throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA997868
`08/27/2019
`
`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91244684
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`Party
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`Correspondence
`Address
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`Plaintiff
`Yarnell Ice Cream, LLC
`
`DANIEL KEGAN
`KEGANLAW
`79 W MONROE STREET #1310
`CHICAGO, IL 60603-4931
`UNITED STATES
`daniel@keganlaw.com
`312-782-6495
`
`Submission
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`Motion for Summary Judgment
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
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`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 11/02/2019
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Daniel Kegan
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`daniel@keganlaw.com
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`/daniel kegan/
`
`08/27/2019
`
`SbY-Outst-SumJ-27Aug2019.pdf(183210 bytes )
`x01-10.pdf(2729467 bytes )
`x11-19.pdf(4172510 bytes )
`x20-29.pdf(5968244 bytes )
`x31-39.pdf(3578277 bytes )
`x40-59 62 77.pdf(4634399 bytes )
`R80-81 Redacted.pdf(128620 bytes )
`SbY-Outst-PodrackyDeclns-26Aug2019.pdf(660108 bytes )
`SbY-Outst-RobBellDecln x39.pdf(296051 bytes )
`SbY-Outst-KeganDec-26Aug2019.pdf(113225 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`YARNELL ICE CREAM, LLC
`
`Opposer,
`
`
`v
`OUTSTANDING FOODS, INC
`
`Applicant.
`
`) Full of Flavor Free of Guilt
`) Serial 87-566,210
`) Opposition 91,244,684
`) Published 17 July 2018
`) International Class 29
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`OPPOSER’S MOTION AND BRIEF FOR SUMMARY JUDGMENT
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`INTRODUCTION
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`Opposer Yarnell Ice Cream, LLC moves for summary judgment on all issues of
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`the Notice of Opposition, and on each of Applicant Outstanding Foods, Inc.’s affirmative
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`defenses, pursuant to Fed.R.Civ.P. 56. Registration of Applicant’s mark is likely to cause
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`confusion, mistake, and/or deception with Opposer’s family of GUILT FREE trademarks
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`for foods, including frozen confections. As specifically set forth in the supporting Brief
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`facts and argument below, Opposer’s motion is supported by evidence contained in
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`accompanying exhibits, declarations, discovery, and documents previously made of
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`record before the Board. There is no genuine dispute as to any material fact, nor is
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`Applicant able to produce admissible evidence to support any claimed fact.
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`The Marks
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`FACTS
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`Applicant Outstanding Foods, Inc. (“Outstanding”) has applied, intent-to-use, to
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`register FULL OF FLAVOR FREE OF GUILT for "Vegetable based snack foods which
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`have a bacon flavor; meat substitutes," disclaiming “full of flavor” (1 TTABVUE 3,
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`Opposition Notice ¶14; 4 TTABVUE 2, Answer ¶14). Ice cream is also considered a
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`snack (Exhibit 6, § Types of Snack Foods; cf. Delano Farms Co. v. California Table
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`Grape Com'n, 586 F.3d 1219 (9th Cir. 2009) (ice cream considered a snack)).
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`1
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`Outstanding admits that it does not have knowledge or information sufficient to form a
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`belief about that fact (1 TTABVUE 3, Opposition Notice ¶13; 4 TTABVUE 2, Applicant
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`Answer ¶13).
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`Opposer Yarnell owns incontestible federal trademark GUILT FREE registrations
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`for Frozen dairy confections (® 2,316,804), Frozen confections (® 2,120,649), Exs 1-4,
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`and Restaurant services… (® 2,367,307), Exs 7-9.1 Federal registration of the mark
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`created a presumption of the validity of the mark and Yarnell’s exclusive right of
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`ownership, now conclusive evidence of the exclusive right to use it in commerce,
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`Lanham Act, 15 USC §§ 1065, 1115(b). Because opposer’s pleaded registration is of
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`record, Section 2(d) priority is not an issue in this case as to the mark and the products
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`covered by the registration. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
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`1400, 182 USPQ 108, 110 (CCPA 1974).
