Nabisco, Inc.v.Sathers Inc.

Trademark Trial and Appeal Board

Aug 25, 1999

No. 91101650 (T.T.A.B. Aug. 25, 1999)

Paper No. 29
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 25, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Nabisco, Inc.
v.
Sathers Inc.
_____
Opposition No. 101,650
to application Serial No. 74/564,574
filed on August 23, 1994
_____
Steven H. Hartman for Nabisco, Inc.
Laurie Peard Soler for Sathers Inc.
______
Before Seeherman, Hanak and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Nabisco Inc. has opposed the application of Sathers
Inc.1 to register, pursuant to Section 2(f) of the Trademark

1 Applicant’s witness stated at his testimony deposition that
Sathers Inc. was acquired by Favorite Brands International in
1996. However, he also stated that Sathers Inc. still exists,
and Office records show the application to be still in the name
of Sathers Inc. Therefore, we have continued to identify Sathers
Inc. as the party-in-interest.
Opposition No. 101,650
2
Act, TANGY FRUITS as a trademark for candy.2 As grounds for
opposition, opposer alleges that since prior to the filing
of applicant’s application, opposer has been engaged in
making various food items, including fruit-flavored cookies,
candy and gum; that the term TANGY FRUITS is merely
descriptive of tangy fruit-flavored candy; that the term
TANGY FRUITS is a generic name for a flavor; and that, even
if capable of functioning as a trademark, the term TANGY
FRUITS has not acquired secondary meaning as an indication
of source.
In its answer applicant admitted that prior to
applicant’s filing date opposer has sold various fruit-
flavored cookies, candy and gum, and denied the remaining
salient allegations of the notice of opposition. Applicant
also asserted as affirmative defenses that opposer is
estopped from asserting that applicant’s mark is merely
descriptive or generic due to efforts undertaken by opposer
to register the term for itself as a trademark; and that
opposer is seeking to prevent registration of applicant’s
mark not because it believes the mark is merely descriptive
or generic but because it has a reasonable basis to conclude

2 Application Serial No. 74/564,574, filed August 23, 1994,
alleging first use and first use in commerce as early as 1984.
Opposition No. 101,650
3
that applicant is a prior user of the mark and that use by
opposer violates the rights of applicant.3
The record includes the pleadings; the testimony, with
exhibits, of opposer’s witnesses Lori Klucker, Kathryn E.
Scherb, Blair Ramey and Noelle Paschon, and applicant’s
witness Michael D. Halverson. Opposer has also submitted,
under a notice of reliance, dictionary definitions of "tang"
and "tangy"4, and applicant’s answers to certain of its
interrogatories and requests for admission, while applicant
has relied on the file history of a registration for
LUSCIOUS LIME, owned by one of opposer’s divisions.5
Each party has filed a brief on the case;6 an oral
hearing was not requested.

3 Applicant also alleged as an affirmative defense that opposer
has a history of registering terms which are no less descriptive
than the subject term. The Board, in deciding applicant’s motion
to compel, effectively dismissed this claim, stating that the
question of the descriptiveness of other marks is irrelevant to
this proceeding. Accordingly, this "defense" has not been
considered.
4 Opposer’s notice of reliance indicates that opposer also
intended to make of record a dictionary definition of "fruit,"
but the page of the dictionary which it submitted does not
include this word. However, the Board may take judicial notice
of dictionary definitions, see University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), and we do so
in this case.
5 In its brief opposer has objected to this registration on the
ground of relevance. That objection is overruled. The
registration is relevant to show opposer's own perceptions, as
well as the Patent and Trademark Office's, that a term can
function as both a flavor designator and a trademark.
6 Scattered through its brief are objections opposer has made to
various exhibits. Opposer has objected to Exhibits Nos. 7, 8 and
Opposition No. 101,650
4
Opposer markets and sells, inter alia, candy, including
candy marketed under the trademarks LIFE SAVERS and GUMMI
SAVERS. Thus, its standing to bring this proceeding has
been established.
We turn first to a consideration of applicant’s
affirmative defense of estoppel. On June 17, 1993 opposer
filed its own application for the mark TANGY FRUITS, with
the words shown in stylized form, for candy (Serial No.
74/403,633), asserting first use as of November 9, 1992.
This application was refused registration on the ground that
the mark was merely descriptive, and opposer argued, in both
its response to the Examining Attorney and in its brief on
appeal, that TANGY FRUITS was only suggestive of candy. In
particular, opposer asserted that "there is no indication

