World’s Finest Chocolate, Inc.

Trademark Trial and Appeal Board

Sep 4, 2009

No. 78582690 (T.T.A.B. Sep. 4, 2009)

Hearing: Mailed:
August 4, 2009 September 4, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re World's Finest Chocolate, Inc.
________

Serial No. 78582690
_______

Charles A. Laff, Larry L. Saret and Judith L. Grubner of
Michael Best & Friedrich LLP for World's Finest Chocolate,
Inc.

John D. Dalier, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

World's Finest Chocolate, Inc. (applicant) has applied
to register the mark MOCHACCINO MELTAWAYS in standard
characters on the Principal Register for goods identified
as “candy” in International Class 30.1
Applicant has disclaimed “MOCHACCINO.”

1 Application Serial No. 78582690, filed March 8, 2005, based on
a statement of a bona fide intention to use the mark in commerce
under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78582690
2
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
based on a likelihood of confusion between applicant’s
MOCHACCINO MELTAWAYS mark and the CAPPUCCINO MELTAWAYS mark
in typed form on the Principal Register in Registration No.
3254354 for “candies” in International Class 30. The cited
registration issued on June 26, 2007, with a disclaimer of
“CAPPUCCINO.”
In his brief the Examining Attorney advised that,
based on applicant’s arguments, he had reconsidered and
withdrawn the additional refusal based on Registration No.
1920023 for the mark CARMELTAWAYS for “candy” in
International Class 30 apparently owned by a party other
than the owner of the cited registration.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “… which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” 15 U.S.C. § 1052(d).
The opinion in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Serial No. 78582690
3
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods
identified in the application and the cited registrations.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”).
The Goods and Channels of Trade
First, we consider the respective goods. In general,
the goods of applicant and the registrant need not be
identical to find a likelihood of confusion under Trademark
Act Section 2(d). We may find the goods to be related if
the circumstances surrounding their marketing would result
in relevant consumers mistakenly believing that the goods
originate from or are associated with the same source. See
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and cited
registration. Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark
cases involving the issue of likelihood of confusion must
Serial No. 78582690
4
be decided on the basis of the respective descriptions of
goods.”).
In this case, applicant has not presented any
arguments with respect to the goods in either of its
briefs. Applicant’s goods and the goods identified in the
cited registration are legally identical, candy and
candies, respectively.
At the hearing and in the prosecution of the
application applicant noted that its goods are sold through
specialized trade channels which are distinct from those of
the registrant. However, neither the application nor the
cited registration includes any trade-channel restrictions.
Therefore, we note for completeness that, because the goods
are identical, we must also assume that the purchasers and
channels of trade for the goods are identical. Genesco, 66
USPQ2d at 1268 (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
Serial No. 78582690
5
same channels of trade, and be sold to the same class of
purchasers”).
Accordingly, we conclude that applicant’s goods are
identical to the goods in the cited registration and that
the goods travel in the same channels of trade to the same
potential purchasers.
The Marks
Next, we consider the marks, and we begin by noting
that the degree of similarity between the marks necessary
to support a finding of likelihood of confusion declines
when the goods are identical. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992).
More generally, in comparing the marks in their
entireties we must consider the appearance, sound,
connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
Serial No. 78582690
6
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.”
The Examining Attorney argues that the marks are
highly similar, noting the common distinctive term
MELTAWAYS and similarities in sound and commercial
impression between MOCHACCINO and CAPPUCCINO.
Applicant argues that the marks, MOCHACCINO MELTAWAYS
and CAPPUCCINO MELTAWAYS differ when viewed overall. In
particular, applicant asserts that there are differences in
appearance and sound, arguing, among other things, that the
initial, disclaimed terms in each of the marks cannot be
ignored and that there is a distinguishing alliteration in
MOCHACCINO MELTAWAYS mark.
Applicant also argues that there are significant
differences in meaning and commercial impression, stating,
“Applicant’s MOCHACCINO flavor describes a mixture of
coffee and chocolate. Sarris’s [registrant’s] CAPPUCCINO
describes a mixture of expresso coffee, milk or cream, and
sometimes, cinnamon, not just coffee and cinnamon. As
‘cappuccino’ and ‘mochaccino’ are distinct flavors, they do
not ‘convey the same idea, stimulate the same mental
Serial No. 78582690
7
reaction, and/or have the same overall meaning’ nor do they
‘create the same commercial impression.’ Proctor & Gamble
Co. v. Conway, 419 F.2d 1332, 1336, 164 U.S.P.Q. 301, 304
(CCPA 1970).” Reply Brief at 3. Applicant also argues
that the “mochaccino” drink is served either hot or iced,
and implying that cappuccino is not.
In addition, applicant argues at some length that its
prior registrations for MINT MELTAWAYS (Registration No.
1913571) and DOUBLE CHOCOLATE MELTAWAYS (Registration No.
3644906) warrant registration of MOCHACCINO MELTAWAYS.2
Applicant states, “It is inappropriate to deny Applicant a
third MELTAWAYS registration in its family of marks in
light of these facts.” Id. at 1.
First, we reject applicant’s family-of-marks argument.
The Board stated the following recently:
In an ex parte appeal, the focus of the
likelihood-of-confusion analysis must be the mark
applicant seeks to register, not other marks
applicant may have used or registered. In other
words, a family-of-marks argument is not
available to an applicant seeking to overcome a
likelihood-of-confusion refusal. In re Lar Mor
International, Inc., 221 USPQ 180 (TTAB 1983)
(“In reaching the conclusion of no likelihood of
confusion, we have given no weight to applicant's
argument … that it owns a family of French-word
marks all beginning with the word ‘TRES’… .”); In
re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965)
(“Likewise, in view of the specific prohibition