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`Opposer Yarnell has owned GUILT FREE registrations for Rolls, doughnuts,
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`muffins, cookies (® 2,189,588), Chocolate pies (® 2,226,444), Jams, jellies, butter,
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`margarine, eggs, and toppings, namely dairy-based whipped toppings and non-dairy
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`based whipped toppings; cocoa, gravies puddings and dairy-based desserts; soft drinks,
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`namely, non-carbonated soft drinks (® 2,205,913), Processed meat (® 2,192,459), Non-
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`dairy dips (® 2,189,581), Processed nuts (® 2,200,081), Peanut butter; Catsup, and
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`barbeque sauce (® 2,200,109), Toppings, namely, fruit toppings (® 2,215,013), Not
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`frozen yogurt and egg nog ® 2,099,328), Dips, namely dairy-based dips (® 2,065,990),
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`Cottage cheese, sour cream, and milk (® 2,096,125), Toppings, namely, chocolate syrup
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`and fudge topping (® 2,179,680), Cakes, candy, pies, namely fruit pies (® 2,172,033),
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`1 Authentication for most exhibits is contained in Kegan Declaration.
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`2
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`dairy-based spreads and cheese; Cheese cakes, syrup, namely, chocolate syrup and table
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`syrup, cake frosting, sugar substitutes, pizza, salad dressing (® 2,181,580), and GUILT
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`FREE CARB AWARE for Frozen confections and frozen dairy confections (®
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`3,043,313; Exs 10-27, pages ordered by Registration, TESS, and use specimens2).
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`All of Yarnell's trademark registrations are evidence of use of the mark. Yarnell,
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`directly or through licensees, has used its GUILT FREE trademark for the registered
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`goods and services. Yarnell had—and has—no intention to abandon its GUILT FREE
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`trademark rights. Yarnell is actively continuing to seek appropriate licensees for its
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`GUILT FREE trademark (Ex 80). The GUILT FREE trademark appears on snack bars
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`marketed by Yarnell's affiliate Schulze (Ex 29).
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`Opposer Yarnell
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`Yarnell Ice Cream Company was founded in 1932 when Ray Yarnell purchased
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`the assets of Southwest Dairy Products in a bankruptcy sale (Ex 31). Surviving the
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`Depression the company grew, expanding its offerings, including "Guilt Free" ice cream.
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`Other "Guilt Free" food products, from sauces to nuts, were licensed for diverse foods
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`(e.g. Ex 10), and Yarnell obtained many federal trademark registrations for its GUILT
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`FREE mark (Exs. 11-27).
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`Faced with financial difficulties, Yarnell closed June 2011. At its bankruptcy sale
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`November 2011, Schulze and Burch Biscuit Company (Schulze, or S&B) purchased
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`Yarnell's assets, including its goodwill, trademarks, and original recipes, and formed the
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`successor company as Yarnell Ice Cream, LLC (Podracky Declaration, ¶ 11). The current
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`2 The TSDR docket date for a PTO digitally scanned paper appears to be the scanning
`date; often the much earlier date the PTO Mail Room received the paper is shown in the
`scanned image.
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`3
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`company, Yarnell Ice Cream, LLC is owned by a holding company controlled by the
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`Schulze principal (Podracky Declaration, ¶ 12).
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`Schulze and Burch, Yarnell Affiliate
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`Founded in 1923, Schulze and Burch is the leading manufacturer of store brand
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`toaster pastries in the world (Ex. 34; Podracky ¶ 32). Schulze produces wholesome
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`snacks and other grain based products for many of the Fortune 100 consumer products
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`companies (Podracky ¶ 33). In 1975 Schulze made the first mass-produced granola bar.
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`Among other products, Schulze markets TOAST'EM pastries and FLAVOR KIST snack
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`bars (Id, ¶ 35). Schulze markets GUILT FREE products under license by its controlled
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`affiliate, Yarnell. (Ex. 80).
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`Outstanding Foods, Inc.
