Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1005227
`
`Filing date:
`
`09/27/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91244684
`
`Defendant
`Outstanding Foods, Inc.
`
`HEATHER A ANTOINE
`ANTOINE LAW GROUP APC
`9595 WILSHIRE BLVD , SUITE 900
`BEVERLY HILLS, CA 90212
`UNITED STATES
`hantoine@antoinelaw.com
`310-849-3134
`
`Other Motions/Papers
`
`Heather Antoine
`
`hantoine@stubbsalderton.com
`
`/Heather Antoine/
`
`09/27/2019
`
`Opposition to Motion for Summary and Cross-Summary Judgment Motion
`4820-9537-3991 v.4.pdf(190447 bytes )
`Jonelis Decl iso Opposition to MSJ and Cross-MSJ 4810-6210-2696
`v.2.pdf(91491 bytes )
`Exhibits A-C.pdf(423110 bytes )
`Exhibit D1.pdf(499093 bytes )
`Exhibits D2.pdf(1616836 bytes )
`Exhibits D3.pdf(3289774 bytes )
`Exhibits D4.pdf(5378856 bytes )
`Exhibits D5.pdf(3801076 bytes )
`Exhibits D6.pdf(5206301 bytes )
`Exhibits E-G.pdf(1779986 bytes )
`Exhibits H-O-1.pdf(2933782 bytes )
`Exhibits P - Q.pdf(515130 bytes )
`Exhibits R.pdf(246396 bytes )
`EXHIBITS S-Y.pdf(1375317 bytes )
`Exhibits Z.pdf(191341 bytes )
`Exhibits AA-CC.pdf(928859 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Full of Flavor Free of
`Guilt Serial 87-566,210
`
`Opposition No. 91244684
`
`Published July 17, 2018
`International Class 29
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`INTRODUCTION ............................................................................................................ 4
`
`FACTUAL BACKGROUND .......................................................................................... 4
`
`LEGAL ARGUMENT ..................................................................................................... 5
`
`I.
`
`II.
`
`III.
`
`
`Legal Standard on Registrant’s Motion ................................................................ 5
`
`Registrant Has Not Established A Likelihood of Confusion as a Matter of Fact
`or Law ................................................................................................................... 5
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`The First DuPont Factor – the Similarity or Dissimilarity of the Marks
`in Their Entireties as to Appearance, Sound, Connotation and
`Commercial Impression – Weighs Against a Likelihood of Confusion ... 6
`
`The Second DuPont Factor – the Similarity or Dissimilarity and Nature
`of the Goods or Services as Described in an Application or Registration
`or in Connection With Which a Prior Mark Is in Use – Weighs Against a
`Likelihood of Confusion ........................................................................... 8
`
`The Third DuPont Factor – the Similarity or Dissimilarity of
`Established, Likely-To-Continue Trade Channels – Weighs Against a
`Likelihood of Confusion ......................................................................... 11
`
`The Fourth DuPont Factor – the Conditions Under Which and Buyers
`to Whom Sales Are Made – Weighs Against a Likelihood of Confusion
` ................................................................................................................ 13
`
`The Fifth DuPont Factor – the Fame of the Prior Mark – Weighs
`Against a Likelihood of Confusion ........................................................ 14
`
`The Sixth DuPont Factor – the Number and Nature of Similar Marks
`in Use on Similar Goods – Weighs Against a Likelihood of
`Confusion ............................................................................................... 17
`
`The Seventh and Eighth DuPont Factor – the Nature and Extent of
`Any Actual Confusion, and the Length of Time During and Conditions
`Under Which There Has Been Concurrent Use Without Evidence of
`Actual Confusion – Are Neutral ............................................................. 21
`
`The Ninth DuPont Factor – the Variety of Goods on Which a Mark Is or
`Is Not Used – Weighs Against a Likelihood of Confusion .................... 21
`
`A.
`
`B.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`

`

`9.
`
`10.
`
`11.
`
`
`
`
`
`
`
`The Eleventh DuPont Factor – the Extent to Which Applicant Has
`a Right to Exclude Others From Use of Its Mark on Its Goods – Is
`Neutral .................................................................................................... 22
`
`The Twelfth DuPont Factor – the Extent of Potential Confusion –
`Weighs Against a Likelihood of Confusion ........................................... 23
`
`The Balancing of the DuPont Factors Weighs Overwhelmingly Against
`a Likelihood of Confusion ...................................................................... 23
`
`C.
`
`Applicant is Entitled to Summary Judgment Because Registrant Cannot
`Introduce Evidence Establishing a Likelihood of Confusion as a Matter of
`Fact or Law ......................................................................................................... 24
`
`
`IV. CONCLUSION .............................................................................................................. 25
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`

