IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK EXAMINING OPERATION

In re the Application of:

FABIAN BARTOLINI Examining Attorney

Application Serial No.: 77808533 Saima Makhdoom

Filed: August 19, 2009 Law Office 101

Mark: YANKEE DOODLES 571 272 8802
Assistant Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3513

Sir:

AMENDMENT

This is in response to the Office Action sent November 24.

REMARKS
THE MARKS IN QUESTION
Applicant’s mark is YANKEE DOODLES for:

Bar and restaurant services.

in International Class 043. The Trademark Examining Attorney refused registration

under Section 2(d), suggesting there may be a likelihood of confusion with Registrations

Nos. 2134518, 0535134 and 2135950, owned by Interstate Bakeries Corporation, and

Registration No. 3590696 owned by Yankee Doodle Deli, LLC. Registration No.

2134518 is for the mark YANKEE DOODLES for
pastry products, namely, cakes

in International Class 30. Registration No. 0535134 is for the mark:
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for “cake” in International Class 30. Registration No. 2135950 is for the mark:

YonkeeDood/es
for “pastry products, namely, cakes” in International Class 30.

Registration No. 3590696 (Serial No. 77537858) is for the mark YANKEE

DOODLE DELI (“deli” disclaimed) for “Pretzels” in International Class 30. Applicant

respectfully traverses these refusals. Applicant’s mark, when used in connection with

Applicant’s services, is not likely to be confused with the marks in the cited registrations.

Thus, Applicant respectfully submits that the refusal to register should be withdrawn.

II. THE DU PONT TEST

The test of likelihood of confusion is not merely whether the marks have some

possible similarity, but whether they are so similar that, when they are used on their

respective goods or services and rendered through their respective channels of trade,

there is likely to be confusion. In re E.|. Dupont deNemours & Co., 476 F.2d 1357,

1361 (CCPA 1973). Under that test, likelihood of confusion is determined by

considering:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression;

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(2) The similarity or dissimilarity and nature of the goods or services as described
in an application or registration or in connection with which a prior mark is in use;
(3) The similarity or dissimilarity of established, likely-to-continue trade channels;
4) The conditions under which and buyers to whom sales are made, i.e.
“impulse” vs. careful, sophisticated purchasing;
5) The fame of the prior mark (sales, advertising, length of use);
6) The number and nature of similar marks in use on similar goods;
7) The nature and extent of any actual confusion;
8) The length of time during and conditions under which there has been
oncurrent use without evidence of actual confusion;
(9) The variety of goods on which a mark is or is not used (house mark, “family”
mark, product mark);
(10) The market interface between applicant and the owner of a prior mark:
(a) a mere “consent” to register or use;
(b) agreement provisions designed to preclude confusion, i.e. limitations
on continued use of the marks by each party;
(c) assignment of mark, application, registration and good will of the
related business; or
(d) laches and estoppel attributable to owner of prior mark and indicative
of lack of confusion;
(11) The extent to which applicant has a right to exclude others from use of its
mark on its goods;
(12) The extent of potential confusion, i.e., whether de minimis or substantial;
and
(13) Any other established fact probative of the effect of use.

In applying the du Pont test, with respect to both sets of registrations (the three

registrations owned by Interstate Bakeries, and the one owned by Yankee Doodle Deli),

the Examining Attorney asserted that the most relevant du Pont factors are “similarity of

the marks, similarity of the goods and/or services, and similarity of trade channels of the

goods and/or services” (factors 1, 2 and 3). Applicant submits that in addition, factors 5

(fame of the prior mark), 6 (other similar marks), 7 (actual confusion), 9 (variety of

goods), 10 (market interface) and 11 (right to exclude) should also be considered.

A. Du Pont Factors 2 and 3:The similarity or dissimilarity and nature of the
goods or services and the liker trade channels

As is apparent from direct comparison of the respective goods and services,

there is no overlap. The cited marks are all for specific types of food: cake and

pretzels. There is no evidence of services being involved.
Applicant’s investigation into Interstate Bakeries indicates that the Yankee

Doodles mark is apparently not important enough to make much of an appearance on

the corporation’s web pages. However, there is evidence it is used on a specific snack

cake, see http://www.interstatebakeriescorp.com/press 103008.html. Thus, the mark is

limited to cakes, as are the registrations.

Applicant’s investigation into Yankee Doodle Deli indicates that it is an online

pretzel distributor, see http://www.yankeedoodledeli.com/. The brand is apparently

limited to pretzels and similar goods. Thus, this mark is also of limited scope, which

may explain why the registration issued in view of the Interstate Bakeries registrations.