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`Applicant, Outstanding Foods, Inc. incorporated May 2015, with Bill Glaser as
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`the sole officer (Ex. 56, Applicant’s Disclosures; Ex. 62; Ex. 57 Bill Glaser LinkedIn web
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`page). The company currently markets PIG OUT pigless bacon chips. (1 TTABVUE 3-4,
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`Opposition ¶¶ 18–23 & Ex. 5; 4 TTABVUE 3, Answer ¶¶ 18–23).
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`The Parties’ Goods
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`Both Yarnell's frozen confections and Applicant's vegetable based snack foods
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`can be eaten as snacks (Applicant’s Response to Admission Request 1 ("Vegetable based
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`snack foods are a snack food," "Admit"); 1 TTABVUE 21-27, Ex. 6); neither are
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`considered substantial meals. Processed meat, pizza, and barbeque sauce are related to
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`meat and thus to meat substitutes. Vegans and vegetarians seek protein-rich foods as meat
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`substitutes, such as cheese, cottage cheese, eggs, nuts, peanut butter, and yogurt.
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`ARGUMENT
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`Summary judgment is a pre-trial device to dispose of cases in which the
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`“documents, … affidavits or declarations, … admissions, interrogatory answers, or other
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`materials” show that there is no genuine dispute as to any material fact and that the
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`movant is entitled to judgment as a mater of law. F.R.Civ.P. 56 (a) & (c).
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`Applicant Outstanding as opposing party may not rest upon the mere allegations
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`or denials in its pleadings, but must instead come forward with specific evidence showing
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`that there is a genuine dispute for trial, Caine v. Lane, 857 F.2d 1139, 1142 (7th Cir.
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`1988). Outstanding must “do more than simply show there is some metaphysical doubt as
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`to the material facts,” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S.
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`574, 586, 106 S.Ct. 1348 (1986). The Board is not required to draw every conceivable
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`inference in favor of the non-movant, only those inferences that are reasonable, Bank
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`Leumi Le-Israel, B.M. v. Lee, 928 F.2d 232, 236 (7th Cir. 1991). Factual dispute is not
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`established by declarations based on information and belief, but must be based on
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`personal knowledge from a declarant competent to testify regarding the facts at issue,
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`Fed.R.Civ.P. 56(e); Taylor v. List, 880 F.2d 1040, 1045 (9th Cir. 1989). A self-serving
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`affidavit lacking factual support in the record cannot defeat a summary judgment motion,
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`Slowiak v. Land O’Lakes, Inc., 987 F.2d 1293, 1295 (7th Cir. 1993).
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`A.
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`Likelihood of Confusion
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`The core issue in most oppositions is whether there is a likelihood of confusion
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`between Applicant's mark for its applied-for goods and Opposer's trademark rights, In re
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`E. I. DuPont de Nemours & Co, 177 USPQ 563, 567, 476 F2d 1357, 1361 (CCPA 1973).
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`In this opposition, the most salient DuPont factors are 1) mark similarity; 2) goods
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`similarity; 3) trade channels; and 4) sale conditions.
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`To prevent applicant’s registration, Opposer need not prove actual confusion
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`between the two marks. Evidence is sufficient if consumers may believe that Yarnell, as
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`the owner of GUILT FREE, is somehow associated with or otherwise approves of a mark
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`as used by applicant, Elizabeth Taylor Cosmetics v. Arnnick Goutal S.A.R.L., 5 USPQ2d
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`1305, 1313 (SD NY 1987) (citing Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema,
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`Ltd., 604 F.2d 200, 205, 203 USPQ 161, 164 (2d Cir. 1979)); see also Hilson Research,
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`Inc. v. Society for Human Resources Management, 27 USPQ.2d 1423, 1429 (TTAB
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`1993). Additionally, in order to prevail on the opposition, Yarnell need prove only that it
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`is likely that it would somehow be damaged if a registration were granted. McCarthy, J.
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`Thomas, McCarthy on Trademarks and Unfair Competition, §20:7 (4th ed. 1998), citing
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`Wilson v. Delaunay, 114 USPQ 339, 245 F2d 877, (CCPA 1957). All that is necessary is
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`that the opposer establish the conditions and circumstances from which damage to it from
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`the opposed mark can be assumed, FBI v. Societe: “M Bril & Co.,” 172 USPQ 310
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`(TTAB 1971).
