Test Your TTAB Judge-Ability with this Section 2(d) Nut Case

How would you decide this section 2(d) opposition to registration of the marks AUSTINUTS in standard character and design form, for dry roasted nuts, in view of the registered mark AUSTIN, in standard character and design form, for crackers and cookies? The record showed that Applicant sells gift baskets that include nuts, cookies and crackers, and that Opposer's mark is very strong for cookies and crackers. Is this a tough nut to crack? AQFTM, Inc. v. Austinuts, Inc., Oppositions Nos. 91166551 and 91166552 (August 6, 2009) [not precedential].


The Board didn't think so. It found the parties goods to be snack foods that are related for Section 2(d) purposes, as evidenced by Applicant's own gift baskets. Applicant's claim that its products are "gourmet items" was immaterial, since there was no such limitation in its identification of goods.

As required, the Board presumed that the goods are sold in all of the normal channels of trade to the usual classes of purchasers for such goods. There was some overlap in the channels of trade, namely in grocery stores. The products are bought by ordinary consumers who would exercise no more than ordinary care when purchasing the products.

As to the marks, the Board found AUSTIN to be clearly the dominant portion of Opposer's marks, and AUSTINUTS to be the dominant portion of Applicant's mark, the peanut design merely describing the goods and reinforcing the "nuts" portion of the mark.

The parties argued at length about the pronunciation of Applicant's mark, but the Board once again asserted that "there is no 'correct' pronunciation of a trademark." [How about BLACK CAT for firecrackers? - ed.] Applicant claimed its mark to be a made-up word, but the Board found it to be "clearly a telescoped form of the two words AUSTIN and NUTS and is likely to be so perceived and pronounced by purchasers."

It is essentially insignificant whether purchasers pronounce the words distinctly as "Austin Nuts" or slur the double letter "N" to enunciate a single word, "Austinuts." In this regard, the "nuts" portion of the marks is generic in connection with applicant's identified goods and the "Austin" portion is dominant within the telescoped word.

Although Applicant is located in Austin, Texas, there was no evidence of "any material connection between the word AUSTIN and opposer's goods" or that AUSTIN is "primarily geographically descriptive and, hence, weak in connection with opposer's identified goods."

The Board concluded that, although the marks have differences, when considered in their entireties "they are similar in appearance, connotation and commercial impression." Neither the telescoping of "Austin" and "nuts" nor the design elements serve to distinguish the marks.

The Board therefore sustained the opposition.

TTABlog comment: I just don't think of roasted nuts as being related to cookies and crackers. Moreover, being an advocate of the distinctiveness of telescoped marks, I'm not sure I would have found the marks sufficiently similar. I think the odd spelling of AUSTINUTS, like TTABlog, gives the mark a certain distinctiveness. But maybe I'm just nuts.

Text Copyright John L. Welch 2009.