Dayton Nut Specialties, Inc.v.Fuqua Pecans, LLC

Trademark Trial and Appeal BoardMar 30, 2009

No. 91179464 (T.T.A.B. Mar. 30, 2009)

Mailed: March 30, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _______ Trademark Trial and Appeal Board _______ Dayton Nut Specialties, Inc. v. Fuqua Pecans, LLC _______ Opposition No. 91179464 to Application No. 77012333 filed on October 3, 2006 _______ M. Scott Alprin of Alprin Law Offices for Dayton Nut Specialties, Inc. Dave Fuqua for Fuqua Pecans, LLC, Pro Se. _______ Before Walters, Kuhlke and Bergsman, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Dayton Nut Specialties, Inc. filed its opposition to the application of Fuqua Pecans, LLC to register the standard character mark REDNECK NUTS for “nut meats; shelled nuts; snack mix consisting primarily of processed fruits, processed nuts and/or raisins,” in International Class 29, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91179464 2 and “unprocessed nuts,” in International Class 31.1 The application includes a disclaimer of NUTS apart from the mark as a whole. As grounds for opposition, opposer asserts that applicant’s mark, when applied to applicant’s goods so resembles opposer’s previously used mark REDNECK for “processed nuts” as to be likely to cause confusion, under Section 2(d) of the Trademark Act.2 Applicant, in its answer, made denials and admissions of the salient allegations of the claim, as we discuss below. The Record The record consists of the pleadings; the file of the involved application; various specified responses of applicant to opposer’s interrogatories and requests for admissions and numerous third-party registrations, made of record by opposer’s notice of reliance; and the testimony by declaration, as stipulated by the parties, of Kyle S. Maschino, opposer’s vice president, with accompanying exhibits. Applicant submitted the testimony by declaration 1 Application Serial No. 77012333, filed October 3, 2006, based upon an allegation of a bona fide intention to use the mark in commerce in connection with the identified goods. 2 Opposer is the owner of application serial no. 76672188, filed February 2, 2007, for the mark REDNECK for “processed nuts,” in International Class 29. Opposition No. 91179464 3 of its director, Dave Fuqua. Both parties filed briefs on the case. Factual Findings Through the uncontroverted declaration of Mr. Maschino, opposer’s vice president, and the exhibits thereto, the following facts have been established: Opposer was founded in 1923 and produces and sells primarily edible nut products and candy/chocolate products. Opposer has used REDNECK in connection with hot and spicy peanuts that it has produced and sold throughout the United States since at least 1997. Opposer’s target market for its peanuts is a wide range of purchasers and its sales have been continuous. Opposer markets its products, including its REDNECK peanuts, through catalogs, consisting of a wholesale catalog that opposer sends to specialty food retailers and a Yuletide catalog that opposer sends to holiday gift customers and grocery chain brokers. Opposer uses REDNECK in the design format shown below on the label of opposer’s peanut product, in the text of its catalogs, followed by a “TM,” and on its invoices. Opposition No. 91179464 4 Through the declaration of its director, Dave Fugua, applicant has established that owns and operates a pecan orchard in Leland, Louisiana and that it wholesales and retails whole and cracked pecans. The record includes twenty-eight third-party use-based registrations, each of which includes within the identification of goods both nuts and peanuts. Analysis Inherent or Acquired Distinctiveness of REDNECK as Used by Opposer One argument that applicant appears to make is that REDNECK is not inherently distinctive as a mark as used by Opposition No. 91179464 5 opposer in connection with peanuts.3 It is correct that an opposer relying on common law use of its mark must show, as a threshold matter, that its mark is distinctive. Under the rule of Otto Roth, a party opposing registration of a trademark due to a likelihood of confusion with his own unregistered term cannot prevail unless he shows that his term is distinctive of his goods, whether inherently or through the acquisition of secondary meaning or through “whatever other type of use may have developed a trade identity.” Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990) (full citation added). We take judicial notice of the definition in Merriam- Webster’s New Collegiate Dictionary (11th ed. 2003) of “redneck” as, in part, “1. sometimes disparaging: a white member of the Southern rural laboring class. 2. often disparaging: a person whose behavior and opinions are similar to those attributed to rednecks.” Applicant states that REDNECK describes the hot and spicy nature of opposer’s peanuts because opposer uses REDNECK on its label in close proximity to the words “hot” and “spicy.” However, we find it more likely that the purchasing public will understand 3 Applicant’s arguments in its brief are sometimes not relevant to the issues involved in this case and at all times its arguments are unclear. Throughout this proceeding, opposer has complained of applicant’s lack of knowledge and understanding of trademark law. Applicant admits this lack of knowledge, but has chosen to proceed without the benefit of counsel. While applicant, as well as administrative economy, might have been better served had applicant sought the advice of counsel, it is a party’s prerogative to appear without the benefit of counsel in Board proceedings. Opposition No. 91179464 6 REDNECK as used by opposer as it is commonly defined. As such, on this record REDNECK is arbitrary in connection with peanuts. Therefore, we conclude that opposer’s use of REDNECK for peanuts is as an inherently distinctive mark. Standing Opposer has established its standing to oppose registration of the involved application. In particular, opposer has established that it is the owner of the inherently distinctive mark REDNECK used in connection with peanuts. As such, opposer is not a mere intermeddler. Therefore, we find that opposer has standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). Priority Opposer has established its ownership of the mark REDNECK used in connection with peanuts and that it has so used the mark since as early as 1997, which precedes the October 3, 2006, filing date of applicant’s application. In view thereof, opposer has established its priority. Thus, the only remaining issue to decide in this case is likelihood of confusion. Likelihood of Confusion Our determination of likelihood of confusion under Section 2(d) must be based on an analysis of all of the probative facts in evidence that are relevant to the factors Opposition No. 91179464 7 bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Opposer must establish that there is a likelihood of confusion by a preponderance of the evidence. In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 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). See also In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. The relevant du Pont factors in the proceeding now before us are discussed below. The Goods It is well established that the goods and/or services of the parties need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods and/or services of the parties are Opposition No. 91179464 8 related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and/or services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether purchasers would confuse the goods and/or services, but rather whether there is a likelihood of confusion as to the source of the goods and/or services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). While applicant states that its goods are limited to pecans and opposer’s goods are limited to peanuts, we note that the question of likelihood of confusion must be determined based on an analysis of the goods and/or services recited in applicant’s application vis-à-vis the goods and/or services identified in opposer’s pleaded registration(s). Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Applicant’s goods are not limited to either pecans or pecan products. Rather, as identified, applicant’s products encompass peanuts. Opposition No. 91179464 9 Moreover, applicant made the following relevant responses in its answer4: Notice of Opposition, para. 8: “The goods identified in Applicant’s application are identical and/or closely related to the Opposer’s goods.” Answer: “Correct.” Based on applicant’s identification of goods and the goods upon which opposer has established use of its mark, as well as applicant’s answer to paragraph no. 8 of the notice of opposition, we find that applicant’s identified goods encompass and/or are closely related to opposer’s goods. This du Pont factor weighs in favor of opposer. Trade Channels, Purchasers and Conditions of Sale Applicant’s identification of goods is broadly worded, without any limitations as to channels of trade or classes of purchasers. Similarly, opposer has established that the trade channels and class of purchasers of its REDNECK peanuts are not limited. Therefore, we presume that the goods and services of the applicant and opposer are sold in 4 Applicant submitted two answers to the notice of opposition. On October 25, 2007, applicant submitted a document entitled “Answer to Notice of Opposition” in which it presented arguments against the opposition in four numbered paragraphs. On November 29, 2007, applicant submitted a document entitled “Response to Notice of Opposition” which specifically answers the notice of opposition paragraph by paragraph. We have considered these documents together as applicant’s answer, with the latter document properly responding to the notice of opposition and the earlier document considered in the nature of amplifications of applicant’s position. Additionally, Applicant neither admits nor denies notice of opposition paragraphs 1 – 3; rather, applicant asserts a wholly unrelated statement. However, it is unnecessary to construe these responses as admissions of these paragraphs in the notice of opposition. Opposition No. 91179464 10 all of the normal channels of trade to all of the usual purchasers for the involved goods. See Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Moreover, applicant made the following relevant responses in its answer and in its responses to opposer’s request for admissions: Notice of Opposition, para. 9: “Upon information and belief, Applicant’s goods would be offered for sale and promoted through the same channels of trade and to the same general class of purchasers as Opposer’s goods.” Answer: “Correct.” First Request for Admissions, No. 11: Applicant’s goods and Opposer’s goods are sold, or would be sold, through similar trade channels.” Answer: “Applicant acknowledges.” Based on applicant’s unrestricted identification of goods and the nature of opposer’s established use of its mark in connection with peanuts, as well as applicant’s answer to paragraph no. 9 of the notice of opposition and its response to request for admission no. 11, we find that applicant’s goods will travel in the same trade channels to the same general class of purchasers as opposer’s goods. These du Pont factors weigh in favor of opposer. The Marks With respect to the involved marks, we examine the similarities and dissimilarities of the marks in their Opposition No. 91179464 11 appearance, sound, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. The test 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 their entireties that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In comparing the marks, it is well established principle that, in articulating reasons for reaching a conclusion on the issue of confusion, “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). Applicant’s mark consists of two words, REDNECK NUTS. The word REDNECK is both prominent and arbitrary in connection with the identified goods and prominent as the first term in the mark. The word NUTS is merely descriptive, if not generic, in connection with the identified nuts, as evidenced by the disclaimer in the record. We find that Opposition No. 91179464 12 REDNECK is the dominant portion of applicant’s mark and that it is identical to opposer’s mark in its entirety. Thus, we find that applicant’s mark is substantially similar to opposer’s mark in sound, appearance, connotation and overall commercial impression. This du Pont factor weighs in opposer’s favor. Conclusion When we consider the record and the relevant likelihood of confusion factors, and all of opposer’s and applicant's arguments relating thereto, including those arguments not specifically addressed herein,5 we conclude that the du Pont factors, on balance, weigh in favor of a finding of likelihood of confusion. In other words, in view of the substantial similarity in the commercial impressions of applicant’s mark, REDNECK NUTS, and opposer’s mark, REDNECK, their contemporaneous use on the overlapping and/or closely related goods involved in this case is likely to cause confusion as to the source or sponsorship of such goods. 5 As indicated above, applicant has made a number of statements that are either inaccurate or not relevant to the issues in this case. For example, applicant contends that its mark has acquired distinctiveness and opposer has not met its burden to show otherwise. There has been no question raised in this proceeding as to the distinctiveness of applicant’s proposed trademark. Opposer’s burden in this proceeding is to establish its standing, priority, and that there is a likelihood of confusion. Opposer has met this burden. Applicant also seems to suggest that because the application was allowed for publication by the examining attorney, that opposer is somehow estopped from asserting its claim. This is inaccurate. An inter partes proceeding before the Board is unrelated to the determination made by the examining attorney during the ex parte examination of an application. Opposition No. 91179464 13 Decision: The opposition is sustained on the ground of likelihood of confusion, and registration to applicant is refused.