Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA626002
`ESTTA Tracking number:
`09/09/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91217489
`Plaintiff
`ASSOCIATED WHOLESALE GROCERS, INC.
`Michael A. Williamson
`Polsinelli PC
`900 W. 48th Place, Suite 900
`Kansas City, MO 64112
`UNITED STATES
`uspt@polsinelli.com, docketing@polsinelli.com
`Opposition/Response to Motion
`Michael A. Williamson
`uspt@polsinelli.com, docketing@polsinelli.com
`/Michael A. Williamson/
`09/09/2014
`Brief in Opposition to Motion to Dismiss (09-09-2014).pdf(75248 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`In the Matter of United States Trademark Application:
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`Mark:
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`Simply the Better Choice
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`Application No.:
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`86/171,424
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`Classes No.:
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`Filed:
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`030
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`January 21, 2014
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`OPPOSITION NO.: 91217489
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`ASSOCIATED WHOLESALE GROCERS,
`INC.
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`Plaintiff-Opposer,
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`v.
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`Medora Snacks, LLC
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`Defendant-Applicant.
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`BRIEF IN OPPOSITION TO MOTION TO DISMISS
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`Defendant-Applicant has filed a Motion to Dismiss Pursuant to Fed. R.Civ. Proc.
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`12(b)(6) or Failure to State a Claim Upon Which Relief Can be Granted. Opposer does not
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`concede that the arguments raised in Applicant’s Motion to Dismiss are correct. To expedite this
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`proceeding, however, Opposer has filed, concurrently with this response, an Amended Notice of
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`Opposition, clarifying the grounds upon which Opposer seeks refusal of Application No.
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`86/171,424. TBMP § 507.01, citing Fed. R. Civ. P. 15(a)(1)(B). Opposer therefore submits that
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`Applicant’s Motion to Dismiss is moot. See TBMP § 503.03. Opposer further responds to
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`Applicant’s Motion to Dismiss as follows:
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`1
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`I.
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`The Standard
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`A motion to dismiss for failure to state a claim upon which relief can be granted is a test
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`solely of the legal sufficiency of the notice of opposition. See, e.g., Advanced Cardiovascular
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`Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed. Cir.
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`1993). To withstand a motion to dismiss under Fed. R. Civ. P. 12(b)(6), the notice of opposition
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`need only allege such facts as would, if proved, establish that Opposer is entitled to the relief
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`sought, i.e., that (1) Opposer has standing to maintain the proceeding, and (2) a valid ground
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`exists for denying the registration sought. See Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d
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`1752, 1755 (Fed. Cir. 1988). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
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`1024, 213 USPQ 185, 187 (CCPA 1982).
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`When determining whether an opposer has standing, the Board reviews whether the
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`notice of opposition alleges sufficient facts to show that opposer has a real interest in the
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`outcome of the proceeding and a reasonable basis for the belief that it will be damaged by the
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`issuance of a registration. See Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025
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`(Fed. Cir. 1999).
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`To survive a motion to dismiss, opposer’s notice of opposition must “state a claim to
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`relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 554, 570 (2007).
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`It is the duty of the Board to examine the notice of opposition in its entirety, construing the
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`allegations therein so as to do justice, as required by Fed. R. Civ. P. 8(e) to determine whether it
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`contains any allegations, which, if proved, would entitle the opposer to the relief sought. See
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`IdeasOne Inc. v. Nationwide Better Health, 89 USPQ2d 1952, 1953 (TTAB 2009). See also Fair
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`Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1539 (TTAB 2007).See Lipton, 213 USPQ
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`at 189. See also Trademark Rule 2.104(a).
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`2
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`II.
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`Factual Background
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`Opposer’s Notice of Opposition was filed on July 22, 2014, is amended concurrently with
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`this response, and any quotations from the Notice appearing in Applicant’s motion are of record
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`and available for verification by the Board. Opposer’s Notice states that since 1983 it has been
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`in the business of providing a wide variety of products and services in connection with the mark
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`“BEST CHOICE”, alone and in combination with design features. Opposer’s Notice also asserts
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`ownership and continuous use of marks including the formative “BEST CHOICE” and
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`comprising a family of marks including at least 13 registrations in 15 international classes.
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`Opposer also states that products offered under its “BEST CHOICE” marks included “corn-
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`based snack foods.” The opposed intent-to-use application is for the mark “SIMPLY THE
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`BETTER CHOICE” for “corn-based snack foods.” Opposer’s Notice asserts priority of use and
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`that Opposer would be damaged by Applicant’s use of its mark based on likelihood of confusion
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`since the products offered under the respective marks are identical and the Applicant’s mark so
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`nearly resembles Opposer’s marks as to be likely to be confused with and mistaken therefor.
