August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

P.O. Box 1451

Alexandria, VA 22313-1451

General Contact Number: 571-272-8500

General Email: TTABInfo@uspto.gov

WBC Original Decision Mailed: November 14, 2025

Redesignation Mailed: January 27, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

August Storck KG

v.

Florend Indústria e Comércio de Chocolates LTDA

____

Opposition No. 91277224

_____

By the Trademark Trial and Appeal Board:

The Board has chosen to redesignate the decision issued on November 14, 2025 in

this proceeding as a precedent. A copy of the decision, bearing the precedential

designation, is attached.

THIS OPINION IS A

PRECEDENT OF THE TTAB

Mailed: November 14, 2025

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

August Storck KG

v.

Florend Indústria e Comércio de Chocolates LTDA

____

Opposition No. 91277224

_____

Joseph F. Schmidt of Taft Stettinius & Hollister LLP,

for August Storck KG.

Samuel F. Pamias of Hoglund & Pamias, PSC,

for Florend Indústria e Comércio de Chocolates LTDA.

_____

Before Lykos, English and Cohen,

Administrative Trademark Judges.

Opinion by Cohen, Administrative Trademark Judge:

Applicant, Florend Indústria e Comércio de Chocolates LTDA, seeks registration

on the Principal Register of the stylized mark for “chocolate; chocolate

bars” in International Class 30 (the “Application”).1 The Application includes a

1 Application Serial No. 90605879 was filed on March 26, 2021 under Section 1(b) of the

Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of intent to use the mark in

commerce. The application claims the colors brown and beige as features of the mark. The

Opposition No. 91277224

statement that the English translation of “danke” is “thank you.”

In its amended pleading, August Storck KG opposes registration of Applicant’s

mark on the ground of likelihood of confusion under Trademark Act Section 2(d), 15

U.S.C. § 1052(d), based on alleged prior common law use of the marks MERCI,

THANK YOU MEANS MERCI, DANKE HEIßT MERCI, and other MERCI marks for

chocolate bars and candies,2 as well as ownership of Principal Register registrations

for the following marks for goods all in International Class 30:

• for “chocolate, and candies”;3

• MERCI (typeset) for “chocolate and chocolates”;4

• THANK YOU MEANS MERCI (standard characters) for “chocolate; chocolate

products, namely, chocolate pralines, chocolate bars”;5

• MERCI FINEST MOMENTS (standard characters) for “confectionery made of

sugar or of sugar substitutes; chocolate; chocolate products, namely, chocolate

candy, chocolate pralines, chocolate bars, chocolate candy figures; chocolate

tablets; pastries”;6

• for “confectionery made of sugar or of sugar substitutes;

mark consists of the brown word “DANKE” with outlines in beige. The entire mark is on a

white background that is not claimed as a feature of the mark.

2 9 TTABVUE 12.

3 Registration No. 843319; thrice renewed.

4 Registration No. 2318584; twice renewed. “Prior to November 2, 2003, ‘standard character’

drawings were known as ‘typed’ drawings. A typed or typeset mark is the legal equivalent of

a standard character mark.” Heil Co. v. Tripleye GmbH, No. 91277359, 2024 WL 4925901, at

*26 n.121 (TTAB 2024) (citing In re Viterra Inc., 671 F.3d 1358, 1363 n.2 (Fed. Cir. 2012)).

5 Registration No. 5293886; Section 8 accepted and Section 15 acknowledged.

6 Registration No. 5993326.

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Opposition No. 91277224

chocolate; chocolate products, namely, chocolate candy, chocolate pralines,

chocolate bars, chocolate tablets, chocolate candy figures; pastries; ice-cream;

preparations for making the aforementioned products, namely, cocoa powder,

cake mixes, cookie mixes, pastry cream, mixes for making ice-cream, caramel

based spread for pastries and chocolates, chocolate based spread for pastries

and chocolates, coffee mixes, coffee based spread for pastries and chocolates,

coffee extracts, and marzipan”;7

• MERCI TOGETHER (standard character) for “confectionery made of sugar or

of sugar substitutes; chocolate; chocolate products, namely, chocolate candy,

chocolate pralines, chocolate bars, chocolate candy figures; pastries; ice-cream;

preparations for making the aforementioned goods, included in this class”;8

and

• MERCI BLACK & WHITE SELECTION (standard characters) with “BLACK

& WHITE SELECTION” disclaimed for “confectionery made of sugar or of

sugar substitutes; chocolate; chocolate products, namely, chocolate candy,

chocolate pralines, chocolate bars, chocolate tablets, chocolate candy figures;

pastries; ice-cream; preparations for making the aforementioned products,

namely, cocoa powder, cake mixes, cookie mixes, pastry cream, mixes for

making ice-cream, caramel based spread for pastries and chocolates, chocolate

based spread for pastries and chocolates, coffee mixes, coffee based spread for

pastries and chocolates, coffee extracts, and marzipan.”9

7 Registration No. 6248192. The colors red, gold, light brown, dark brown, blue, green, purple,

and beige are claimed as features of the mark. The mark consists of the word “MERCI”, the

“I” dotted with a heart, beneath the design of individually wrapped chocolates grouped

together in a vertical position upon a shaded rectangle and the bottom side of the rectangle

is curved upward with a gold color outline becoming progressively wider from the left side to

the right side. The individually wrapped chocolates are a rectangular shape with the length

greater than the width and the width greater than the height and in the center of the length

is an indentation across the width, and the wrapper is a rectangular shape with a gold

background color on one half of the wrapper and clear on the other half of the wrapper. The

candy configuration is visible through the clear half of the wrapper, and the word “merci” in

lowercase letters is engraved on the candy. There is a colored band around the gold wrapper

nearest the center of the rectangle, and the word “MERCI” in gold color lowercase letters is

on the band in a repeating arrangement around the configuration. The color red appears in

the shaded rectangle, the heart, and the chocolate wrapper. The color gold appears in the

word “MERCI”, and the chocolate wrappers. The color dark brown appears in the chocolates

and the chocolate wrapper. The colors purple, beige, light brown, green, and blue appear in

the chocolate wrappers. An L-shaded red outline appears on the left and bottom sides of the

mark.

8 Registration No. 6192251.

9 Registration No. 6350838.

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Opposition No. 91277224

For each registration except one,10 Opposer translates “merci” as “thank you” or

“thanks.”

Applicant’s operative answer admits that Opposer appears in the United States

Patent and Trademark Office (USPTO) database as the current owner of its pleaded

registrations11 and denies the remainder of the salient allegations.12 Applicant

asserted the affirmative defenses of estoppel, waiver, bad faith and unclean hands,13

but did not pursue these defenses at trial, and they are thus deemed impliedly

waived. Keystone Consol. Indus. v. Franklin Inv. Corp., No. 92066927, 2024 WL

3771168, at *2 n.10 (TTAB 2024) (“Affirmative defenses that were asserted in an

answer but then not pursued at trial may be deemed impliedly waived, while

affirmative defenses that were never asserted may be deemed forfeited.”).

The opposition is fully briefed. As plaintiff in this proceeding, Opposer bears the

burden of establishing its entitlement to a statutory cause of action and its Section

2(d) claim by a preponderance of the evidence. See Stratus Networks, Inc. v. UBTA-

UBET Commc’ns Inc., 955 F.3d 994, 998 (Fed. Cir. 2020) (citation omitted); Jansen

10 MERCI FINEST MOMENTS, Registration No. 5993326, does not contain a translation

statement.