`

`APPLICANT’S OPPOSITION TO REGISTRANT’S MOTION FOR SUMMARY
`JUDGMENT AND CROSS-MOTION FOR SUMMARY JUDGMENT
`
`
`Outstanding Foods, Inc. (“Applicant”) hereby submits the following Opposition in
`
`
`
`response to the Motion for Summary Judgment (the “Motion”) filed by Yarnell Ice Cream, LLC
`
`(“Registrant”), and additionally moves for summary judgment via its Cross-Motion for Summary
`
`Judgment (the “Cross-Motion”).
`
`I.
`
`INTRODUCTION
`
`Registrant filed its Notice of Opposition (the “Opposition”) contending that there is a
`
`likelihood of confusion between its mark ‘GUILT FREE’ and Applicant’s mark ‘FULL OF
`
`FLAVOR FREE OF GUILT.’ Registrant’s Motion, however, woefully fails to establish any
`
`cognizable basis for granting summary judgment in Registrant’s favor. In particular, Registrant
`
`has not identified, and cannot identify, any evidence to meet its burden of establishing a likelihood
`
`of confusion exists as a matter of fact or law. To the contrary, well-established law and the existing
`
`evidence establishes that the relevant likelihood of confusion factors overwhelmingly weigh
`
`against a finding of likelihood of confusion. Accordingly, because Registrant failed to meet its
`
`burden on summary judgment and cannot introduce any evidence to substantiate the allegations
`
`made in the Opposition (for which it has the ultimate burden of proof), this Board should not only
`
`deny Registrant’s Motion, but also grant Applicant’s Cross-Motion.1
`
`II.
`
`FACTUAL BACKGROUND
`
`
`
`On August 11, 2017, Applicant filed its application to register the mark ‘FULL OF
`
`FLAVOR FREE OF GUILT’ in International Class 29 for “[v]egetable based food products,
`
`namely vegetable based snack foods; meat substitutes.” (Exhibit (“Ex.”) A.) Applicant currently
`
`
`1 For sake of completeness, each of Applicant’s responses to Registrant’s motion are also submitted as grounds for
`Applicant’s cross-motion for summary judgment and vice-versa.
`
`
`
`4
`
`

`

`uses the mark in connection with its plant-based chips called “Pig Out.” (Ex. B.) Though the
`
`chips taste like crispy bacon, they are actually made out of mushrooms. (See id.; Ex. C.) The
`
`chips are dairy-free, gluten-free, soy-free and Kosher certified. (Ex. C.) Applicant began selling
`
`the chips in December 2018 and has since received lots of press. (Ex. D.)
`
`
`
`On November 12, 2018, Registrant filed its Opposition. (Ex. E.) Registrant’s Opposition
`
`identified two registrations containing the mark ‘GUILT FREE’: Registration No. 2120649, whose
`
`goods/services are identified as “frozen confections” and Registration No. 2316804, whose
`
`goods/services are identified as “frozen dairy confections.” (Id.)
`
`III. LEGAL ARGUMENT
`
`A.
`
`Legal Standard on Registrant’s Motion.
`
`Summary judgment is only appropriate where the moving party has established that there is no
`
`genuine issue as to any material fact and thus the moving party is entitled to judgment as a matter
`
`of law. Lincoln Logs, Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 734 (Fed. Cir. 1992).
`
`If the moving party meets its initial burden of demonstrating that there is no genuine issue of
`
`material fact, then the burden shifts to the non-moving party to identify disputed facts to be
`
`resolved at trial. Fram Trak Industries, Inc. v. Wiretracks LLC, 77 U.S.P.Q.2D 2000, 2006 WL
`
`236416, *4 (T.T.A.B. 2006). In ruling on a summary judgment motion, all reasonable inferences
`
`and doubts drawn from the record must be resolved against the moving party and in favor of the
`
`responding party. Colgate-Palmolive Co. v. S.C. Johnson & Son, Inc., 159 US.P.Q. 56, 1968 WL
`
`8163, *2 (T.T.A.B. 1968).
`
`B.
`
`Registrant Has Not Established A Likelihood of Confusion as a Matter of Fact or
`Law.
`
`In evaluating whether there is a likelihood of confusion between two marks, the Federal
`
`Circuit relies on the 13-factor test developed in In re E.I. DuPont de Nemours & Co., 476 F.2d
`
`
`
`5
`
`

