Offc Action Outgoing

The applicant has appealed the final refusal to register the trademark SAV-MOR FOOD & DOLLAR for “retail grocery store services.” Registration is refused pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the ground that the mark, when used in connection with the identified services, is likely to be confused with the mark in U.S. Registration No. 2638469 for the mark SAVE MORE for “retail store services featuring convenience store items and gasoline.”

In addition, the applicant has appealed the requirement to disclaim the descriptive wording FOOD & DOLLAR. A disclaimer is required under Trademark Act Section 6, 15 U.S.C. §1056, because the wording FOOD & DOLLAR describes a type of retail store.

FACTS

On March 11, 2004, the applicant, Ingles Markets, Inc., applied for registration of the mark SAV-MOR FOOD & DOLLAR for use in connection with retail grocery store services.

In an Office action dated October 12, 2004, the examining attorney issued an Office action refusing registration under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), based upon likelihood of confusion with the registered mark SAVE MORE used in connection with “retail store services featuring convenience store items and gasoline.” The Office action also included a disclaimer requirement regarding the descriptive wording FOOD & DOLLAR, which immediately identifies a type of retail store, and an advisory regarding prior pending application Serial No. 78327797.

In response thereto, the applicant responded to the refusal to register, and submitted a disclaimer of the term FOOD only. Thereafter, the application was suspended pending the disposition of the prior pending application. Both the Section 2(d) refusal to register and the disclaimer requirement were continued.

On January 25, 2006, the suspension of the application was lifted and the outstanding Section 2(d) refusal and Section 6 disclaimer requirement were made final. Third party registrations demonstrating the relatedness of retail grocery store services and retail convenience stores, dictionary definitions for the terms FOOD and DOLLAR, and Internet evidence showing the descriptive nature of the composite phrase FOOD & DOLLAR was attached to the Office action.

This appeal followed.

ARGUMENT

Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), prohibits registration of a mark which “consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office…as to be likely, when applied to the goods of the applicant, to cause confusion…” The test for determining if there is a likelihood of confusion between two marks was set forth in In re DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). There, the court enumerated the principal factors to consider in determining whether a likelihood of confusion exists. In this case, the similarity of the marks and the similarity of the goods and services are the most relevant factors.

I. The Applicant’s Mark SAV-MOR FOOD & DOLLAR Is Likely To Be Confused With The Mark in Registration No. 2638469, Namely, SAVE MORE.

A. The Dominant Portion of the Applicant’s Mark is SAV-MOR.

The applicant’s mark is SAV-MOR FOOD & DOLLAR. It is well settled that descriptive wording is typically less significant or less dominant when comparing marks. Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). In this case, the record clearly reflects that FOOD & DOLLAR is descriptive of a particular type of retail store. Moreover, as evidenced by the specimens submitted by the applicant, the wording SAV-MOR is used in a much larger font size on a separate line above the smaller descriptive wording FOOD & DOLLAR. Thus, the dominant feature of the applicant’s mark is SAV-MOR.

B. SAV-MOR FOOD & DOLLAR and SAVE MORE are Alike in Sound, Appearance, and Meaning.

The registrant’s mark is SAVE MORE. The marks create the same commercial impression for three reasons. First, SAV-MOR and SAVE MORE are phonetic equivalents. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).

Second, SAV-MOR and SAVE MORE have the identical meaning. The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. See, e.g., In re M. Serman & Company, Inc., 223 USPQ 52 (TTAB 1984) (CITY WOMAN held likely to be confused with CITY GIRL, both for clothing); Gastown Inc., of Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB 1975) (GAS CITY (with "GAS" disclaimed) held likely to be confused with GASTOWN, both for gasoline); Watercare Corp. v. Midwesco-Enterprise, Inc., 171 USPQ 696 (TTAB 1971) (AQUA-CARE (stylized) held likely to be confused with WATERCARE (stylized), both for water conditioning products). Although SAV-MOR is spelled slightly differently than SAVE MORE, the deletion of the letter “E” from the terms SAVE and MORE and the addition of the hyphen do not alter the meaning of SAVE MORE. SAV-MOR and SAVE MORE mean exactly the same thing.

Third, SAV-MOR and SAVE MORE are similar in appearance. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii). In this case, SAV-MOR and SAVE MORE are similar in appearance. The variation in the spelling of the applicant’s mark does not obviate the likelihood of confusion, because purchasers who retain only a general impression of trademarks are unlikely to remember the unusual spelling of SAV-MOR.