11 13 TTABVUE 3-4, ¶ 8.

12 Id. at 2-5.

13 Id. at 9, ¶¶ 32-34. Applicant asserted additional purported affirmative defenses which are

not true affirmative defenses (id. at 6-11 ¶¶ 1-31, 35-39), so we do not address them as

such. See, e.g., DeVivo v. Ortiz, No. 91242863, 2020 WL 1227592, at *1 (TTAB 2020) (mere

amplifications of the applicant’s denials not considered as separate affirmative defenses);

John W. Carson Found. v. Toilets.com, Inc., No. 91181092, 2010 WL 1233881, at *9 (TTAB

2010) (“The asserted defense of failure to state a claim is not a true affirmative defense

because it relates to an assertion of the insufficiency of the pleading of opposer’s claim rather

than a statement of a defense to a properly pleaded claim.”).

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Opposition No. 91277224

Enters. Inc. v. Rind, No. 92042871, 2007 WL 809857, at *2 (TTAB 2007). We have

considered all of the admissible evidence of record and arguments made by the

parties. For the reasons discussed below, we dismiss the opposition.14

I. The Record

The record includes the pleadings, the file of the opposed Application pursuant to

Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), and the following evidence that the

parties introduced during trial.15

A. Opposer’s Evidence

• Declaration of Kelly Cook, President of Storck USA, L.P., a subsidiary of

Opposer, with exhibits regarding Opposer’s marketing, promotion and

advertising of its marks;16

• Declaration of Antje Baumgardt, Opposer’s Marketing Director Chocolate

Specialties & Fresh Products, with exhibits, regarding Opposer’s marketing

and promotion of its marks including DANKE HEIßT MERCI;17 and

• Notices of Reliance on TSDR printouts of Opposer’s pleaded registrations

showing their current title and status;18 Applicant’s answers to select

14 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing

system. See New Era Cap Co. v. Pro Era, LLC, No. 91216455, 2020 WL 2853282, at *1 n.1

(TTAB 2020). The number preceding TTABVUE corresponds to the docket entry number, and

any numbers following TTABVUE refer to the page(s) of the docket entry where the cited

materials appear.

15 Both parties submitted under notices of reliance printouts from various websites. Although

admissible for what they show on their face, see Trademark Rule 2.122(e)(2), 37 C.F.R.

§ 2.122(e)(2), this evidence ordinarily constitutes hearsay that may not be relied upon for the

truth of the matters asserted unless supported by testimony or other evidence. Fed. R. Evid.

801(c); see, e.g., Optimal Chem. Inc. v. Srills LLC, No. 92063200, 2019 WL 4316700, at *3

n.13 (TTAB 2019) (website printouts are hearsay and admissible under notice of reliance for

what they show on their face but may not be relied upon for the truth of the matters asserted

unless supported by testimony or other evidence).

16 17 TTABVUE.

17 18 TTABVUE.

18 19 TTABVUE.

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Opposition No. 91277224

interrogatories and its responses to select requests for admissions;19 Internet

materials;20 and portions of the file history of a prior TTAB proceeding

involving Opposer.21

B. Applicant’s Evidence

• Notices of Reliance on third-party registrations;22 Opposer’s admissions to

certain requests for admission and documents authenticated through such

admissions;23 census information24 and Internet materials.25

C. Evidentiary Objections

Applicant raised numerous objections buried in its main brief seeking to exclude

evidence that is not outcome-determinative.26 To the extent Applicant raises for the

first time in its brief procedural objections (such as lack of authentication or

foundation) that could have been remedied or obviated had they been made earlier,

the objections are untimely. See Sabhnani v. Mirage Brands, LLC, No. 92068086,

2021 WL 6072822, at *6 (TTAB 2021) (lack of foundation objection waived, objecting

party did not timely move to strike). We decline to exclude exhibits and evidence on

this basis.

As to Applicant’s objections and arguments relating to probative value, in general,

the Board is capable of weighing the relevance and strength or weakness of

the objected-to testimony and evidence, including any inherent limitations …

we find no basis on which to strike any testimony or other evidence. As

19 20 TTABVUE.

20 21 TTABVUE.

21 26 TTABVUE.

22 22 TTABVUE.

23 23 TTABVUE.

24 24 TTABVUE.

25 25 TTABVUE.

26 33 TTABVUE 23-25.

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Opposition No. 91277224

necessary and appropriate, we will point out any limitations in the evidence

or otherwise note that the evidence cannot be relied upon in the manner

sought. We have considered all of the testimony and evidence introduced into

the record. In doing so, we have kept in mind the various objections raised by

the parties and we have accorded whatever probative value the subject

testimony and evidence merit.

Luxco, Inc. v. Consejo Regulador del Tequila, A.C., No. 91190827, 2017 WL 542344,

at *2 (TTAB 2017); see U.S. Playing Card Co. v. Harbro, LLC, No. 91162078, 2006

WL 3704640, at *4 (TTAB 2006).

To the extent we rely on any of the objected-to evidence, we keep in mind any

deficiencies and have accorded to such evidence whatever probative value it merits.

U.S. Playing Card, 2006 WL 3704640, at *4.

II. Entitlement to a Statutory Cause of Action

Entitlement to a statutory cause of action is an element of the plaintiff’s case in

every inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303 (Fed.

Cir. 2020). To establish entitlement to a statutory cause of action in an opposition

proceeding, an opposer must demonstrate: (i) an interest falling within the zone of

interests protected by the statute and (ii) a reasonable belief in damage proximately

caused by the registration of the mark. Id.

Opposer’s entitlement to oppose registration of Applicant’s mark is established by

its unchallenged pleaded registrations which Opposer properly entered into the

record by way of notice of reliance.27 See, e.g., Shenzhen IVPS Tech. Co. v. Fancy Pants

Prods., LLC, No. 91263919, 2022 WL 16646840, at *6 (TTAB 2022) (valid and

27 19 TTABVUE 4-19.

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Opposition No. 91277224

subsisting pleaded registration establishes opposer’s direct commercial interest in

the proceeding and its belief in damage for purposes of Section 2(d) claim) (citing

Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000)).

III. Section 2(d) Claim

Trademark Act Section 2(d) prohibits the registration of a mark that

[c]onsists of or comprises a mark which so resembles a mark registered in the

Patent and Trademark Office, or a mark or trade name previously used in the

United States . . . and not abandoned, as to be likely, when used on or in

connection with the goods of the applicant, to cause confusion, or to cause

mistake, or to deceive.

15 U.S.C. § 1052(d); see also Cunningham, 222 F.3d at 946; Life Zone Inc. v.

Middleman Grp. Inc., No. 91160999, 2008 WL 2781162, at *6 (TTAB 2008).

A. Priority

Under Section 2(d), an opposer must prove ownership of a prior-filed application

or a registration, or else prove priority of use. Where, as here, an opposition is based

on ownership of registered marks, those registrations are of record, and the applicant

has not counterclaimed to cancel them, priority is not at issue with respect to the

registered marks for the identified goods. See, e.g., New Era Cap, 2020 WL 2853282,

at *10; Top Tobacco LP v. N. Atl. Operating Co., No. 91157248, 2011 WL 6099691, at

*6 (TTAB 2011) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400

(CCPA 1974)); Itel Corp. v. Ainslie, No. 91072956, 1988 WL 252407, at *2 (TTAB

1988) (“[B]ecause of the existence of opposer’s valid and subsisting registration, it

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Opposition No. 91277224

need not prove prior use as to the services recited therein.”). Opposer has priority

based on its pleaded registered marks for the goods identified in the registrations.28

Opposer also attempts to show prior common law rights in the mark DANKE

HEIßT MERCI by introducing under notice of reliance printouts dated May 15, 2023

from AMAZON.COM. The printouts are mostly blurry and illegible; however, we can

ascertain Opposer’s DANKE HEIßT MERCI mark along with the description “Merci

Fine Marzipan Chocolates Candy Original German Chocolate,” which are listed for

sale.29 Aside from the fact that the printouts constitute hearsay and cannot be used

to prove a date of first use in commerce, the date of these printouts is after Applicant’s

priority filing date of March 26, 2021. See Spiritline Cruises LLC v. Tour Mgmt.

