International Market Brands, Inc.

Trademark Trial and Appeal Board

Aug 12, 2003

No. 75716333 (T.T.A.B. Aug. 12, 2003)

Mailed:
August 12, 2003
Hearing:
April 3, 2003 Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re International Market Brands, Inc.
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Serial No. 75/716,333
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Raymond A. Kurz of Hogan & Hartson L.L.P. for International
Market Brands, Inc.
Linda M. King, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
_______
Before Seeherman, Bucher and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant, by an application filed May 20, 1999, seeks
registration of the mark COUNTRY KETTLE for goods
ultimately identified as “frozen soups, canned soups, and
frozen entrees consisting primarily of meat, chicken, fish
or vegetables sold to institutional buyers,” in
International Class 29, and “frozen entrees consisting
primarily of pasta or rice sold to institutional buyers,”
This Disposition is Not
Citable as Precedent of
the TTAB
Ser No. 75/716,333
2
in International Class 30.1 The application claims the mark
was first used and was first used in commerce in 1992, in
regard to each class of goods.
The examining attorney has refused registration in
view of the prior registration of the mark THE COUNTRY
KETTLE for “restaurant services,” in International Class
42.2 When the refusal of registration was made final,
applicant appealed. Ultimately, briefs were filed and
applicant and the examining attorney presented oral
arguments. We reverse the refusal of registration.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re E.I.
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
1 The examining attorney accepted certain amendments to the
identification, including the addition of the trade channel
restriction in each class, in September 2001. The identification
of goods for class 29 was further amended through an examiner’s
amendment entered, with leave of the Board, subsequent to
briefing and argument of this appeal, to reflect the intent of
the applicant and examining attorney when the earlier amendments
were entered. However, even after entry of the post-hearing
amendment, the information on this application in the Office’s
computerized database did not reflect entry of the trade channel
restriction for class 30. The Board has made the necessary
change to Office records.
2 Registration No. 1,004,063, issued February 4, 1975, for 20-
year term; registration renewed for additional 10-year term.
Ser No. 75/716,333
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(CCPA 1973). Often, two key considerations are the marks
and the goods or services, and “means of distribution and
sale” are of “peripheral” interest. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976). In this case, however, because one of the
involved marks is utilized for services and the other for
goods with limited, specific distribution, we find no
likelihood of confusion despite the virtual identity of the
involved marks.
Applicant, in fact, does not argue that the marks
differ in any significant way. Certainly, the presence of
the word THE in the registered mark and its absence from
applicant’s mark does not prevent the marks from being
considered virtually identical. While applicant does not
dispute that the marks are virtually identical, applicant
does argue that the mark in the cited registration should
be accorded a very limited scope of protection, even for
restaurant services and before considering the registrant’s
presumptive rights to expand use of its mark, because of a
plethora of marks for restaurant services that use the term
COUNTRY. In addition, applicant notes that, in the field
into which the owner of the cited registrant should,
presumptively, be entitled to expand use of its mark, there
already are a number of KETTLE marks.
Ser No. 75/716,333
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To support these arguments, applicant has introduced
copies of printouts of information, retrieved from the
Office’s databases, for approximately 50 use-based
registrations wherein a mark registered for restaurant
services includes the term COUNTRY. [Applicant’s complete
submission also includes various marks that, because of
their particular connotations, we have discounted and do
not include in this count of 50, e.g., marks including the
term COUNTRY CLUB.] More than 20 of the 50 of which we
take note use COUNTRY as their first word [or immediately
after THE], for example: THE COUNTRY GRILL, COUNTRY
KITCHEN, COUNTRY OVEN, COUNTRY FISH FRY, COUNTRY CROSSING
BUFFET AND BAKERY, COUNTRY STAR, COUNTRY WAFFLES, COUNTRY
PRIDE, COUNTRY FIXIN’S, COUNTRY MARKET RESTAURANT & BUFFET,
COUNTRY PANCAKE HOUSE AND RESTAURANT, COUNTRY ROADHOUSE
BUFFET & GRILL, and COUNTRY PUB.3 As for marks featuring
the term KETTLE for food products, the field into which the
cited registrant presumably would be able to expand, the
record reveals issuance of registrations for COUNTRY KETTLE
FUDGE, KETTLE MADE, KETTLE-TIME, KETTLE FRESH, KETTLE
CUISINE SOUP, and KETTLE CREATIONS.
3 Applicant also notes the registration of certain “KETTLE” marks
for restaurant services, but these are more limited in number.
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The submitted third-party registrations are probative
of the fact that, in this case, COUNTRY is a term that has
had appeal for those in the restaurant field, and KETTLE is
a term that has had appeal for those marketing food
products, so that these terms may be viewed as being not
particularly distinctive in their fields. Bost Bakery,
Inc. v. Roland Industries, Inc., 216 USPQ 799, 801 n.6
(TTAB 1982). Thus, the mark in the cited registration is
entitled to a more limited scope of protection than an
arbitrary mark.
Turning to the goods and services, the examining
attorney argues that she must consider not just the cited
registrant’s restaurant services but also any goods or
services within the registrant’s normal fields of
expansion. She continues her argument by asserting that
marketing of individual food items in the [grocery or
retail] marketplace “is a relatively new trade channel
expansion” for restaurants. Further, the examining
attorney argues, “restaurants are marketing frozen versions
of the foods available through their restaurant services.
Consequently, the frozen food market is now a normal trade
channel for restaurants, led by well known restaurants like
T.G.I. Friday’s and California Pizza Kitchen.” In support
of her argument, the examining attorney has introduced
