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TTAB Reverses Refusal Due To Dissimilarities And Weakness Of Shared Term

In a recent Trademark Trial and Appeal Board (“Board” or “TTAB”) decision, the Board reversed the Examiner’s refusal to register the mark YUMMIES and Design (a winking smiley face wearing a crown) for Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, fried pork with salt and chili, potato flakes of different flavors, fired flavored peanuts and baked flavored peanuts and fried corn tortilla snack foods with different flavors. The Examining Attorney cited three different registrations (each with different owners) against the Applicant’s mark. These included: (1) a special format mark for YUMMIES (with a heart shape over the letter “i” in YUMMIES) for candy for consumption on and off the premises; (2) a special format mark for YUMMY’S CHOICE (with a blue ribbon after the term choice) for dairy-based snack foods excluding ice cream, ice milk and frozen yogurt; fruit-based food beverage; oils and fats for food; snack food dips; vegetable-based snack foods; and (3) a standard character mark for SUPER YUMMYS for vegetable-based snack foods; fruit-based snack foods; and milk products excluding ice cream, ice milk and frozen yogurt on the Supplemental Register.

Since The Board affirms approximately ninety percent of the cases appealed in likelihood of confusion refusals, the question to ask is what makes this case different. Before arriving at the answer the Board summarized its method for reviewing these types of refusals. The Board analyzes the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). Although there are thirteen factors to consider, the two key considerations are the similarities between the marks and the relatedness of the goods or services. The Board in this matter focused on the fact that the shared term between the marks was weak, and that there were differences among the marks.

The Board did not have a lot of evidence to consider for the relatedness of the goods and trade channels. One registration did contain a restriction in trade channels, but the others did not. Since the Applicant failed to present arguments on these factors, the Board concluded that the similarities of the goods, channels of trade and overlap of the classes of consumers weighed in favor of finding confusion. The Board moved on to review the marks, and the marks have to be evaluated in their entireties in connection with visual appearance, sound, meaning and commercial impression. Consumers will retain a general and not a specific impression of a trademark. A good test is to observe a mark for five to ten seconds, then to close your eyes, and think of what you remember about the mark.

Applicant argued that the shared term among the four marks, YUMMY OR YUMMIES was descriptive and therefore weak. Applicant based its argument on the fact that the term YUMMY describes a characteristic of the product. However, the Applicant failed to provide evidence, such as a dictionary meaning of the term. The Applicant was quite fortunate that the Board took judicial notice of the definition of the term Yummy (very pleasing to the senses, especially taste; delicious). In addition, since the mark SUPER YUMMYS issued on the supplemental register, it is evidence that the term is merely descriptive of the goods identified in the registration. The other two special format marks registered on the Principal Register without a disclaimer for the term YUMMY. While one may presume that those two marks were considered unitary, they certainly would be considered highly suggestive of the food products identified in the registrations. In light of these facts, the Board considered the shared term YUMMY to be conceptually weak, and therefore entitled to a narrow scope of protection.

In my opinion, the Applicant was fortunate to have the Board come down on its side because the Applicant missed several opportunities to persuade the Board with convincing evidence. Not only did the Applicant fail to submit the dictionary definition for the term YUMMY, but it also did not present the numerous third-party registrations that incorporated some form of the word YUMMY for food products. Although the Applicant argued this point, it didn’t submit evidence and make the evidence part of the record. Therefore, the Board used the three registrations in the record to conclude that the term was highly suggestive in two cases and merely descriptive in one case. See Knight Textile Corp. v. Jones Inv. Co., 75 USPQ2d 1313 (TTAB 2005), where the record was more extensive on this point.

Returning to the question asked at the beginning of this blog, this case is different given the weakness of the term YUMMIES, the Board placed emphasis on the design elements for the Applicant’s mark and the two marks on the Principal Register, stating it was sufficient to distinguish the marks (there were enough dissimilarities between the marks). Moreover, the Board pointed out that the mark on the Supplemental Register had the additional term Super to consider. Although, a laudatory term, it cannot be ignored since the marks must be considered in their entireties. The TTAB reversed the refusal, finding no confusion. The Board concluded that since the term YUMMY was weak for food products the dissimilarities among the marks were pivotal and outweighed the other du Pont factors. If you have questions regarding the likelihood of confusion standard or other trademark questions, please contact our office for a courtesy consultation.