Servs., Inc., No. 91224000, 2020 WL 636467, at *3 (TTAB 2020) (Internet printouts

properly introduced under a notice of reliance without supporting testimony are

considered only for what they show on their face rather than for the truth of the

matters asserted therein). There is no testimony that establishes use of DANKE

28 Opposer also asserts that it has used the mark DANKE HEIßT MERCI/DANKE HEIST

MERCI in Germany and on German websites. 29 TTABVUE 6; 18 TTABVUE 3 (Antje

Baumgardt, Opposer’s Marketing Director testified that the “trademark ‘Danke heißt merci’

is used on [Opposer’s] merci website at www.merci.de/de/start” and the goods bearing the

DANKE HEIßT MERCI mark and appears on the “Amazon.de website in connection with the

sale of Merci chocolates.”). Opposer argues that delivery to the United States of its products

is available but there is no evidence of record that any sales to U.S. consumers were made

via these German websites before Applicant’s constructive use date. 29 TTABVUE 8. Use in

Germany and on German websites without distribution or sales to the U.S. is insufficient to

establish common law rights in the mark in the United States. Meenaxi Enters., Inc. v. Coca-

Cola Co., 38 F.4th 1067, 1074 (Fed. Cir. 2022) (“With respect to international usage, a

trademark right generally extends only to countries in which the mark is used.”); In re Well

Living Lab Inc., No. 86440401, 2017 WL 2876809, at *4 n.10 (TTAB 2017) (foreign websites’

probative value depends on the extent to which they are accessible to and viewed by U.S.

consumers).

29 21 TTABVUE 13-17.

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Opposition No. 91277224

HEIßT MERCI in the United States before Applicant’s priority date. See id. Opposer

thus has not proven priority in the DANKE HEIßT MERCI/DANKE HEIST MERCI

common law mark, and we therefore give no further consideration to Opposer’s

Section 2(d) claim based on this mark.

B. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the

probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont

de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (setting forth factors to be

considered) (“DuPont”). We consider the likelihood of confusion factors for which there

is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir.

2019). “Not all of the DuPont factors are necessarily ‘relevant or of equal weight in a

given case, and any one of the factors may control a particular case.’” Citigroup Inc.

v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1355 (Fed. Cir. 2011) (quoting In re

Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003)); In re Shell Oil Co., 992

F.2d 1204, 1206 (Fed. Cir. 1993) (“the various evidentiary factors may play more or

less weighty roles in any particular determination”). In any likelihood of confusion

analysis, two key considerations are the similarities between the marks and the

similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard

Paper Co., 544 F.2d 1098, 1103 (CCPA 1976) (“The fundamental inquiry mandated

by § 2(d) goes to the cumulative effect of differences in the essential characteristics of

the goods and differences in the marks.”).

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Opposition No. 91277224

Initial Matter – Focusing Our Analysis on MERCI Registration

In determining Opposer’s likelihood of confusion claim, we focus on Opposer’s

typed mark MERCI that is the subject of the Registration No. 2318584 for “chocolate

and chocolates” in International Class 30 (the “’584 Mark” or “’584 Registration”)

because it is the closest of Opposer’s pleaded marks to Applicant’s mark. If confusion

is likely between this mark and Applicant’s mark for the goods identified in the

registration, there is no need for us to consider whether there is a likelihood of

confusion with respect to the other pleaded marks; conversely, if there is no likelihood

of confusion between Applicant’s mark and this mark, then there would be no

likelihood of confusion with respect to the other pleaded marks. See Sock It To Me,

Inc. v. Fan, No. 91230554, 2020 WL 3027605, at *9 (TTAB 2020) (confining Section

2(d) analysis to most similar pleaded mark) (citing N. Face Apparel Corp. v. Sanyang

Indus. Co., No. 91187593, 2015 WL 6467820, at *7 (TTAB 2015)).

Similarity or Dissimilarity of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of the

marks in their entireties, taking into account their appearance, sound, connotation

and commercial impression.30 DuPont, 476 F.2d at 1361.

The issue is not whether the marks can be distinguished when subjected to a side-

by-side comparison, but rather whether the marks are sufficiently similar in terms of

30 Applicant asserts that the Examining Attorney approved the Application after conducting

a search of “the USPTO database … and found no conflicting marks.” 33 TTABVUE 9

(emphasis omitted). The Board is not bound by the examining attorney’s findings or decisions.

If we were, there would be no need for statutorily mandated opposition proceedings pursuant

to 15 U.S.C. § 1063.

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Opposition No. 91277224

their overall commercial impression that confusion as to the source of the goods

offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph

Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012). The focus is on the recollection

of the average purchaser, who normally retains a general rather than a specific

impression of trademarks. Sage Therapeutics, Inc. v. Sageforth Psych. Servs., LLC,

No. 91270181, 2024 WL 1638376, at *5 (TTAB 2024) (quoting In re i.am.symbolic, llc,

No. 85916778, 2018 WL 3993582, at *4 (TTAB 2018)). We keep in mind that where,

as here, the goods are identical and legally identical, as discussed in more detail

herein,31 “‘the degree of similarity necessary to support a conclusion of likely

confusion declines.’” Viterra, 671 F.3d at 1363 (quoting Century 21 Real Estate Corp.

v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992)).

a. Applicability of the Doctrine of Foreign Equivalents

As a threshold matter, we note that the parties concentrate much of their briefing

on the applicability of the doctrine of foreign equivalents.32 Under the doctrine of

foreign equivalents, foreign words used as a mark are translated into English and

then tested for likelihood of confusion. In re Vetements Grp. AG, 137 F.4th 1317, 1325

(Fed. Cir. 2025). Generally, the Board applies the doctrine of foreign equivalents

when one mark is in the English language and the other is in a foreign language.

Ricardo Media Inc. v. Inventive Software, LLC, No. 91235063, 2019 WL 3956987, at

*8 (TTAB 2019). In certain circumstances, however, the Board has applied the

31 See discussion in Section III(B)(4).

32Opposer’s Brief, 29 TTABVUE 18-22; Applicant’s Brief, 33 TTABVUE 11-19; Rebuttal

Brief, 37 TTABVUE 7-10.

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Opposition No. 91277224

doctrine of foreign equivalents when considering two marks from different foreign

languages or from the same foreign language. Miguel Torres S.A. v. Casa Vinicola

Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998) (translating marks in Italian

and Spanish); In re Lar Mor Int’l, Inc., 1983 WL 51840, at *2 (TTAB 1983) (comparing

marks TRES JOLIE and BIEN JOLIE because U.S. consumers with even a

“rudimentary” understanding of French would understand the meaning of the marks

based on the nature of the terms).

Having considered the parties’ arguments and evidence of record, we find it

appropriate to apply the doctrine to these marks. French and German are common,

modern languages.33 The record further demonstrates that the ordinary U.S.

purchaser would stop and translate the French and German words for “thank you.”