C. The Registration is Entitled to Protection Against Registration of the Applicant’s Similar Mark.

The major argument set forth in the applicant’s brief is that the scope of protection accorded the registrant’s mark is too broad. In support thereof, the applicant argues that the number and nature of similar marks and the extent to which the registrant has a right to exclude others from use of their marks, are primary considerations. While the examining attorney agrees that it is proper to consider these issues when determining likelihood of confusion, the examining attorney does not agree that the facts in this case warrant approval of the applicant’s mark after consideration thereof.

Even if the applicant has shown that the cited mark is “weak,” such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods or services. See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.

However, the applicant has not even established that SAVE MORE is a weak mark. The reference to the number of marks that contain the individual terms SAVE and MORE is not relevant to the determination of the alleged weakness of SAVE MORE. Rather, the relevant inquiry is how many marks contain both terms, or formatives of those terms, and the commercial impression created by the combination of terms. At the time the final Office action was written, there were only seven marks in Class 35 that contain both terms. Moreover, not all of those seven combine the individual terms in a way that would be confusingly similar to the applicant’s mark or the registrant’s mark, and not all of the services in the various registrations are for related services (two registrations are for automobile dealership services and real estate agencies, for example). The registered mark SAVE MORE is entitled to protection against registration of the confusingly similar mark SAV-MOR FOOD & DOLLAR.

D. The Applicant’s Argument That SAV-MOR FOOD & DOLLAR is Incongruous is Incorrect.

In an attempt to distinguish its mark from the registrant’s mark, the applicant argues that SAV-MOR FOOD & DOLLAR has a major incongruity, because purchasers who encounter the mark will perceive the mark as the equivalent of “SAVING MORE FOOD.” The examining attorney respectfully disagrees with this argument. As the evidence clearly shows, FOOD & DOLLAR is a type of retail store. Thus, purchasers who encounter the applicant’s mark are not going to interpret the mark as suggestive of saving more food. Rather, they are going to believe that if they shop at the applicant’s food and dollar store, they will save more money. This position is fully supported by the applicant’s specimens of record, which show use of SAV-MOR on one line, with the descriptive wording FOOD & DOLLAR underneath.

E. The Applicant’s Services are Related to the Registrant’s Services.

The applicant’s services are retail grocery store services. The registrant’s services are retail store services featuring convenience store items and gasoline. Representative third party registrations are of record which clearly evidence the relatedness of these services, which are commonly offered by a single entity.

The applicant attempts to distinguish the services by arguing that “because the registrant also sells gasoline, purchases will not want to mix their purchase of groceries with the strong odor of gasoline.” This argument simply doesn’t make sense. The relevant facts are that the registrant and third parties do sell a wide range of grocery store items in convenience stores, including convenience stores located near gasoline pumps, and that retail convenience stores and retail grocery stores often have a common source. In many ways, a retail store featuring convenience items is simply a mini grocery store.

F. The Applicant’s Argument Regarding a Prior Decision in an Unrelated Application is Not Probative.

Prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office. Each case is decided on its own facts, and each mark stands on its own merits. AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).

Thus, the applicant’s argument that confusion is not likely because a Section 2(d) refusal to register was withdrawn in Application Serial No. 78327797, is not probative.

II. FOOD & DOLLAR is a Common Descriptive Phrase and Must be Disclaimed

It is well settled that the Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).

In this case, the examining attorney has required a disclaimer of the descriptive wording FOOD & DOLLAR, used in connection with retail grocery store services. In support thereof, the examining attorney attached Internet evidence and dictionary definitions clearly demonstrating the descriptive use of the wording to identify a type of retail store.

The applicant has submitted a disclaimer of the term FOOD only, but argues that “& DOLLAR” is suggestive. However, the applicant has not acknowledged the evidence to the contrary, which clearly shows that FOOD & DOLLAR is descriptive of a type of retail store.

While the individual term DOLLAR might not be descriptive of retail grocery store services depending upon how it is used, when part of the descriptive phrase FOOD & DOLLAR, the term DOLLAR has a clearly descriptive meaning. “Dollar stores” have become widely popular, as have food and dollar stores. Thus, the applicant must disclaim the exclusive right to use the wording FOOD& DOLLAR apart from the mark as shown.

CONCLUSION

Applicant has a legal duty to select a mark that is totally dissimilar to marks that are already in use. Burroughs Welcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979). In light of that duty, and for the foregoing reasons, the examining attorney respectfully requests that the Board resolve the likelihood of confusion issue in favor of the registrant and affirm the Section 2(d) refusal to register.

Respectfully Submitted,

Patricia M. Evanko

Trademark Attorney

Law Office 117

(571)272-9404

Loretta Beck

Managing Attorney

Law Office 117

(571)272-9245