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numerous copies of printouts from the Office’s database of
information on registered marks, including registrations of
the two entities specifically mentioned in her argument.4
Of the many printouts included with the final, the
vast majority cover marks utilized for both restaurant
services and various food items that appear to be “take
out” options for diners. Many of these registrations
specifically designate the food items as “for consumption
on or off the premises” or as “carry out” items. Of the
registrations for both prepared foods and restaurant
services, the registration for CITIZEN CAKE covers
restaurant services and various packaged or frozen food
items; another, for a design mark, covers certain “cook-
ready entrees” and “refrigerated and canned soups” as well
as restaurant services; and a third covers various frozen
Filipino food items as well as “restaurants carry out
services, catering and retail food store services
specializing in Filipino foods.” The only registration
that mentions prepared and processed food items for, inter
alia, institutional use, does not cover restaurant
services.
4 The printouts of information regarding registrations of T.G.I.
Friday’s and of California Pizza Kitchen were made of record with
the examining attorney’s action denying applicant’s request for
reconsideration. All other printouts were made of record in
support of the final refusal.
Ser No. 75/716,333
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The examining attorney asserts that marketing of
frozen foods is a relatively new channel of trade for
restaurants.5 Given the relatively small number of
registrations in which a mark has been registered for both
restaurant services and frozen food items, we agree with
applicant that the record certainly does not reveal this to
be an established trade channel for restaurants. Thus, we
cannot conclude, on this record, that restaurants generally
expand by adding a complementary frozen food product line
to their core restaurant service. More importantly, there
is nothing in the record to support the contention that
restaurants that have branched into marketing of frozen
versions of their menu items have gone so far as to market
such frozen or canned food items to institutional
consumers.
Neither applicant nor the examining attorney has put
anything into the record regarding the nature of
institutional buyers of canned or frozen food items. We
5 Of course, it is, if anything, a channel of trade not for their
restaurant services, but for food items served in their
restaurants. Thus, while the examining attorney discusses the
expansion as a “channel of trade,” it is essentially an expansion
into a product line that complements a service business, not
merely a new channel of marketing for the service.
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take judicial notice6 of the following dictionary
definitions:
institutional adj. …4. characterized by the
blandness, drabness, uniformity, and lack of
individualized attention attributed to large
institutions that serve many people:
institutional food.
Random House Webster’s Unabridged Dictionary 988
(1998 2nd ed.)
institutional cook A cook who generally works
with large quantities of prepackaged or prepared
foods for a captive market such as a school or
prison.
Webster’s New World Dictionary of Culinary Arts
231 (2001 2nd ed.)
The examining attorney argues that “applicant presumes
that restaurants do not market goods to institutional
buyers” but that the record shows otherwise and, moreover,
“the legal presumption is that restaurants are free to
market to institutional buyers, such as schools, hospitals,
and hotels.” Whether applicant is engaging in presumption
or basing its argument on its own experience in the field
of marketing food items to institutional purchasers is a
question we need not answer. We do, however, note our
disagreement with the examining attorney’s conclusion that
the record shows that restaurants market food items to
6 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); Marcal Paper Mills, Inc. v. American Can Co.,
212 USPQ 852 (TTAB 1981).
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institutional purchasers. As explained above, at most, the
record reveals that some entities both run restaurants and
sell frozen food, with no indication that such sales are to
institutional purchasers, as opposed to restaurant patrons
or grocery shoppers who may have eaten at or otherwise have
become aware of the type of fare served at certain
restaurants. Moreover, we disagree with the examining
attorney’s conclusion that the rules regarding construction
of identifications of goods or services in applications and
registrations are also to be applied to perceived areas of
natural expansion. In other words, even if marketing of
frozen food items is considered to be a field into which a
restaurant may expand as a complement to its restaurant
service, we do not believe the case law requires us to
presume that such expansion will be as extensive as to
include marketing to institutional purchasers.
In sum, then, in our likelihood of confusion analysis,
we consider the question whether institutional purchasers,
who, of course, may also be restaurant patrons, would be
confused or deceived by use of the same mark for a
restaurant and for institutional frozen or canned food
items.7 We agree with applicant that such purchasers, who
7 Ordinary members of the public who patronize restaurants and
purchase frozen food items at retail do not comprise the relevant
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necessarily purchase large amounts of food, would at least
be sophisticated or knowledgeable about the sources of
frozen or canned food items they purchase, and have general
knowledge of the food service industry greater than that of
the public at large. The record does not, in any way,
support a conclusion that institutional food operations
purchase food in bulk from restaurants or that restaurants
distribute the same food items they serve in their dining
rooms to institutional food operations. Thus, they are not
likely to assume that frozen food sold under the mark
COUNTRY KETTLE and available to them as institutional
purchasers would emanate from the same source as THE
COUNTRY KETTLE restaurant services.
Decision: The refusal of registration under Section
2(d) of the Lanham Act is reversed.
population for our likelihood of confusion analysis, as such
individuals would never encounter applicant’s products. Rather,
for our purposes, the relevant public consists of those who work
as institutional food purchasers.