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`III. ARGUMENTS
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`A.
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`Standing
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`Any person who believes it is or will be damaged by registration of a mark has standing
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`to file a complaint. See TBMP § 303.01 At the pleading stage, all that is required is that a
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`plaintiff allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable
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`basis” for its belief that it would suffer some kind of damage if the mark is registered. To plead
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`a “real interest,” plaintiff must allege a “direct and personal stake” in the outcome of the
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`proceeding. See TBMP 309.03(b). There is no requirement that a plaintiff show a personal
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`interest in the proceeding different from or “beyond that of the general public” in order to
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`3
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`establish standing. There is also no requirement that actual damage be pleaded or proved in
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`order to establish standing or to prevail in an opposition proceeding. See Enbridge, Inc. v.
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`Excelerate Energy L.P., 92 USPQ2d 1537, 1543 n.10 (TTAB 2009). However, the allegations in
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`support of plaintiff's belief of damage must have a “reasonable basis in fact.”
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`In this case, Applicant’s has pled ownership of 13 registrations, which is sufficient basis
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`for establishing a “real interest” in a proceeding. See Schering-Plough HealthCare Products Inc.
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`v. Ing-Jing Huang, 84 USPQ2d 1323, 1324 (TTAB 2007).
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`Opposer has a reasonable belief of damage based on the relatedness of the goods and the
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`arguable similarities of the marks. That Applicant’s and Opposer’s goods each include the
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`identical description of goods, i.e., “corn-based snack products,” is established by the pleadings
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`and the records of the subject application and Opposer’s cited registrations. In Spirits
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`International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99
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`USPQ2d 1545, 1548 (TTAB 2011), the Board found that Opposer had shown a reasonable belief
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`of damage and a real interest in the case in view of arguable similarities in the marks and
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`relatedness of the goods. That the marks at issue are arguably similar is evident from the
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`common meanings of the marks, and the similar visual appearance auditory impression of the
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`terms BEST CHOICE and BETTER CHOICE, the latter of which comprises the dominant
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`portion of Applicant’s mark. Thus, the allegations of Opposer’s complaint are sufficient to
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`allege standing and to support a claim of likelihood of confusion.
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`B. Opposer Has Stated a Claim Upon Which Relief May be Granted
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`1.
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`Use on Services
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`Applicant alleges that Opposer has not expressed that it is using its alleged marks in
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`connection with any services and that Applicant has expressed no intent to use its mark SIMPLY
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`4
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`THE BETTER CHOICE on any services. Thus, Applicant argues, that to the extent that the
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`present Opposition relates to likelihood of confusion with respect to any of the services for
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`which Opposer uses its BEST CHOICE mark, there is no support in the record for such assertion.
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`Opposer’s concurrently filed Amended Complaint renders this objection moot.
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`2.
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`Opposer’s Mark is Not Merely Descriptive
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`Applicant argues that Opposer’s “BEST CHOICE” mark is merely descriptive.
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`Applicant has overlooked that Opposer owns and uses not merely a single “BEST CHOICE”
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`mark, but a family of “BEST CHOICE” marks including 13 registrations in 15 different classes.
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`Opposer owns 5 registrations for the word mark BEST CHOICE, 7 registrations for the mark
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`BEST CHOICE and Design, as well as a registration for the word mark BEST CHOICE
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`GROWER’S CHOICE. All of these marks incorporate the term “BEST CHOICE” which is a
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`distinguishing element of the mark that is recognized by customers as an identifying trademark
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`in and of itself when it appears in a design mark or composite mark. See for example, Quality
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`Inns Int’l. v. McDonald’s Corp., 695 F. Supp. 198, 8 USPQ2s 1633 (D. Md. 1988). (“a family of
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`marks may have a synergistic recognition that is greater than the sum for each mark.”). See also,
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`McDonald’s Corp. v. McClain, 37 USPQ2d 1274 (TTAB 1995) (Opposition of McCLAIM for
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`legal services in which the court acknowledged “the strength of McDonald’s famous family of
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`marks” and McDonald’s use and licensing on “a wide variety of goods and services”).
