Tuesday, June 05, 2018


Here's the scoop. In a brief nine-page opinion, the Board affirmed a Section 2(d) refusal of the mark PRETTY PLEASE WITH CHERRY ON TOP? for "Ice cream; ice cream bars; ice cream desserts; ice cream sandwiches; ice cream cones," finding the mark likely to cause confusion with the registered mark PRETTY PLEASE WITH A CHERRY ... for "ice cream." Applicant Hy-Vee argued that the cited mark was weak in view of third-party usage, but the Board was unimpressed. In re Hy-Vee, Inc., Serial No. 87222634 (May 30, 2018) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Since the involved goods are in part identical, the Board must presume that they travel in the same channels of trade to the same classes of consumers. This not only weighs heavily in favor of a finding of likely confusion, but it also reduces the degree of similarity between the marks that is necessary to support the Section 2(d) refusal.

In its attempt to show that the cited mark is commercially weak, Hy-Vee cited three items: a Yelp entry for a "Cherry on Top" ice cream and yogurt shop in Lincoln, Nebraska;  a webpage from Carnival.com referring to a candy shop called "Cherry on Top;" and an article and recipe for "Pretty Please with Cherry on Top" cupcakes. The Board found that this meager evidence fell short of establishing that the cited mark is weak.

The Board noted that only one of the three items included the entirety of the cited mark, and only one refers to ice cream. More importantly, there was no evidence of the extent of consumer exposure to these uses. This evidence was "far less voluminous and compelling" than that in Jack Wolfskin and Juice Generation

This record may indicate some degree of suggestiveness of CHERRY ON TOP, but is insufficient to show that the cited mark is weak. Regardless, even suggestive marks are entitled to appropriate protection against the registration of confusingly similar marks.

Turning to the marks, the Board found their connotations and commercial impressions to be essentially the same. As to look and sound, the differences in the marks are "relatively insignificant." In sum, the marks are very similar, and this factor weighed heavily toward a likelihood of confusion.

The Board therefore found that confusion is likely and it affirmed the Section 2(d) refusal.

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TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.


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