Friday, May 27, 2016

TTABlog Test: Are ZEN BAKERY and ZEN DELITES Confusable for Cookies?

Petitioner sought to cancel a registration for the mark ZEN DELITES for "cookies," claiming a likelihood of confusion with its mark ZEN BAKERY for bakery goods, including cookies [BAKERY disclaimed]. Respondent Susan DeFuria conceded priority, and goods overlapped. So it all came down to the marks. How do you think the cookie crumbled? Jack Q. Drake Revocable Trust v. Susan DeFuria (May 11, 2016) [not precedential].

The Marks: The Board perceptively found that, "[i]n appearance and sound the two marks are similar to the extent that the first word of each mark is ZEN. The marks differ in appearance and sound by virtue of their other terms, which are BAKERY and DELITES, respectively."

Respondent conceded that ZEN is a well-known term "as a Buddhist philosophy implying a superior way of being and state of mind." Neither party provided evidence as to the meaning of DELITES, but it is "obviously a recognizable variant of "'delights.'" And BAKERY is generic or highly descriptive in the field of baked goods.

Considering the meanings of the marks in their entireties, ZEN BAKERY might suggest a baking establishment that follows or is in some way guided by Zen principles. ZEN DELITES might suggest the pleasures (“delights”) of practicing Zen philosophy, or good things derived from the principles or practice of Zen. These meanings and connotations are distinguishable from those of Petitioner’s mark.

The Board agreed with Petitioner that BAKERY should be given less weight when considering its mark, but the marks still must be considered in their entireties.

The Board found that the dissimilarities in the marks outweigh the similarities.

Letter of Protest: Petitioner pointed to the USPTO's acceptance of its letter of protest during prosecution of Respondent's underlying application, claiming that this shows prima facie evidence of confusing similarity. Not so, said the Board.

The Deputy Commissioner, in granting the letter of protest, did not make any finding as to likelihood of confusion, other than to say that Petitioner’s Reg. Nos. 1529901 and 4104964 were relevant to the Examining Attorney’s ultimate decision. In following letter of protest procedure, the Deputy Director did not instruct the Examining Attorney to do any more than “consider the following [registrations] and make an independent determination whether to issue a requirement or refusal …” Accordingly, it is clear that the Deputy Director’s action is not a prima facie demonstration of confusing similarity.

Prior Lawsuit:Petitioner pointed to a successful prior lawsuit against a third party as evidence of the strength of its mark, but the Board was not impressed. The prior suit involved a mark nearly identical to petitioner's mark, and "does not show that a court would issue a similar injunction against a different mark, such as Respondent’s mark." Moreover, the litigation was largely resolved by settlement.

Purchaser Care: As to purchaser care, even though cookies are inexpensive items, that does not mean they are "purchased carelessly or without discrimination." [So much for the impulse purchase argument - ed.]

The Board concluded that the first du Pont factor controlled, and it dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: This decision leaves a bad taste in my mouth.

Text Copyright John L. Welch 2016.


At 8:27 AM, Anonymous Anonymous said...

Wow, very surprising. I have to wonder whether the Board cut the pro se respondent some slack.

At 8:43 AM, Anonymous Carole Barrett said...

Leaves a bad taste...may have to give up cookies of the Zen variety.

At 10:24 AM, Anonymous Anonymous said...

Extremely unusual decision (and difficult to understand in several places). In any event, I'm not sure if I ever saw such a nuanced comparison of marks resulting in a finding of dissimilarity. I make arguments about differences in connotations that are more pronounced than here almost daily, and lose consistently. I'd like to see this type of analysis being the norm but it's clearly an anomaly.

At 11:57 AM, Blogger TMAttorneyHeller said...

I also agree.

At 12:55 PM, Anonymous Anonymous said...

The case turned out as I had anticipated. The summary of the decision makes no mention of how many 3rd party ZEN marks are out there but I suspect there are quite a few which could have been relevant to the decision if enough related to food products (especially baked goods).

I think the fact that the examiner did NOT cite the petitioner's mark in a 2(d) refusal after the LOP is prima facie evidence of NO confusion, rather than confusion, to the extent that an LOP can be given any weight, because that means the examiner considered the confusing similarity of the marks and concluded that there was no confusing similarity.


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