In contrast to these two marks used for very specific goods, Applicant’s mark is

for bar and restaurant services. Food products offered in commerce under given marks

are not likely to be confused with a bar and restaurant. Although food may be sold in a

bar, consumers are typically not aware of the mark under which such food is sold. In

fact, consumers expect that unless the food is specially branded, the food served in a

bar is food from that bar. Thus, there is no reason for anyone to believe that food

offered by the owners of the cited marks has anything to do with Applicant’s YANKEE

DOODLES services.

The Examiner cited several cases in support of the proposition that food

products and food-related services are closely related. The recent cases, however,

have required “that ‘something more’ be shown to establish the relatedness of food and

restaurant products for purposes of demonstrating a likelihood of confusion.’ In re

Wente Bros. dba Tamas Estates, Serial No. 77314718, TTAB decision of 6 August

2009 (no likelihood of confusion between ADIAMO for wine and for restaurant

services)[non-precedential decision], citing In re Coors Brewing Co., 343 F.3d 1340, 68

USPQ2d 1059, 1063 (Fed. Cir. 2003)(BLUE MOON for beer not likely to be confused

with BLUE MOON and Design for restaurant services). Applicant submits there is no
such “something extra” here. Rather, because the cited marks are registered for very

limited (and much more closely related) goods, there is no “something extra” but rather

quite a bit less.

In any event, the cited marks are both for different types of food. None of the

cited marks is for anything other than cakes and pretzels. Therefore, the similarity of

goods and services and the likely trade channels portion of the du Pont test would

indicate that, if there is confusion in this circumstance, that confusion would be between

the respective food products, not with bar and restaurant services. There being no

confusion between the cited marks, there can hardly be confusion between Applicant’s

mark and the cited marks.

In this particular matter, Applicant submits that the case of Microware Systems

Corp. v. Apple Computer, 126 F.Supp.2d 1207 (S.D.|owa 2000) may be instructive.

Microware sued to block Apple Computer from adopting the mark MAC 08-9 for the

next version of the Macintosh operating system, based on Microware’s incontestible

registration for 08-9 for “computer operating systems.” The 08-9 mark was used for

embedded systems, whereas the MAC 08-9 was used for personal computers. The

court reviewed the various uses of the respective marks and, despite the similarity in

the marks and the fact that both were used for computer operating systems, found

there was no likelihood of confusion.

Here, consumers aware of the goods represented by either of the cited marks

would hardly be confused by Applicant’s bar and restaurant services. Therefore, the

disparity between the goods and the differences in likely trade channels would eliminate

the risk of any likelihood of confusion. Thus, these two factors (nature of the goods or

services and the likely trade channels) eliminate any likelihood of confusion.
B. Du Pont Factor 6: Other Marks

Applicant notes that there are several other marks presently on the Principal

Register that use the “Yankee Doodle” or derivatives thereof, see for instance Reg.

Nos. 1141855 [YANKEE DOODLE for Gloves and Mittens of Fabric, Leather, Plastic or

Combinations Thereof.]; 1141856 [YANKEE DOODLE and Design for Gloves and

Mittens of Fabric, Leather, Plastic or Combinations Thereof.]; 1256943 [YANKEE

DOODLE DANDY for Novelty Clothing Items-Namely, Shirts]; 1467244 [YANKEE
DOODLE for Fireworks]; and 1639201 [YANKEE DOODLE DOLLY for paper dolls and
balloons.]. There have also been several additional marks that have been allowed for

publication or that issued and have since been abandoned. Each of these marks was

found not to create a likelihood of confusion with one or more of the cited marks.

For example, the marks listed in the attached Exhibit have been found not likely

to be confused with Registration No. 535,134 (the Examining Attorney should note that

four of the cited marks, Serial Nos. 78928862; 76512191; 75360115; and

74495817 were published or allowed but later abandoned). As is apparent from review

of the Exhibit, numerous “Yankee Doodle” marks have been allowed by the Trademark

Office despite the existence of the oldest cited mark (and in several cases the other two

Interstate Bakeries marks, which both issued in Feb. 1998). This includes four

registrations for restaurant services, Reg. Nos. 868272; 981345; 2021565; and

2624176.
These numerous marks are for a very wide variety of goods and services. With

so many registrations and applications indicating use of “Yankee Doodle” in some form,

it is unlikely Applicant’s mark will be confused with the cited marks. Based on these

numerous other registrations and applications, this du Pont factor also supports a

finding of no likelihood of confusion.
C. Du Pont Factor 5: The fame of the prior mark

There is no evidence in the record indicating any fame of the prior marks and

thus, to the extent relevant, this factor indicates confusion is unlikely.