2 The DOUBLE CHOCOLATE MELTAWAYS registration issued while this
appeal was pending.
Serial No. 78582690
8
of Section 2(d) of the Statute, the fact that
applicant may possess a ‘family’ of marks
characterized by the term ‘ALD’ is of no
particular significance herein if the mark for
which applicant now seeks registration,
‘ALDPRESS’, when considered in its entirety, is
confusingly similar to the previously registered
mark ‘ALLPREST’.” (footnotes omitted)). See also
In re U.S. Plywood-Champion Papers, Inc., 175
USPQ 445, 446 (TTAB 1972) (“Applicant's ownership
and registration of marks other than the mark
sought to be registered herein is immaterial and
irrelevant to the specific issue before us, and
cannot justify the registration of what could be
a confusingly similar mark.” (citations
omitted)).

In re Cynosure Inc., 90 USPQ2d 1644, 1645-1646 (TTAB 2009).
Also, we reject two related arguments applicant
raises. We reject the argument that the USPTO’s actions in
approving applicant’s other marks dictate the same action
here. Actions by examining attorneys on other applications
do not dictate the Board’s determination in an appeal. We
must decide each case on its unique facts and record. In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
We also reject applicant’s second related argument
that the CAPPUCCINO MELTAWAYS mark is weak and, as such,
entitled to a narrow scope of protection. Applicant bases
this argument on the coexistence of its own two
registrations which include MELTAWAYS in the marks, along
with the cited CAPPUCCINO MELTAWAYS mark, as well as the
Serial No. 78582690
9
CARMELTAWAYS mark in the registration which was cited but
withdrawn during appeal. These prior registrations are
insufficient, both quantitatively and qualitatively, to
establish that the cited CAPPUCINO MELTAWAYS mark is weak
as a result of extensive third-party use. Cf. Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1316
(TTAB 2005). Here we have only one registration apparently
owned by a party other than applicant or the owner of the
cited registration.
Furthermore, there are striking similarities between
applicant’s MOCHACCINO MELTAWAYS mark and the cited
CAPPUCCINO MELTAWAYS mark. These similarities are not
evident in comparing either MOCHACCINO MELTAWAYS or
CAPPUCCINO MELTAWAYS to either of applicant’s registered
marks, MINT MELTAWAYS or DOUBLE CHOCOLATE MELTAWAYS, or to
the CARMELTAWAY mark, as will be apparent in the analysis
which follows.
Accordingly, we will proceed to compare applicant’s
MOCHACCINO MELTAWAYS mark and the cited CAPPUCCINO
MELTAWAYS mark. We find the marks highly similar, in
particular, in view of the fact that the respective goods
are identical.
We begin with the conclusion that MELTAWAYS is the
dominant element in both marks. In re National Data Corp.,
Serial No. 78582690
10
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“… in
articulating reasons for reaching a conclusion on the issue
of confusion, 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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.”). Indeed, MELTAWAYS is the only distinctive
element in the two marks.
Secondly, when we view the marks overall, including
the initial, disclaimed words, MOCHACCINO and CAPPUCCINO,
we find further reason to conclude that the marks are
highly similar. We accept the distinct meanings applicant
posits for these terms, but we conclude that these are
distinctions without a difference, at least in the realm of
trademarks applied to candy. Both denote a flavor related
to coffee. The fact that they may include further flavors
of cinnamon or chocolate is not significant. The fact that
one may be hot or iced and the other not, when applied to
drinks, is not significant in the connotation or commercial
impression as applied to candy. Also, while there are
differences in appearance and sound, there are also
important similarities in appearance and sound, not just
the common endings, as the Examining Attorney suggests, but
Serial No. 78582690
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the nearly identical Italian look and mellifluous Italian
