Vienna Sausage Mfg. Co.v.Bernard Levy

Trademark Trial and Appeal Board

Aug 31, 1999

No. 91095759 (T.T.A.B. Aug. 31, 1999)

Paper No. 21
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 31, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Vienna Sausage Manufacturing Company
v.
Bernard Levy
_____
Opposition No. 95,759
to application Serial No. 74/436,005
filed on September 13, 1993
_____
Fred S. Lockwood of Lockwood, Alex, Fitzgibbon & Cummings
for Vienna Sausage Manufacturing Company.
Bernard Levy, pro se.
______
Before Hairston, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An intent-to-use application has been filed by Bernard
Levy to register the mark VIENERS on the Principal Register
for “vegetable, legumes, and processed grains sausages;
vegetable, legumes, and processed grains frankfurters” in
Class 29, and “vegetable, legumes, and processed grains
based sandwiches” in Class 30.
Opposition No. 95759
2
Vienna Sausage Manufacturing Company has opposed
registration of the mark, alleging that continuously since
long prior to applicant’s filing date (September 13, 1993),
opposer has been “primarily engaged in the manufacture and
sale of processed meats and sausages with pure beef wieners
being its leading product”; that also continuously since
long prior to applicant’s filing date opposer has operated a
fast-food restaurant in Chicago, Illinois, wherein it sells
and serves hot dog sandwiches for consumption on or off the
premises; that the term “VIENERS” is confusingly similar to
the term “wieners,” which is and has been universally used
and understood to refer to hot dogs, frankfurters and
wieners made with meat; that if applicant obtains a
registration, applicant will be enabled to divert opposer’s
meat customers to applicant’s non-meat goods; and that the
term “VIENERS” is deceptively misdescriptive of applicant’s
non-meat goods pursuant to Section 2(e)(1) of the Trademark
Act.
Applicant, in his answer, admitted that “opposer owns
and operates a fast-food restaurant in Chicago where it
sells and serves hot dogs for on- and off-premises
consumption”; and applicant otherwise denied the salient
allegations of the notice of opposition.1

1 Applicant also set forth several supposed “affirmative
defenses” in 15 numbered paragraphs. Inasmuch as applicant did
nothing other than plead these “defenses,” they must fail.
Opposition No. 95759
3
The record consists of the pleadings2; the file of the
involved application; and opposer’s testimony (with
exhibits) of James Eisenberg, currently co-chairman of
opposer. Applicant did not take any testimony or offer any
other evidence. Only opposer filed a brief.3 An oral
hearing was not requested by either party.
The issue before the Board is whether applicant’s mark
VIENERS, when used in connection with applicant’s goods,
vegetable, legumes, and processed grains sausages,
frankfurters and sandwiches, is deceptively misdescriptive
thereof.4
Opposer bears the burden of proof in this case, and
must establish its claim by a preponderance of the evidence.
See Cerveceria Centroamericana, S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989).
Mr. Eisenberg testified that opposer produces processed

2 Statements made in pleadings cannot be considered as evidence
in behalf of the party making them; such statements must be
established by competent evidence during the time for taking
testimony. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991); and Times Mirror Magazines, Inc. v. Sutcliff,
205 USPQ 656 (TTAB 1979). See also, TBMP §706.01.
3 Factual statements made in a party’s brief on the case can be
given no consideration unless they are supported by evidence
properly introduced at trial. See BL Cars Ltd. v. Puma Industria
de Veiculos S/A, 221 USPQ 1018 (TTAB 1983); and Abbott
Laboratories v. TAC Industries, Inc., 217 USPQ 819 (TTAB 1981).
See also, TBMP §706.02.
4 On pages 2-4 of opposer’s brief on the case, opposer listed
several additional issues, including unfair competition and
violation of 21 U.S.C. §331(a) misbranding of products. The
Board has no jurisdiction over such matters. See Section 17 of
the Trademark Act; and TBMP §102.01.
Opposition No. 95759
4
beef products, and the leading product is sausages, such as
frankfurters, hot dogs, and wieners;5 that for over 100
years opposer has operated a restaurant in Chicago where it
serves hot dogs; that opposer sells its products throughout
the United States, Asia and Europe; and that it sells to
distributors who then sell to chain stores and restaurants.
He further testified that total sales for the last five
years were around $90 million (60 million pounds of meat),
and of that the total figures were $50 million (30 million
pounds) for wieners only.6
Further, Mr. Eisenberg testified that the Department of
Agriculture (USDA) regulates meat products, and in 9 CFR
§319.180 (titled “Subpart G-Cooked Sausage”) sets forth the
“standard of identity” (dep., p.15) for, inter alia,
frankfurters, hot dogs and wieners, which must include raw
skeletal meat (a copy of pages 294 – 296 of this regulation
were introduced into the record as an exhibit); and that
under this regulation, one cannot sell frankfurters, hot
dogs or wieners in interstate commerce which do not contain
skeletal meat. When asked if he could foresee how opposer
would be damaged if applicant commences use of his mark

