Wallace Farms, Inc.Download PDFTrademark Trial and Appeal BoardJul 9, 2014No. 85789283 (T.T.A.B. Jul. 9, 2014) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Wallace Farms, Inc. ________ Serial No. 85789283 _______ Matthew H. Swyers of The Trademark Co. for Wallace Farms, Inc. N. Gretchen Ulrich, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Quinn, Cataldo and Masiello, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: An application was filed by Wallace Farms, Inc. (“Applicant”) to register on the Principal Register the mark NICK’S STICKS (standard characters, “STICKS” disclaimed) for “grass-fed beef sticks, free-range turkey sticks,” in International Class 29.1 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act on the ground of likelihood of confusion 1 Application Serial No. 85789283 was filed on November 28, 2012 under Section 1(a) of the Trademark Act, based upon applicant’s assertion of November 1, 2011 as a date of first use of the mark anywhere and in commerce. Serial No. 85789283 2 with the following three marks previously registered on the Principal Register by HQM Ltd. (“Registrant”): NICK’S (typed or standard characters)2 for “meatballs, spiral sliced hams, Bavarian hams, hot dogs, scrapple, Italian sausage and canned tomatoes,” in International Class 29;3 NICK’S SAUSAGE (standard characters, “SAUSAGE” disclaimed) for “sausages,” in International Class 29;4 and NICK’S SAUSAGE COMPANY (standard characters, “SAUSAGE COMPANY” disclaimed) for “sausages,” in International Class 29.5 When the refusal was made final, Applicant appealed. Applicant and the Examining Attorney filed main briefs on the matter under appeal. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 2 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A mark depicted as a typed drawing is the legal equivalent of a standard character mark. 3 Registration No. 2009799 issued on October 22, 1996. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Renewed. The registration recites additional goods in Class 30. 4 Registration No. 3355981 issued on December 18, 2007. 5 Registration No. 3355982 issued on December 18, 2007. Serial No. 85789283 3 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key, though not exclusive, considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Registration No. 2009799 For purposes of our analysis of the du Pont factors as they apply to the instant refusal to register, we will concentrate our discussion on cited Registration No. 2009799 for the mark NICK’S (standard characters) for “meatballs, spiral sliced hams, Bavarian hams, hot dogs, scrapple, Italian sausage and canned tomatoes.” We find this registration to be the most relevant for our du Pont analysis, and we proceed accordingly. Since this is the most relevant registration, if we find a likelihood of confusion, we need not find it as to the others. On the other hand, if we do not reach that conclusion, we would not find it as to the other cited registrations either. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). The Goods We begin by comparing Applicant’s goods with those of Registrant. In making our determination under the second du Pont factor, we look to the goods as identified in the involved application and cited registration. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 Serial No. 85789283 4 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”). See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”). In this case, Applicant’s goods are identified as “grass-fed beef sticks, free-range turkey sticks” and Registrant’s goods are identified as “meatballs, spiral sliced hams, Bavarian hams, hot dogs, scrapple, Italian sausage and canned tomatoes.” The Examining Attorney, in support of her contention that the goods at issue are commercially related, has made of record examples of web pages from third-party e-commerce sites offering goods similar in nature to those of both Applicant and Registrant. Among these, we note the following: - the website at offers products including smoked beef snack sticks, spiral sliced country ham and smoked sausage.6 - the website at offers products including beef sticks, summer sausage, smoked ham, cooked sausage and smoked turkey.7 6 Office action of March 25, 2013 at 68-73. 7 Id. at 74-77. Serial No. 85789283 5 - the website at offers products including grass- fed beef sticks, hot dogs and sausage.8 - the website at offers products including grass- fed beef snacks, ham and sausage.9 - the website at offers products including grass-fed beef snack sticks, hot dogs and Italian sausage.10 - the website at offers products including beef snack sticks, beef frankfurters, ham and Italian sausage.11 - the website at offers products including grass-fed beef sticks, hot dogs, ham and Italian sausage.12 - the website at offers products including turkey and chicken franks, meatballs, Italian sausage, and turkey sticks.13 - the website at offers products including ham, hot dogs and turkey sticks.14 These websites demonstrate that the goods of both Applicant and Registrant are marketed and sold together under the same marks. We find that customers would readily perceive both types of goods as being within a single category of goods. In addition, the examining attorney has made of record numerous use- based third-party registrations, of which the following show that various entities have adopted a single mark for goods identified in the involved application and cited registration: 8 Final Office action of October 16, 2013 at 10-14. 