cadence in sound. These “coffee” terms also affect the
connotation and commercial impression of the respective
marks in a similar way.
Applicant’s analysis based on the referenced
distinctions assumes a detailed, side-by-side comparison
which is inconsistent with both the cases and marketplace
realities.
In the end, consumers of candy are likely to view
MOCHACCINO MELTAWAYS and CAPPUCCINO MELTAWAYS as two
coffee-type flavors for candy from the source identified by
MELTAWAYS. The strong similarity between the flavor
designations in appearance, sound, connotation and
commercial impression heightens the similarity between the
marks when we, or relevant consumers, view the marks in
their entireties.
Accordingly, we conclude that MOCHACCINO MELTAWAYS and
CAPPUCCINO MELTAWAYS are highly similar in appearance,
sound, connotation and commercial impression.
Other Arguments
Applicant also argues that the pleadings and the
disposition in Opposition No. 91152942 dictate reversal in
this appeal. Applicant filed that proceeding to oppose
registration of the CAPPUCCINO MELTAWAYS mark, the cited
Serial No. 78582690
12
registration at issue in this appeal. Applicant argues
that certain “admissions” made by the owner of the cited
registration in that proceeding dictate the conclusion that
there is no likelihood of confusion as between the marks at
issue in this appeal, and further that we should construe
those “admissions” as a consent by the owner of the cited
CAPPUCCINO MELTAWAYS registration to applicant’s
registration of the MOCHACCINO MELTAWAYS mark. Applicant
also states, “The Board’s dismissal of Applicant’s
opposition against Sarris’s Mark is a ruling on the merits
that CAPPUCCINO MELTAWAYS is not confusingly similar to
MINT MELTAWAYS. International Nutrition Co. v. Horphag
Research Ltd., 220 F.3d 1325, 1329, 55 USPQ2d 1492, 1495
(Fed. Cir. 2000).” Applicant’s Brief at 8-9.
At the outset, we note that applicant’s implication
that the disposition of the referenced proceeding involved
a specific determination regarding likelihood of confusion
is misleading. The Board entered judgment against opposer,
applicant in this appeal, in response to a motion by
defendant, the owner of the cited registration in this
appeal, for involuntary dismissal on the basis that opposer
failed to offer evidence or take any testimony during its
assigned testimony period. Thus, the Board dismissed the
proceeding with prejudice due to opposer’s failure to
Serial No. 78582690
13
prosecute the case, not based on a specific determination
that there was no likelihood of confusion between the marks
at issue in the proceeding. For the record, we find
nothing in the cited International Nutrition Co. opinion
which is in any way relevant to this appeal.
Furthermore, applicant’s references to certain
“admissions” in that proceeding also are misleading. The
statements in question were filed with the answer, but the
statements were under the heading “AFFIRMATIVE DEFENSES.”
In its brief applicant quotes paragraphs 1-8 from the
“AFFIRMATIVE DEFENSES” in their entirety.3 Applicant’s
Brief at 12-13. For our purposes, we find only the
following paragraphs at all necessary:
3. Opposer [applicant in this appeal] has not
challenged or objected to the registration of
CARMELTAWAY, despite its use of the term
“meltaway.”

4. Because of the registration of CARMELTAWAY,
and other marks using the term MELTAWAY, Opposer
cannot claim sole rights in the term MELTAWAY.

5. The mark CAPPUCCINO MELTAWAYS and MINT
MELTAWAYS are substantially distinct, so as not
to cause confusion for consumers.

…

3 In ¶ 1, the defendant, owner of the registration cited in this
appeal, claims that it owns, by assignment, the CARMELTAWAY
registration referenced above. We have no record in this appeal
reflecting that ownership. Obviously, we would not decide this
appeal differently if we had evidence that the owner of the cited
registration also owned the CARMELTAWAY registration.

Serial No. 78582690
14

8. Registration of the mark [CAPPUCCINO
MELTAWAYS] to Applicant will not injure or harm
Opposer, as there is no likelihood of confusion
between Applicant’s mark and Opposer’s mark.