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`The most pertinent factors here are the semantically identical word portion of
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`GUILT FREE, the relatedness of the goods and services, the channels of trade and classes
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`of purchasers for the goods and services, and the fame of the prior mark. TBMP
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`309.03(c).
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`1. Similarity of marks in their entireties as to appearance, sound, connotation
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`and commercial impression. Degree of similarity in spelling and pronunciation is
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`determined on basis of the total effect of the designation, rather than comparing
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`individual features. Meaning alone—without reference to appearance and sound—may be
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`sufficiently close for similarity, Boston Athletic Assn. v. Sullivan, 9 USPQ2d 1690, 867
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`F.2d 22, 29–30, 35 (1st Cir. 1989) (defendant’s t-shirts, even those bearing only a photo
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`of runners and single word “Boston” with the current year, identical in meaning to
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`Boston Marathon producer service marks BOSTON MARATHON and BAA
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`MARATHON). Identical meaning of two marks overcomes any difference in appearance,
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`Id. at 30.
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`Marks are evaluated as actually used. "If one word or feature of a composite
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`trademark is the salient portion of the mark, it may be given greater weight than the
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`surrounding elements," Meridian Mutual Ins Co v Meridian Ins. Grp, Inc., 44 USPQ2d
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`1545, 128 F3d 1111 at 1115 (citing International Kennel Club of Chicago, Inc. v Mighty
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`Star, Inc., 6 USPQ2d 1977, 846 F.2d 1079 (7th Cir. 1988)).
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`Applicant has disclaimed “full of flavor.” Applicant’s FREE OF GUILT has the
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`identical meaning as Registrant’s GUILT FREE. Applicant’s mark includes the whole
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`meaning of Opposer’s mark, GUILT FREE. Applicant’s mark’s words, GUILT and
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`FREE, are the only distinctive words of Applicant’s mark; the preposition “of” lacks
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`distinctiveness in Applicant’s mark.
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`In comparing the marks, the test is not whether the marks can be distinguished
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`when subjected to a side-by-side comparison, but rather whether the marks are
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`sufficiently similar in terms of their overall commercial impression so that confusion as
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`to the source of the goods offered under the respective marks is likely to result, Paula
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`Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77
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`(C.C.P.A. 1973); In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201,
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`1205 (Fed. Cir. 2003). The proper focus is on the recollection of the average customer,
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`who retains a general rather than specific impression of the marks, In re Shell Oil Co.,
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`992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Winnebago Industries,
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`Inc. v Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v
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`Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
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`Opposer's mark, GUILT FREE, is semantically identical to Applicant's FREE OF
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`GUILT phrase of its mark. "Guilt" is the strongest, emotionally laden word in both
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`Applicant's and Opposer's marks. "Flavor" is a common promotional term for food,
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`having slight distinctiveness. Applicant disclaimed the entire first half of its mark, FULL
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`OF FLAVOR, as descriptive and lacking source indicating distinctiveness. Typically the
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`start and end of a phrase have the most impact. Here Applicant disclaims distinctiveness
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`of "Full Of Flavor" leaving the distinctive parts of the two marks GUILT FREE versus
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`FREE OF GUILT, See, e.g., Gen. Mills, Inc. v. Fage Dairy Processing Indus. S.A., 100
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`USPQ2d 1584, 1597 (TTAB 2011) (composite marks containing TOTAL for yogurt and
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`other products likely to cause confusion with TOTAL for ready-to-eat breakfast cereal);
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`In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (THE WINE
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`SOCIETY OF AMERICA and design for wine club membership services including the
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`supplying of printed materials, and AMERICAN WINE SOCIETY 1967 and design for
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`newsletters, bulletins, and journals, likely to cause confusion). While marks are evaluated
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`as a whole, the reality that some parts of a mark are strong with impact while other parts
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`are weak need not be ignored in a DuPont analysis.
