TTABlog Test: Are Candy and Nuts Related for Section 2(d) Purposes?

The USPTO refused to register the mark CREME DE LA CREME for raw and processed nuts, including candied nuts, "supplied to grocery chains and wholesale grocers," finding confusion likely with the mark CRÈME DE LA CRÈME registered (on the Supplemental Register) for "candy.” Applicant Hines Nut argued that the cited mark is laudatory, commonly used, and therefore weak and entitled to a narrow scope of protection. How do you think this appeal came out? In re Hines Nut Company, Ltd., Serial No. 90672644 (December 5, 2023) [not precedential] (Opinion by Judge David K. Heasley).

Hines provided no evidence to support its assertion that "crème de la crème" is widely used. The Board, however, agreed that the term is laudatory, noting that "cream of the cream" in French means "the very best." The Board also observed that "[o]n the whole, '[i]t is well-established that a mark registered on the Supplemental Register would be categorized as weak . . . .'" 

It is also well settled that a mark registered on the Supplemental Register can be cited as a basis for refusing registration of another mark under Section 2(d) of the Act. Moreover, "[i]n the ex parte context, the Office does not and cannot question the validity of a mark in a registration cited against another under Section 2(d)." And the Board pointed out that "there is no categorical rule that citation of registrations on the Supplemental Register is limited to registrations of 'substantially identical' marks for 'substantially similar goods,' or that a different test for likelihood of confusion should be applied in such cases."

The Board found under the sixth DuPont factor that "the cited mark is laudatory and conceptually weak, but is still presumed valid and enforceable under Section 2(d)."

Applicant Hines did not argue that consumers would distinguish the marks based on their slight dissimilarity. Instead, it maintained that in view of the weakness of the cited mark, confusion is unlikely due to differences in the goods and channels of trade.

Examining Attorney Shari Gadson did not cite any third-party registrations, she did provide nine third-party websites—LaurasCandy.com, NutsToYou.com, SwissColony.com, HarryandDavid.com, OliveandCocoa.com, OhNuts.com, NassauCandy.com, RoyalWholesaleCandy.com, and WeaverNut.com—showing that these entities offer candy and nuts under the same mark.

Hines asserted that this Internet evidence focused on nuts that are covered in chocolate or sold in connection with chocolate. The Board noted, however, that the subject application includes "candied nuts. "Similarity of any item identified in a Class supports a finding of confusing similarity as to that entire class." Moreover, the third-party evidence "also showed single sources offering candy on the one hand and plain, raw, uncandied nuts on the other, under a single mark."

Hines pointed to the limitation in its identification of goods that narrows its channels of trade to nuts "supplied to grocery chains and wholesale grocers." It argued that registrant sells candy under its mark solely for fundraising purposes, “and thus, a consumer searching for products in connection with the Cited Mark would not come across the applied-for mark where the goods are sold wholesale/retail." However, there were no limitations as to channels of trade in the cited registration, and so the Board must presume that registrant’s candy goods "move in all channels of trade normal for such goods and are available to all the usual prospective purchasers of goods of that type."

Applicant’s limitation in its identification of goods does not avoid an overlap with Registrant’s channels of trade or classes of customers. Registrant’s candies, like Applicant’s nuts, could be “supplied to grocery chains and wholesale grocers.”

The Board "consider[s] confusion by end purchasers, as well as intermediate wholesalers and retailers, such as grocery chains."

On consideration of all relevant arguments, evidence, and applicable law, we find the cited registered mark CRÈME DE LA CRÈME conceptually weak. Nonetheless, we find it very similar to the applied-for mark, CREME DE LA CREME, for related goods that would travel through overlapping channels of trade. On balance, we find a likelihood of confusion under Section 2(d).

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Could Hines petition to restrict the cited registration under Section 18 to avoid likely confusion?

Text Copyright John L. Welch 2023.