Applicant’s Brief at 12-13.
We conclude that the statements applicant references
are not relevant or probative as “admissions” or otherwise
for purposes of this appeal. In fact, a fairer
characterization of those statements would be as argument,
not admissions or affirmative defenses. There is certainly
no basis to construe these statements as admissions. Also,
as we discuss below, the circumstances we confront in this
ex parte appeal are totally distinct from the circumstances
in the proceeding. Among other things, the marks at issue
are not the same.
Furthermore, in raising this argument applicant
disregards the fact that applicant, as the opposer in that
proceeding, specifically alleged that there was a
likelihood of confusion between its prior MINT MELTAWAYS
mark and the CAPPUCCINO MELTAWAYS mark cited here. In
fact, the statements applicant urges us to consider here
were made in response to applicant’s own allegations, as
the opposer, that there was a likelihood of confusion.
Thus, in this ex parte proceeding applicant asks us to give
effect to alleged “admissions” by the owner of the cited
Serial No. 78582690
15
registration in another proceeding, in the absence of that
party, while ignoring the allegations applicant itself made
in that proceeding. We decline to do so.
This case is unlike inter partes cases where the party
who made the earlier statements is a party to the
proceeding. See Interstate Brands Corporation v. Celestial
Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA
1978). Even if the party whose earlier opinion is
proffered is a party to the proceeding, such opinions from
prior cases are given limited effect. Id. Furthermore,
“Under no circumstances, may a party's opinion, earlier or
current, relieve the decision maker of the burden of
reaching his own ultimate conclusion on the entire record.”
Id.
In addition, as we noted, the facts in this appeal
differ significantly from the facts in the opposition
proceeding.
For starters, the cited CAPPUCCINO MELTAWAYS mark is
now registered. Consequently, we must and do accord the
mark in the registration the full scope of protection
Trademark Act Section 7(b), 15 U.S.C. § 1057(b), affords.
Among other things, Section 7(b) requires that we recognize
the registration as prima facie evidence of the “… validity
of the registered mark, of the registrant’s ownership of
Serial No. 78582690
16
the mark, and of the registrant’s exclusive right to use
the registered mark in commerce on or in connection with
the goods or services specified in the certificate, subject
to any conditions or limitations stated in the
certificate.” We also assume that the owner of the cited
registration would view matters differently in view of this
development.
Secondly, the marks at issue in the prior proceeding,
CAPPUCCINO MELTAWAYS and MINT MELTAWAYS (¶¶ 5 and 8) are
not the same as the marks at issue in this appeal,
CAPPUCCINO MELTAWAYS and MOCHACCINO MELTAWAYS. Thus, even
if we construed the statements as admissions, they are not
relevant or probative of the issues before us in this
appeal.
Lastly, we find applicant’s consent theory based on
the statements in the opposition pleadings wholly lacking
in merit. We find no support for the extension of the
concept of consents to the circumstances of this case. The
Board has been understandably reticent to find an “implied’
consent in an ex parte appeal, particular where, as here,
there is no evidence that the owner of the cited
registration is even aware of the application which would
be the subject of the consent. In re Assn. of the United
States Army, 85 USPQ2d 1264, 1274 (TTAB 2007); In re Opus
Serial No. 78582690
17
One Inc., 60 USPQ2d 1812, 1820-1821 (TTAB 2001). At the
oral hearing applicant indicated that applicant had not
approached the owner of the cited registration for a
consent.
Applicant also suggests that we should consider the
fact that the owner of the cited registration took no
action to oppose the recent registration of applicant’s
DOUBLE CHOCOLATE MELTAWAYS mark. Applicant urges us to
construe that conduct as evidence that the owner of cited
registration would have no objection to the registration of
other MELTAWAYS marks by applicant, including MOCHACCINO
MELTAWAYS. We decline to do so.
Accordingly, we have no evidence that the owner of the
cited registration has had any meaningful opportunity to
consider whether to consent to registration of the
MOCHACCINO MELTAWAYS mark. See, e.g., In re Four Seasons
Hotels Ltd., 220 F.3d 1325, 26 USPQ2d 1071 (Fed. Cir.
1993). Applicant’s argument stretches the concept of
consents beyond recognition.
In sum, we reject all of applicant’s arguments based
on the opposition proceeding. On the contrary, in this
appeal applicant cannot avoid the consequences of its own
failure to prosecute that case.
Serial No. 78582690
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Conclusion
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any we have not
specifically discussed here, we conclude that there is a
likelihood of confusion between applicant’s MOCHACCINO
MELTAWAYS mark when used in connection with “candy” and the
registered CAPPUCCINO MELTAWAYS mark when used in
connection with “candies.”
Decision: We affirm the refusal to register
applicant’s mark under Trademark Act Section 2(d).