TTABlog Test: Are Flavored Ices and Cupcakes Related for Section 2(d) Purposes? Are These Marks Confusingly Similar?

The USPTO refused to register the proposed mark THE COOL CAT for "Flavored ices; Frozen confections; Shaved ice confections," finding confusion likely with the registered word-and-design mark shown below, for "cupcakes" [CUPCAKES and NO DAIRY. NO EGGS. NO NUTS disclaimed]. How do you think this came out, keeping in mind that this year the Board has affirmed about 96% of appealed Section (2)(d) refusals? In re NKKK LLC, Serial No. 90100250 (April 25, 2022) [not precedential] (Opinion by Judge Linda A. Kuczma).

Examining Attorney Tarah Hardy Ludlow submitted 21 third-party registrations covering both frozen confections and cupcakes. Evidence of seven websites where both products are offered also supported the refusal. Applicant argued that there was no evidence that the particular type of cupcake offered by registrant - dairy-, egg-, and nut-free - are offered by entities that market frozen confections, but the Board found that to be irrelevant, since the cited registration is not limited to any particular type of cupcake.

The involved goods, the Board found, travel in the same trade channels to the same classes of consumers. Moreover, the goods are subject to "impulse" purchases, and are not necessarily purchased with a great deal of deliberation.

As for the marks, the Board found that the distinctive term "COOL CAT" is the dominant element of the cited mark. COOL CAT is the first element of the mark and is followed by generic or highly descriptive terms. The Board rejected the argument that "NO DAIRY. NO EGGS. NO NUTS." limits the perceived connotation of the cited mark, since the phrase is depicted in noticeably smaller font. Although there is some difference in the overall sound and appearance of the two marks due to the wording "CUPCAKES" and "NO DAIRY. NO EGGS. NO NUTS.", that difference "does not significantly differentiate the meaning of the marks for related food products." The depiction of a cat merely reinforces the consumer's attention to the term "COOL CAT."

Thus, potential customers may very well believe that Applicant’s mark is a version of Registrant’s mark, or that it represents an extension of Registrant’s goods, or vice versa. “Even those purchasers who are fully aware of the specific differences between the marks may well believe, because of the similarities between them, that the two marks are simply variants of one another, used by a single producer to identify and distinguish companion lines of products.”

And so, the Board affirmed the refusal.

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Text Copyright John L. Welch 2022.