IP Law Daily, TRADEMARK—TTAB: Registration granted for THE CRACKER BOX CARAMEL POP popcorn mark, (Feb 24, 2020)

By Thomas K. Lauletta, J.D.

The addition of a house mark to an otherwise weak trademark avoided its characterization as likely to cause confusion with a similar registered mark.

The Trademark Trial and Appeal Board reversed the decision of the Trademark Examining Attorney that had denied registration on the Principal Register for the mark THE CRACKER BOX CARAMEL POP. In so ruling, the Board concluded that the DuPont factor regarding the dissimilarity between the applicant's mark and the registered mark outweighed the other DuPont factors that would have favored a finding of likelihood of confusion (In re Cracker Box Fireworks, LLC, February 19, 2020, Bergsman, M.).

Cracker Box Fireworks, LLC sought registration (Application Serial No. 88276676) on the Principal Register of the mark THE CRACKER BOX CARAMEL POP, in standard characters, for "popcorn; caramel popcorn," in Class 30.1, disclaiming the exclusive right to use the word "Caramel."

The examining attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the mark was likely to cause confusion with the registered mark KARAMEL POP for "popcorn," in Class 20. According to the registration, "the English translation of ‘KARAMEL’ is ‘CARAMEL’".

The Board utilized what it saw to be the relevant DuPont factors to determine the likelihood of confusion between the applied-for and the registered marks.

Similarity and nature of the goods. Both the proposed CARAMEL POP and registered KARAMEL POP marks were used for popcorn, although the CARAMEL POP mark was also used for caramel popcorn. Thus, the Board found that the nature of the goods were in part identical, which favored a finding of a likelihood of confusion. Because the goods were in part identical, the Board presumed that the channels of trade and classes of purchasers of the goods were the same. This DuPont factor also favored a finding of likelihood of confusion.

Conditions under which sales are made. Given the inexpensive nature of popcorn and caramel popcorn, the Board concluded that consumers may buy such products on impulse. This weighed in favor of a finding of a likelihood of confusion, according to the Board.

Similarity of the marks. The question of the similarity of the marks, the Board concluded, was based on the ordinary consumer who would purchase popcorn and caramel popcorn. From this perspective, the Board ruled that the applicant's mark and the registrant's marks were dissimilar when viewed in their entireties, even though they included the term "KARAMEL POP" or CARAMEL POP." The Board saw the KARAMEL POP and CARAMEL POP elements of the two marks to be suggestive and weak. The point of clear differentiation between the marks is that the applicant's mark includes and begins with THE CRACKER BOX, which consumers will perceive as the applicant's house mark. The Board concluded that in the face of suggestive or weak components of marks (such as here, KARAMEL POP and CARAMEL POP), a distinctive element of a house mark may avoid possible confusion between the marks. Accordingly, the Board found that the DuPont factor regarding the dissimilarity of the marks outweighed the other DuPont factors that would favor a finding of likelihood of confusion, that is, the in part identical nature of the goods, trade channels, and purchasers. Thus, THE CRACKER BOX CARAMAL POP mark was not similar to the KARAMEL POP mark.

This case is Serial No. 88276676.

Attorneys: Elaine Xu for the USPTO. Monique A. Morneault (Scherrer Patent & Trademark Law, P.C.) for Cracker Box Fireworks, LLC.

Companies: Cracker Box Fireworks, LLC

Cases: Trademark USPTO