9 Id. at 15-17. 10 Id. at 17-25. 11 Id. at 26-29. 12 Id. at 30-37. 13 Id. at 38-39. 14 Id. at 40-45. Serial No. 85789283 6 Registration No. 0661990 for, inter alia, beef sticks, sausages; Registration No. 2762736 for, inter alia, sausage, beef sticks, Italian sausage, wieners; Registration No. 3107246 for, inter alia, sausages and beef sticks; and Registration No. 4204631 for, inter alia, beef sticks and sausages. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). Applicant argues15 that its goods are snack food items with a stable shelf life as opposed to groceries and are exclusively made from beef and chicken that is grass-fed, free-range, GMO-free and pesticide free, whereas Registrant’s goods mainly are conventional meat products presumably manufactured using such ingredients that are absent from Applicant’s goods. However, while Applicant’s goods, as recited, clearly indicate that they are grass-fed, the remaining limitations asserted by applicant, e.g., GMO- and pesticide-free, are not reflected in its identification. More importantly, Registrant’s goods do not recite any limitations as to whether they are made using pesticides, GMOs, or whether the animals from which they are made are grass-fed or free-range. Thus, we must presume that Registrant’s goods Serial No. 85789283 7 include meat products made from grass-fed animals and meat products that are GMO- and pesticide-free. As noted above, in evaluating the similarities between the goods, we must look to the goods as identified in the subject application and cited registration. See Octocom, 16 USPQ2d at 1787. We may not read limitations, such as those suggested by Applicant, into the respective identifications that are not reflected by the wording thereof. As a result, we must presume that Registrant’s broadly worded identification of goods includes healthy meat products manufactured using the same processes as those of Applicant. The evidence of record indicates that the goods of Applicant and Registrant are commercially related meat products that are marketed and sold together, and thus may be encountered together by consumers. The similarity of the goods is a factor that weighs in favor of a finding of likelihood of confusion. Channels of Trade and Classes of Consumers In this case, neither Applicant’s nor Registrant’s identification of goods recites any limitations on the channels of trade in which the goods may be encountered or the classes of consumers to whom they may be marketed. Thus, absent any restrictions in the identifications of goods, the goods of Applicant and Registrant are presumed to move in all normal channels of trade and be available to all classes of potential consumers of such goods. See 15 Brief, p. 12-13; Affidavit of Jason Wallace, submitted with Applicant’s September 24, 2013 communication, p. 34-38. Serial No. 85789283 8 In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In each case, the customers would include ordinary consumers of food products; and the channels of trade would include retail and wholesale food stores and other distribution channels for meat products (including the online food stores discussed above). As discussed above, because there are no trade channel limitations recited in the respective identifications of goods, we do not find probative Applicant’s arguments16 that its goods are marketed in separate trade channels to customers that are distinct from those in which Registrant’s goods are encountered. The overlap in trade channels and classes of purchasers are factors that further weigh in favor of a finding of likelihood of confusion. Strength of Registrant’s Mark Prior to our consideration of the involved marks, we will consider Applicant’s arguments that Registrant’s NICK’S mark is weak as a result of third-party registration of similar marks for related goods. In support of its argument, Applicant has made of record17 copies of USPTO records displaying ten third-party NICK-formative marks for various food products: NICKS (stylized), Reg. No. 4383891, owned by Nick’s Chips LLC, for “Pork rinds; Potato chips; Potato-based snack foods” in International Class 29 and “Cheese flavored puffed corn snacks; Cheese flavored snacks, namely, cheese curls; Cheese flavored snacks, namely, puffed cheese balls; Cheese-flavored corn snacks; Corn chips; Corn-based snack foods; Extruded corn snacks; Flavor-coated popped popcorn; Puffed corn snacks; Tortilla chips” in International Class 30; 16 Id. at 13-14; Id. at 35-37. 