D. Du Pont Factor 7: Actual Confusion

Despite years of concurrent use (decades, based on the claimed dates of use),

there is no evidence in the record indicating any confusion between the respective

marks and thus, to the extent relevant, this factor indicates confusion is unlikely.

E. Du Pont Factor 9: The variety of goods on which a mark is or is not used
(house mark, “family” mark, product mark)

The cited marks are for specific, limited goods: cakes or pretzels. There is no

house mark or broad goods/services base indicated, nor did Applicant’s search of the

trademark records or the Interstate Bakeries or Yankee Doodle Deli web pages disclose

any. Thus, to the extent relevant, this factor supports a finding of no likelihood of

confusion.

F. Du Pont Factor 10: The market interface between applicant and the owner
of a prior mark

Applicant is not aware of any interface (consent, agreement, assignment)

between the respective marks or the respective goods and services. Thus, to the

extent relevant, this factor supports a finding of no likelihood of confusion.

G. Du Pont Factor 11: The extent to which applicant has a right to exclude
others from use of its mark on its goods

Applicant is not aware of any basis for the owner of the cited registrations to

claim any right to exclude others except for in an extremely narrow market segment:

cakes (on the one hand) and pretzels (on the other). To Applicant’s knowledge, the

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owners of the cited marks have never made any broad claim to use of a Yankee Doodle

mark, nor is it likely they would, when both own registrations for the term for different

types of snack food. Thus, to the extent this factor may be relevant, this factor

indicates confusion is unlikely.

H. Other Cases Support Applicant’s Position.

Ultimately, the question at hand is whether two marks may share words and not

be confusingly similar. This has been consistently answered in the affirmative by the

Courts and the Board. For example, in the following cases marks with common or even

identical elements were found n_ot to be confusingly similar:

In re Quadram Corp., 228 USPQ 864 MICROFAZER and FASER not

(TTAB 1985) confusingly similar for computer buffers

and for computer programs in the field of

energy conservation and management
In re Registry Hotel Corp., 216 USPQ LA CHAMPAGNE and CHAMPAGNE

1104 (TTAB 1983) COUNTY CAFE not confusingly Similar

for restaurant services

Taco Time International Inc. v. Taco TACO TOWN and TACO TIME not

Town Inc., 217 USPQ 268 (TTAB 1982)
CPC International v. Rico Banana Co. CARRO & Design and KARO not

m, 212 USPQ 308 (TTAB 1981)
Interstate Brands Corp. v. Celestial RED ZINGER for herbal tea not

Seasonings, Inc., 576 F.2d 926 (CCPA confusingly similar to ZINGERS for cakes

1978)
Minnesota Mining and Manufacturing 3M and EM not confusingly similar for

Company v. Electronic Memories, Inc, magnetic computer memory products

455 F.2d 1391 (CCPA 1972)
In re Massey-Ferguson, Inc, 222 USPQ E-COM for computer parts ordering

367 (TTAB 1983) services and ECOM for computer

memory system not confusingly similar
Borg-Warner Chemicals, Inc. v. Helena BLENDEX and BLENDEX not

Chemical Co., 225 USPQ 222 (TTAB confusingly similar for chemical

1983) compositions
In re Fesco Inc, 219 USPQ 437 (TTAB FESCO and FESCO not confusingly

1983) similar for farm equipment distributorship

services and for fertilizer and related

equipment
Chase Brass & Copper Co., Inc. v. BLUE DOT and BLUE DOT not

Special Springs, Inc., 199 USPQ 243 confusingly similar for products used in

(TTAB 1978) automobile manufacture

Autac, Inc. v. Walco Systems, Inc., 195 AUTAC and AUTAC not confusingly

USPQ 11 (TTAB 1977) similar for products used in wire

manufacturing.
Microware Systems Corp. v. Apple 08-9 and MAC OS—9 not confusingly

Computer, 126 F.Supp.2d 1207 (S.D.|a. similar for computer operating systems.

2000)

Thus, two identical marks may be used for closely related goods or services and yet not

result in a likelihood of confusion. Here, the marks are neither identical nor used on

particularly related goods and services. Thus, there is no likelihood of confusion.
|||. CONCLUSION

This matter involves marks that present different commercial impressions, and

are used on goods and services that to the extent they are related, it is the similarity of

the cited marks that would cause confusion, not Applicant’s mark. The respective

marks are offered through different channels of trade, involve words that are or have

been used in numerous other registrations and allowed applications, do not involve

famous marks, do not involve a situation where one party has even sought protection

for a variety of goods, do not involve any market interface, and do not involve a party

with a broad claim to exclude other marks. There is no likelihood of confusion here.