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`2. Similarity and Nature of Goods or Services. The greater the similarity
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`between the products and services, the greater the likelihood of confusion, Moore
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`Business Forms Inc v Ryu, 960 F2d 486, 490 (5th Cir. 1992) (citing Exxon Corp. v Texas
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`Motor Exchange, Inc., 208 USPQ 384, 628 F2d 500, 505 (5th Cir. 1980)).
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`Where parties offer competing products, the tribunal rarely needs to look beyond
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`the mark itself to determine whether likelihood of confusion exists, Villanova University
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`v. Villanova Alumni Educational Foundation, Inc., 58 USPQ.2d 1207, 1218–19, 123
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`FSupp2d 293, 306, (ED PA 2000) (citing Ford Motor Co. v Summit Motor Products, Inc.,
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`18 USPQ2d 1417, 930 F2d 277, 293 (3d Cir. 1991)).
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`That the products are not identical or not in direct competition does not end the
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`inquiry, for the concern is only whether they are similar, with a mark used in conjunction
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`with such other services as might naturally or reasonably be supposed to come from
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`Yarnell, Forum Corporation of North America v. Forum, Ltd., 14 USPQ2d 1950, 903
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`F2d 434, 442 (7th Cir. 1990). “Moreover…our inquiry in comparing the two products is
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`not whether they are interchangeable, but whether ‘the parties’ products are the kind the
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`public might very well attribute to a single source (the plaintiff)’.” Eli Lilly, 233 F.3d at
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`463 (citing International Kennel Club). Prohibited use by Defendant of Yarnell’s mark
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`extends not only to products in direct competition, but those “closely related” to
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`Yarnell’s, i.e., “one ‘which would reasonably be thought by the buying public to come
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`from the same source, or thought to be affiliated with, connected with, or sponsored by,
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`the trademark owner’.” Sands, Taylor & Wood Co. v. Quaker Oats Co., 24 USPQ2d
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`1001, 978 F2d 947, 958–59 (7th Cir. 1992), cert. denied, 507 U.S. 1042, 113 S.Ct. 1879
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`(1993).
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`Yarnell's GUILT FREE mark has long been used on a variety of foods and
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`restaurant services. (Exs 10-27) Factual analysis begins with Applicant's applied-for
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`goods, "Vegetable based snack foods which have a bacon flavor; meat substitutes." A
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`"snack" is "a small service of food and generally eaten between meals" (Ex 6, Wikipedia;
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`dates visited on exhibit footer, header, or Exhibit List.) A wide variety of commercially-
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`prepared foods are marketed; "snacks" are disputed in lawsuits, see, e.g., Beatrice Foods
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`Co v Borden Co, 169 USPQ 34, 435 F2d 1335 (CCPA 1971; corn chips, cake, pastry with
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`fruit filling v candy); Continental Nut Co v Cordon Bleu, LTEE, 181 USPQ 647, 494 F2d
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`1397 (CCPA, 1974; nuts v canned meat, peanut butter, named condiments, and sauces);
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`Delano Farms Co v California Table Grape Com'n 586 F3d 1219; table grapes,
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`"alternative for consumers, as opposed to other snack options like ice cream, chips,
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`french fries, and buttered popcorn"); Frito Co v General Mills, Inc, 97 USPQ 28, 202 F2d
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`936 (5th Cir 1953; Cheerios cereal); J&J Snack Foods Corp v McDonald's Corp, 18
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`USPQ2d 1889, 932 F2d 1460 (Fed Cir 1991); Kashmir Crown Baking LLC v Kashmir
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`Foods, Inc, 538 Fed Appx 165 (3d Cir, 13-1357, 6Nov2013; bakery and South Asian
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`specialties); Vitarroz v Borden, Inc, 209 USPQ 969, 644 F2d 960 (2d Cir, 1981; salty,
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`crunchy foods); also see Hillshire Snacking (Ex 35).
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`To improve snack food labelling, the FDA studied manufacturers of "biscuits,
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`sweets, and ice creams" (Ex 36). In its study by a National Institutes of Health researcher
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`of common snack foods label accuracy, well-known snack food brands included candy
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`bars, chips, cereal bars and pastries, cookies, crackers, ice cream, yogurt, and nuts & nut
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`mixes (Ex 37). The law, the food industry, and consumers consider both chips and ice
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`cream as snacks, often substitutable foods depending on availability, a consumer's recent
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`food consumption, and their dietary preferences of the day.
