KJS of WI, Inc.v.W. Lee Flowers and Company, Inc.

Trademark Trial and Appeal BoardJul 7, 2020

94002939 (T.T.A.B. Jul. 7, 2020)

Mailed: July 7, 2020 Concurrent Use No. 94002939 KJS of WI, Inc. v. W. Lee Flowers and Company, Inc. Before Adlin, Larkin and Lebow, Administrative Trademark Judges. By the Board: KJS of WI, Inc. (“Applicant”) filed an application to register the mark KJ'S FRESH MARKET (in standard characters) on the Principal Register for “retail grocery stores” in International Class 35,1 claiming use solely in the State of Wisconsin, and identifying W. Lee Flowers and Company, Inc.’s (“User”) use and prior geographically unrestricted registration of the mark KJ’S MARKET (in standard characters) for identical services2 as an exception to its exclusive right to use its mark in commerce. As an attachment to its filed application, Applicant submitted a “Service Mark Consent to Use and Concurrent Registration Agreement” (“Agreement”) signed by Applicant and User, and a separate verified statement signed by Applicant. Following publication, the Office determined that Applicant appeared to be entitled to 1 Application Serial No. 88585281, filed August 20, 2019 based on claimed dates of first use of May 13, 2019. Applicant disclaimed the exclusive right to use “FRESH MARKET” apart from the mark as shown. 2 Registration No. 3508051, issued September 30, 2008, renewed January 26, 2018. User disclaimed the exclusive right to use “MARKET” apart from the mark as shown. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 General Email: TTABInfo@uspto.gov THIS ORDER IS NOT A PRECEDENT OF THE TTAB Cancellation No. 94002939 2 registration subject to a concurrent use proceeding with User, and this proceeding was instituted and thereafter suspended pending the Board’s consideration of the Agreement.3 The relevant terms of the Agreeement, as originally submitted and still applicable following amendment, are summarized below: (1) User consents to Applicant’s use of the mark shown below in connection with retail grocery store services solely within Wisconsin: (2) User consents to Applicant’s use of the phrase mark “KJ’s Fresh Market” in non-graphic geographically-limited advertising anywhere within Wisconsin and for a radius of 25 miles from any such store, and in non-geographically limited advertising that either (a) specifies that affiliated stores are located solely in Wisonsin, or (b) identifies all particular locations of affiliated stores; (3) User and Applicant agree that, based on the differences between their respective marks KJ’S MARKET and KJ’S FRESH MARKET and the limitations placed on Applicant’s use and advertising referenced above, confusion as to source, origin, or sponsorship, is avoided; and (4) User and Applicant are not aware any instances of actual confusion; in the event actual confusion does occur, the parties will take steps to independently mitigate or correction such actual confusion. On May 13, 2019, following its review of the Agreement, the Board denied Applicant’s request for a concurrent use registration, finding it deficient in a number of respects.4 Specifically, the Board noted that while the Agreement limited 3 1 TTABVUE. 4 4 TTABVUE. Cancellation No. 94002939 3 Applicant’s use of its KJ’S FRESH MARKET mark to the State of Wisconsin and placed certain limitations on the scope of its advertising, the Agreement did not limit the use or registration of User’s mark KJ’S MARKET in any manner. Additionally, the Board found that because the subject application is for a word mark and was filed after execution of the Agreement, and the Agreement provided consent to Applicant’s registration of a stylized mark with a design, the agreed-upon mark to be registered was unclear. As such, the Board was not persuaded that a likelihood of confusion would be avoided if a concurrent registration were to issue. However, the Board continued the suspension to permit the parties time to file a revised agreement establishing their entitlement to concurrent use registration. On June 23, 2020, Applicant filed “Amendment No. 1 to Service Mark Consent to Use and Concurrent Registration Agreement” (“Amendment”) “address[ing] the matters raised in the Order relative to potential consumer confusion,”5 which we now consider. The Amendment modifies the relevant terms of the Agreement in the manner summarized below:6 (1) User will not use its mark KJ’S MARKET in Wisconsin or in geographically-limited advertising that reaches Wisconsin, in connection with the operation of retail grocery stores within Wisconsin. (2) User agrees that all signage or other advertising incorporating User’s mark KJ’S MARKET will not utilize a logo “that is not recognizably different” from Applicant’s mark and design shown below: 5 5 TTABVUE 1. 6 Id. at 5-6. Cancellation No. 94002939 4 (3) Applicant will use the mark KJ’S FRESH MARKET only in Wisconsin and, as limited in the original Agreement, in advertising that reaches beyond Wisconsin, in connection with the operaton of retail grocery stores solely within Wisconsin; and (4) All signage or other advertising incorporating Applicant’s KJ’s FRESH MARKET will utilize the logo set forth below “or such other logo which is distinctly different” from any logo then utilized by User relative to its mark KJ’S MARKET: The Agreement, as modified by the Amendment, now provides distinct geographic areas where Applicant and User will use their respective marks (Wisconsin for Applicant and all states other than Wisconsin for User), and advertise their respective retail store services. Additionally, Applicant and User have agreed to use “distinctly different” logos in signage and advertising. Under Section 2(d) of the Trademark Act, a concurrent use registration may issue only where it is determined “that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used.” 15 U.S.C. § 1052(d); see Southwestern Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1020 (TTAB 2015). Concurrent use agreements that include information as to why the parties believe Cancellation No. 94002939 5 confusion is unlikely, evidencing the parties’ business-driven belief that there is no likelihood of confusion, and providing provisions to avoid any potential confusion, are entitled to great weight in favor of a finding that confusion is not likely. In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993); Bongrain Int’l (Am.) Corp. v. Delice de France Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987). Additionally, where, as here, both Applicant and User provide retail grocery store services, we acknowledge that they are in the best position to assess the potential for confusion, and based on their assessments have voluntarily entered into their concurrent use agreement knowing that it would be against their business interests to cause confusion on the part of the public. See Amalgamated Bank of N.Y. v. Amalgamated Trust and Sav. Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1307 (Fed. Cir. 1988) (quoting In re E.I. Du Pont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973)). Upon careful consideration of the Agreement between the parties and the Amendment thereto, the Board is persuaded that under the circumstances of this case, concurrent use by the parties of their involved marks will not, in fact, be likely to cause confusion. In making our determination, we have taken into account not only the provisions of the Agreement, the Amendment, and the actual geographic restrictions of the areas of use, but also the voluntary entry by the parties into an Agreement that includes provisions for concurrent use when it would be clearly against their business interests to cause confusion on the part of the public. Id Separately, however, we note that the Agreement, as amended, still does not Cancellation No. 94002939 6 restrict User’s registration, which currently provides User with rights throughout the United States. Therefore, to effect the full intent of the parties—which is to coexist within distinct geographic areas using distict logos in their advertising, with concurrent registrations—we also restrict User’s registration to the area comprising the entire United States excluding the State of Wisconsin, consistent with the Agreement. Decision: Pursuant to the Agreement and Amendment thereto between Applicant and User: (1) Applicant is adjudged entitled to a concurrent use registration and shall be granted a concurrent use registration for the mark KJ’S FRESH MARKET in standard characters (Serial No. 88585281) “solely for the area comprising the State of Wisconsin”; and (2) User’s registration for the mark KJ’S MARKET (Registration No. 3508051) shall be restricted to “the area comprising the entire United States excluding the State of Wisconsin.” It is so ordered.