The record includes printouts from U.S. English dictionaries defining “merci” as a

French interjection meaning “thank you” and defining “danke” as a German

interjection meaning “thank you.”34 “Thank you” is an everyday, commonplace

33 We take judicial notice of the August 2022 United States Census Bureau’s “Language Use

in the United States: 2019” report which indicates that after English, French is the third

most common language in the United States and German is the sixth most common

language.WWW.CENSUS.GOV/CONTENT/DAM/CENSUS/LIBRARY/PUBLICATIONS/2022/ACS/ACS-

50.PDF. In re Weiss Watch Co., Ser. No. 86782562, 2017 WL 2876824, at *4 (TTAB 2017)

(Board “recognize[s] that German is a major, modern language,” takes judicial notice of U.S.

Census data “showing German is spoken in 1,109,216 U.S. households in 2009”); In re

Tokutake Indus. Co., Ser. No. 79018656, 2008 WL 2075681, at *3 n.1 (TTAB 2008) (Board

may take judicial notice of U.S. census data).

34 See, e.g., 21 TTABVUE 45, COLLINSDICTIONARY.COM defining “merci” in U.S. English as a

French interjection meaning “thank you”; id. at 64, COLLINSDICTIONARY.COM defining

“danke” in U.S. English as a German interjection meaning “thank you”; id. at 51-52, Random

House Unabridged Dictionary retrieved from DICTIONARY.COM, defining “danke” as a

German interjection meaning “thank you” and indicating that words related to danke are

“thanks, gracias, merci, much obliged”; and id. at 74, MERRIAM-WEBSTER.COM defining

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Opposition No. 91277224

expression, and thus many members of the U.S. public, even those who have only a

rudimentary acquaintance with French and German, are likely to understand the

significance of the respective terms. Vetements, 137 F.4th at 1327 (holding it was

appropriate for the Board to apply the doctrine of foreign equivalents to the French

word “vetements” because, among other things, “the word in question is a simple and

common word—the word for clothing”).

The fact that MERCI and DANKE appear in U.S. English dictionaries, defined as

foreign terms, establishes that U.S. consumers are likely to be familiar with both

foreign language words and translate the words to understand their English

meaning. Cf. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965

(Fed. Cir. 2015) (“Evidence of the public’s understanding of a proposed mark may be

obtained ‘from any competent source, such as consumer surveys, dictionaries,

newspapers and other publications.”’) (quoting In re Northland Aluminum Prods.,

Inc., 777 F.2d 1556, 1559 (Fed. Cir. 1985)); Tea Bd. of India v. Republic of Tea, Inc.,

No. 91118587, 2006 WL 2460188, at *22 (TTAB 2006) (“Dictionaries can be strong

evidence of the commonly understood meaning of a term.”). Opposer’s additional

evidence likewise establishes the ordinary U.S. purchaser is likely to stop and

translate DANKE. Opposer submitted evidence that the Urban Dictionary defines

the term as “A word of Germanic origin, meaning thanks/thank you; commonly used

“danke schoen” as a German phrase meaning “thank you very much.” We also take judicial

notice that MERRIAM-WEBSTER.COM defines “merci beaucoup” as a French phrase meaning

“thank you very much.” See https://www.merriam-webster.com/dictionary/merci (last visited

May 29, 2025).; see also In re Nextgen Mgmt., LLC, No. 88098031, 2023 WL 111145, at *4 n.5

(TTAB 2023) (“The Board may take judicial notice of dictionary definitions, including online

dictionaries which exist in printed format or have fixed regular editions.”).

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Opposition No. 91277224

in … chatrooms and forums” and includes sample chatroom transcripts that include

the term.35 In re Lizzo LLC, No. 88466264, 2023 WL 1507238, at *5 (TTAB 2023)

(Urban Dictionary evidence considered because corroborated by other sources); see

also In re Brunetti, 877 F.3d 1330, 1338-39 (Fed. Cir. 2017) (a definition from the

Urban Dictionary may be probative where appropriately considered). 36 Entry of the

word “danke” in the Urban Dictionary further establishes that U.S. consumers will

know its meaning.

In light of the preceding discussion, we find Applicant’s arguments that the

doctrine should not be applied because consumers will not translate two foreign

language marks and French is not a common, modern language, or that Opposer’s

adoption in 2013 of the slogan “Thank You means Merci” is a tacit acknowledgement

“that consumers require education about the meaning of “Merci’,”37 to be

unpersuasive. Applicant has not demonstrated that it is unlikely that U.S. consumers

will stop and translate these terms. See Vetements, 137 F.4th at 1331 (“[T]he burden

is on the party opposing translation to show that it is unlikely the ordinary [U.S.]

purchaser would stop and translate the word into its English equivalent. Placing the

burden on a party opposing translation takes into account the well-recognized tenet

35 21 TTABVUE 82, URBANDICTIONARY.COM.

36 Applicant does not rebut or otherwise call into question the accuracy of this evidence from

Urban Dictionary. In re Star Belly Stitcher, Inc., No. 85247730, 2013 WL 4635976, at *4 n. 3

(TTAB 2013) (“[T]he Board will consider dictionary definitions taken from the Urban

Dictionary so long as the non-offering party has an opportunity to rebut that evidence by

submitting other definitions that may call into question the accuracy of the particular Urban

Dictionary definitions ... [and] with the recognition of the limitations inherent in this

dictionary, given that anyone can submit or edit the definitions.”).

37 33 TTABVUE 15.

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Opposition No. 91277224

that ‘words from modern languages are generally translated into English.’”) (cleaned

up).

Based on the evidence of record, an appreciable number of U.S. purchasers are

capable of translating MERCI and DANKE, and in the context of the marks’ use with

chocolate,38 a purchaser with ordinary sensibilities would translate the wording. See

Vetements, 137 F.4th at 132-298 (“[W]e consider if the context in which the words

appear would cause the ordinary American purchaser to take the [mark] at face

value” rather than translate it). For all of these reasons, we apply the doctrine of

foreign equivalents and we consider the U.S. English meaning of the marks in

comparing their similarity because we find that U.S. consumers will understand their

meanings. Therefore, we find that the MERCI and DANKE marks would be

understood by U.S. consumers to mean “thank you.”

b. Comparison of the Marks

We now compare Applicant’s stylized mark with Opposer’s ’584 Mark

MERCI.

We find that the marks are highly dissimilar in appearance and sound.

is pronounced “DAHN-kuh” whereas MERCI is pronounced “mehr-SEE”.39 The marks

look and sound nothing alike. To state the obvious, and MERCI do not share

38 See discussion of evidence below showing that chocolate is often promoted as a “thank you”

gift.

39 33 TTABVUE 20; see 21 TTABVUE 45, 64.

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Opposition No. 91277224

any letter strings and although they are both two-syllable terms, overall they are

quite dissimilar in appearance and sound.40

Where the parties focus their arguments is in the marks’ respective connotations

and commercial impressions. As discussed above, U.S. consumers are likely to

understand that both marks mean “thank you.” Thus, they share the connotation of

gratitude. But as discussed below, the message of “thanks” is widely used in the

industry and pervasively associated with chocolate. Further, when it comes to

commercial impression, because the marks are derived from different foreign

languages and have distinct appearances and pronunciations, we find the marks are

somewhat dissimilar overall in commercial impression, despite sharing an identical

meaning.

