Oct. 13, 2000)

Paper No. 15
10/13/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re William E. Berner
________
Serial No. 75/434,577
_______
John F. Learman for William E. Berner
Carol A. Spils, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney)
_______
Before Seeherman, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
William E. Berner has appealed from the final refusal
of the Trademark Examining Attorney to register GRANDMA
BERNER'S as a trademark for "hams, namely, gourmet hams."1
It is noted that applicant, presumably in light of the
likelihood of confusion refusal, has disclaimed exclusive
rights to the term BERNER'S, although the Examining
Attorney has stated that such a disclaimer is not

1 Application Serial No. 75/434,577, filed February 16, 1998,
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/434,577
2
necessary. However, because an applicant may disclaim even
registrable matter, the disclaimer has been accepted. See
In re MCI Communications Corp., 21 USPQ2d 1534 (Comm'r
Pats. 1991); TBMP § 1213.01(c). Such a disclaimer, of
course, does not avoid a finding of likelihood of confusion
and thereby render registrable a mark which is otherwise
unregistrable under Section 2(d). See TMEP § 1213.01(c).
Applicant has also, in response to the Examining Attorney's
requirement, submitted a consent from his mother, who
asserts she is known as Grandma Berner by many people, to
use and register the mark.2
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark, if used on his identified goods, so
resembles the mark BERNER CHEESE and design, shown below,
and registered for "processed cheese and processed cheese
spread sold in plastic bottles and jars"3 so as to be likely
to cause confusion or mistake or to deceive. The

2 Certain notations appear in the file which have presumably
been made by personnel in the Office. On the consent document
appears the direction to "PRINT" the phrase "The name GRANDMA
BERNER'S does not identify a living individual" while a memo to
the R&A Clerk requests that a "Living Individual Statement" be
added to the data base. Although neither of these statements now
appears in the data base, it is obvious, in light of the consent,
that the "Living Individual Statement" is the appropriate one.
Accordingly, the Office records will be corrected to reflect
this.
3 Registration No. 2,008,009, issued October 15, 1996.
Ser. No. 75/434,577
3
registration indicates that the lining is a feature of the
mark and does not indicate color; further, the word CHEESE
has been disclaimed.
The appeal has been fully briefed. Applicant had
originally requested an oral hearing, but later withdrew
that request.4
Our determination is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors 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, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the goods, applicant's goods are
identified as gourmet hams, while the goods identified in
the registration are "processed cheese and processed cheese

