Jake’s Finer Foods Inc.

Trademark Trial and Appeal Board

Mar 7, 2001

No. 75492091 (T.T.A.B. Mar. 7, 2001)

03/07/01 Paper No. 17
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jake’s Finer Foods Inc.
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Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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Kurt J. Brown for Jake’s Finer Foods Inc.
Raul F. Cordova, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
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Before Hanak, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
On May 27, 1998, Jake’s Finer Foods Inc. filed three
separate applications to register its composite service marks,
as shown below, JAKE’S (and chicken design), JAKE’S FINER FOODS
(and chicken design), and JAKES FINER FOODS (stylized):
SN 75/492,089 SN 75/492,090 SN 75/492,091
for wholesale distributorship services in International Class 35
and for a variety of services which applicant argues are
properly classified in International Class 42, although the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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exact recital of these particular services is still in dispute.
Application Ser. No. 75/492,089, for the JAKE’S and chicken
design mark, claims use dates of December 1958, while the
applications for the latter two marks claim use dates of
December 1978.
The Trademark Examining Attorney made final a refusal of
registration under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant's marks, when used on its
identified services, will create a likelihood of confusion with
the service mark JAKE’S previously registered in connection with
“distributorship services in the field of seafood.”1 The
Trademark Examining Attorney has also gone final as to the
requirement for applicant to amend the current recital of
services in International Class 42, arguing that it is
indefinite and overbroad.
Applicant has appealed. Both applicant and the Examining
Attorney have filed briefs, but applicant did not request an
oral hearing. The prosecution histories of these three
applications are substantially identical, as are the issues
before us in connection with each application. Accordingly, the
1 Reg. No. 1,610,827, issued on August 21, 1990; §8 affidavit
accepted and §15 affidavit acknowledged.
Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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three cases have been consolidated and this single opinion has
been issued for all three cases.
We affirm both of the bases for refusal to register with
regard to all three applications.
We turn first to the requirement for amendment of the
recital of services in International Class 42. The current
recitation as submitted by applicant reads as follows: “food
services, namely for procurement and preparation of packaged
bulk poultry, frozen and canned vegetables, eggs, and dairy
products, in large and small quantities, to include food service
paper goods and disposables,” in International Class 42.
The Trademark Examining Attorney states the position of the
Office as follows:
[The above] recitation of services … is deemed
unacceptable as overbroad and indefinite. The
services listed are not clearly stated and
include activities that are properly classified
in Class 35. Food preparation and packaging for
others is classified in Class 40, and providing
food for consumption at the premises is set in
Class 42. The applicant’s recitation of services
in Class 42 fails to inform [sic] the exact
nature of its services that is for the benefit of
others. Trademark Act Section 3. Acceptable
identifications are necessary for scope,
classification and specimen issues. The public
relies on this information for determination of
its own rights… The Office requires clearly
stated identifications for classification
purposes which is solely within the discretion of
the Patent and Trademark Office… Whether
applicant’s activities belong in Class 42 cannot
be determined without further specificity. The
current language delineates services that can be
Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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classified in Classes 35, 40 or 42. (appeal
brief, p. 3).
The Trademark Examining Attorney has accepted applicant’s
wholesale distributorship services in International Class 35,
but been unable to obtain clarification of the confusing recital
in International Class 42. This recital begins with the vague
words “Food services,” and then is further muddled by the words
“procurement” and “preparation.” This is followed by a listing
of food items of indeterminate quantity (i.e., possibly ranging
from an entire tractor-trailer load of foodstuffs to a single
sandwich), which are also combined with serving and packaging
items. Unfortunately, even if one is knowledgeable about this
country’s food services industries, when one gets to the end of
this recital, it is still unclear precisely which activities
applicant is claiming to be involved with.
If, for example, applicant is actually placing its mark on
poultry products sold to institutions, this may involve goods in
International Class 29. On the other hand, distributorship
services in the field of commercial food equipment would be
placed in International Class 35, along with applicant’s other
correctly recited services. In the event that applicant is
involved in food canning, food packaging and food processing,
these services would be classified in International Class 40.
Finally, it is entirely possible that applicant indeed provides
Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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services correctly placed in International Class 42, provided
that it is involved in: providing contract food services for
institutional customers; food management consulting services
rendered to institutions and enterprises; research and
development of recipes and/or food and beverage products; menu
evaluation, development and design; providing layout and design
for commercial kitchens; providing programming, consultation,
software design and computer diagnostic services to its
customers in the food service industry; and/or catering services
(or restaurant services) providing food for consumption on and
off the premises.2
The record reflects multiple attempts by the Trademark
Examining Attorney to make suggestions for acceptable amendments