In sum, the marks are very different in overall appearance and sound and have

somewhat distinct overall commercial impressions. We are not convinced by

Opposer’s argument that these differences are outweighed by the marks’ “exact same

connotation and meaning,”41 particularly because the shared meaning is a common

message related to chocolate. Rather, we find the differences in sound and appearance

and the differences in commercial impression outweigh the marks’ identical meaning

40 We are not persuaded by Applicant’s argument that the stylization of its mark “enhance[s]

the uniqueness of the ‘DANKE’ mark and provide[s] additional differentiation in the

marketplace.” 33 TTABVUE 20. Because the ’584 Mark is in typed format (the legal

equivalent of a standard character mark), it could be presented in the same manner as

Applicant’s mark, i.e., in the same font, style, size and color. See Viterra, 671 F.3d at 1363;

Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., No. 91194148, 2015 WL 5316485, at *8

(TTAB 2015) (citing Citigroup, 637 F.3d at 1349).

41 Opposer’s Brief, 29 TTABVUE 21.

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Opposition No. 91277224

and weigh strongly against a finding of likelihood of confusion. See Sarkli, 721 F.2d

at 355 (“But where the only similarity between the marks is connotation, a much

closer approximation is necessary than has been shown here to justify a refusal to

register on that basis alone where the marks otherwise are totally dissimilar.”). The

first factor therefore weighs against a finding of likelihood of confusion.

Strength/Weakness of Opposer’s Mark

We now consider the strength or weakness of Opposer’s mark MERCI as used in

connection with chocolate because such a determination helps inform us as to its

scope of protection. See Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022

WL 2188890, at *11-12 (TTAB 2022) (quoting DuPont, 476 F.2d at 1361). When

evaluating the strength or weakness of a mark, we look at the mark’s inherent

strength based on the nature of the term itself, and its commercial strength in the

marketplace. Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362-63 (Fed. Cir. 2023) (“Two

of the DuPont factors (the fifth and sixth) consider strength.” The fifth factor

measures a mark’s marketplace strength while the sixth factor addresses both

conceptual and commercial strength); In re Chippendales USA, Inc., 622 F.3d 1346,

1353-54 (Fed. Cir. 2010) (measuring both conceptual and marketplace strength); see

also Made in Nature, 2022 WL 2188890, at *11-12 (quoting DuPont, 476 F.2d at

1361); New Era Cap, 2020 WL 2853282, at *12 (“[T]he strength of a mark is not a

binary factor, but varies along a spectrum from very strong to very weak.”) (quoting

In re Coors Brewing Co., 343 F.3d 1340, 1345 (Fed. Cir. 2003)). The fifth DuPont factor

enables an opposer to prove that its pleaded mark is entitled to an expanded scope of

protection by adducing evidence of the fame of the prior mark (sales, advertising,

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Opposition No. 91277224

length of use). By contrast, the sixth DuPont factor allows an applicant to argue that

confusion is less likely by adducing evidence of conceptual and commercial weakness.

Spireon, 71 F.4th at 1362. For the reasons explained, we find that the thirteenth

DuPont factor, any other established fact probative of the effect of use, also is

implicated here.

a. Fifth DuPont Factor

Turning to commercial strength or fame under the fifth DuPont factor, “[a] mark

with extensive public recognition and renown deserves and receives more legal

protection than an obscure or weak mark.” Omaha Steaks, 908 F.3d at 1319 (quoting

Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 353 (Fed. Cir. 1992));

Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 851 (Fed. Cir. 1992)

(citation omitted) (“A well-known mark enjoys an appropriately wider latitude of legal

protection, for similar marks tend to be more readily confused with a mark that is

already known to the public.”). Such strength rests on the extent to which “a

significant portion of the relevant consuming public … recognizes the mark as a

source indicator.” Joseph Phelps Vineyards Holdings, LLC v. Fairmont Holdings,

LLC, 857 F.3d 1323, 1324-25 (Fec. Cir. 2017) (citing Palm Bay Imps, 396 F.3d at

1374-75 (Fed. Cir. 2005)). In the context of a likelihood of confusion analysis, the

commercial strength of a mark is not a binary factor. Rather, it “varies along a

spectrum from very strong to very weak.” Joseph Phelps Vineyards, 857 F.3d at 1325

(quoting Palm Bay Imps., 396 F.3d at 1374-75).

Under the fifth factor, commercial strength or fame may be measured not only

directly by consumer surveys or declarations but also indirectly by the volume of sales

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Opposition No. 91277224

and advertising expenditures in connection with the identified goods or services sold

under the mark, and supported by other indicia such as length of time of use of the

mark; widespread critical assessments; notice by independent sources of the goods or

services identified by the marks; the general reputation of the goods or services; and

social media presence. Weider Publ’ns, LLC v. D & D Beauty Care Co., No. 91199352,

2014 WL 343269, at *6 (TTAB 2014); see also Bose Corp. v. QSC Audio Prods. Inc.,

293 F.3d 1367, 1371 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate

proof of strength). Depending on the industry, some context in which to place raw

statistics may be necessary (e.g., the substantiality of the sales or advertising figures

for comparable types of products or services). Bose, 293 F.3d at 1375.

A high degree of fame, if it exists, plays a dominant role in the likelihood of

confusion analysis because famous marks enjoy a broad scope of protection or

exclusivity of use. Because of the extreme deference that we accord a famous mark in

terms of the wide latitude of legal protection it receives, and the dominant role fame

plays in the likelihood of confusion analysis, it is the duty of the party asserting that

its mark falls on the higher end of the commercial strength of fame spectrum to

clearly prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, No. 91160856,

2007 WL 749713, at *5 (TTAB 2007) (“It is the duty of a party asserting that its mark

is famous to clearly prove it.”) (citation omitted), cited in Coach Servs., 668 F.3d at

1367.

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Opposition No. 91277224

The record demonstrates use of Opposer’s MERCI mark on chocolate since 196542

throughout the U.S.43 in various national retail stores including Walmart, Kroger,

Walgreens, CVS, Target, Publix, Dollar General, Aldo, Costco and Albertsons. 44 The

MERCI mark “is displayed on the product packaging, on the product wrapper and

engraved on the chocolate bar.”45 Opposer’s President testifies that Opposer’s total

sales from 2017-2022 in the U.S. were in excess of $100 million;46 and that its

presence on social media marketing platforms from 2017-2022 is “significant” with

105,000 followers on Instagram and Facebook combined, “390 million impressions,

1.5 million engagements, 9 million video views, and 565,000 link clicks.” 47 Opposer

did not make of record its annual U.S. advertising figures.48 Instead, Opposer points

to its promotional efforts which include advertisements in online publications such

as Martha Stewart, Real Simple, Taste of Home and Reader’s Digest,49 as well as,

“[f]or over 20 years,” commercials on television channels including Bravo TV, the

42 Baumgardt Declaration, 18 TTABVUE 3, ¶ 5.

43Cook Declaration, 17 TTABVUE 3, ¶ 10; id. at 11-42 (invoices from 2006-2023 for

customers in various states including Maine, Illinois, Oregon, Rhode Island, Texas,

Pennsylvania, Wisconsin, and Kentucky).

44 Id. at 3, 5, ¶¶ 7, 18; id. at 61-65.

45 Id. at 2, ¶ 6.

46 Id. at 5, ¶ 21; see id. at 11-42.

47 Id. at ¶ 22.

48 Opposer argues, without evidentiary support, that the “ad expenditures necessary to sell

Opposer’s products in more than 100 countries clearly is [sic] significant.” 37 TTABVUE 13.