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`Applicant has also applied for "meat substitutes." Vegetarians and vegans
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`consider a wide variety of foods as meat substitutes (Exs 38, 39). A meat substitute, also
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`called a meat analogue, "approximates certain aesthetic qualities (e.g., texture, flavor,
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`appearance) and/or chemical characteristics of specific types of meat" (Ex 40).
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`The PTO's Trademark ID Manual discloses four live descriptions using "meat
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`substitutes’ (Ex 41). Three are sufficiently descriptive to provide a reasonable idea of the
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`goods: "formed textured vegetable protein for use as a meat substitute; vegetable-based
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`meat substitutes; prepared meals consisting primarily of meat substitutes." The fourth,
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`"meat substitutes," is over a quarter-century old, and might be a protein product in any
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`food class, chick peas, Tofu, eggs, nuts, almost whatever. Food manufacturers might shop
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`for a "meat substitute," consumers rarely. More likely, a hungry vegetarian might seek a
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`Bleeding Burger, (Ex 42, Impossible Burger, ® 5,459,255; "FDA Gives Green Light To
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`Impossible Foods' Bleeding Burgers,” 27July2018, visited 11May2019, Ex 43). The
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`imprecision, and ambiguity, of Applicant's selected description renders confusion highly
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`likely.
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`3. Similarity of established, likely-to-continue trade channels.
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`Snack foods are a broad category. In addition to grocery stores and convenience
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`markets, snack foods are sold at food service retailers, such as snack bars and at
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`amusement parks and stadiums, J&J Snack Foods Corp v McDonald's Corp, 18 USPQ2d
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`1889, 932 F2d 1460 (Fed Cir 1991); military bases, Matter of C— Y— L—, 8 I&N Dec
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`371 (371 BIA, 1959; snack bars, bakeries, ice cream plants throughout Guam).
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`Yarnell sells and provides its GUILT FREE frozen confections to supermarkets,
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`restaurants, coffee houses, bakeries, sports stadiums, state parks, community events, and
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`even the Walmart Museum's Spark Café (Podracky ¶ 15; Exs 44-50). Sellers of dry
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`snacks are moving to sell frozen confections (Ex 28).
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`4. Conditions of sale (impulse, versus careful, sophisticated purchasing).
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`Retail prices for frozen confections are often low per serving and per package. Retail
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`prices for mass-market snack foods, such as vegetable based snack foods, are often low
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`per package. Products of both Yarnell and Applicant are low cost, often impulse
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`consumer items (Exs 47-49; Applicant's Pig Out Chips, $5 for 3.5 oz ($59.99/12= $5) (Ex
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`5, showing applied-for-trademark). Outstanding does not have knowledge or information
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`sufficient to form a belief about those facts (1 TTABVUE 4, Opposition ¶¶ 26–29; 4
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`TTABVUE 3-4, Applicant Answer ¶¶ 26–29). Beyond low price and often impulse
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`purchase, many consumers of Yarnell's products are children; likely some consumers of
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`Applicant's products are also young children.
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`Even evidence consumers may not likely be confused does not address potential
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`sponsorship confusion or misaffiliation with Applicant. Eli Lilly at 464 (citing Pebble
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`Beach). Apart from a question of confusion between products and services, likelihood of
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`confusion encompasses a distinct separate issue whether the purchasing public is likely to
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`believe that plaintiff produces, licenses, or otherwise endorses defendant’s services,
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`Boston Athletic at 28–29 & n. 5 (consumers likely to believe plaintiff, Boston Marathon
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`producer, licenses or sells defendant’s t-shirts, even those bearing only a photo of runners
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`and the single word “Boston” with the current year).
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`5. Fame of prior mark (sales, advertising, length of use).
