The Kosher Garden, Inc.v.Sioux Falls Grocery I, LLC

Trademark Trial and Appeal BoardDec 5, 2013

No. 92054073 (T.T.A.B. Dec. 5, 2013)

jk Mailed: December 5, 2013 Cancellation No. 92054073 (parent case) Cancellation No. 92054076 The Kosher Garden, Inc. v. Sioux Falls Grocery I, LLC Before Seeherman, Ritchie and Lykos, Administrative Trademark Judges. By the Board: Sioux Falls Grocery I, LLC (“respondent”) owns the following two registrations for “retail supermarkets; retail florist shops; retail delicatessen services” in International Class 35: 1) POMEGRANATE (standard characters) 2) POMEGRANATE MARKET and design (MARKET disclaimed).1 1 Registration No. 3948515 registered on April 19, 2011 based upon an application filed July 18, 2009, and Registration No. 3948538 registered on April 19, 2011 based upon an application filed August 6, 2009. In both registrations, registrant alleges a date of first use anywhere and date of first use in commerce of 2010. UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 Cancellation No. 92054073 2 The Kosher Garden, Inc. (“petitioner”) filed petitions to cancel the registrations, on the ground of priority and likelihood of confusion under Trademark Act Section 2(d), alleging common law rights since August 2008, in the mark POMEGRANATE and design, as shown below, (hereafter “POMEGRANATE and design”) for “supermarket services… and various food and beverage products” (petitions to cancel, para. 2), as well as ownership of an application, filed December 23, 2009, to register this mark (POMEGRANATE disclaimed in International Classes 29, 30, 31 and 32) for various goods and services,2 and alleging that if there is a likelihood of confusion between petitioner’s mark for its services and goods and respondent’s POMEGRANATE marks for its identified services, then petitioner will be damaged by the continued registration of respondent’s marks. Respondent denied the salient allegations in the petitions to cancel. Petitioner moved for summary judgment in these consolidated proceedings pursuant to Fed. R. Civ. P. 56(a). The motion has been fully briefed.3 Analysis 2 Application Serial No. 77899805, filed December 23, 2009, pursuant to Trademark Act Section 1(a). 3 Subsequent to briefing of the motion for summary judgment, the Board provided the parties time in which to consider the option of converting these cancellation proceedings into proceedings seeking concurrent use registrations. The Board Cancellation No. 92054073 3 Summary judgment is appropriate where the movant shows that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely disputed must support its assertion by either 1) citing to particular parts of materials in the record, or 2) showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact. Fed. R. Civ. P. 56(c). Petitioner, as the moving party, carries the burden of proof. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding a summary judgment motion, the function of the Board is not to try issues of fact, but to determine if there are any genuine disputes of material fact to be tried. See Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1254 (TTAB 1995); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1389 (TTAB 1994). To prevail on a Section 2(d) claim, a petitioner must prove that there is no genuine dispute of material fact that 1) it has standing to bring the proceeding; 2) it has registered or previously used a mark; and 3) contemporaneous use of the parties’ respective marks on or in connection with their respective goods or services would be likely to cause confusion, mistake or to deceive consumers. See acknowledges the parties’ responses, wherein respondent states that it is willing to seek concurrent use registration, and petitioner states that it declines this option. Cancellation No. 92054073 4 Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). Standing and Priority In the petitions to cancel, petitioner relies on common law rights, alleging continuous use of its POMEGRANATE and design mark in connection with “supermarket services” and “various food and beverage products” since August 2008 (Petitions to Cancel, para. 2). On summary judgment, it asserts that it commenced use of the POMEGRANATE and design mark, in connection with its goods and services, at least as early as August 19, 2008 (motion, p. 6).4 Petitioner submits the declaration of its owner and president, Abraham Banda, stating that “[O]n or about August 19, 2008, Petitioner opened and commenced operation of a retail supermarket … and simultaneously commenced use of the mark POMEGRANATE and design in commerce in connection with supermarket services” (Banda decl., para. 7), submitting “copies of signage showing representative use of the mark POMEGRANATE and design in connection with supermarket services from the date of first use to the present ….” He further states that this “signage was erected when the supermarket opened in August of 2008, and has remained the same from that time until the present” (Banda decl., para. 8, exh. B). Mr. Banda also states that on or about 4 Petitioner also asserts use of the trade name “Pomegranate” as of January, 2008; however, petitioner did not assert likelihood of confusion with its trade name as a ground for opposition, and we do not grant motions for summary judgment on unpleaded grounds. Cf. Fishking Processors Inc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1764 n.3 (TTAB 2007) (Board will not grant summary judgment on Cancellation No. 92054073 5 August 19, 2008, petitioner commenced use of the mark POMEGRANATE and design in commerce in connection with various goods;5 photographs of various products bearing its mark were submitted with the declaration (Banda decl., para. 9, exh. C). Petitioner also asserts that, in respondent’s responses to Request for Admission Nos. 6 and 9, respondent admits that it did not provide services in interstate commerce under its marks prior to August 19, 2008, the date petitioner claims as its first use of its mark. Moreover, in its brief, respondent states that it does not dispute that petitioner has standing, and does not dispute that petitioner’s first use of its mark in commerce predates respondent’s constructive first use date of July 18, 2009 (respondent’s brief, p. 12). Petitioner has carried its burden on summary judgment of establishing that there is no genuine dispute that it 1) has standing to bring this proceeding, and 2) is the prior user of its POMEGRANATE and design mark in connection with supermarket services. Likelihood of confusion To prevail, petitioner must prove that respondent’s use of its mark in connection with its identified services is likely to cause confusion with an unpleaded ground). Accordingly, in the absence of a motion to amend, we have given this claim no consideration. 