4 It is noted that applicant made his request for an oral
hearing as the last sentence of his appeal brief. Applicant is
reminded that a request for an oral hearing should be made by a
separate notice. See Trademark Rule 2.142(e)(1).
Ser. No. 75/434,577
4
spread sold in plastic bottles and jars." Although the
Examining Attorney, in her brief, states that "the wording
in the identification of goods in the registration is not
clear as to whether the wording 'sold in plastic bottles
and jars' modifies both the processed cheese and the
processed cheese spread," p. 11, we think it is obvious,
under rules of grammatical construction as well as a
practical knowledge of what processed cheese and processed
cheese spreads are, that it is the cheese spread which is
sold in plastic bottles and jars, and not the processed
cheese per se.
It is equally obvious that processed cheese and
gourmet ham are different and non-competitive products.
However, it is well established that it is not necessary
that the goods of the parties be similar or competitive, or
even that they move in the same channels of trade to
support a holding of likelihood of confusion. It is
sufficient if the respective goods of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarities
of the marks, give rise to the mistaken belief that they
Ser. No. 75/434,577
5
originate from the same producer. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
It is common knowledge that ham and cheese are
complementary products. One basic type of sandwich is a
"ham and cheese sandwich," in which these two foods form
the main ingredients. It is also common knowledge that ham
and cheese may be purchased in the same store, such as a
grocery store or delicatessen (where goods of this nature
are often displayed in close proximity to one another)
during the course of a single shopping trip, for a
subsequent complementary use. See In re Vienna Sausage
Manufacturing Co., 230 USPQ 799, 800 (TTAB 1986) where this
statement was made in connection with cheese and sausage.
We see no reason to depart from this view because
applicant's goods are identified as "gourmet ham" and the
registration is for "processed cheese." These more
specific products are also complementary, can be used in
ham and cheese sandwiches and the like, and can be sold in
the same stores in close proximity to each other.
Applicant has not submitted any evidence to the contrary.
The Examining Attorney has also made of record
numerous registrations showing that entities have
registered their marks both for cheese and for ham. Third-
party registrations which individually cover a number of
Ser. No. 75/434,577
6
different items and which are based on use in commerce
serve to suggest that the listed goods and/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).
We recognize that in many of the submitted registrations
the goods are identified as "cheese", rather than
"processed cheese", and as "ham", rather than "gourmet
ham." However, because "ham" and "cheese" are acceptable
identifications, we would not expect registrations to
include the more limiting language of "processed cheese"
and "gourmet ham". Even so, we note that two of the third-
party registrations do, in fact, include in their
identifications both "processed cheese" and "ham." See
Registration Nos. 1,433,099 (hams, cheese, processed
cheese); and 1,283,524 (cheese, pasteurized process cheese
food, and processed meat products, namely, ham…).
Because ham and cheese, including processed cheese,
may be sold by a single entity under the same mark; because
ham and cheese are complementary products which are
commonly used together; and because consumers may purchase
the products in the same stores, where they may, because of
the conjoint use, be sold or displayed near each other, we
find that the Examining Attorney has met her burden in
demonstrating that applicant's and the registrant's
Ser. No. 75/434,577
7
identified goods are sufficiently related that, if sold
under similar marks, confusion is likely to result. Thus,
the factors of the similarity of the marks, and the
similarity of trade channels, weigh in favor of a finding
of likelihood of confusion.
This brings us to a consideration of the marks.
Applicant and the Examining Attorney have engaged in an
extensive discussion as to which element of each mark is
dominant. The Examining Attorney asserts that the word
BERNER dominates both marks, while applicant asserts that,
in his mark, it is the word GRANDMA and, in the cited mark,
it is the design. The one point on which applicant and the
Examining Attorney appear to agree is that there 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 a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Turning to the cited mark, we find that the dominant
element is the term BERNER. The disclaimed word CHEESE is
the generic term for the goods, and has no source-
identifying significance. As for the design, it is a
fairly spare grouping of lines which do not form a
Ser. No. 75/434,577
8
readily-identifiable image, and which appear to be more of
a background for the words. In general, when a mark
comprises both words and a design, the word portion is
normally accorded greater weight because it would be used
by purchasers to request the goods or services. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). We
find that general rule to be applicable to the present case
because the involved goods can be called for by name at,
for example, deli counters. Consumers are more likely to
note and remember the words of the cited mark both because
they would ask for or refer to the product by the words,
and because the abstract design cannot be articulated.
Further, we do not accept applicant's reasoning that
because BERNER is a surname and CHEESE is a generic term,
we are left, by default as it were, to find that the design
is the dominant part of the mark. Consumers are used to
seeing surnames as trademarks, and will not, simply because
a mark contains a surname, look to other elements of the
mark for their source-identifying significance.
We think that BERNER also plays a dominant role in
applicant's mark, GRANDMA BERNER'S. GRANDMA is a
relatively common relationship title, and modifies the
surname BERNER, such that the mark projects the image of an
Ser. No. 75/434,577
9
older woman with the surname BERNER. Thus, it is the
surname BERNER which makes a strong commercial impression.
Comparing the marks in their entireties, we find that
they have strong similarities in appearance, pronunciation
and meaning. Both, obviously, contain the name BERNER['S],
and the appearance and pronunciation of this word is
unaffected by the other elements in the marks. In
particular, the word CHEESE and the design element in the
registered mark, and the word GRANDMA'S in applicant's
mark, do not serve to distinguish the marks. As applicant
has pointed out, no one would use the mark BERNER CHEESE
and design on ham. Therefore, consumers familiar with the
BERNER CHEESE and design mark, and seeing the mark GRANDMA
BERNER'S on ham, would ascribe the absence of the word
CHEESE to the fact that the product is ham, and assume that
GRANDMA BERNER'S is a variant of the BERNER CHEESE and
design mark. Both marks convey the same meaning, namely,
that they identify products emanating from the Berner
family. The BERNER CHEESE mark indicates that the cheese
on which the mark is used comes from the Berner family,
while the GRANDMA BERNER'S mark suggests that the ham is
Ser. No. 75/434,577
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made from an old Berner family recipe.5 All told, the marks
convey the same commercial impression.
Applicant argues that because BERNER is a surname, the
cited registration, which includes that name, is a weak
mark which is entitled to a limited scope of protection.
It is essentially applicant's view that the cited mark has
not acquired secondary meaning, and therefore must be
treated as a weak mark.
Applicant apparently would have us view the cited mark
as a weak mark because it does not contain a claim of
acquired distinctiveness. However, the presence or absence
or a Section 2(f) claim is irrelevant. Regardless of
whether the cited registration was issued pursuant to the
provisions of Section 2(f) or not, it is still a valid
registration which must be given full effect.6
Moreover, we cannot conclude, from the 5,636 listings
of Berner reported in PhoneDisc,7 or Mrs. Berner's statement

