Inapplicability of "Something More" Results in TTAB 2(d) Refusal Affirmance

Overview

This case is a TTAB precedent.

The central issue was whether retail bakery shops and the manufacture of bakery products were sufficiently related to specific items like bread buns. It demonstrates that while a "something more" evidentiary standard is required in certain obscure contexts (such as the relationship between restaurant services and beer), it is generally not required when the relationship between goods and services is "evident, well-known, or generally recognized."

Background

The Applicant filed an application seeking to register the mark COUNTRY OVEN in standard characters for "Self-serve retail bakery shops; Retail bakery shops; bakery services, namely, online retail bakery shops" in International Class 35 and "Bakery services, namely, the manufacture of bakery products to the order and/or specification of others" in International Class 40.

The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing a likelihood of confusion with a registered mark, COUNTRY OVEN, for "bread buns" in in International Class 30.

The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing a likelihood of confusion with a registered mark, COUNTRY OVEN, for "bread buns" in Class 30.

Following a final refusal, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #1: Similarity of the Marks

The Board began by addressing the first du Pont factor. In this case, the Board found it undisputed that the Applicant’s standard character mark and the Registrant’s mark were identical in appearance, sound, connotation, and commercial impression.

The Board observed that no evidence suggested consumers would perceive COUNTRY OVEN as having a different meaning or commercial impression when used for retail bakery services compared to bread buns. In both contexts, the mark evoked "the nature and style of how the products are baked." Consequently, the Board concluded that this factor weighed heavily in favor of a likelihood of confusion.

The Board observed that no evidence suggested consumers would perceive COUNTRY OVEN as having a different meaning or commercial impression when used for retail bakery services compared to bread buns. In both contexts, the mark evoked "the nature and style of how the products are baked." Consequently, the Board concluded that this factor weighed heavily in favor of a likelihood of confusion.

DuPont #2: Similarity and Relatedness of the Goods and Services

A significant portion of the decision focused on the second du Pont factor: the comparison of the goods and services. The Board emphasized that where an identification of services is broad, it must presume the services encompass all services of that type. Because the Applicant’s identification for "retail bakery shops" contained no restrictions on the types of products sold, the Board presumed it included the sale of "bread buns."

The Applicant argued that "bread buns" were a specific type of product, such as hamburger or hot dog buns, and were not necessarily covered by general categories of "bakery goods." The Board disagreed, stating that "bakery goods" and "bakery products" clearly encompass "bread buns."

To support the relatedness of these items, the Examining Attorney introduced fourteen use-based third-party registrations. These registrations showed that a single entity often registers a single mark for both bakery services (Class 35 or 40) and bakery goods, including buns (Class 30).

The Applicant countered that these registrations were insufficient in number and quality to establish relatedness. However, the Board found that the fourteen entities represented a "reasonable predicate" supporting the Examining Attorney’s position. The Board also noted that including other goods and services in these registrations did not diminish their probative value regarding the specific relationship between bakery services and bread buns.

Additionally, the Examining Attorney provided evidence of numerous bakeries using the same mark for both shops and products. The Board even noted that the Applicant’s own website showed it used the COUNTRY OVEN mark in connection with bakery products, further bolstering the finding of relatedness.

The Applicant attempted to argue that the Examining Attorney was required to show "something more" to prove relatedness, citing In re Coors Brewing Co. and In re St. Helena Hosp. The Board rejected this argument, explaining that the "something more" requirement applies only when the relatedness of goods and services is "not evident, well-known or generally recognized." In contrast, the Board stated that "the relationship between baked goods, including bread buns, and bakeries is the opposite of obscure, unknown, or generally unrecognized."

DuPont #3: Channels of Trade and Classes of Purchasers

The Board noted that neither the application nor the cited registration contained any restrictions on channels of trade or classes of purchasers. Therefore, the Board was required to presume that the registered goods move in all relevant trade channels, which include retail bakery shops.

The Board held that when one party uses its mark on goods sold in retail stores that customarily vend those goods, trade channels and customers clearly overlap. The Board stated that the difference between goods and retail store services featuring those goods carries "little or no legal significance" when the marks impact the same marketplace. Consequently, this factor favored finding a likelihood of confusion.

DuPont #13: Other Established Facts (Prior Registrations)

The Applicant argued that its ownership of three prior registrations for COUNTRY OVEN should weigh against a finding of confusion. These registrations covered online retail store services for gift items, restaurant services, and a stylized composite mark for gift items.

The Applicant contended that if these prior registrations were not considered confusingly similar to the cited mark for bread buns, the current application should likewise be allowed.

The Board was unpersuaded. It noted that two of the registrations were less than five years old and thus still subject to cancellation proceedings. The only mark registered for more than five years covered different services.

The Board emphasized that "there is no rule that a prior registration entitles a party to another registration." It distinguished this case from In re Strategic Partners, Inc., where a prior registration for nearly identical goods had coexisted with the cited mark for a long period. Here, because the applied-for services were not identical to or overlapping with the services in the Applicant’s prior registrations, the existence of those registrations did not weigh against a likelihood of confusion.

Board’s Decision

The TTAB affirmed the refusal to register the mark COUNTRY OVEN for the services identified in both Class 35 and Class 40. The Board concluded that because the marks were identical and the goods and services were closely related and share trade channels, prospective consumers were likely to confuse the source of the involved goods and services. The Applicant's prior registrations did not impact this decision.

The "something more" requirement has been used successfully to distinguish between café services and various premade foods in In re Daily Harvest Café, and clarified to apply only when comparing goods to services rather than comparing two goods as in In re Samsung Display Co.

I enjoyed reading this case because it validated intuition: when something is so obviously related, one does not need a complicated test to... well, complicate it.