“Attorney argument is no substitute for evidence.” Cai v. Diamond Hong, Inc., 901 F.3d 1367,

1371 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284

(Fed. Cir. 2005)).

49 Cook Declaration, 17 TTABVUE 5, ¶ 19; id. at 66-70.

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Opposition No. 91277224

Hallmark Channel, the Oprah Winfrey Network, and during TV shows such as the

Kelly Clarkson Show, Modern Family, Inside Edition and Access Hollywood.50 In

December 2021, MERCI chocolate commercials “were broadcast approximately two

thousand (2,000) times,” and “have been viewed by millions of consumers.”51

Applicant criticizes Opposer’s marketplace evidence arguing that “Opposer lumps

together all its registered marks without demonstrating which specific marks have

gained distinctiveness and strength individually”;52 and that although Opposer has

listed geographic locations its commercials have aired,

there are no details involving ad expenditures, merely a listing of locations where

the commercials involving the Merci Marks have been broadcasted. This has little

probative value and may also be misleading, because the Board will be unable to

have a proper understanding of how advertising expenditures for the brand

translate into whether customers recognize Opposer’s marks. Opposer does not

contextualize advertising efforts.53

Opposer’s evidence of sales and marketing efforts are indeed provided without

context. See Omaha Steaks Int’l, 908 F.3d at 1320 (quoting Bose, 293 F.3d at 1375

(“raw numbers alone in today’s world may be misleading.”)). Notwithstanding the

lack of market share evidence or other evidence to put Opposer’s sales and marketing

figures into context (e.g. how Opposer’s MERCI products rank in terms of sales in the

trade), Opposer’s decades of use and advertising of the MERCI mark and U.S. sales

50 Id. at 5-6, ¶ 23; id. at 82-84.

51 Id. at 6, ¶ 23.

52 33 TTABVUE 21.

53 Id. at 22 (emphasis omitted).

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Opposition No. 91277224

in excess of $100 million from 2017-2022 supports that the mark has some

commercial strength in the marketplace.

We are focused on Opposer’s registered MERCI mark in typed format, which the

evidence shows appears prominently on Opposer’s product packaging, is engraved on

its chocolate bars, and is featured in its advertising, including television, online

publications, social media and in-store sale displays as shown in the television

advertising screenshots below.54

54 Cook Declaration, 17 TTABVUE 2-3, ¶¶ 6, 9; id. at 5-6, ¶¶ 18-20, 22-23; id. at 43-84.

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Opposition No. 91277224

.55

As to Opposer’s social media presence, Applicant argues that when compared to

famous well-known U.S. chocolate brands such as SNICKERS with “703k followers

55 Id. at 84.

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Opposition No. 91277224

on Instagram … and 9.[1] million on Facebook”56 and HERSHEY’S with “505k

followers on Instagram … and 9.[2] million on Facebook,”57 Opposer’s social media

presence is “modest at best, with only 11.5k followers on Instagram … and 92,000 on

Facebook.”58 Applicant notes that Opposer’s Facebook page “content [is] unavailable

as recently as April 1, 2024.”59 The number of followers listed on the third-party

website printouts is hearsay. But even if Opposer’s social media presence were not as

great as that of its competitors, Kelly Cook’s testimony regarding Opposer’s social

media exposure reflects actual consumer traffic and exposure to its MERCI products

indicating that there is some level of consumer awareness of Opposer’s products. See

GJ & AM, 2021 WL 2374670, at *21 (evidence of consumer reviews “somewhat

probative that there were at least 1,000 purported purchasers of Applicant’s products

who wrote reviews for the product”).

Applicant argues that “Opposer has failed to provide any substantive evidence

demonstrating the extent of actual recognition by the American public for its mark

… Instead, Opposer[’s] sole evidence is a printout of the Harris Poll.”60 Opposer’s

Harris Poll data is from June 2021-August 2022, which Opposer asserts indicates

that “aided awareness of Merci chocolates among U.S. consumers over the age of

56 33 TTABVUE 21; see 25 TTABVUE 115-16, 128 (Applicant has identified the number of

likes (9.3 million) as the number of followers which is listed as 9.1 million).

57 33 TTABVUE 21-22; see 25 TTABVUE 117-18, 126 (Applicant has identified the number

of likes (9.3 million) as the number of followers which is listed as 9.2 million).

58 33 TTABVUE 21; 17 TTABVUE 72, 75; 21 TTABVUE 35, 38.

59 33 TTABVUE 21; 25 TTABVUE 121.

60 33 TTABVUE 23.

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Opposition No. 91277224

eighteen (18) was approximately 50%.”61 Opposer submits a table purporting to show

the poll results without any details about the methodology except to say it used “aided

awareness.” “In general, the Board has discouraged heavy reliance on aided

awareness to prove fame.” Promark Brands Inc. v. GFA Brands, Inc., No. 91194974,

2015 WL 1646447, at *13 (TTAB 2015) (citing Carefirst of Md., Inc. v. Firsthealth of

the Carolinas, Inc., No. 91116355, 2005 WL 2451671, at *16-17 (TTAB 2005), aff’d,

479 F.3d 825 (Fed. Cir. 2007)). Opposer’s poll utilizing aided awareness lacks

significant evidentiary value. Id. (The Board held that because the survey questions

“recited the SMART ONES mark among the 6 suggested responses, we find the

results of [the] aided awareness question to lack significant evidentiary value on the

question of fame.”).

We find that, taken together, the evidence discussed above suggests a moderate

level of commercial success and brand recognition. We find that MERCI has moderate

commercial strength on the fame spectrum under the fifth DuPont factor.

b. The Sixth and Thirteenth DuPont Factors

Applicant did not challenge the commercial strength of Opposer’s mark MERCI

by introducing evidence of third-party marketplace use of similar marks for similar

goods. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39 (Fed. Cir.

2015) (evidence of third-party trademark use bears on commercial strength under the

sixth DuPont factor). We therefore start by considering the conceptual strength of the

’584 Mark under the sixth factor. Spireon, 71 F.4th at 1362.

61 Cook Declaration, 17 TTABVUE 6, ¶ 24; see also id. at 85.

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Opposition No. 91277224

Because the ’584 Mark issued on the Principal Register without a claim of

acquired distinctiveness under Trademark Act Section 2(f), the mark is presumed to

be inherently distinctive for the goods listed in the registration. Trademark Act

Section 7(b), 15 U.S.C. § 1057(b); Tea Bd. of India, 2006 WL 2460188, at *21 (a “mark

that is registered on the Principal Register is entitled to all Section 7(b) presumptions

including the presumption that the mark is distinctive and moreover, in the absence

of a Section 2(f) claim in the registration, that the mark is inherently distinctive for

the goods”).

Nevertheless, if under the sixth DuPont factor there is evidence that a mark, or

an element of a mark, is commonly used or registered by many different third parties

for similar goods or services, that may indicate that the mark or common element has

some conceptual weakness. See, e.g., Spireon, 71 F.4th at 1363 (citations omitted)

(third-party registrations containing an element that is common to both the opposer’s

and the applicant’s marks can show that that element has a normally understood and

well-recognized, conceptually weak meaning); Jack Wolfskin Ausrustung Fur

Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374

(Fed. Cir. 2015) (“[E]vidence of third-party registrations is relevant to ‘show the sense

in which a mark is used in ordinary parlance,’ . . . that is, some segment that is

common to both parties’ marks may have ‘a normally understood and well-recognized

descriptive or suggestive meaning, leading to the conclusion that segment is

relatively weak.”’) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,

1339 (Fed. Cir. 2015)). Unlike the marks in Spireon, Jack Wolfskin and Juice

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Opposition No. 91277224

Generation, Opposer’s and Applicant’s marks do not share a “common” element; the

only commonality is the similarity in meaning.