5 He also testified that in advertisements for this type of
meat product, most of opposer’s competitors use the word
“wiener,” while opposer generally uses the words,
“frankfurter” or “hot dog.”
6 He did not specify whether these figures included the United
States, Asia and Europe, or if they were for United States sales
only.
Opposition No. 95759
5
VIENERS on vegetarian or meat-free products, Mr. Eisenberg
answered that opposer sells a pure beef meat product, “and
for someone to use the name that is closely associated with
our name and at the same time use a name that is closely
associated with wieners, which is under the USDA’s standard
of identity a meat product, the public isn’t going to know
what they’re buying.” (dep., p. 17). He further explained
that in his opinion the public would confuse the term
“VIENERS” with the word “wieners.”
Mr. Eisenberg stated on page 20 of his deposition that
“It’s my contention that you cannot label a product that
does not have meat with the name of a standard of identity
that is a meat standard of identity.” In applicant’s answer
to opposer’s interrogatory No. 25 applicant stated that when
he commences use of his mark, he will identify his goods on
packaging, literature, and in advertisements as “meat-free
hot dogs,” “vegetarian hot dogs,” “vegetarian frankfurters
and wieners,” and “non-animal product hot dogs.” (This
interrogatory answer was read into the record as part of a
question posed by opposer’s attorney at page 17 of the
deposition.)
In view of Mr. Eisenberg’s testimony about opposer’s
business of producing frankfurters, hot dogs and wieners, as
well as opposer’s operation of a restaurant selling hot dogs
Opposition No. 95759
6
(the latter being admitted by applicant), opposer has proven
its standing to maintain this opposition.
The test for determining whether a term is deceptively
misdescriptive as applied to the goods involves a two-part
determination of (1) whether the matter sought to be
registered misdescribes the goods, and (2) whether anyone is
likely to believe the misrepresentation. See In re Quady
Winery, Inc., 221 USPQ 1213 (TTAB 1984).
According to McCarthy, “A mark may be “deceptively
misdescriptive” under §2(e) if it misrepresents any fact
concerning the goods that may materially induce a
purchaser’s decision to buy.”; and “the probable reaction of
buyers is the key issue.” 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, §§11:56 and 11:60 (4th
ed. 1999).
The problem we have with opposer’s position in this
case is that applicant does not seek to register the term
“wieners,” rather, he seeks to register the term VIENERS;
and applicant does not seek to register his mark for meat
products, rather the identification of goods is specifically
limited to vegetarian-based sausages, frankfurters and
sandwiches.
The cited USDA regulation on frankfurters, hot dogs and
wieners does not indicate that vegetarian-based products are
covered in any way. To the contrary, the regulation sets a
Opposition No. 95759
7
“standard of identity” only for certain sausage meat
products. Moreover, the considerations for the USDA’s
“standard of identity” regulations of meat products are
distinctly different from those involving registration of
trademarks. This Board must determine applicant’s right to
register his mark based upon the provisions of the Trademark
Act, and the interpretations thereof by the courts and the
Board. We must independently determine the registrability
of the involved mark for the identified goods.
The evidence submitted by opposer (Mr. Eisenberg’s
testimony and a copy of the USDA regulation of “cooked
sausage”) to prove that the term VIENERS is deceptively
misdescriptive of applicant’s goods as identified is simply
not convincing. The mark makes no misrepresentation about
the goods. Rather, the purchasing public would perceive the
mark VIENERS as presumably a play on the “v” in “vegetable”
or “vegetarian.” Further, these purchasers would not be
deceived that they are purchasing meat products, when they
are specifically purchasing “vegetable, legumes and
processed grains based sausages, frankfurters and
sandwiches.” That is, the average reasonable purchaser
encountering applicant’s products in the marketplace would
not believe that vegetarian sausages, frankfurters and
sandwiches sold under the mark VIENER are made of meat. See
U.S. West Inc. v. BellSouth Corp., 18 USPQ2d 1307 (TTAB
Opposition No. 95759
8
1990) (THE REAL YELLOW PAGES held not merely descriptive or
deceptively misdescriptive when applied to classified
directories); In re Lyphomed Inc., 1 USPQ2d 1430 (TTAB 1986)
(P.T.E. held not deceptively misdescriptive or deceptive
when applied to a pediatric mixture of injectable trace
element additives for intravenous nutrition); R.J. Reynolds
Tobacco Company v. Brown & Williamson Tobacco Corporation,
226 USPQ 169 (TTAB 1985) (NEW LOOK held not merely
descriptive or deceptively misdescriptive when applied to
cigarettes); In re Perfect Fit Industries, Inc., 223 USPQ 92
(TTAB 1984) (COTTAGE CRAFTS held not deceptively
misdescriptive when applied to pillows, pillow covers,
shams, quilts, quilted bedspreads, comforters, bed ruffles
and draperies); In re Econoheat, Inc., 218 USPQ 381 (TTAB
1983) (SOLAR QUARTZ held not merely descriptive or
deceptively misdescriptive when applied to electric space
heaters); and The Norwich Pharmacal Company v. Chas. Pfizer
& Co., Inc., 165 USPQ 644 (TTAB 1970) (UNBURN held not
merely descriptive or deceptively misdescriptive when
applied to a medical preparation for minor skin irritations,
burns and injuries). Cf. The American Meat Institute et al.
v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981) (BAKED
TAM held deceptively misdescriptive when applied to a
chopped, formed turkey meat product.)
Opposition No. 95759
9
On the basis of the record herein, we find that the
mark VIENERS is not deceptively misdescriptive when used in
connection with applicant’s vegetable, legumes and processed
grain sausages, frankfurters and sandwiches.
Decision: The opposition is dismissed.
P. T. Hairston
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board