Therefore, Applicant submits that its application is in condition for publication and

respectfully solicits such action.

Dated: March 9, 2010 Respectfully submitted,

By: /J. Harrison Colter/
J. Harrison Colter
Attorney for Applicant
333 South 520 West
Lindon, Utah 84042
Telephone: (801) 932-6162

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Ser. No. Reg. Date Mark Goods/Services
72182524 10/5/65 YANKEE DOODLE [Stylized] felt-tipped pens.

72308857 4/15/69 YANKEE DOODLE DANDY Restaurant services.
and Design

72330408 12/15/70 YANKEE DOODLE DANCER Toy-namely, a doll-like puppet or marionette with
segmented limbs designed for rhythmic movements.

72424360 3/26/74 YANKEE DOODLE DANDY Restaurant services.
and Design

81009122 4/22/75 YANKEE DOODLE DANDY Safety razors and razor blades.

81018220 8/12/75 YANKEE DOODLE [Stylized] Education services rendered through the medium of television
broadcast concerning the humane treatment of animals.

73014066 11/11/75 YANKEE DOODLES Greeting cards.

81038671 5/4/76 YANKEE DOODLE DANDY Toy balloon inflating equipment in the nature of a cylinder with
control valves.

73204966 1/13/81 YANKEE DOODLE DANDY Gloves of Fabric.
and Design

73372181 4/3/84 YANKEE DOODLE DANDY Combination Regulator, Cylinder and Connecting Fittings for
Balloon Inflation.

73455322 10/23/84 YANKEE DOODLE DANDY Coloring Books.

73605219 2/3/87 YANKEE DOODLE POODLE Posters

73631339 10/20/87 YANKEE DOODLES graphic design services.

73828984 6/12/90 LANKY DOODLES Soft sculpture animal figure toys.

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74195283 7/7/92 THE YANKEE DOODLE SALUTE promoting tourism in the greater Hartford Connecticut area
and Design through historical exhibitions in the nature of cannon firing and
fife and drum corp flag ceremonies.

73715645 8/11/92 YANKEE DOODLE Firecrackers

74410377 12/10/96 YANKEE DOODLES Class 41: entertainment services in the nature of billiard
contests.
Class 42: restaurant and bar services.

74593137 10/7/97 YANKEE DOODLE children’s flatware, namely, forks, spoons, and knives.

76259578 9/24/02 YANKEE DOODLE PIZZA restaurant services, carrot restaurant services, and restaurant
and Design featuring home delivery.

76512191 YANKEE DOODLE DAISY Class 16: Coasters made of paper; papenNeights
Class 20: Non-metal key chains; picture frames
Class 21: Giftware and home decor items, namely, porcelain
and ceramic miniature buildings, structures, figurines, vehicles
and tabletop decorative ornaments; porcelain and ceramic
teapots, mugs, bowls, plates, pitchers, decanters;
candleholders not of precious metal; decorative baskets made
of straw, wicker and wood; decorative boxes not of precious
metal; table centerpieces and tabletop ornaments of porcelain,
ceramic, resin, plastic, wood, or non-precious metals;
decorative plates and bowls; vases; votives of non-precious
metal; light-holder luminaries for candles; decorative bird cages;
decorative urns; decorative non-metal general purpose storage
containers; flower pots; planters; lunch pails; coasters not of
paper and not being table linen; napkin holders; placecard
holders not made of precious metal; portable household
containers of non-metal; beverageware; dinnenNare; dishes;
platters; decorative multipurpose trays not of precious metal; ice
pail/bucket not of precious metal; cookie jars; coasters made of
beads
Class 24: Coasters made of fabric

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75360115 YANKEE DOODLE reel slot machines; gaming machines featuring slot machine
type games via video display; coin-operated video output
gaming machines; electro-mechanical and video display gaming
machines

74495817 YANKEE DOODLE NOODLE pasta; pasta sauces; frozen prepared all-in-one meals
consisting primarily of pasta; frozen prepared side dishes
consisting primarily of pasta; prepared entrees consisting
primarily of pasta; and prepared side dishes consisting primarily
of pasta

78928862 YANKEE DOODLE RECORDS Audio recordings featuring music

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