19, introduced during the testimony deposition of Michael
Halverson. Opposer’s attorney, during the deposition,
specifically stated that she had no objections to those exhibits.
Accordingly, the newly raised objections are overruled.
Opposer has also objected to certain statements made by Mr.
Halverson as hearsay, and raised an objection to a document,
"TANGY FRUITS SALES ANALYSIS," which is part of Exhibit No. 18 to
Mr. Halverson’s deposition. Opposer objets to this document for
lack of foundation, stating that the record does not support that
this is a business record, nor was there any testimony as to the
circumstances under which the document was created. Opposer’s
objection is not well taken. Opposer specifically stated, during
Mr. Halverson’s testimony deposition, that it had no objection to
Exhibit 18. Further, if opposer had raised its objection during
the time of the deposition, Mr. Halverson might have been able to
provide the information opposer now says is lacking.
Accordingly, any objection as to foundation for this document is
deemed to have been waived by opposer for failure to seasonably
raise it. See TBMP § 718.03(c). Further, opposer's hearsay
objections are in effect an attack on the foundation for Mr.
Halverson's testimony as to business activities that occurred
before he joined applicant's employ. Such objections should have
Opposition No. 101,650
5
from the mark in which fruit flavors the candy is offered.
Therefore the mark does not describe the goods with the
degree of specificity necessary to come within section
2(e)(1)." Brief, p. 2.
Opposer filed its appeal brief on August 3, 1994. On
August 23, 1994 applicant sent opposer a letter advising
opposer of applicant’s use of TANGY FRUITS for candy since
1984. Opposer withdrew its application, and appeal, on
January 20, 1995.
Applicant asserts that in view of opposer’s earlier
position that TANGY FRUITS was a trademark for candy, and
was at most suggestive, it cannot now take the position that
this term is generic or merely descriptive of these goods.
Applicant also asserts that opposer changed its position
that TANGY FRUITS was a mark to TANGY FRUITS being a generic
or descriptive term when it learned of applicant’s prior
rights in the asserted mark.
The equitable defense of estoppel is not available in a
proceeding brought on the grounds of genericness or
descriptiveness. See Care Corp. v. Nursecare International,
Inc., 216 USPQ 993 (TTAB 1982). Further, opposer’s
statements in its own application that TANGY FRUITS is not
descriptive of candy cannot be treated as an admission. The
determination of whether a term is descriptive or generic is

been raised during Mr. Halverson’s testimony deposition to be
Opposition No. 101,650
6
a legal conclusion, and it is well-established that legal
conclusions cannot be admitted by a party. See Interstate
Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926,
198 USPQ 151 (CCPA 1978). That opposer took the position in
connection with its application that TANGY FRUITS functions
as a trademark is, however, a fact, and that fact is
evidence which is "illuminative of shade and tone in the
total picture confronting the decision maker." Id. at 198
USPQ 154. Thus, although applicant’s affirmative defense is
denied, the evidence that opposer believed during the time
it filed and prosecuted its application that TANGY FRUITS is
not generic or a merely descriptive term for candy is of
record, and we may consider that fact in making our
determination herein.
We turn then to the grounds pleaded in opposer’s notice
of opposition. The first ground is that TANGY FRUITS is a
generic term for applicant’s goods.
Applicant’s goods are identified in its application as
"candy." The evidence shows that applicant applies the term
TANGY FRUITS to button-shaped hard candies of assorted
colors and flavors, i.e., lemon, orange, watermelon, cherry,
apple and peach. Applicant’s witness, Mr. Halverson,
describes these goods as assorted hard candies that have a
high acid content. The candy is sold in clear plastic

