GloryBee Natural Sweeteners, Inc., dba GloryBee Foods, Inc.v.Elijah F. Kelly and Arlette K. BrightDownload PDFTrademark Trial and Appeal BoardNov 30, 202091243216 (T.T.A.B. Nov. 30, 2020) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: November 30, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ GloryBee Natural Sweeteners, Inc. d/b/a GloryBee Foods, Inc. v. Elijah F. Kelly and Arlette K. Bright _____ Opposition No. 91243216 _____ Ian D. Gates of Dascenzo Intellectual Property Law PC, for GloryBee Foods, Inc. Bruce F. Bright of Ayers Jenkins Gordy & Almand PA, for Elijah F. Kelly and Arlette K. Bright. _____ Before Cataldo, English, and Lebow, Administrative Trademark Judges. Opinion by Lebow, Administrative Trademark Judge: Applicants, Elijah F. Kelly and Arlette K. Bright, filed an application to register the mark SAVE THE BAYBEES (in standard characters) on the Principal Register for “honey” in International Class 30 (“the Application”).1 1 Application Serial No. 87743178, filed January 4, 2018 under Section 1(b) of the Trademark Act, based on an alleged bona fide intent to use the mark in commerce. Opposition No. 91243216 - 2 - Opposer GloryBee Natural Sweetners, Inc. d/b/a GloryBee Foods, Inc., has opposed registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of priority and likelihood of confusion with Opposer’s previously used and registered marks: (1) SAVE THE BEE (in standard characters)2 for “breakfast cereals; ice cream; honey; flavored honey; bread,” in International 30; “beer” in International Class 32; and “promoting public awareness of environmental matters; promoting public awareness of declining bee populations; and promoting public awareness of honey bee colony collapse disorder,” in International Class 35; and (2) SAVE THE BEE and design (shown below)3 for “honey; flavored honey,” in International Class 30; and “promoting public awareness of environmental matters; promoting public awareness of declining bee populations; promoting public awareness of honey bee colony collapse disorder,” in International Class 35: Applicants denied the salient allegations in their answer to the notice of opposition. This case is fully briefed. For the reasons that follow, we sustain the opposition. 2 Registration No. 5195355; registered May 2, 2017. 3 Registration No. 4695164; registered March 3, 2015. Opposition No. 91243216 - 3 - I. Preliminary Issue The notice of opposition identifies the opposer in this proceeding as GloryBee Foods, Inc., an Oregon corporation.4 However, the notice of opposition also indicates that “‘GloryBee, Foods, Inc.’ is a registered Assumed Business Name of GloryBee Natural Sweeteners, Inc. and thus GloryBee Foods, Inc. and GloryBee Natural Sweeteners, Inc. are one and the same entity.”5 Beginning in March 2019, and continuing thereafter, Opposer was identified in case captions for this proceeding by both Opposer and Applicants as “GloryBee Natural Sweetners, Inc. d/b/a GloryBee Foods, Inc.”6 Additionally, in May 2020, the parties stipulated to the introduction into evidence showing that GloryBee Foods, Inc. is a registered Assumed Business name of GloryBee Natual Sweeteners, Inc.7 In view of the foregoing, we find that GloryBee Natural Sweetners, Inc. d/b/a GloryBee Foods, Inc. is the proper party-opposer to this proceeding, and that the parties expressly consented to amend the caption of this opposition accordingly. See Fed. R. Civ. P. 15(b); Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1633 (TTAB 2007). The pleadings are deemed amended as such. 4 1 TTABVUE 1, 4 (Cover page, ¶ 1). Citations to the record and briefs in this opinion are to the publicly available documents on TTABVUE, the Board's electronic docketing system. The number preceding “TTABVUE” corresponds to the docket entry number, and the number(s) following “TTABVUE” refers to the page number(s) of the downloadable .pdf version of that particular docket entry. 5 Id. at 2 (¶ 2). 6 See 10, 12-13, 15-20 TTABVUE. 7 17 TTABVUE 2, 13-15. Opposition No. 91243216 - 4 - II. The Record The record includes the pleadings; the file of the opposed application pursuant to Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1); Opposer’s notice of reliance on Applicants’ responses to certain interrogatories and requests for admission;8 copies of information regarding Opposer’s SAVE THE BEE registrations from the USPTO’s electronic database showing the current status and Opposer’s ownership of the registrations;9 a copy of the renewal of Opposer’s assumed business name registration of GLORYBEE FOODS, INC. in Oregon;10 and Applicants’ notice of reliance on the testimony affidavit of Applicant Elijah Kelly with exhibits.11 III. Entitlement to a Statutory Cause of Action12 Entitlement to a statutory cause of action is a threshold issue in every inter partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 8 15 TTABVUE. 9 17 TTABVUE 5-12 (Stipulation for Introduction of Opposer’s Registrations and Assumed Business Name, Exhibits A-B); 21 TTABVUE (Board order accepting stipulation). See Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d). 10 Id. at 13-15 (Exhibit C). 