Aurora Foods, Inc.v.J.S.B. Industries, Inc.

Trademark Trial and Appeal Board

Apr 19, 2004

No. 91118729 (T.T.A.B. Apr. 19, 2004)

Mailed: File Entry:
April 19, 2004 No. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Aurora Foods, Inc.
v.
J.S.B. Industries, Inc.
_____
Opposition No. 91118729
to application Serial No. 75683081
filed on April 14, 1999
_____
Michael R. Annis, Robert J. Lewis and Eric G. Enlow of
Blackwell Sanders Peper Martin LLP for Aurora Foods, Inc.
George E. Kersey, Esq. for J.S.B. Industries, Inc.
______
Before Hanak, Chapman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
J.S.B. Industries, Inc. (applicant) has applied to
register the mark shown below for goods identified as
"bakery products," in International Class 30.
This Opinion is Not
Citable as Precedent
of the TTAB
Opposition No. 91118729
2
The application is based on applicant's statement of its
bona fide intention to use the mark in commerce for the
identified goods. Applicant has entered a disclaimer of
exclusive rights to use of the words "THE ORIGINAL" and
"BAGELS."
Aurora Foods, Inc. (opposer) has opposed registration
of applicant's mark, essentially asserting that it has used
LENDER'S as a trade name and trademark in interstate
commerce "since 1927," and continues to so use the
designation; that it is the owner of three valid and
subsisting registrations of, respectively, LENDER'S,
LENDER'S BAGELS and LENDER'S SOFT BAGELS, all for "bagels";
that it is also the owner of valid and subsisting
registrations for LENDER'S NEW YORK STYLE BAGELS and for
LENDER'S, both for "bagels."1 Opposer also asserts that it
believes that its goods and those of applicant travel in the
same channels of trade to the same classes of purchasers;
that applicant's mark is "confusingly similar in appearance,
meaning, and trade dress to Opposer's marks"; and that any
eventual use by applicant of its mark will lead to confusion
or mistake among consumers, or that they will be deceived
1 We note that the first of the two registrations for LENDER'S
alone is in typed form and was registered on the Principal
Register under Section 2(f) of the Trademark Act, while the
second of the two LENDER'S marks is in stylized form and was
registered on the Supplemental Register. We discuss the status
of the various registrations, infra.
Opposition No. 91118729
3
and misled into concluding that there is a relationship
between opposer and applicant. Finally, opposer asserts
that its marks are famous and applicant's use and
registration of the applied-for mark would dilute the value
of opposer's marks.
Applicant expressly or effectively denied almost all
allegations of the notice of opposition. It did, however,
admit that the LENDER'S registration on the Principal
Register, Registration No. 1,172,496 is "valid, subsisting
and incontestable" (though it denied opposer's ownership of
that registration); and it admitted that it seeks to
register the mark shown in its involved application.
At trial, opposer filed a notice of reliance on four of
its five pleaded registrations.2 When a registration is
properly made of record by notice of reliance, but the
status of the registration changes between the time it was
made of record and the time the case is decided, the Board
will take judicial notice of the current status of the
registration. See TBMP Section 704.03(b)(1)(a) (2d ed. June
2003) and authorities cited therein. Accordingly, we note
that two of the four registrations, Registration No. 932,754
for LENDER'S (in stylized lettering) and Registration No.
2 According to Office records, the fifth, Registration No.
1,823,029 for LENDER'S NEW YORK STYLE BAGELS, was cancelled
shortly before the notice of reliance was filed, for opposer's
failure to file the necessary affidavit or declaration under
Section 8 of the Trademark Act, 15 U.S.C. § 1058.
Opposition No. 91118729
4
1,661,865 for LENDER'S SOFT BAGELS (in a label design), have
not been renewed by opposer and are now expired. As a
result, only two of opposer's five pleaded registrations
remain at issue in this case: Registration No. 1,172,496 for
the mark LENDER'S in typed form, and Registration No.
1,531,083 for LENDER'S BAGELS and a bag design (with BAGELS
disclaimed), as illustrated below.