5 The goods are identified in the Banda declaration, and include “meat, fish and poultry, frozen meat, luncheon meats, preserved and/or cooked seafood, namely, sable fillet and lox; herring, gefilte fish, smoked fish, preserved fish, frozen, prepared or packaged entrees and side dishes consisting primarily of meat, fish, poultry or vegetables; processed nuts, nut butters, dried fruit and vegetables, edible oils, Cancellation No. 92054073 6 petitioner’s previously used mark. In determining likelihood of confusion, the Board analyzes the relevant factors bearing on the issue as set forth in In re E. I. du Pont De Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“du Pont factors”). The Marks Petitioner argues, inter alia, that the literal portion of the marks - pomegranate - conveys the same commercial impression of a reference to that particular kind of fruit, and that the design elements consisting of the depiction of a pomegranate merely reinforce the commercial impression conveyed by the wording, and therefore are insufficient to distinguish the marks. For its part, respondent does not specifically address the first du Pont factor regarding the similarity or dissimilarity of the marks. In its brief, under “Conclusion,” it states that “[O]ther than the admitted similarity between the parties’ marks, none of the DuPont (sic) factors can be resolved in Kosher Garden’s favor, as a matter of law” (respondent’s brief, p. 22). Thus, it appears that respondent has conceded that the parties’ marks are similar. In any event, we find that there is no genuine dispute as to the similarity of the marks. Respondent’s marks are POMEGRANATE (standard characters), and POMEGRANATE MARKET with a pomegranate design; indeed, respondent’s description of the mark is: “The mark consists of the word ‘POMEGRANATE’ vegetable oils; yogurts; dips; processed olives; pickles; hummus chick pea paste; processed poppy seeds; cheeses” (Banda decl., para. 9). Cancellation No. 92054073 7 above which is a stylized representation of a pomegranate attached by a stem to a short branch to which two leaves are also attached.” Petitioner’s previously used mark is POMEGRANATE with a pomegranate design. Because the design element in petitioner’s mark is a pictorial representation of a pomegranate, this design merely serves to reinforce the meaning of the word “pomegranate.” As a result, petitioner’s mark and respondent’s POMEGRANATE mark are extremely similar in appearance, and are identical in pronunciation, meaning and commercial impression. In respondent’s POMEGRANATE MARKET and design mark, MARKET is a highly descriptive, if not generic word, and is therefore disclaimed; because it has no source- indicating significance for these services, it does not serve to distinguish the mark from petitioner’s mark. The pomegranate design in respondent’s mark is similar in appearance to the design in petitioner’s mark, and serves the same purpose, namely, to reinforce the meaning of the word POMEGRANATE. Thus, there is no genuine dispute that the marks are similar in appearance, pronunciation, meaning and commercial impression. The Services Petitioner argues that the parties’ services are identical. In response to respondent’s argument that petitioner’s supermarket is a kosher supermarket and that it caters to a clientele that seeks kosher food, petitioner asserts that it “operates a large self-service retail establishment which, like any other supermarket, is organized into departments (e.g., Dairy, Meats, Produce, Cancellation No. 92054073 8 Household goods, etc.)” (reply brief, p. 2; Banda reply decl., para. 7), and that it offers services of a retail establishment selling “a wide variety of products, all of which would normally be found in a supermarket” (reply brief, p. 2; Banda reply decl., para. 8, 13-14). Petitioner further asserts that its services are similar to respondent’s delicatessen services inasmuch as petitioner has various departments, including one with delicatessen products (Banda reply decl., para. 8-9). Petitioner further asserts that consumers who do not seek kosher products also shop at its establishment, and has submitted a reply declaration by Mr. Banda to support these claims. For its part, respondent argues that the respective services are not directly competitive or related because petitioner is primarily a kosher market whose targeted customers are a narrow class of customers, namely, the Orthodox Jewish community in the Brooklyn, New York area who seek premium kosher goods. In seeking to distinguish its own services, respondent submits the declaration of its manager, Craig Snyder, stating that its stores promote organic products grown or produced in Sioux Falls (Snyder decl., para. 4), that although some of its products may qualify as kosher it does not promote itself as a kosher retailer (Snyder decl., para. 8-9), and that it promotes in publications and media located exclusively in Sioux Falls (Snyder decl., para. 10.). Whether or not petitioner operates a kosher supermarket, or its services are primarily directed to consumers seeking kosher food items, does not raise a genuine dispute that would preclude entry of summary judgment. Respondent’s services are identified, in part, as “retail supermarkets.” These services would Cancellation No. 92054073 9 encompass retail kosher supermarket services. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (if services are unrestricted and broadly described, they are presumed to encompass all services of the type described). Thus, even if petitioner could establish only that it has common law rights for retail kosher supermarket services, respondent’s services must be deemed to be, in part, legally identical to petitioner’s services. Cf. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application).6 Accordingly, we find that there is no genuine dispute as to the similarity of the services. Purchasers and Conditions of Sale Petitioner argues that the purchasers are non-sophisticated consumers of “simple consumer goods” which are relatively low cost, non-luxury goods typically found in supermarkets and grocery stores, and that such consumers exercise less care in their purchasing decisions, and thus are likely to be confused as to source (motion, p. 23). Respondent posits that customer sophistication is dispositive of the likelihood of confusion analysis. It argues that petitioner’s class of consumers is the Orthodox Jewish community in the Brooklyn, New York area, and that they 6 In the present case, the principle would apply to any services that come within the identification of services in respondent’s registrations. Cancellation No. 92054073 10 are “discriminating, sophisticated purchasers” (respondent’s brief, p. 7) due to their need for products based on their religious beliefs and cultural identity. It further argues that petitioner advertises to this population, primarily in Jewish- themed publications. In seeking to distinguish its own class of consumers, respondent’s declarant, Mr. Snyder, states that its customers are discriminating and selective purchasers who seek organic, chemical-free, locally-sourced products (Snyder decl., para. 15-16). To the extent that respondent argues that the parties’ respective services are offered to or patronized by distinct classes of consumers, this does not raise a genuine dispute. Because the services as identified in respondent’s registrations are not limited to particular classes of consumers, we must assume that they are offered to the public at large and may be encountered by all classes of consumers for such services, including those consumers who seek a supermarket offering kosher food products. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“When the registration does not contain limitations describing a particular channel of trade or class of customer, the goods or services are assumed to travel in all normal channels of trade.”). Nor does the purported sophistication of petitioner’s and respondent’s customers raise a genuine dispute that would preclude entry of summary judgment. For purposes of deciding this motion, we will make the assumption that respondent urges, thereby resolving this issue in respondent’s favor, that each party’s customers exercise care in choosing the supermarket they patronize. Cancellation No. 92054073 11 However, the parties’ respective marks are so similar that even careful and discriminating customers would not distinguish between petitioner’s mark and respondent’s marks when they are all used for supermarket services, but would assume that the marks POMEGRANATE, POMEGRANATE MARKET and pomegranate design, and POMEGRANATE and pomegranate design all identify supermarket services emanating from a single source. Lack of Actual Confusion Respondent asserts that no actual confusion in the marketplace has been reported. This assertion is unsupported, and in any event does not serve to raise a genuine dispute or to preclude the entry of summary judgment. The record shows that, as of this point, the parties operate in separate geographic areas. As a result, there has been no real opportunity for confusion to occur.7 Thus, we cannot treat the lack of evidence of actual confusion as raising a genuine dispute that there is not a likelihood of confusion. See e.g., Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1714 (TTAB 2010). Thus, we find no genuine dispute that the parties’ marks are similar and that, because of the unrestricted identification in respondent’s registrations, their services are deemed to be, in part, legally identical and to travel in the same 7 However, respondent cannot rely on the geographic separation of the parties’ services to avoid a finding of likelihood of confusion; because respondent’s registrations are not geographically restricted, it is entitled to use its mark throughout the United States, including in the same geographic areas where petitioner renders its services. See Section 7(b) of the Trademark Act. Cancellation No. 92054073 12 channels of trade. To the extent that there is a genuine dispute about the sophistication of the parties’ customers, we have resolved that dispute in favor of respondent, and treated the customers as discriminating and careful. However, because of the similarity of the parties’ marks, even discriminating and careful customers are likely to be confused by the use of the marks in connection with legally identical services. Accordingly, we find that there is no genuine dispute that confusion is likely to result from the contemporaneous use of the parties’ marks for retail supermarket services. Summary Inasmuch as petitioner has carried its burden of establishing that there is no genuine dispute that it has standing, that it is the prior user, and that respondent’s use of its marks for supermarket services is likely to cause confusion with petitioner’s mark, petitioner’s motion for summary judgment is granted. The petitions to cancel are granted and respondent’s Registration Nos. 3948515 and 3948538 will be cancelled in due course by the Commissioner for Trademarks.