11 16 TTABVUE 43-103. Applicants also submitted a number of other documents with their notice of reliance, including their own complete answers and responses (including supplemental answers and responses) to all of Opposer’s interrogatories, requests for admissions, and requests for production of documents (including documents provided with those responses). For a number of reasons, those documents are not properly of record. See e.g., Trademark Rules 2.120(k)(5), 37 C.F.R. § 2.120(k)(5), and TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.08(c). In any event, the issue is moot since Applicants do not rely on that evidence with respect to any of Opposer’s arguments at issue in this proceeding. 12 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13 and 14 remain equally applicable. Opposition No. 91243216 - 5 - 2020 USPQ2d 10837, *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A party in the position of plaintiff may oppose registration of a mark where such opposition is within its zone of interests and damage is proximately caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, * 6-7 (Fed. Cir. 2020). “Proof of [entitlement to a statutory cause of action] in a Board opposition is a low threshold, intended only to ensure that the plaintiff has a real interest in the matter, and is not a mere intermeddler.” Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 n.8 (TTAB 2009) (citing Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). Opposer made of record its registrations for its SAVE THE BEE marks pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), by filing a stipulation between the parties wherein they agreed to the introduction of attached printouts of information for those registrations from the USPTO's electronic databases showing the current status and Opposer’s ownership of the registrations.13 The registrations show that opposition of the mark is within Opposer’s zone of interests and that damage would be proximately caused by registration of the mark. Thus, Opposer has established an entitlement to a statutory cause of action. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (plaintiff’s two prior registrations suffice to establish plaintiff’s direct commercial interest and 13 17 TTABVUE 5-12 (Stipulation for Introduction of Opposer’s Registrations and Assumed Business Name, Exhibits A-B). Opposition No. 91243216 - 6 - its entitlement to a statutory cause of action); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). IV. Likelihood of Confusion Trademark Act Section 2(d), 15 U.S.C. § 1052(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 by another 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. To prevail on its Section 2(d) claim, Opposer must prove by a preponderance of the evidence that it has priority in the use of its marks and that Applicants’ use of their mark is likely to cause confusion, mistake, or deception as to the source or sponsorship of the goods and services identified in the application. Cunningham, 55 USPQ2d at 1844 (plaintiff must prove priority and likelihood of confusion by a preponderance of the evidence); Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987) (same). Our analysis is based on all of the probative evidence of record. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). In making our determination, we consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 Opposition No. 91243216 - 7 - F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he 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 and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (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.”). Because Opposer’s pleaded registrations are of record and Applicants have not counterclaimed to cancel them, priority is not at issue with respect to the marks and goods and services identified in those registrations. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).14 We focus our analysis on Opposer’s pleaded Registration No. 5195355 for the mark SAVE THE BEE in standard characters (“the Registration”) for, inter alia, “honey,” which is most similar to Applicants’ mark for in part identical goods. If we do not find 14 Applicants, twice in this proceeding, attempted to file a counterclaim for cancellation of Opposer’s registrations on the ground of lack of distinctiveness, which the Board denied on procedural grounds. 8 TTABVUE (Counterclaim for Cancellation); 12 TTABVUE (Motion for Leave to File Counterclaim for Cancellation); 14 TTABVUE (Board order). Applicants argue that “[t]here is no proof anywhere in the record that Opposer has engaged in any commercial or other activities, using its ‘SAVE THE BEE’ mark in the Eastern United States.” 19 TTABVUE 4 (Applicants’ Brief). While an applicant normally must show that it has used the mark in commerce before it is entitled to registration, an opposer does not need to show use in interstate commerce before it can establish priority. First Niagara Ins. Brokers Inc. v. First Niagara Fin. Grp. Inc., 476 F.3d 867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007); Bourns, Inc. v. Int’l Resistance Co., 341 F.2d 146,144 USPQ 424, 425 (CCPA 1965) (“It is not necessary under 15 U.S.C. 1063 for an opposer to aver and prove use of the mark in interstate commerce”). Opposition No. 91243216 - 8 - confusion likely between that registered mark and Applicants’ mark, we would also not find confusion likely between Opposer’s other registered mark and Applicants’ mark. In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. Similarity of the Goods, Trade Channels, and Purchasing Conditions The second DuPont factor considers the “similarity or dissimilarity and nature of the goods or services as described in an application or registration”; the third DuPont factor considers the “similarity or dissimilarity of established, likely-to-continue trade channels”; and the third DuPont factor considers the “conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. The identification of goods in both the Registration and the Application identify “honey.” Accordingly, the parties’ goods are identical in part. As such, we must presume that those goods travel through the same channels of trade to the same or overlapping classes of purchasers. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re Information Builders Inc., 2020 USPQ2d 10444, *3 (TTAB 2020) (citing In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968)). Moreover, because there are no price limitations on Opposer’s or Applicants’ honey (a common, edible nectar), we must presume that the honey will be sold at all price points and include low-cost honey. See In re i.am.symbolic, LLC, 116 USPQ2d 1406, 1413 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Indeed, such goods may be subject to impulse purchases. Recot Inc. v. Becton, 214 F.3d 1322, Opposition No. 91243216 - 9 - 54 USPQ2d 1894, 1899 (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 care.”); Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984). The second, third, and fourth DuPont factors weigh heavily in favor of finding likelihood of confusion. B. The Similarity or Dissimilarity of the Marks The first DuPont factor considers the “similarities or dissimilarities of the marks in their entireties as to appearance, sound, connotation and commercial impression.” DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019)). The test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods and services offered under the respective marks is likely to result. See Cai v. Diamond Hong, Inc., 127 USPQ2d at 1801 (citing Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). Our focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Neutrogena Corp. v. Opposition No. 91243216 - 10 - Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1969) (many consumers “may have but dim recollections from having previously seen or heard one or the other of the involved marks.”). Opposer argues that Applicants’ SAVE THE BAYBEES mark is “nearly identical” in appearance, sound, connotation, and commercial impression to Opposer’s SAVE THE BEE marks.15 Specifically, Opposer contends that Applicants have merely added a geographical term—BAY—to the word BEE in Opposer’s mark and pluralized it by adding an “s,” which “does not create a distinct commercial impression, but rather is suggestive of a narrower, more specific commercial impression fully encompassed within the commercial impression of Opposer’s SAVE THE BEE Marks.”16 In support, Opposer points to Applicants’ admission that “the term ‘BAYBEES’ as used in [Applicants’] mark means bees existing, cultivated, kept, populating hives, used for pollination, farmed, or brought to the Eastern Shore (of Maryland, Delaware, and Virginia) and Chesapeake Bay region, including the coastal bays within that region.”17 Applicants, while denying any similarity between the marks, agree that SAVE THE BAYBEES “connotes cultivation and growth of the honey bee population on the Eastern Shore of Maryland, Delaware, and Virginia (which includes the Chesapeake Bay and coastal bays in that region).”18 15 18 TTABVUE 9 (Opposer’s Brief). 16 Id. at 10-11. 17 Id. at 7; 15 TTABVUE 12 (Opposer’s Notice of Reliance, Exhibit 3). 18 19 TTABVUE 3, 8 (Applicants’ Brief). Opposition No. 91243216 - 11 - We agree with Opposer that the parties’ marks are confusingly similar. Applicants’ mark fully incorporates the wording in Opposer’s SAVE THE BEE mark and merely adds the common geographically descriptive term BAY to the mark. Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks merely by adding a term that is descriptive or suggestive of the named goods or services. See e.g., In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (holding CONFIRM for a buffered solution equilibrated to yield predetermined dissolved gas values in a blood-gas analyzer, and CONFIRMCELLS for diagnostic blood reagents for laboratory use, likely to cause confusion, noting that the relevant consumers would view the “CELLS” portion of CONFIRMCELLS as merely descriptive); In re Energy Images, Inc., 227 USPQ 572, 573 (TTAB 1985) (holding SMART-SCAN (stylized) for optical line recognition and digitizing processors, and SMART for telemetry systems and remote-data gathering and control systems, likely to cause confusion, noting that, because of the descriptive significance of the term “SCAN,” it would be the portion of applicant’s mark that consumers would least likely rely upon to distinguish applicant’s goods). Moreover, the pluralization of Applicants’ mark is insignificant and does not change the overall impression of the mark. Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (there is no material difference, in a trademark sense, between singular and plural forms of a word). The first DuPont factor weighs in favor of finding a likelihood of confusion. Opposition No. 91243216 - 12 - C. Strength of Opposer’s Mark The fifth DuPont considers the “fame” or strength of Opposer’s mark, while the sixth DuPont factor considers the number and nature of similar marks in use for similar goods. DuPont, 177 USPQ at 567. Applicants argue that Opposer’s mark is both commercially and conceptually weak.19 In support of this contention, Applicants provided (a) printouts of the first twenty-five pages of Google search results for the term “Save the Bee” out of 1,720,000 results; (b) printouts of the first twenty-five pages of Google search results for the term “Save the Bees” out of 4,810,000 results; and (c) printouts of the first five pages of a Google search for the term “‘Save the Bee’ and ‘Glory Bee’” out of 5,000 results.20 Applicants argue that this evidence “demonstrates clearly how widely the phrases ‘save the bee’ and/or ‘save the bees’ are used globally by a host of consumer goods companies and organizations,” and that “use of ‘Save the Bees’ by others—which is much more similar to Opposer’s mark than ‘Save the BayBees’—is far and wide.”21 In reply, Opposer argues that the evidence has “limited probative value” because “Applicants fail to identify with particularity how any of the entries from the fifty- eight pages of Internet search results … somehow weaken Opposer’s SAVE THE BEE Marks.”22 In addition, “several of the entries in Applicants’ evidence actually relate 19 19 TTABVUE 9 (Applicants’ Brief). 20 16 TTABVUE 46-103 (Testimony affidavit of Elijah Kelly, Exhibits A-C). 21 19 TTABVUE 9 (Applicants’ Brief). 22 20 TTABVUE 4 (Opposer’s Rebuttal Brief). Opposition No. 91243216 - 13 - to Opposer’s own use.”23 Further, “nearly all of the remaining results from Applicants’ evidence do not establish third-party use of the SAVE THE BEE mark or the SAVE THE BEES mark as a trademark for actual goods, let alone for honey or similar goods.” Opposer therefore concludes that “Applicants have failed to establish that Opposer’s SAVE THE BEE Marks are weak and entitled to less than the normal scope of protection to which inherently distinctive marks are entitled.”24 We agree that the Google search results provided by Applicants have limited probative value. See, e.g., In re Int’l Business Machines Corp., 81 USPQ2d 1677, 1679 n. 3 (TTAB 2006) (listings of search results from Google database of limited probative value because the excerpts are extremely truncated). Nonetheless, we have considered the listings for they what they shows on their face, i.e., that consumers (including U.S. consumers)25 have been widely exposed to the term SAVE THE BEE(S) in connection with bee conservation efforts. Rocket Trademarks Pty Ltd., 98 USPQ2d 1066, 1072 (TTAB 2011) (internet printouts “on their face, show that the public may have been exposed to those internet websites and therefore may be aware of the advertisements contained therein”). That said, “[t]he inherent or conceptual strength of Opposer’s [SAVE THE BEE marks] is not seriously at issue.” New Era Cap Co. v. Pro Era LLC, 2020 USPQ2d 10596, *10 (TTAB 2020). Opposer’s mark SAVE THE BEE for “honey” and other food 23 Id. 24 Id. at 5. 25 We consider only those listings that appear to be from U.S. websites. Opposition No. 91243216 - 14 - goods, as well as services including “promoting public awareness of declining bee populations” is “inherently distinctive as evidenced by its registration on the Principal Register without a claim of acquired distinctiveness under Section 2(f) of the Trademark Act.” Id. (citing Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1889 (TTAB 2006)). Moreover, even if SAVE THE BEE is highly suggestive of services related to bee conservation efforts, that is not the issue. Rather, the issue is the strength of Opposer’s mark with regard to honey, which is identified by both parties’ marks. Applicants have presented no evidence, nor have Applicants argued, that SAVE THE BEE is weak in relation to honey. As such, we must assume that it is at most suggestive of the goods and services identified in the cited registration and should be accorded the scope of protection to which inherently distinctive marks are entitled. See Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 750 (TTAB 1986). The fifth and sixth DuPont factors are neutral in our analysis. D. Absence of Actual Confusion Referring to the eighth DuPont factor, which considers “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion,” In re Guild Mortg. Co., 129 USPQ2d at 1162 (quoting DuPont, 177 USPQ at 567), Applicants contend that “[t]here is no proof, at all, of any actual confusion.”26 The “absence of any reported instances of actual confusion would be meaningful only if the record indicated appreciable and continuous use by [Applicants] of [their] mark for a significant period of time in the same markets as those served by [Opposer] 26 19 TTABVUE 9 (Applicants’ Brief). Opposition No. 91243216 - 15 - under its marks.” Gillette Can. Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). However, the record is devoid of any evidence of any use by Applicants, whose application is based on an intent to use. The eighth DuPont factor is neutral in our analysis. V. Conclusion In sum, we find that the first, second, third, and fourth DuPont factors weigh in favor of likelihood of confusion (the first three, heavily), and the fifth, sixth and eighth DuPont factors are neutral. Decision: The opposition is sustained and registration to Applicants is refused. Copy with citationCopy as parenthetical citation