By its notice of reliance, opposer has proven that
these two pleaded registrations are subsisting and owned by
opposer.3 Therefore, we find that opposer has established
its standing to oppose. See, e.g., Lipton Industries, Inc.
v. Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Also, Section 2(d) priority is not in issue as to
the goods identified in opposer’s registrations, i.e.,
3 We note, too, that the testimony of opposer's witness and
employee Donald Hayes, the vice-president and general manager for
opposer of Lender's Bagels, establishes opposer's acquisition of
the registrations and current use of the registered marks.
Coupled with applicant's admission in its answer that
Registration No. 1,172,496 for the mark LENDER'S in typed form is
valid and subsisting, the status and title of that registration
has been established independent of opposer's notice of reliance.
Opposition No. 91118729
5
bagels. See King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering any
evidence of record bearing on these factors, we are guided
by the principle that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
In regard to the goods identified in applicant's
application and in opposer's two registration(s), we note
that each of opposer's registrations covers one item,
"bagels"; that this is an item within the scope of the
broader identification listed in applicant's application
("bakery products"); and that applicant, on page one of its
brief, essentially concedes that its intention is to use the
applied for mark for bagels ("[applicant] has sought
registration for bagels under the Stylized Mark 'The
Original Bender Bagels'").
As for the parties' target classes of consumers and
channels of trade, there are no restrictions or limitations
Opposition No. 91118729
6
in the identifications and, therefore, we must presume that
the identified goods move in all customary channels of trade
to all potential consumers for such items. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Specifically, we
conclude that both parties could market their bagels to
wholesalers or retailers, through grocery stores,
convenience stores, and any other venue that typically would
sell bagels. The classes of prospective purchasers for each
would include the general public. As opposer correctly
observes, when marks will be used on identical goods and
will presumptively travel in the same channels of trade and
be marketed to the same classes of consumers, the involved
marks need not be as similar, to support a finding of
likelihood of confusion, as they would have to be if the
products and/or channels of trade and classes of consumers
were different. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992).
Turning to the similarity of the marks, we note again
that opposer's Registration No. 1,172,496 covers the mark
LENDER'S in typed form. Accordingly, because opposer is
free to change the typeface of its mark, we must consider
that it could appear in the same or similar typeface as that
employed by applicant, and may be used at any time without
Opposition No. 91118729
7
any design elements that might otherwise serve to
distinguish opposer's mark from applicant's mark. See INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB
1992), citing Phillips Petroleum Co. v. C. J. Webb, Inc.,
442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). In addition,
numerous exhibits to the Hayes testimony show that opposer
uses LENDER'S in conjunction with the generic term for its
goods, i.e., bagels.
It is a well established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, while the marks are compared in
their entireties, including descriptive or disclaimed
portions thereof, “there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 732 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1845 (Fed. Cir. 2000), and Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983). In this case, the words THE ORIGINAL in
applicant's mark are overwhelmed by the larger words BENDER
BAGELS. Moreover, the words THE ORIGINAL are laudatory and
have been disclaimed, as has the word BAGELS, which is
Opposition No. 91118729
8
generic for bagels. In re Ervin, 1 USPQ2d 1665 (TTAB 1986)
(THE "ORIGINAL" held laudatory for game equipment and
refused registration). Accordingly, the dominant and
source-indicating portion of applicant's mark clearly is
BENDER; and our comparison of opposer's LENDER'S mark and
applicant's mark necessarily focuses on the similarity of
LENDER'S and BENDER.
These two terms sound alike and, because opposer is
free to display this typed mark in the same or a similar
font as that employed by applicant, we must consider that
they could look alike in actual use. We do not find the
possessive form of opposer's mark to be a significant
difference between it and applicant's mark. Georgia-
Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB
1990) ("As to likelihood of confusion, we have no problem
concluding that confusion would be likely to occur if the
parties were to use their respective marks to identify their
respective services in the same geographic area. The marks
are virtually identical, differing by only a possessive
letter "s" in user's mark.").
Turning to a comparison of opposer's mark LENDER'S
BAGEL and a bag design with applicant's mark. Again, we
note that the words THE ORIGINAL in applicant's mark are so
small and laudatory as to be overlooked by many consumers.
While applicant's terms BENDER and BAGELS would be,
Opposition No. 91118729
9
according to the drawing of the mark, set forth in
contrasting colors or in a contrasting black and white
display, while the registration for opposer's mark LENDER'S
BAGELS and bag design does not show any contrast between
LENDER'S and BAGELS. Nonetheless, the record reveals that
opposer actually uses its LENDER'S BAGELS mark with
contrasting colors for each of those two words, a form of
use we find encompassed by its registration, which does not
claim that the words are limited to any particular color.