17 Applicant’s September 24, 2013 communication, Exhibits 6-15. Serial No. 85789283 9 N NICK'S PIZZA and design, Reg. No. 2,047,184, owned by Ascan Pizza Corp., for “pizza” in International Class 30; NIKI (stylized), Reg. No. 2,026,507, owned by Akari International, Inc., for “dehydrated fruit and vegetable food snacks” in International Class 29; NICK’S GREEK LIFE (standard characters), Reg. No. 3359,019, owned by John Nicholas Graub, III, for “Salsa” in International Class 30; LITTLE NICKY'S AMOGUE (standard characters), Reg. No. 3,511,797, owned by Nicky's Family Recipes, for “Dipping sauces; Ready-made sauces; Sauces; Steak sauce” in International Class 30; NICK CANDY (standard characters), U.S. Reg. No. 2,902,341, owned by Viacom International Inc., for “bread, bread sticks, bubble gum, candy cake decorations, edible cake decorations, cake mixes, cakes, chocolate based fillings for pies and cakes, candy, candy coated popcorn, caramel popcorn, caramels, cereal based snack food, cheese flavored corn puffed snacks, chewing gum, chocolate chips, corn chips, flour based chips, chocolate, chocolate covered nuts, chocolate powder, chocolate syrup, chocolate topping, cocoa mixes, cones for ice cream, cookies, corn curls, cracker and cheese combinations, crackers, ready to eat cereal derived food bars, frosting, fruit pies, flavored and sweetened gelatins, granola based snack bars, hot chocolate, popped popcorn, pretzels, puddings, waffles; ice cream, ice milk, flavored ices, frozen confections, frozen yogurt, frozen custard” in International Class 30; NICK’S ORIGINAL CONEY ISLAND HOTDOG SAUCE and design, U.S. Reg. No. 3,113,032, owned by Sandstone Foods, Inc., for “Hot dog sauce made of spices and ground beef” in International Class 30; PAPA NICK’S (standard characters), U.S. Reg. No. 4,168,850, owned by Napco, Inc., for “instant cocoa mix for making hot chocolate and cocoa drinks” in International Class 30 NICK-A-MILLION’S (standard characters), U.S. Reg. No. 4,095,815, owned by Nicholas Rushing DBA Nickamillion, for “Barbecue sauce” in International Class 30; and NICK THE GREEK and design, U.S. Reg. No. 2,042,379, owned by NTM, Inc., for “gourmet cooking sauces and marinades.” in International Class 30. With regard to these third-party registrations, we first note that such registrations are not evidence of use of the marks shown therein and, Serial No. 85789283 10 therefore, are not proof that consumers are familiar with said marks so as to be accustomed to the existence of similar marks in the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Second, while these registrations identify food products, they do not identify meat products and thus are not as closely related to those in the cited registration as Applicant’s “grass-fed beef sticks, free-range turkey sticks.” As such, they have limited probative value for purposes of demonstrating the asserted weakness of Registrant’s NICK’S mark for “meatballs, spiral sliced hams, Bavarian hams, hot dogs, scrapple, Italian sausage and canned tomatoes.” On the record in this case, we find insufficient support for Applicant’s argument that the NICK’S mark in the cited registration is weak in the field of meat products and entitled to only a narrow scope of protection. See Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d unpublished., (No. 92-1086 Fed. Cir. (June 5, 1992). Cf. In re Broadway Chicken, Inc., 38 USPQ2d at 1565. The Marks We turn then to the first du Pont factor, i.e., whether Applicant’s NICK’S STICKS mark and Registrant’s NICK’S mark are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. See Palm Bay Imports, Inc. Serial No. 85789283 11 v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We note initially that the test under the first du Pont factor is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In comparing Applicant’s mark and Registrant’s mark, we first note that Applicant has incorporated the registered mark, NICK’S, in its entirety. In cases such as this, a likelihood of confusion has frequently been found. “When one incorporates the entire arbitrary mark of another into a composite mark, the inclusion of a significant, nonsuggestive element will not necessarily preclude a likelihood of confusion. [Internal citations omitted]. An inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design is similar to the mark CONCEPT). See also Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer soldier design is similar to the mark BENGAL); In re Bissett-Berman Serial No. 85789283 12 Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (E-CELL is similar to the mark E). Thus, the importance of Applicant’s incorporation of Registrant’s mark depends greatly on the degree of suggestiveness of that mark as well as elements of the marks that are not shared. As discussed above, we do not find probative Applicant’s third-party registration evidence that NICK’S is weak in connection with the recited goods in the subject application and cited registration. While it stands to reason that the term “NICK’S” is a given name, we find no specific meaning of the term in connection with the identified goods in either the subject application or cited registration. Even allowing for any suggestive nature of the term NICK’S, the fact that Applicant has incorporated the registered mark greatly increases the level of similarity between the marks. Furthermore, the significance of the word “NICK’S” is reinforced by its location as the first word in Applicant’s mark. Presto Products