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`As stated in paragraph 1 of its Notice, Opposer’s common law use of its marks dates back
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`over 30 years. Opposer’s Notice cites a registration obtained in 1986. Opposer obtained
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`registrations for its “BEST CHOICE” marks for corn-based snack products in 1991 and 2002,
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`which are cited in its Notice of Opposition. That Opposer’s family of “BEST CHOICE” marks
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`is a large and venerable one is evident from the Notice of Opposition and the cited registrations
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`5
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`of record. Opposer denies that its family of marks is merely descriptive, and asserts that its
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`“BEST CHOICE” marks provide no distinct knowledge of the characteristics of any of the
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`products offered under the marks. A mark that “requires imagination, thought, and perception to
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`arrive at the qualities or characteristics of the goods. . .is suggestive. A suggestive mark qualifies
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`for registration without secondary meaning.” In re Nett Designs, Inc., 236 F.3d 1339, 1341, 57
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`USPQ2d 1564 (Fed. Cir. 2001). Even at the time of registration of Opposer’s first “BEST
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`CHOICE” mark, the mark was suggestive of a line of products offered by independent grocery
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`stores and supermarkets and obtained from Associated Wholesale Grocers.
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`3.
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`Opposer’s Synergistic Registrations Are Entitled To Broad Protection
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`Applicant argues that because it believes that Opposer’s marks are merely descriptive and
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`should not have been registered in the first place. Opposer’s conclusions are erroneous.
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`Descriptive marks are indeed registrable on the Supplemental Register and they may also be
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`registered on the Principal Register based on a showing of acquired distinctiveness under §2f.
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`The statute provide that the Director may accept as prima facie evidence that a mark has become
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`distinctive, as used on or in connection with the applicant's goods in commerce, proof of
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`substantially exclusive and continuous use thereof as a mark by the applicant in commerce for
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`the five years before the date on which the claim of distinctiveness is made. See 15 U.S.C. §
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`1052(f); See also TMEP § 1212.
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`Opposer disputes characterization of its marks as descriptive. Many of its family of
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`“BEST CHOICE” have been in substantially exclusive and continuous use as a mark by Opposer
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`in commerce for far longer than five years.1 All of Opposer’s registered marks are distinctive
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`1 In particular, as pled in Opposer’s Notice of Opposition: U.S. Registration No. 1,640,147 for BEST CHOICE
`registered April 9, 1991 for, inter alia, cookies, bakery goods, crackers, pretzels, and unpopped popcorn and U.S.
`Registration No. 2,550,300 for BEST CHOICE and Design registered March 19, 2002 for, inter alia, corn chips,
`corn-based snack foods, popped popcorn, flavored popcorn, corn pops, and unpopped popcorn.
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`6
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`and are entitled to their registrations. Opposer’s “BEST CHOICE” formative marks comprise a
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`family of marks with strong secondary meaning as a house line or brand available at independent
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`grocery stores and supermarkets and provided by Associated Wholesale Grocers. Opposer is
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`prepared to prove that its family of “BEST CHOICE” marks has been widely used to generate an
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`enormous volume of sales supported by extraordinary advertising expenses in a wide variety of
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`advertising media.
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`Applicant next argues that where, as here, the marks have been registered, they should be
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`given no more protection than any descriptive mark. However, even a weak mark is entitled to
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`protection against the registration of a similar mark for closely related goods or services. King
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`Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (C.C.P.A. 1974). In
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`this case, Applicant’s mark has been widely used for decades, has become a very strong mark in
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`the grocery and supermarket industry, and is entitled to protection against registration of
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`Applicant’s substantially similar mark for identical goods.
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`Applicant next notes that marks are considered in their entireties in determining
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`likelihood of confusion, but proceeds to parse Opposer’s mark into the terms “CHOICE” and
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`“BEST.” Applicant alleges that it has conducted searches of these independent terms which are
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`attached to its motion as Exhibits 1-5. Since no exhibits were attached to either the service copy
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`of Applicant’s motion or the motion currently viewable on the TTABVUE database, Opposer is
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`unable to reply to these claims. Since the marks are to be considered in their entireties, evidence
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`regarding use or registration of the independent terms “CHOICE” and “BEST” is not relevant to
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`the marks at issue.
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`Applicant’s conclusion that neither “BEST” nor “CHOICE” provide Opposer with the
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`right to protect its “BEST CHOICE” family of marks is not well-founded, since the proper
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`7
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`inquiry is whether Opposer has used and registered the combination of terms “BEST CHOICE,”
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`which is properly pled in Opposer’s complaint. Applicant next alleges that “such protection
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`should now be limited solely to the specific “BEST CHOICE” mark, as a whole and “only when
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`the mark, as a whole, is used in connection with the specific goods set out in each registration.”
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`Applicant would like the Board to ignore the fact that many of Opposer’s “BEST CHOICE”
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`marks are used together as a family to offer a vast array of grocery items that includes the corn-
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`based snack foods described in the application at issue.