`

`1357, 1361 (C.C.P.A. 1973). Each of the relevant factors are analyzed below. See Citigroup Inc.
`
`v. Capital City Bank Group, Inc., 637 F.3d 1344, 1354-55 (Fed. Cir. 2011) (noting that not all the
`
`DuPont factors will be relevant in a given case).
`
`1. The First DuPont Factor - the Similarity or Dissimilarity of the Marks
`in Their Entireties as to Appearance, Sound, Connotation and
`Commercial Impression – Weighs Against a Likelihood of Confusion.
`
`It is well-established that in evaluating the likelihood of confusion under the first DuPont
`
`factor, “[t]he similarity or dissimilarity of the marks in their entirety is to be considered with
`
`respect to appearance, sound, and connotation.” Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed.
`
`Cir. 2000) (emphasis added). Even where an applicant disclaims a word or phrase within the mark,
`
`the marks are nevertheless “viewed in the entireties.” Specialty Brands, Inc. v. Coffee Bean
`
`Distributors, Inc., 748 F.2d 669, 672 (Fed. Cir. 1984).
`
`The “anti-dissection” rule precludes parties from dissecting marks or breaking the marks
`
`up into their component parts for comparison. See In re Nat’l Data Corp., 753 F.2d 1056, 1058
`
`(Fed. Cir. 1985) (“likelihood of confusion cannot be predicated on dissection of a mark, that is, on
`
`only part of a mark.”); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007
`
`(C.C.P.A. 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal;
`
`rather, it must be considered as a whole in determining likelihood of confusion.”); China
`
`Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 1340 (Fed. Cir. 2007) (“It is incorrect to compare
`
`marks by eliminating portions thereof and then simply comparing the residue.”). The anti-
`
`dissection rule assumes that “[a]n average purchaser does not retain all the details of a mark, but
`
`rather the mental impression the mark creates in its totality.” T & T Mfg. Co. v. A. T. Cross Co.,
`
`449 F. Supp. 813, 820 (D.R.I. 1978), aff’d, 587 F.2d 533 (1st Cir. 1978). Thus, to properly analyze
`
`the similarity in two marks, one “must look to the overall impression created by the marks, not
`
`merely compare individual features.” Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 830 (8th Cir.
`
`
`
`6
`
`

`

`1999); see also Estate of P.D. Beckwith, Inc., v. Commr of Patents, 252 U.S. 538, 545-46, 40 S.
`
`Ct. 414, 417, 64 L. Ed. 705 (1920) (“The commercial impression of a trade-mark is derived from
`
`it as a whole, not from its elements separated and considered in detail. For this reason, it should
`
`be considered in its entirety . . . and to strike out any considerable part of it, certainly any
`
`conspicuous part of it, would be to greatly affect its value.”) (internal citations omitted).
`
`Here, Registrant has not introduced any evidence or argument to establish that this factor
`
`supports a finding of a likelihood of confusion. Instead, Registrant’s Motion summarily concludes
`
`that Applicant’s ‘FULL OF FLAVOR FREE OF GUILT’ mark is confusingly similar to
`
`Registrant’s ‘GUILT FREE’ mark. (Mtn, at p. 8.) Registrant’s conclusion is flawed for two
`
`reasons. First, “[t]he use of identical, even dominant, words in common does not automatically
`
`mean that two marks are similar.” General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir.
`
`1987) (finding that OATMEAL RAISIN CRISP and APPLE RAISIN CRISP are not confusingly
`
`similar). Second, and more importantly, in reaching its conclusion, Registrant blatantly violated
`
`the anti-dissection rule by focusing solely on the ‘FREE OF GUILT’ portion of Applicant’s mark.
`
`To be clear, the question is not whether ‘GUILT FREE’ and ‘FREE OF GUILT’ are confusingly
`
`similar. The question is whether ‘GUILT FREE’ and ‘FULL OF FLAVOR FREE OF GUILT’
`
`are confusingly similar. Because Registrant fails to conduct the requisite comparison, there can
`
`be no doubt that Registrant failed to meet its burden under this factor.
`
`If Registrant had conducted the requisite comparison, it would have necessarily concluded
`
`that this factor actually weighs against a likelihood of confusion. For starters, Applicant’s mark is
`
`a six-word phrase with a lyrical cadence, whereas Registrant’s mark is simply two words strung
`
`together. Applicant’s mark constitutes an alliterative phrase, whereas Registrant’s mark does not.
`
`Applicant’s mark focuses on a contrast between two concepts – full (containing flavor) and empty
`
`
`
`7
`
`