5 In fact, applicant states that his hams are prepared according
to a family recipe.
6 As an aside, we note that the cited registration claims a date
of first use of July 1995, and therefore presumably would qualify
for Section 2(f) acquired distinctiveness if it were being
examined today.
7 Applicant makes reference to a PhoneDisc search reporting
5,636 listings for the name BENNER which was the last page of the
attachments to the Examining Attorney's first Office action.
That page does not appear to be in the application file, and in
her brief the Examining Attorney states that "any inclusion of a
surname search for the term BENNER was inadvertent and is not
relevant in the current case concerning the term BERNER." p. 4.
Ser. No. 75/434,577
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that she believes "Berner to be a well known surname in
this and other countries," that Berner is such a common
surname that consumers will assume that the two marks at
issue herein which contain that surname identify separate
sources, when used on the related products of ham and
processed cheese. In this connection, we note that there
is no evidence in the record of third-party use or
registration of any marks containing the surname BERNER.
Thus, even if we were to accept, arguendo, applicant's
argument that the cited registration is entitled to a more
limited scope of protection, that protection would still
extend to applicant's use of such a similar mark as GRANDMA
BERNER'S for such related goods as "gourmet ham."
Applicant further asserts that "Grandma Berner" is
entitled to use her surname on a product with which she is
associated, and may, through her consent, grant the
asserted right to the use of her name to her son, the
applicant herein.

However, because applicant made repeated references to it, and
indeed requested that the Examining Attorney acknowledge this
surname evidence and confirm that BENNER was a misspelling, and
because the Examining Attorney made no objection during the
examination of the application, we deem that the Examining
Attorney has stipulated to the surname evidence for the name
BERNER. In any event, the Examining Attorney has made clear in
her brief that she does not dispute that BERNER is a surname.
Ser. No. 75/434,577
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It is well established that the interest in allowing
an entrepreneur to use his own surname as a trademark on
his goods must give way to the more compelling public and
private interests involved in avoiding a likelihood of
confusion or mistake as to source where use of the surname
leads to such confusion or mistake. Ford Motor Company v.
Ford, 462 F.2d 1405, 174 USPQ 456, 458 (CCPA 1972).
Finally, we have considered applicant's argument that
gourmet hams are not casually purchased. Applicant has not
provided any evidence as to the selling price of "gourmet
hams" which might indicate that an extraordinary degree of
care goes into their selection. What is clear, however, is
that both applicant's and the registrant's products are
purchased by the public at large. Even though consumers
may note the specific differences in the marks, as stated
above, they will attribute these differences to the
differences in the goods, rather than to differences in the
source of the goods.
Accordingly, after considering all of the relevant
duPont factors, we find that applicant's mark GRANDMA
BERNER'S for gourmet hams is likely to cause confusion with
the mark in the cited registration.
Ser. No. 75/434,577
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Decision: The refusal of registration is affirmed.
E. J. Seeherman
C. M. Bottorff
G. F. Rogers
Administrative Trademark Judges
Trademark Trial and Appeal Board