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`The gist of Applicant’s argument seems to be that the marks “BEST CHOICE” and
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`“SIMPLY THE BETTER CHOICE” are sufficiently dissimilar as to avoid likelihood of
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`consumer confusion even when used on identical goods. The Federal Circuit Court of Appeals
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`has provided the following guidance with regard to determining and articulating likelihood of
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`confusion:
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`“The basic principle in determining confusion between
`marks is that marks must be compared in their entireties and must
`be considered in connection with the particular goods or services
`for which they are used. It follows from that principle that
`likelihood of confusion cannot be predicated on dissection of a
`mark, that is, on only part of a mark. On the other hand, in
`articulating reasons for reaching a conclusion on the issue of
`confusion, there is nothing improper in stating that, for rational
`reasons, more or less weight has been given to a particular feature
`of a mark, provided the ultimate conclusion rests on consideration
`of the marks in their entireties. Indeed, this type of analysis
`appears to be unavoidable.”
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`In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed.
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`Cir. 1985).
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`Thus, in comparing marks, the “dominant” or “salient” features receive greater weight
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`than other features. See Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 30
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`U.S.P.Q.2d 1930, 1933 (10th Cir. 1994); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710
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`F.2d 1565, 218 U.S.P.Q. 390, 395 (Fed. Cir. 1983). If the dominant portion of both marks is the
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`same, then confusion may be likely notwithstanding peripheral differences. See, e.g., In re
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`Chatam International Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)
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`("Viewed in their entireties with non-dominant features appropriately discounted, the marks
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`[GASPAR'S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly
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`identical"). In this case, the terms “SIMPLY THE” in Applicant’s mark “SIMPLY THE
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`BETTER CHOICE” are less forceful and meaningful than the terms “BETTER CHOICE,”
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`which are determinative of the meaning of Applicant’s mark, and thus dominate the mark. The
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`terms “BETTER CHOICE” and “BEST CHOICE” have virtually identical meanings, and
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`substantially similar visual appearance and auditory impression. Addition of the terms
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`“SIMPLY THE” fails to distinguish Applicant’s mark from Opposer’s mark. This is particularly
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`so if the two marks are encountered in the same grocery or supermarket aisle by an impulse
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`purchaser of corn-based snack foods.
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`SUMMARY
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`Opposer has established standing and has amended its complaint to clarify the grounds
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`upon which it seeks refusal of registration of Applicant’s mark. The age, number, and scope of
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`the pleaded registrations for Opposer’s venerable “BEST CHOICE” mark establish that it has
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`acquired distinctiveness and functions as a strong source identifier of a line of grocery and
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`supermarket products, including the corn-based snack products listed in both Applicant’s and
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`Registrant’s descriptions of goods. Opposer’s “BEST CHOICE” mark comprises a family of
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`marks which has a synergistic recognition that entitles it to at least the ordinary right to protect
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`its BEST CHOICE family of marks, without the limitations sought by Applicant.
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`9
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`In weighing all of the factors, Opposer respectfully requests that the motion be denied.
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`Opposer has established standing and that its claim that a valid ground exists for denying
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`Applicant’s registration is at least plausible on its face. No sufficient basis has been provided to
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`dismiss this Opposition proceeding and to deny Opposer the right to establish likelihood of
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`confusion of Applicant’s mark with Opposer’s mark.
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`Date: __September 9, 2014
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`By:
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`Respectfully submitted,
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`POLSINELLI PC
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`
`
`/Michael A. Williamson/
`Michael A. Williamson, Reg. No. 54,541
`mwilliamson@polsinelli.com
`Marcia J. Rodgers, Reg. No. 33,765
`mrodgers@polsinelli.com
`Lawrence A. Swain
`lswain@polsinelli.com
`900 W. 48th Place, Suite 900
`Kansas City, MO 64112
`Tel.: (816) 360-4168
`Fax: (816) 753-1536
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`ATTORNEYS FOR OPPOSER
`ASSOCIATED WHOLESALE GROCERS, INC.
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`10
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true complete copy of the foregoing Brief in Opposition to Motion
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`to Dismiss has been served on Applicant’s Attorney of Record via First Class U.S. Mail, postage
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`prepaid, with a courtesy copy served via e-mail, on September 9, 2014, addressed to:
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`Sanford J. Asman
`Law Office of Sanford J. Asman
`570 Vinington Court
`Atlanta, Georgia 30350
`sandy@asman.com
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`ATTORNEY FOR APPLICANT
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`/Marcia J. Rodgers/
`Marcia J. Rodgers
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`11