considered seasonable.
Opposition No. 101,650
7
packaging which reveals the individually wrapped candies,
and the individual wrappings have pictures of apples,
lemons, oranges and watermelons. The "header" on the bag
bears the term TANGY FRUITS, as shown below in reduced size.
Applicant uses TANGY FRUITS for both sugar and sugar-free
versions of the candy.
Applicant, through its predecessor-in-interest, first
introduced its TANGY FRUITS candy in 1984, and the candy has
been sold continuously since that time. Because of the
transfer of ownership in 1992, applicant’s sales records for
this candy go back only to 1989. It’s sales from 1989 to
1994 were as follows:
YEAR DOLLAR AMOUNT
1989 $29,289
1990 $13,467
1991 $ 9,552
1992 $17,411
1993 $242,373
1994 $1,600,000
Mr. Halverson also testified that sales of the TANGY FRUITS
candy were continuing to increase.
Opposer has presented, in support of its claim of
genericness, the testimony of Lori Klucker, who is a brands
manager for Hershey Foods, and of Kathryn E. Scherb, a self-
employed dietitian/consultant who, to a large extent, writes
Opposition No. 101,650
8
package copy for food products for various food
manufacturers.
Ms. Klucker testified that if her company’s non-
chocolate group or new products group could not use the term
"tangy fruits" it could inhibit growth, although she did
concede during cross-examination that "tangy fruit flavor"
would be a good alternative to "tangy fruits." She also
said that in consumer research studies interviewees had
volunteered the phrase "tangy fruits" as a descriptor for
some products. On cross-examination she said that she had
heard consumers use "tangy fruit flavor" in describing
products.
Ms. Scherb said that to a "food communicator" "tangy
fruit" is used to describe a heightened flavor or intensely
flavored, particularly for a fruit, that "tangy fruit"
typically relates to citrus fruits and also some berries and
pineapple. In her view as a professional food communicator,
consumers would understand TANGY FRUITS, as used on
applicant’s packaging, to describe what’s in the package,
namely a candy with an intense or heightened fruit flavor.
As an exhibit to Ms. Scherb’s testimony opposer made of
record a compilation of excerpts from 215 stories, taken
from the NEXIS database, in which the phrases "tangy fruit"
or "tangy fruits" appear. Most of these stories appear to
us to be totally irrelevant to the issue of whether TANGY
Opposition No. 101,650
9
FRUITS is generic or even merely descriptive for candy. For
example, the first story states that "[b]eef goes well with
a tangy fruit, such as an orange"; the second story
includes, in a reference to strawberries, that "[a]verage
yields provide about 5,000 quarts per acre of the tangy
fruit"; and the third story, about wine, discusses "[t]he
characteristics, almost ’stony’ mineral note tempers the
tangy fruit and honey." Although opposer asserts in its
brief that "the Nexis stories buttress the conclusion that
TANGY FRUITS, as applied to candy, is understood by the
buying public to refer to candy that comes in assorted tangy
fruit flavors," brief, p. 37, opposer has not pointed to any
stories in the NEXIS excerpts which use "tangy fruits" in a
generic manner with respect to candy. We have found a few
stories where "tangy" is used in a descriptive manner in
connection with candy, see, e.g., Story #6, about the
closing of a Fanny Farmer store: "Dark chocolate maple
walnut creams, creamy nonpareil mints in sherbet colors,
tangy fruit slices, hearty black licorice...," these stories
do not show that "tangy fruit" is used as a generic term for
candy. In fact, in the Story #6, "tangy" appears to be used
in the same manner as "hearty" is used in describing
licorice.
Opposer has also made of record the following
dictionary definitions:
Opposition No. 101,650
10
"tang"--"a sharp distinctive often
lingering flavor
"tangy"--having or suggesting a tang7
"fruit"--a product of plant growth (as
grain, vegetables, or cotton) ,the ~s of
the field>; a succulent plant part used
chiefly in a dessert or sweet course; a
dish, quantity, or diet of fruits
8
In determining whether TANGY FRUITS is generic, we
follow the test set out by our primary reviewing Court in H.
Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986):
First, what is the genus of goods or
services at issue?
Second, is the term sought to be
registered... understood by the relevant
public primarily to refer to that genus
of goods or services?
Opposer concedes that if the relevant genus of
applicant’s candy is defined as hard candy or fruit flavored
hard candy, then TANGY FRUITS is not generic. Brief, p. 35.
Opposer, however, argues that the relevant genus is candy in
assorted tangy fruit flavors, that is, that applicant’s
candy forms its own genus, because "applicant has chosen for
the name of its candy the two words that best describe the

