UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board

[Pages:12]THIS DECISION IS NOT A PRECEDENT OF THE TTAB

Mailed: May 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE ________

Trademark Trial and Appeal Board ________

In re Rudi's Organic Bakery, Inc. ________

Serial Nos. 85025722 and 850257341 _______

Lawrence A. Swain, Polsinelli Shughart PC, for Rudi's Organic Bakery, Inc.

Rebecca Smith, Trademark Examining Attorney, Law Office 110 (Chris A. F. Pedersen, Managing Attorney).

_______

Before Holtzman, Kuhlke and Shaw, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Rudi's Organic Bakery, Inc. filed applications to

register the marks

and RUDI'S GLUTEN-FREE BAKERY in

standard characters for goods identified as "bakery

products for the natural food, health food, food service and retail markets" in International Class 30.2 Applicant

1 In view of the similar issues presented by these applications, we consider the appeals in one decision.

2 Application Serial Nos. 85025722 and 85025734 respectively, filed April 28, 2010, alleging a bona fide intention to use the

Serial Nos. 85025722 and 85025734

disclaimed the wording "GLUTEN-FREE BAKERY" in both applications. In addition, applicant claims ownership of prior Registration Nos. 3025366 for the standard character mark RUDI'S ORGANIC BAKERY and 3077180 for the standard character mark RUDI'S ORGANIC BAKERY RIGHT CHOICE for the identical goods, namely, "bakery products for the natural food, health food, food service and retail markets." The wording "ORGANIC BAKERY" is disclaimed in both prior registrations.

Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. ?1052(d), on the ground that applicant's marks, when used on its identified goods, so resemble each of the two registered marks as to be likely to cause confusion, mistake or deception. The two

registered marks are

3 and the typed form mark

RUDI'S4 both for "bakery products" in International Class

30. Signature Breads, Inc. is the listed owner by

assignment of both of the registrations.

marks in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. ?1051(b).

3 Registration No. 1735089, issued on November 24, 1992, Section 8 and 15 declaration accepted and acknowledged, renewed. The lining is claimed as a feature of the mark and not to indicate color.

4 Registration No. 1809406, issued on December 7, 1993, Section 8 and 15 declaration accepted and acknowledged, renewed.

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Serial Nos. 85025722 and 85025734

When the refusals were made final, applicant appealed and briefs have been filed. We affirm the refusals to register as to each of the cited registrations.

Our determination of the issue of likelihood of confusion 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). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

We find that registrant's "bakery products" encompass applicant's more specifically identified goods "bakery products for the natural food, health food, food service and retail markets" and, as such, are legally identical. Moreover, because the goods are legally identical, we must presume that they travel in the same channels of trade and are offered to the same classes of purchasers. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d

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Serial Nos. 85025722 and 85025734

1783 (Fed. Cir. 1987) (If the identification in an application or a cited registration describes goods or services broadly, and there is no limitation as to the nature, type, channels of trade or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all channels of trade normal for these goods and services, and that they are available to all classes of purchasers for the described goods and services.) See also In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Thus, in view of the absence of any restrictions in the cited registrations, we presume that registrant's goods include all bakery products and all the normal trade channels for such products, including the natural and health food markets. Applicant's arguments regarding registrant's actual goods and trade channels, i.e., partially baked frozen dinner rolls sold at the wholesale level to restaurants, are not relevant to our determination.

We also find that applicant's identification is not limited to the natural and health food trade channel inasmuch as the wording "food service and retail markets" are additional descriptors for the "bakery products" and are themselves not limited by the preceding descriptors of the "bakery products" namely "natural food, health food."

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Serial Nos. 85025722 and 85025734

Moreover, the natural and health food market could include any conventional retail food store, as recognized by applicant: "Applicant's fully-baked, ready to eat products are packaged for retail sale and primarily sold to natural food distributors and then distributed for retail sale to consumers through natural and conventional food stores." App. Br. p. 11.

In view of the above, the du Pont factors of the similarity of the goods, the channels of trade, and classes of purchasers favor a finding of likelihood of confusion as to the cited registrations.

With regard to the conditions of sale, applicant breaks down the potential purchasers into the wholesale buyers and "health conscious individuals and/or those with specific dietary restrictions." Again, because the respective identifications are not limited to the wholesale market, we must consider all potential purchasers and we must make our determination based on the least sophisticated purchaser. As to the "health conscious" consumers, while they may take more care in purchasing their bakery goods, there is no evidence in the record to support a finding that this factor would outweigh all the other du Pont factors. This case does not present circumstances similar to those wherein sophisticated

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Serial Nos. 85025722 and 85025734

purchasing outweighs the other factors. See, e.g., Elec. Design & Sales, Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1402 (Fed. Cir. 1992).

We turn then to the du Pont factor of the similarity

of the marks, i.e., whether applicant's marks

and

RUDI'S GLUTEN-FREE BAKERY and registrant's marks

and RUDI'S are similar or dissimilar when compared in their entireties in terms of appearance, sound, connotation and commercial impression. In making our determination, we keep in mind that the more closely related the goods are, "the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).

It is well settled that marks must be considered in their entireties, not dissected or split into component parts and each part compared with other parts. It is the impression created by the involved marks, each considered as a whole, that is important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). However, "[t]hat a particular feature is

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Serial Nos. 85025722 and 85025734

descriptive [or otherwise lacking in distinctiveness] ... with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark..." In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

Applicant's marks incorporate the entirety of registrant's typed form mark and the dominant element of registrant's mark that includes a background design. Moreover, the dominant element in both of applicant's marks is the word RUDI'S. It is the first word in both marks and the additional disclaimed wording "GLUTEN-FREE BAKERY" merely describes a significant feature of the bakery products. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In addition, with regard to the design mark, the word RUDI'S dominates over the design. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (wording often dominates over design because it is the wording that purchasers would use to refer to or request the goods).

Thus, viewing the marks in their entireties, applicant's mark is very similar in sound, appearance, connotation and commercial impression to each of the registrant's marks.

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Serial Nos. 85025722 and 85025734

Applicant's argument "that the extensive use of `RUDI'S' and similar terms as a portion of third parties' marks dictates that the Registered Marks are weak deserving only weak protection," is not supported by the record. Applicant submitted search results from a trademark search firm database showing third-party registrations for various food items. However, absent evidence of actual use of those marks, the third-party registrations are entitled to little weight in our likelihood of confusion analysis. AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269-70 (CCPA 1973) (existence of thirdparty registrations not evidence of what happens in the market place or that customers are familiar with term nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive). In addition, none of the third-party registrations are for similar goods, i.e., bakery products.

Applicant also argues that its applied-for marks are "substantially similar to [its] Organic Bakery Marks that have been in use in commerce continuously since as early as 2001 ... Thus, there has been concurrent existence of the parties and their marks for over nine years without confusion." App. Br. p. 17. First, the inquiry here is

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