See Hayes exh. 35. In addition, both marks set forth the
words in outline form. Overall, while we find visual
differences between opposer's LENDER'S BAGELS mark and
applicant's mark, there also are similarities. More
importantly, LENDER'S BAGELS and BENDER BAGELS sound very
similar.
As to the connotations of the involved marks of opposer
and applicant, they each have the connotation of the name of
a bagel baker. This is so notwithstanding that applicant
does not use the possessive form BENDER'S.4
In assessing the involved marks, we have been careful
to keep in mind the normal fallibility of human memory and
the fact that consumers retain a general, rather than a
4 We take judicial notice that "bender" is defined as "a person
or thing that bends, as a pair of pliers" and as "U.S. slang. a
drinking spree." The Random House College Dictionary 125 (rev.
ed. 1982). We do not believe it likely that consumers of bagels
would ascribe either connotation to applicant's goods.
Opposition No. 91118729
10
specific, impression of trademarks/service marks encountered
in the marketplace. See Sakrete, Inc. v. Slag Processors,
Inc., 305 F.2d 482, 134 USPQ 245, 247 (CCPA 1962).
In sum, we find the involved marks are sufficiently
similar in sight, sound and connotation that confusion is
likely, given contemporary use of the marks on bagels.
Other significant factors in this case are the fame of
opposer's marks and the low cost of the involved items, such
that they may be purchased without a great deal of thought
or deliberation by any member of the general public.
As to the fame of opposer's marks, applicant has
essentially acknowledged the sufficiency of opposer's
evidence and we need not recite it. See applicant's brief,
pages 6-7. Applicant, however, argues that any fame
attributable to opposer's marks by virtue of its very
significant sales, advertising and superior market share,
can be given considerable weight only if it is first
determined that the involved marks are confusingly similar.
To be sure, there can be no likelihood of confusion when a
famous mark and one with which it is compared are entirely
dissimilar. However, applicant misapprehends the import of
the law on fame as a du Pont factor. See Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992) ("Thus, the Lanham Act's
tolerance for similarity between competing marks varies
Opposition No. 91118729
11
inversely with the fame of the prior mark. As a mark's fame
increases, the Act's tolerance for similarities in competing
marks falls."). For reasons we have outlined, the marks
involved in this case are very similar in sound, appearance
and connotation. Further they are or will be used on
identical goods. Under these circumstances the additional
fact that opposer's marks are famous heavily tilts the
balancing of the du Pont factors in opposer's favor.5
We add that even if opposer's marks were not famous,
the similarities of the involved marks and use on identical
goods would give rise to a likelihood of confusion, given
the low cost of the goods and the fact that they would be
purchased by members of the general public in routine
shopping in grocery stores, convenience stores and the like.
Kenner Parker, 22 USPQ2d at 1458; see also, Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669
223 USPQ 1281, 1285 (Fed. Cir. 1984), quoting from Planters
Nut & Chocolate Co. v. Crown Nut Co., Inc., 305 F.2d 916,
924-25, 134 USPQ 504, 511 (CCPA 1962) ("The law has clearly
been well settled for a longer time than this court has been
dealing with the problem to the effect that the field from
5 Applicant also argues that the unusual degree of brand
recognition of opposer's marks, brief, p. 7, means consumers
could not be confused by applicant's mark. Again, applicant
misapprehends the law, which holds that consumers that have been
exposed to a famous mark may actually exercise less care in
making their purchases. Kenner Parker, 22 USPQ2d at 1456.
Opposition No. 91118729
12
which trademarks can be selected is unlimited, that there is
therefore no excuse for even approaching the well-known
trademark of a competitor, that to do so raises 'but one
inference - that of gaining advantage from the wide
reputation established by appellant in the goods bearing its
mark,' and that all doubt as to whether confusion, mistake,
or deception is likely is to be resolved against the
newcomer, especially where the established mark is one which
is famous and applied to an inexpensive product bought by
all kinds of people without much care.")
Decision: The opposition is sustained and registration
to applicant is refused.