7 Webster’s Collegiate Dictionary, © 1981.
8 We take judicial notice of these definitions, as indicated in
footnote 4, supra.
Opposition No. 101,650
11
taste characteristics that distinguish its candy from the
candies of other producers." Brief, p. 29.
We cannot agree with opposer’s reasoning. If a
plaintiff could meet the first part of the test set out in
Ginn by simply defining the genus as the defendant’s goods,
that would seem to make the first part of the test
superfluous. Opposer has not provided any evidence that
"tangy fruit-flavored candies" are a genus of goods.
Rather, applicant has shown that its product is a hard
candy, while the testimony of Ms. Klucker, the Hershey Foods
employee, indicates that candy may be divided into chocolate
and non-chocolate groups. There is simply no evidence,
however, to support a claim that "tangy-fruit" or "tangy
fruits" is a genus of candy.
Opposer relies heavily on cases from other circuits, A.
J. Canfield Co. v. Honikman, 808 F.2d 291, 1 USPQ2d 1364 (3d
Cir. 1986) and Genesee Brewing Co. v. Stroh Brewing Co., 124
F.3d 137, 43 USPQ2d 1734 (2d Cir. 1997), in support of its
position. Those cases, however, dealt with new products
that differed from established product classes. Fruit-
flavored hard candies, and in particular citrus fruit-
flavored hard candies, are not new products. See In re The
American Fertility Society, __F.3d__, __USPQ2d__ (Fed. Cir.
Aug. 19, 1999).
Opposition No. 101,650
12
Based on the evidence of record, we find that the genus
of goods is fruit-flavored hard candies. As noted
previously, opposer has conceded that if this is the genus,
TANGY FRUITS cannot be considered a generic term.
Accordingly, we need not discuss the second portion of the
Ginn genericness test. We would add, though, that the
evidence which has been submitted falls far short of
establishing that the public perceives TANGY FRUIT as a
generic term for fruit-flavored hard candies.
Since opposer has failed to prove that TANGY FRUITS is
generic, we address the other pleaded grounds for
opposition. With respect to the issue of descriptiveness,
applicant has effectively admitted that the term TANGY
FRUITS is, in and of itself, merely descriptive of candy by
seeking registration pursuant to Section 2(f) of the Act.
Thus, we proceed to a consideration of whether applicant’s
mark has acquired distinctiveness. Because seeking
registration under Section 2(f) is not unlike an affirmative
defense to a concession by applicant that it otherwise is
not entitled to a trademark registration on the ground of
mere descriptiveness, the burden is on applicant to prove
acquired distinctiveness. Yamaha International Corporation
v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001
(Fed Cir. 1988).
Opposition No. 101,650
13
Opposer asserts that even if TANGY FRUITS is not a
generic term for candy, it is highly descriptive and
therefore requires a high degree of evidence to demonstrate
acquired distinctiveness. We disagree that TANGY FRUITS is
so highly descriptive. Certainly the evidence shows that
"tangy fruits" indicates an intense or distinctive flavor of
fruits and, as used for hard candies, would immediately
convey to consumers that the candies have such flavors.
However, in determining the degree of descriptiveness of
this term, we can consider the fact that opposer believed,
when it filed and prosecuted its own application for TANGY
FRUITS for candy, that TANGY FRUITS was an inherently
distinctive trademark for candy, and was only suggestive of
the goods.
Further, the record shows that it is relatively common
in the candy industry to treat as trademarks the flavors for
candies, and to use as trademarks for the flavors terms that
are, at the very least, highly suggestive of the products.
For example, opposer has used, and applied to register as a
trademark for candy, TANGY FRUIT SWIRLS, and has registered
WILD SOUR BERRIES, with the words "sour" and "berries"
disclaimed, as trademarks for candy. The specimens showing
these marks show that they are used as flavor designators.
In addition, Hershey Foods has registered, and uses as
trademarks, AMAZIN’ FRUIT for gummy candies and SPECIAL DARK
Opposition No. 101,650
14
for a candy bar. Because consumers are used to seeing and
treating as trademarks highly suggestive terms which are
used as flavor designations, they are more prone to
recognize that even a descriptive term may serve a trademark
function.
In view of opposer’s own (previous) view that TANGY
FRUITS is not descriptive of candy, and the general context
in which applicant’s mark is viewed, we find that TANGY
FRUITS, while merely descriptive of candy, is not highly
descriptive of such goods. Accordingly, the degree of
evidence to prove acquired distinctiveness is not as great
in this case as it would be with a highly descriptive mark.
See Yamaha International Corporation v. Hoshino Gakki Co.,
Ltd., supra.
Turning then to the evidence of acquired
distinctiveness, applicant has used TANGY FRUITS as a
trademark for its candy continuously since 1984. From the
evidence of record it appears that applicant’s use of the
mark was exclusive from 1984 until 1992, when opposer
introduced its TANGY FRUITS candy in a roll package.
Applicant’s sales figures, as indicated above, show steady
but relatively modest sales until 1993, when they jump from
low double digits to $242,000, and then to $2.6 million in
1994, and the record indicates subsequent sales continuing
at the latter rate. Since 1994 applicant has continued to
Opposition No. 101,650
15
expand the brand into other trade classes, with the largest
growth in sugar-free candy and, for the sugar candy, as part
of applicant’s KIDDIE MIX package. Because the TANGY FRUITS
candy was a product of the Powell Candy Company, and
applicant did not acquire this company until 1992, applicant
has limited information about its predecessor’s marketing
activities. TANGY FRUITS is now sold through wholesale
clubs such as Sam’s Club and mass merchandise stores such as
Kmart.
Applicant advertises its TANGY FRUITS candy through a
catalog which is shown by applicant’s sales force to
wholesale and retail purchasers. It has been part of
applicant’s trade advertising, and has been displayed in
trade shows that applicant attends. Consumer advertising
includes featuring the product on some of the fleet of 300
trailers which distribute applicant’s products, using the
trucks as a moving billboard. TANGY FRUITS candy is also
shown in a television commercial which airs on Nick at
Night.
Applicant has also provided representative samples of
letters from consumers inquiring where they could purchase
TANGY FRUITS candy. In most of these letters the initial
letters of TANGY FRUITS was capitalized or the term was
otherwise used in a manner that implied the writers regarded
TANGY FRUITS as a trademark.
Opposition No. 101,650
16
We acknowledge that the information applicant has
provided about its sales and advertising of the TANGY FRUITS
candy is rather limited. For example, although applicant’s
witness testified generally as to the channels of trade for
applicant’s products, he provided relatively little
information about the stores where TANGY FRUITS candy in
particular is sold. Nor did applicant provide any figures
on the amount it spent advertising its TANGY FRUITS candy.
Although Mr. Halverson provided general information about
promotional activities, he did not, for example, indicate
the number of catalogs featuring TANGY FRUITS candy which
were distributed; identify the trade shows or state the
number which were attended; or submit a copy of the
television commercial which included the TANGY FRUITS
product, or otherwise indicate how long it has aired on Nick
at Nite.
Despite the omissions in the evidence applicant has
provided, we find that the record as a whole demonstrates
that TANGY FRUITS has acquired distinctiveness as a
trademark of applicant’s, and did so prior to opposer’s
first use of this term in 1992. We base our finding, in
particular, on the fact that applicant used TANGY FRUITS
continuously since 1984 in the manner of a trademark on its
products, in a large and distinctive type font, such that
consumers would recognize that it was intended to function
Opposition No. 101,650
17
as a trademark. Moreover, although sales were relatively
limited until 1993, it must be remembered that the packages
of the TANGY FRUITS candy were sold for 99 cents, or in a 2
for $1.00 package. Because of the very low cost of the
candies, even the limited number of sales represented many
bags of candy sold, and therefore a large number of consumer
impressions of the mark on the packaging.
Opposer asserts that applicant has been able to show
only three years of exclusive use of TANGY FRUITS, and thus
cannot establish a prima facie case of distinctiveness.
Opposer bases this argument on the fact that opposer
introduced its own TANGY FRUITS candy in 1992 (with sales of
$1.1 million in that year), and the apparent claim that
because applicant provided no sales figures prior to 1989,
no sales should be presumed prior to that date. However, we
find Mr. Halverson’s testimony credible to establish
continuous sales since the product’s introduction by
applicant’s predecessor-in-interest from 1984.9 Moreover,