Moreover, Applicant submitted only one third-party use-based registration for a

mark that includes the term “merci”: for goods including “sauces,”62

which is broad enough to include chocolate sauces.63 In re Country Oven, Inc., No.

87354443, 2019 WL 6170483, at *5 (TTAB 2019) (“Just as we must consider the full

scope of the goods and services as set forth in the application and registration under

consideration, we must consider the full scope of the goods and services described in

a third-party registration.”). One third-party registration incorporating the word

MERCI for similar goods falls far short of demonstrating that MERCI is conceptually

weak under the sixth DuPont factor. Sabhnani, 2021 WL 6072822, at *13 n.20 (“[I]n

Juice Generation, there were at least twenty-six relevant third-party uses or

registrations of record . . . and in Jack Wolfskin, there were at least fourteen.”)

(quoting Morinaga Nyugyo, 2016 WL 5219811, at *9 n.8).

62 22 TTABVUE 24 (Registration No. 5478650).

63 The remaining seventeen (17) live third-party use-based registrations are for THANK

YOU-formative marks and word marks in languages other than French that translate to

“thank you.” Because these registered marks do not include the word MERCI as a common

element, we do not find them persuasive under the sixth DuPont factor. Many of the third-

party registrations also are not relevant because they identify goods that have not been

proven related to chocolate. See Omaha Steaks Int’l, Inc., v. Greater Omaha Packing Co., 908

F.3d 1315, 1324-25 (Fed. Cir. 2018). In addition, two of the registrations are cancelled, and

thus, have no probative value. 22 TTABVUE 10-13, 65-67. Made in Nature, 2022 WL

2188890, at *15 (disregarding cancelled third-party registrations because “[a] cancelled or

expired registration has no probative value other than to show that it once issued and it is

not entitled to any of the statutory presumptions of Trademark Act Section 7(b)”).

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Opposition No. 91277224

But that is not the end of our analysis of the conceptual strength of Opposer’s

MERCI mark. As noted, the marks appear in two different foreign languages and the

only similarity between the marks is in their meaning as “thank you.” Applicant

introduced the results of a Google® images search intended to show that “‘Thank you’

is commonly associated with goods made of chocolate.”64 Opposer counters that it has

“developed a unique theme to say ‘thank you’ with candy.”65 We consider these

arguments and relevant evidence under the thirteenth DuPont factor that allows us

to consider any other established fact probative of the effect of use. DuPont, 476 F.2d

at 1361.

A portion of the results of Applicant’s Google® images search is reproduced

below:66

64 Applicant’s Notice of Reliance, 25 TTABVUE 8, 100-09, ¶ 23 and Exhibit 45.

65 29 TTABVUE 22.

66 Applicant’s Notice of Reliance, 25 TTABVUE 100. Although Applicant argues that the

common association of “thank you” with chocolates undercuts Opposer’s argument that

MERCI is a strong mark, see 33 TTABVUE 22, Applicant does not specify the DuPont factor

under which these third party uses should be analyzed. Id. at 8, ¶23. Inasmuch as the third

party uses do not appear to be trademark uses, we find they are pertinent to the 13th DuPont

factor.

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Opposition No. 91277224

.67

67 Id. at 100. Generally, search summaries in the nature of listings of websites have limited

probative value because they are not the websites themselves and the information is

truncated. See Edom Labs. Inc. v. Lichter, No. 91193427, 2012 WL 1267961, at *5 (TTAB

2012); In re Int’l Bus. Machs. Corp., No. 75581859, 2006 WL 3704639, at *3 n.3 (TTAB 2006)

(listings of search results from Google database of limited probative value because the

excerpts are extremely truncated). The search evidence here is slightly different as it consists

of image search results. Although truncated, we find the uncontroverted Google® images

search results that Applicant introduced more probative than a typical search summary

because they (i) include product images from which we can ascertain the nature of the uses,

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Opposition No. 91277224

The record shows that consumers will not perceive the theme of saying “thank you”

with chocolate as a unique theme, but rather, would be influenced by the common,

non-trademark use of “thank you” in connection with chocolate. Cf. D.C. One

Wholesaler, Inc. v. Chien, No. 91199035, 2016 WL 7010638, at *7 (TTAB 2016) (“The

widespread ornamental use of the phrase by third parties ‘is part of the environment

in which the [mark] is perceived by the public and ... may influence how the [mark]

is perceived.”’) (quoting In re Hulting, No. 77666826, 2013 WL 5407310, at *2 (TTAB

2013)); In re Chung, Jeanne & Kim Co., No. 73369174, 1985 WL 72090, at *4 (TTAB

1985) (the common practice in the trade to use a design as an ornamental feature is

evidence that the design is not unique or unusual in the field and that it will be

viewed by the relevant public as ornamentation rather than as a trademark).

Based on the record, we find under the thirteenth DuPont factor that the shared

meaning of the marks at issue, “thank you”, is conceptually weak when used in

relation to chocolate because consumers are conditioned to seeing this phrase used as

an expression of gratitude. Cf. In re Medline Indus., Inc., No. 87680078, 2020 WL

1485709, at *4 (TTAB 2020) (“we find, under the thirteenth DuPont factor, that the

third-party non-trademark uses of shades of green on medical gloves tend to impair

the cited Supplemental Register mark’s ability to acquire distinctiveness, and to limit

(ii) identify the names of retailers, and (iii) in some instances suggest the chocolate is for sale

(e.g., “in stock”). See In re Wal-Mart Stores, Inc., No. 86261962, 2019 WL 193990, at *10 n.38

(TTAB 2019) (“Web-based information that includes greater context for the use of a term,

such as a complete webpage, will have greater probative value in determining how a term is

perceived”).

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Opposition No. 91277224

its scope of protection if it did acquire distinctiveness.”); Specialty Brands, Inc. v.

Coffee Bean Distribs., Inc., 748 F.2d 669, 675 (Fed. Cir. 1984) (in likelihood of

confusion analysis, third-party use, including descriptive use, “can demonstrate the

ordinary dictionary meaning of a term or the meaning of a term to those in the trade”).

Our finding is consistent with Opposer’s promotion of its MERCI mark, the mark’s

readily understood significance as meaning “thank you,” and the fact that Opposer’s

chocolates can be and are used for “thank you” gifts.68 For example, Opposer uses

various slogans including, “Thank you means merci”; “the sweetest way to say thank

you”; “Nothing says thank you like Merci”; and “This holiday season say thank you

with Merci.”69 In other words, Opposer’s product marketing underscores the

conceptual weakness of the known meaning of term MERCI. Thus, under the

thirteenth DuPont factor, we find that because the marks in two different foreign

languages share only a similar meaning, and are otherwise different in appearance,

sound, and commercial impression, the conceptual weakness of the meaning weighs

against a finding of a likelihood of confusion.

In sum, while MERCI is not conceptually weak under the sixth DuPont factor, the

common use of “thank you” in connection with chocolate supports that the meaning

of the mark MERCI is conceptually weak under the thirteenth DuPont factor.