to the recital of services. However, applicant was unwilling or
unable to comply with the repeated requirements for more
specificity. Given the uncertainty in the record about exactly
what applicant intended this recital to encompass, we find the
requirements of the Trademark Examining Attorney to be valid for
all the reasons stated in his brief. Accordingly, we affirm the
refusal to register this mark as to International Class 42 in
2 The examples in this paragraph demonstrate the indefinite nature
of the current recital of services. However, we hasten to add that
some of these possibilities, even if they may reflect applicant’s
actual business activities, might well be precluded if deemed to be
beyond the scope of earlier amended recitals. See 37 C.F.R. §2.71.
Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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light of the unmet requirement that applicant submit a more
definite recital of services.
We turn next to the refusal to register based upon a
likelihood of confusion for each of these three marks with the
prior, cited registration. Our determination under Section 2(d)
is based upon 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 E. I. du Pont
de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
the analysis of likelihood of confusion presented by this case,
key considerations are the similarities of the marks and the
relatedness of the services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The cited mark is used on food distributorship services in
the field of seafood. Applicant’s food distributorship services
list poultry, vegetables, eggs and dairy products. The
Trademark Examining Attorney has submitted third-party
registrations and stories from the LEXIS/NEXIS database showing
that wholesale distributors to food service customers routinely
supply both poultry and seafood. Applicant has not countered
this probative evidence placed in the record by the Trademark
Examining Attorney. Hence, we have to conclude that from the
perspective of food service customers and retail food buyers,
these two services are closely related.
Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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We turn then to the respective marks. Registrant’s mark
consists solely of the word JAKE’S. Similarly, the dominant
feature of each of applicant’s marks is JAKE’S (or JAKES). To
the extent that two of applicant’s marks contain additional
wording (“Finer Foods”), these descriptive words are disclaimed
and are much smaller in size than the prominent word JAKE’S (or
JAKES).
Two of the applied-for marks also contain a drawing of a
chicken. Clearly, that creates imagery not present in
registrant’s mark. However, if someone acquainted with the
registered JAKE’S mark for seafood – indeed, even a
sophisticated buyer for a large institution – were to see the
composite mark that is the subject of Serial Number 75/492,089,
such a prospective customer may well view this as registrant’s
having extended its product line from seafood into poultry. The
even less prominent chicken in the composite mark that is the
subject of Serial Number 75/492,090 may well cause the same
reaction on the part of such a prospective purchaser.
Accordingly, focusing on the distributorship services of
the cited registration and the class 35 distributorship services
herein, with highly similar marks being used on closely related
services, we find that there is a clear likelihood of confusion.
Moreover, precisely because of the indefinite nature of
applicant’s services in International Class 42, as discussed
Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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above, it is impractical to attempt to compare these with
registrant’s services.
As to the du Pont factor dealing with the length of time
during and conditions under which there has been concurrent use
without evidence of actual confusion, applicant points to twenty
years of coexistence without any actual confusion. However, we
have no evidence that these respective JAKE’S marks have ever
been used contemporaneously in the same geographical area. As
to whether there has been sufficient opportunity for confusion
to occur, in addition to the geographical divide between
registrant’s base in Oregon and applicant’s operations in Texas,
the record contains no indication of the level of sales or
advertising by applicant. The absence of any instances of
actual confusion is a meaningful factor only where the record
indicates that, for a significant period of time, an applicant's
sales and advertising activities have been so appreciable and
continuous that, if confusion were likely to happen, any actual
incidents thereof would be expected to have occurred and would
have come to the attention of one or both of these trademark
owners. Similarly, we have no information concerning the nature
and extent of registrant’s use, and thus we cannot tell whether
there has been sufficient opportunity for confusion to occur as
we have not had opportunity to hear from the registrant on this
point. All of these factors materially reduce the probative
Serial Nos. 75/492,089, 75/492,090 and 75/492,091
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value of applicant’s argument regarding asserted lack of actual
confusion. Therefore, applicant’s claim that no instances of
actual confusion have been brought to applicant’s attention is
not indicative of an absence of a likelihood of confusion. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). In any event, we are mindful of the fact that the test
under Section 2(d) of the Act is likelihood of confusion, not
actual confusion.
Finally, applicant repeatedly points out that its first use
of the JAKE’S mark occurred decades before the date claimed in
the cited registration. While we are not unsympathetic to the
notion of basic equity raised by applicant herein, priority is
not an issue in the context of an ex parte appeal. In the
context of this ex parte appeal, applicant cannot attack the
validity of the cited registration. Rather, the appropriate
forum for applicant to have raised such an issue was in the form
of a timely petition to cancel the cited registration, or in a
concurrent use proceeding based upon applicant’s claim of actual
use in commerce of its marks prior to the filing date of the
application which resulted in the cited registration.
Decision: The refusal to register is affirmed as to both
bases therefor.