9 As indicated in footnote 6, in its brief opposer has asserted
that Mr. Halverson’s testimony as to usage by applicant’s
predecessor-in-interest is hearsay, and that Mr. Halverson had no
personal knowledge of the predecessor’s use of the mark. This is
essentially an objection based on foundation. Mr. Halverson
tsetimifed that he was was the Director of Marketing for Sathers
Inc. before its acquisition by Favorite Brands International, and
now has overall responsibility for, inter alia, marketing the
Sather brands of candies. Opposer was represented by counsel at
the deposition, and if opposer had any concerns about the basis
for Mr. Halverson’s testimony about the continuous use of TANGY
FRUITS since 1984, counsel could have objected at the time, when
applicant’s counsel would have had an opportunity to try to
Opposition No. 101,650
18
our finding of acquired distinctiveness does not rest on the
provision of Section 2(f) of the Trademark Act that the
Commissioner may accept as prima facie evidence that the
mark has become distinctive ... proof of substantially
exclusive and continuous use thereof..., but on the evidence
of acquired distinctiveness provided by applicant.
In conclusion, we find that opposer has failed to prove
that TANGY FRUITS is generic for fruit-flavored hard candy,
and that applicant has established that its mark has
acquired distinctiveness.
Decision: The opposition is dismissed.
E. J. Seeherman
E. W. Hanak
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board

overcome such objections. By not seasonably raising its
objection, opposer is deemed to have waived its right to object.