68 Cook Declaration, 17 TTABVUE 3-4, ¶¶ 11-17.

69 Id. at 44-45, 47-54, 56, 58, 66-72, 75, 77.

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Opposition No. 91277224

c. Summary

Based on the evidence as a whole, we find Opposer has proven moderate

commercial strength in its MERCI mark for chocolate through impressive nationwide

sales and advertising featuring the MERCI mark for several decades. We find that

the fifth DuPont factor favors a finding of likelihood of confusion.

Applicant has not proven the mark MERCI is commercially or conceptually weak

under the sixth DuPont factor so that factor is neutral. Applicant, however, has

proven that the meaning of the mark MERCI is conceptually weak as its readily

known meaning “thank you” is a common sentiment expressed with giving chocolate.

Thus, the thirteenth factor weighs against a likelihood of confusion because the

shared meaning of two foreign language marks is conceptually weak.

Similarity or Dissimilarity of the Goods, Trade Channels and Consumers

The second DuPont factor concerns the “similarity or dissimilarity and nature of

the goods or services as described in an application or registration...,” and the third

DuPont factor concerns the “similarity or dissimilarity of established, likely-to-

continue trade channels.” DuPont, 476 F.2d at 1361.

The goods are literally or legally identical. Both the Application and the ’584

Registration identify “chocolate.” In addition, Opposer’s identification of “chocolate”

is broad enough to encompass Applicant’s “chocolate bars.” See, e.g., Look Cycle Int’l

v. Kunshan Qiyue Outdoor Sports Goods Co., No. 92079409, 2024 WL 3739358, at *5

(TTAB 2024); Conopco, Inc. v. Transom Symphony Opco, LLC, No. 91256368, 2022

WL 874335, at *7 (TTAB 2022) (quoting In re Hughes Furniture Indus., Inc., No.

85627379, 2015 WL 1734918, at *3 (TTAB 2015) (“Applicant’s broadly worded

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Opposition No. 91277224

identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified

‘residential and commercial furniture.’”)).

Because the goods are identical and legally identical and there are no restrictions

on trade channels or consumers in the Application and ’584 Registration, we must

presume that the goods travel through all of the same channels of trade to all of the

same classes of purchasers.70 Cai, 901 F.3d at 1372 (“With respect to similarity of the

established trade channels through which the goods reach customers, the TTAB

properly followed our case law and ‘presume[d] that the identical goods move in the

same channels of trade and are available to the same classes of customers for such

goods....”’).

These DuPont factors weigh in favor of finding a likelihood of confusion.

Purchasing Care

The fourth DuPont factor relates to “conditions under which and buyers to whom

sales are made, i.e., ‘impulse’ vs careful, sophisticated purchasing.” DuPont, 476 F.2d

at 1361. Consumer sophistication, or a heightened degree of care when making a

purchasing decision, may tend to minimize likelihood of confusion. See, e.g., In re

N.A.D., Inc., 754 F.2d 996, 999-1000 (Fed. Cir. 1985) (because only sophisticated

purchasers exercising great care would purchase the relevant goods, there would be

no likelihood of confusion merely because of the similarity between the marks

NARCO and NARKOMED). Conversely, impulse purchases of inexpensive items are

70Indeed, Opposer asserts that the trade channels and consumers are the same, 29

TTABVUE 24, and Applicant does not dispute this assertion.

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Opposition No. 91277224

likely to be made with a lesser degree of care, increasing the likelihood of consumer

confusion. Palm Bay Imps., 396 F.3d at 1376 (“Purchaser sophistication may tend to

minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items

may tend to have the opposite effect.”).

The record shows that some chocolates are promoted for sale at relatively low

prices.71 However, because neither Applicant’s nor Opposer’s identification of goods

is limited to low-end, bargain priced chocolates on one hand or high-end expensive

chocolates on the other, we must assume that both identifications include chocolates

sold at all price ranges and quality. See In re Jump Designs LLC, No. 76393986, 2006

WL 1968602, at *5 (TTAB 2006). We further must assume that the types of buyers

overlap to include both the sophisticated chocolate aficionado as well as the ordinary

consumer. We must base our analysis “on the least sophisticated potential

purchasers.” Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1325

(Fed. Cir. 2014) (internal quotation marks omitted). Ordinary consumers of chocolate

are likely to exercise only ordinary care, and given the lack of price restrictions in the

identifications, they may even buy inexpensive chocolate on impulse. See Recot, v.

Becton, 217 F.3d 1322, 1329 (Fed. Cir. 2000) (“When products are relatively low-

priced and subject to impulse buying, the risk of likelihood of confusion is increased

because purchasers of such products are held to a lesser standard of purchasing

7129 TTABVUE 28. Opposer submits a retail display that is blurry but appears to list

Opposer’s product for $3.99 and an Amazon listing that reads “4 options from $14.95.” 17

TTABVUE 43, 55. In addition, Ms. Cook testified that Opposer sells its MERCI chocolates

through low-priced retailer Dollar General. 17 TTABVUE 3, ¶ 8.

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Opposition No. 91277224

care.”). For these reasons, the fourth factor weighs in favor of finding a likelihood of

confusion.

IV. Conclusion

The final step in analyzing likelihood of confusion is to weigh the DuPont factors

for which there has been evidence and argument; and to “explain the results of that

weighing;” and “the weight [we] assigned to the relevant factors.” Charger Ventures,

64 F.4th at 1384. “No mechanical rule determines likelihood of confusion, and each

case requires weighing of the facts and circumstances of the particular mark.” In re

Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir. 2010).

Applicant’s and Opposer’s goods are literally and legally identical under the

second DuPont factor, the trade channels and consumers for the parties’ identical and

legally identical goods are presumed to overlap under the third DuPont factor, and

the goods may be subject to impulse purchase under the fourth DuPont factor. Thus,

these factors weigh heavily in favor of finding likelihood of confusion.

Turning to the strength of Opposer’s ’584 Mark, Opposer’s MERCI mark has

moderate commercial strength in connection with chocolate and therefore, the fifth

DuPont factor favors a finding of likelihood of confusion. Applicant has not

demonstrated commercial or conceptual weakness of the MERCI mark under the

sixth factor. This factor is therefore neutral. Nevertheless, under the thirteenth

DuPont factor, we find the evidence reflects a conceptual weakness of the meaning of

the word MERCI in connection with chocolate. Thus, the thirteenth factor weighs

against finding a likelihood of confusion.

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Opposition No. 91277224

As to the comparison of the marks under the first DuPont factor, MERCI and

both mean thank you. But because “thank you” is widely used in the

industry and pervasively associated with chocolate, the similarity in meaning is

outweighed by the significant differences between the marks in sound and

appearance as well as the overall differences in commercial impression. The first

factor thus weighs heavily against finding a likelihood of confusion.

Weighing the factors, we conclude that the substantial differences in sound,

appearance and commercial impression of and MERCI under the first factor

coupled with the conceptual weakness of “thank you” — the shared meaning of the

terms and the only similarity between the marks — for chocolates under the

thirteenth factor are dispositive and outweigh the other factors. Cf. Oakville Hills

Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 1381-82 (Fed. Cir. 2016) (“a

single duPont factor may be dispositive in a likelihood of confusion analysis,

especially when that single factor is the dissimilarity of the marks”) (citing Odom’s

Tenn. Pride Sausage, Inc. v. FF Acquisition, L.L.C., 600 F.3d 1343, 1346-47 (Fed. Cir.

2010) (same); Heil, 2024 WL 4925901, at *38 (“Any of the DuPont factors may play a

dominant role.”).

We conclude that confusion is unlikely.

Decision: The opposition is dismissed.

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