Martin's Famous Pastry Shoppe, Inc., In re

• Decision Date: 27 November 1984
• Docket Number: No. 84-1023,84-1023
• Citation: 223 USPQ 1289,748 F.2d 1565
• Parties: In re MARTIN'S FAMOUS PASTRY SHOPPE, INC. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1565

748 F.2d 1565

223 U.S.P.Q. 1289

In re MARTIN'S FAMOUS PASTRY SHOPPE, INC.

Appeal No. 84-1023.

United States Court of Appeals, Federal Circuit.

Nov. 27, 1984.

Franklin A. Miles, Jr., McNees, Wallace & Nurick, Harrisburg, argued for appellant.

Robert D. Edmonds, Associate Sol., Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol. and Jere W. Sears, Deputy Sol., Washington, D.C.

Before KASHIWA, NIES, and NEWMAN, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

This appeal is from the January 17, 1984 decision of the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (Board), affirming the ex parte rejection of appellant's application, Ser. No. 280,013, to register the word-mark MARTIN'S for "wheat bran and honey bread". We affirm.

The refusal to register rests on section 2(d) of the Lanham Act, 15 U.S.C. Sec. 1052(d). The Board held, in a two-to-one decision, that there would be a likelihood of confusion between applicant's mark and Reg. No. 1,032,429 for the mark MARTIN'S for "cheese". 221 USPQ 364 (TTAB 1984). A different majority of Board members reversed the examiner's refusal to register MARTIN'S FAMOUS PASTRY SHOPPE INC. with design, subject to a disclaimer requirement. This portion of the Board's decision has not been appealed.

Likelihood of confusion under section 2(d) is determined from the probative facts in evidence. In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). The first factor to be considered is the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. This factor weighs heavily against applicant, as the two word marks are identical: MARTIN'S. MARTIN'S is not suggestive or descriptive of either bread or cheese.

We look next to the named goods in connection with which each mark is used. We agree with the Board that applicant's baked goods and registrant's cheese "exhibit cognizable differences". 221 USPQ at 366. The goods in question, bread and cheese, nevertheless travel in the same channels of trade and are sold by the same retail outlets. Although dairy products generally need to be refrigerated and may be kept in a separate area of a market, it was not error for the Board to take notice of the fact that "a wide variety of baked goods are now stored and sold in supermarkets in frozen or refrigerated form" or that "deli counters may well display bread and rolls in close proximity to the cold cuts and cheeses purveyed there." Id. Bread and cheese are staple, relatively inexpensive comestibles, subject to frequent replacement. Purchasers of such products have long been held to a lesser standard of purchasing care. Walter Baker & Co. v. Altamay Chocolate Co., 37 F.2d 957, 958, 4 USPQ 159, 161 (CCPA 1930); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, --- USPQ ---- (Fed.Cir.1984).

The record is silent as to whether MARTIN'S for cheese is or may be a well-known or famous trademark. We do however observe that the registration of the MARTIN'S trademark for use with cheese states that the mark has been in use since 1891. There was no evidence presented of use of similar marks by others, or of actual confusion in the marketplace.

The Board considered the fact that bread and cheese are likely to be used together as relevant to the question of likelihood of confusion. 221 USPQ at 366. Applicant contends that the "complementary use" test has no utility in food cases as the number of food products which can be used in combination is so great as to render this test meaningless. Applicant maintains that the Board gave its finding of complementary use controlling weight and that but for this factor it would not have affirmed the Trademark Examiner's refusal to register its mark.

Applicant thus argues that food products should be an exception to the complementary use test, and that the fact that identical marks are used on different but related food products should not be considered in a determination of likelihood of confusion. We find no basis in law or experience for creating such an exception....