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`Neither Applicant's nor Yarnell's products are likely to have reached the difficult
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`threshold of general household fame required for dilution. Applicant filed an intent-to-use
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`application and has not made of record any date of first use. Yarnell Ice Cream, Inc,
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`Opposer's predecessor in interest, was well known, capturing the taste-bud devotion of
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`Walmart's Sam Walton (Ex 50, "The cafe proudly serves Yarnell's"). Since Opposer
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`Yarnell Ice Cream, LLC acquired the assets of the its predecessor, Yarnell has engaged in
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`successful marketing efforts at community events, the key sports stadium, television
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`news demonstrations, social media promotions, and more (Exs 32, 44-50).
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`Since Yarnell Ice Cream, LLC was established in December 2011, it has sold over
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`one million dollars of GUILT FREE frozen confections, and has invested over a quarter-
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`million dollars
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`in selling and marketing expenses for GUILT FREE frozen
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`confections3 (Podracky Supp ¶¶ 8-9). In just three months, Schulze has sold over
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`$124,000 GUILT FREE non-meat snack bars (Id, ¶ 13).
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`Yarnell Ice Cream, LLC purchased Yarnell Ice Cream Company, Inc. assets from
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`bankruptcy in January 2012, but not most of the business records. Revenues and
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`marketing expenses of Yarnell Ice Cream Company, Inc. from its 1932 founding through
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`its 2011 bankruptcy, and those of its GUILT FREE unaffiliated licensees, are not
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`reported in this brief (Id, ¶ 10).
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`Yarnell's GUILT FREE frozen confection, first marketed 1996, is well known;
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`Applicant's trademark is not.
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`6. Number and nature of similar marks in use on similar goods.
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`Since exiting the Garden of Eden, humans have developed morals, and being
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`human have sometimes violated those moral codes. Guilt is a cognitive or emotional
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`3 Yarnell’s account for selling and marketing expenses does not segregate by size and
`type of frozen confection, the Guilt Free share is its proportion by revenue.
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`experience when a person believes, accurately or not, they have compromised a personal
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`or universal moral standard. (Ex 51, "Guilt," Wikipedia).
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`Contemporary consumers are increasingly concerned with their health, and
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`recognize "you are what you eat" (Ex 52, NBC News, 25July2010). Yet some attractive,
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`tasty foods have bad health reputations. Perhaps augmented by Puritan heritage,
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`contemporary consumers both seek appetizing foods and sometimes regret their lapse
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`from a dietary discipline.
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`The PTO's TESS database discloses over 500 applications and registrations, live
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`and dead, in any trademark class, containing a GUILT* phrase (where the * wildcard
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`character includes following characters, if any; Ex 53). Yet Yarnell is the dominant
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`record owner of GUILT FREE trademarks in Class 30 (Ex 54). Of the 13 registrations
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`disclosed, Yarnell owns ten (77%); the owner of ® 5,268,676, to resolve Yarnell's
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`opposition, 91,226,289, agreed to marketing restrictions, including emphasizing the EAT
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`ME and minimizing the GUILT FREE element of the mark (Ex 81).
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`Ordinary consumers don't distinguish class between trademark Class 29 foods and
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`Class 30 foods. Yarnell has owned Class 29 registrations for 10 of the 12 disclosed Class
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`29 live registrations with "guilt" and "free" (Ex 55). Only two disclosed registrations
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`were not owned by Yarnell: a ten-tiny-word design mark with a large camel and palm
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`tree, ® 4,758,795; and the opposition-settled ® 5,268,676, by that applicant agreeing to
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`limit its marketing to emphasizing the EAT ME element of its mark. For both Trademark
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`Class 30 and 29, Yarnell, with its GUILT FREE uses on a panoply of diverse foods, is the
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`dominant owner of rights to a GUILT FREE food trademark.
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`7. Nature and extent of any actual confusion.
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`14
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`Applicant is a newcomer to the food business. There are no known instances of actual
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`confusion.
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`8. Concurrent use duration and conditions without actual confusion.
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`See above #7.
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`9. Variety of goods mark is or is not used (housemark, family mark, product
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`mark).