Inc. v. Nice- Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed in the mind of a purchaser and remembered”). See also Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the identical lead word). We also observe that “STICKS” is disclaimed in Applicant’s mark and appears to be descriptive of the goods recited in the Serial No. 85789283 13 application. As a result, when the marks NICK’S and NICK’S STICKS are viewed in their entireties, they are more similar than dissimilar in appearance and convey a similar connotation, namely, that Applicant’s NICK’S STICKS grass-fed beef and free-range turkey sticks are a subset of Registrant’s NICK’S meat products. In other words, we find that consumers are likely to view the marks as variations on each other, but pointing to a common source. Similarity in any one of the elements of sound, appearance, meaning, or commercial impression is sufficient to support a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion”); and In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of similarity as to any one factor (sight, sound or meaning) alone ‘may be sufficient to support a holding that the marks are confusingly similar’”) (citations omitted). In view of the foregoing, we find that the similarities in the marks outweigh the differences, and that this du Pont factor also weighs in favor of a finding of likelihood of confusion. Conditions of Sale The next du Pont factor discussed by Applicant is that of the conditions of sale. Applicant argues that its goods “attract a very specific consumer, namely, health conscious consumers who purchase food that is ‘organic’ or Serial No. 85789283 14 ‘local’ or ‘natural.’”18 Applicant further argues “it can only be assumed that the HQM, Ltd. marks were used to attract individuals seeking sausages, meatballs, sliced hams, scrapple, and other non-health food snack items made from conventional meat products, and mainly pork.”19 Applicant acknowledges that it is unaware of the price point for Registrant’s goods but assumes they are marketed at a lower price point than those of Applicant. Applicant concludes that consumers of its goods as well as those of Registrant would exercise a high degree of care and sophistication in distinguishing between them. However, given the evidence of record that Applicant’s goods and those of Registrant are marketed and sold together, even sophisticated consumers may not realize that Applicant’s recited goods do not emanate from the same source as those of Registrant. Furthermore, even if some degree of care were exhibited in making the purchasing decision, because of the similarities between the marks, even careful purchasers are not likely to distinguish between them. As a result, we also find this du Pont factor to weigh in favor of a finding of likelihood of confusion. Actual Confusion The final du Pont factor discussed by Applicant and the Examining Attorney is that of the lack of instances of actual confusion. Applicant 18 Brief, p. 14. 19 Id. Serial No. 85789283 15 asserts20 that the absence of actual confusion since October 2011 suggests no likelihood of confusion. However, as pointed out by the Examining Attorney, it is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). Particularly in an ex parte proceeding, Applicant’s assertion of the absence of actual confusion is of little probative value in our determination on the issue of likelihood of confusion because the Board cannot readily determine whether there has been a significant opportunity for actual confusion to have occurred, such that the absence of confusion is meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-7 (TTAB 1984). In those situations where the Board has recognized the absence of actual confusion as probative in an ex parte setting, there existed a “confluence of facts” which together strongly suggested that the absence of confusion was meaningful and should be given probative weight. See In re Opus One Inc., 60 USPQ2d at 1817. There is no evidence that such a “confluence of facts” is present in this record. Moreover, the test under Section 2(d) is not actual confusion but likelihood of confusion. See In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) (“uncorroborated statements of no known 20 Id. at 15-16. Serial No. 85789283 16 instances of actual confusion are of little evidentiary value.”). See also In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992). Summary Neither Applicant nor the Examining Attorney has discussed any of the remaining du Pont factors. We note, nonetheless, that none seem to be applicable, inasmuch as we have no evidence with respect to them. In light of the foregoing, we conclude that consumers familiar with Registrant’s goods sold under its above-referenced NICK’S mark would be likely to believe, upon encountering Applicant’s goods offered under its mark that the goods originated with or are associated with or sponsored by the same entity. Decision: The refusal to register is affirmed as to Registration No. 2009799.21 21 In view thereof, we need not consider the Examining Attorney’s refusal to register as to the remaining two cited registrations. Copy with citationCopy as parenthetical citation