Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DIET CENTER, INC.
Serial No. 459,582
June 12, 1987
Calvin E. Thorpe, Vaughn W. North and M. Wayne Western for Diet Center, Inc.
Richard A. Straser
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Allen, Krugman and Cissel
Opinion by Krugman
An application has been filed by Diet Center, Inc. to register VEGETABLE SVELTES (VEGETABLE disclaimed) as a trademark for wheat crackers sold through franchised outlets offering weight reduction services. [FN1]
Registration has been refused under Section 2(d) of the Trademark Act on the ground that applicant's mark so resembles the previously registered mark SVELTE for low calorie frozen dessert, similar to ice milk [FN2] as to be likely, when applied to applicant's goods, to cause confusion, mistake or to deceive.
The record shows that applicant has unsuccessfully attempted to register the marks BACON FLAVORED SVELTES, WHEAT SVELTES and ONION SVELTES, all for wheat crackers. In all three applications, registration was refused under Section 2(d) in view of the registered mark cited herein, namely, SVELTE for low calorie frozen dessert, similar to ice milk. Applicant appealed from the final refusal in each instance. The Board, in a decision cited as In re Diet Center, Inc., 229 USPQ 718 (TTAB 1985), affirmed the refusal to register ONION SVELTES. [FN3] That decision noted the descriptive significance of 'onion' as applied to applicant's goods and stated that there was no doubt that the contemporaneous use of SVELTE and ONION SVELTES by different entities for the same or related goods would be likely to result in purchaser confusion. In comparing the respective goods, the Board conceded that they were different products not apt to be proximately displayed, since low calorie frozen desserts could be expected to be found near ice cream and other frozen desserts while applicant's goods would ordinarily be found together with crackers and other snack items. The Board noted, however, that the respective products generally would be sold in the same channels of trade, food and grocery outlets, to the same class of purchasers, householders, and that they may well be purchased for consumption by the household purchaser's family at the same meal. The Board noted in In re Diet Center, Inc., supra [FN4] that it was irrelevant that applicant's products were sold primarily through its own outlets in the absence of a restriction of the channels of trade in the recitation of goods in applicant's application. The Board further noted that the respective products might easily be found on the same table as snacks or desserts, albeit not eaten together; that both products were directed to purchasers who have an interest in food purchased as part of a weight-control program and that the SVELTE portion of both marks, said term meaning slender or lithe, made it likely that both products were apt to be promoted in ways emphasizing the commercial impression of slenderness which is evoked by that term.
*2 In the present case, we similarly note the descriptive significance of the disclaimed term 'vegetable' as applied to applicant's goods and we have no doubt that the contemporaneous use of SVELTE and VEGETABLE SVELTES by different entities for related goods would be likely to cause confusion as to source or sponsorship for purposes of Section 2(d) of the Act.
With respect to the goods, it is applicant's position that the situation presented herein differs from that presented in the Diet Center case, supra. In this regard, applicant points out that the Board's footnote 4 in the Diet Center case implied that if applicant's goods were limited as to channels of trade, it would become relevant that applicant's goods are sold primarily through its own outlets; that applicant, in the present application, limited its identification of goods to wheat crackers sold through franchised outlets offering weight-reduction services; that this amendment to the identification of goods was made in the manner specifically suggested by the Examining Attorney and that in view of the restriction in the channels of trade of applicant's goods, no confusion is likely.
While applicant has narrowed its recitation of goods to limit its wheat crackers to those sold only through franchised outlets offering weight-reduction services, we nevertheless are of the opinion that the contemporaneous use of the marks in connection with the respective goods would be likely to cause confusion. First, we note that while applicant has limited its channels of trade, the goods encompassed by the cited registration are not limited as to any channels of trade or classes of customers. Accordingly, we must presume that registrant's goods travel through all ordinary channels of trade. In the case of low calorie frozen desserts, these channels of trade would include outlets where dietary or low calorie food products are sold and where other weight-reduction services would be offered. While footnote 4 of the Board's prior Diet Center decision made no mention of any requirement that registrant's goods be limited as to channels of trade, that was an inadvertent omission from that footnote and it is clear that a limitation of an applicant's recitation of goods cannot overcome a Section 2(d) refusal unless the goods in the cited registration are restricted in such a way that the respective trade channels cannot overlap.
Moreover, even in the absence of common, overlapping trade channels, we conclude that confusion is likely in this case for the reasons stated in the prior Diet Center case, supra. Specifically, it is our view that both products would appeal to people following a low calorie diet and both products are designed to contribute to the goal of reduced caloric intake; that the goods are likely to be promoted in ways emphasizing the impression of slenderness evoked by the term SVELTE and that both products might easily be found on the same table as low calorie snacks or desserts.
*3 For the foregoing reasons, we find that applicant's restriction of the identification of goods in its application is insufficient to avoid likelihood of confusion herein and insufficient to warrant a conclusion contrary to that reached in the prior Diet Center case, supra.
Decision: The refusal of registration is affirmed.
G. D. Krugman
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 459,582 filed January 4, 1984.
FN2. Registration No. 660,410 issued April 8, 1958. Renewed.
FN3. The Board also affirmed the refusals to register BACON FLAVORED SVELTES and WHEAT SVELTES in two unpublished decisions, stating that the refusals were being affirmed for the same reasons as those set forth in the published decision regarding ONION SVELTES.
FN4. Footnote 4 at 720.