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`Yarnell has used its GUILT FREE mark, directly and through licensees, on a wide
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`variety of food products and for restaurant services, including cheese, cottage cheese,
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`nuts, peanut butter, processed meat, pizza, yogurt, and others (Exs 10-27, 29).
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`10. Market interface between applicant and prior mark owner (mere consent,
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`agreement provisions designed to preclude confusion, mark assignment, laches/
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`estoppel).
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`None.
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`11. Extent applicant has a right to exclude others.
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`A federal trademark principal registration is "prima facie evidence of the validity
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`of the registered mark and of the registration of the mark of the owner's ownership of the
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`mark, and of the owner's exclusive right to use the registered mark in commerce on or in
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`connection with the goods or services specified in the certificate…," 15 USC §1057
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`(Lanham §7).
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`In addition to federal trademark registration rights under the Lanham Act, Yarnell
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`has common law rights to diverse food products, for which it received federal
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`registrations for use under license, Restatement of the Law of Unfair Competition, 3d ed.,
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`15
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`§§18-19 (1995); Exs 10-17. Some licenses have ended, Yarnell continues to seek
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`appropriate GUILT FREE licenses, and has not abandoned any of its rights (Exs 80-81).
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`12. Extent of potential confusion (de minimus or substantial).
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`See above #7.
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`13. Any other established fact probative of the effect of use.
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`None.
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`B.
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`Applicant’s Amended Affirmative Defenses
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`Yarnell need not disprove Outstanding’s affirmative defenses. While the
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`undisputed material facts demonstrate absence of a genuine issue, Yarnell also meets its
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`burden by showing Outstanding lacks evidence to prove the affirmative defenses, Celotex
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`Corp v Catrett, 477 US 317 at 325, 106 SCt 2548 at 2554 (1986); Fire & Marine Ins.
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`Co., Ltd. v Fritz Cos., Inc., 210 F3d 1099, 1102 (9th Cir. 2000).
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`1. The first “defense” (failure to state a claim upon which relief can be granted)
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`might have been proper had it properly been raised as a motion to dismiss for failure to
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`state a claim. It is not among the appropriate defenses included in F.R.Civ.P. 7(c)(1). “A
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`motion asserting any of these defenses must be made before pleading if a responsive
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`pleading is allowed,” F.R.Civ.P. 12(b)(6).
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`Opposer need only allege such facts as would, if proved, establish that it is
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`entitled to the relief sought: standing to maintain the proceeding, and the existence of a
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`valid ground for denying the registration sought. To survive a motion to dismiss, a
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`complaint must “state a claim to relief that is plausible on its face.” Yarnell’s
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`uncontestible registrations are sufficient to establish standing. The opposition notice
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`contains sufficient allegations regarding similarity of the marks and the likelihood for
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`Yarnell v Outstanding Foods • 87-566,201; 91,244,684 • Summary Judgment • Page
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`16
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`confusion between snack products marketed to ordinary consumers, to show a valid
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`ground exists for denial.
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`2. Opposer’s second “defense” (no likelihood of confusion) at best merely
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`reiterates any denials it may have made to the allegations in the Notice of Opposition. "A
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`defense which demonstrates that plaintiff has not met its burden of proof as to an element
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`plaintiff is required to prove is not an affirmative defense," Zivkovic v S. California
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`Edison Co., 302 F3d 1080, 1088 (9th Cir. 2002). In effect, Outstanding and its counsel
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`for reasons of strategy have taken the position before the Board that Applicant assumes
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`the burden to establish the absence of a likelihood of confusion, mistake or deception.
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`3. The third, sixth, seventh and eighth defenses are each and in combination self-
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`defeating and inherently inconsistent, supporting refusal of Outstanding’s application.
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`Ignoring Applicant previously disclaimed the “full of flavor” portion of its mark;
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`Applicant on the one hand argues the remaining words “guilt” and “free” are not
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`distinctive—thus no protectable portion remains, thus conceding Outstanding’s mark is
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`not registrable, in contrast to Yarnell’s incontestible GUILT FREE family supported by
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`years of actual use.
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`Simultaneously, while lacking any explanation for th

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