`

`(not containing guilt), whereas Registrant’s mark does not. In Applicant’s mark, the focus is on
`
`the initial phrase, that is, FULL OF FLAVOR. By contrast, Registrant’s mark is completely silent
`
`as to flavor, and thus Registrant’s mark creates a different connotation in the consumer’s mind.
`
`More specifically, Applicant’s mark creates the impression that its product’s focus is on the flavor,
`
`while the health aspects of the product are merely secondary. On the other hand, Registrant’s mark
`
`creates the impression that the extolling factor is the health aspect, that is, the fact that the
`
`consumer can consume the product guilt-free. Thus, a proper analysis of the two marks reveals
`
`there can be no doubt that this factor weighs against a likelihood of confusion. That the words
`
`GUILT and FREE appear in both Applicant’s mark and Registrant’s mark does not change the
`
`result. See, e.g., Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432 F.2d 1400, 1401 (C.C.P.A.
`
`1970) (PEAK PERIOD not confusingly similar to PEAK); Lever Bros. Co. v. Barcolene Co., 463
`
`F.2d 1107, 1108 (C.C.P.A. 1972) (ALL CLEAR! not confusingly similar to ALL); In re Ferrero,
`
`479 F.2d 1395, 1397 (C.C.P.A. 1973) (TIC TAC not confusingly similar to TIC TAC TOE); Conde
`
`Nast Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404, 1407 (C.C.P.A. 1975) (COUNTRY
`
`VOGUES not confusingly similar to VOGUE); In re Merchandising Motivation, Inc., 184
`
`U.S.P.Q. 364, 1974 WL 20101, *3 (T.T.A.B. 1974) (MMI MENSWEAR not confusingly similar
`
`to MEN’S WEAR); Plus Products v. General Mills, Inc., 188 U.S.P.Q. 520, 1975 WL 20861, *3
`
`(T.T.A.B. 1975) (PROTEIN PLUS and PLUS not confusingly similar).
`
`2.
`
`The Second DuPont Factor – the Similarity or Dissimilarity and Nature
`of the Goods or Services as Described in an Application or Registration
`or in Connection With Which a Prior Mark Is in Use – Weighs Against
`a Likelihood of Confusion.
`
`The second DuPont factor examines whether the goods and services in Applicant’s
`
`application are sufficiently related to the goods and services in Registrant’s registration. Hewlett-
`
`Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002). More specifically, “the
`
`
`
`8
`
`

`

`more likely it is that the ordinary purchaser would associate the goods, the more likely it is that
`
`confusion of source exists.” Alfred Dunhill of London, Inc. v. Kasser Distillers Prod. Corp., 350
`
`F. Supp. 1341, 1363 (E.D. Pa. 1972), aff’d, 480 F.2d 917 (3d Cir. 1973).
`
`The fact that two products can be generally classified in the same broad category, however,
`
`does not mean that the application of this factor favors a finding of likelihood of confusion. For
`
`example, in Colgate-Palmolive Co., the court found no likelihood of confusion between PEAK
`
`PERIOD (a personal deodorant) and PEAK (a dentifrice) despite that both goods “may be
`
`encompassed by the broad characterization of ‘toilet preparations.” 432 F.2d at 1402. In making
`
`this finding, the court noted that the two products are “essentially different and noncompetitive in
`
`that their application and utility serve different objective.” Id.; see also Denney v. Elizabeth Arden
`
`Sales Corp., 263 F.2d 347, 348 (C.C.P.A. 1959) (finding no likelihood of confusion between a
`
`face power and face cream, as “even though both products come within the category of cosmetics,
`
`they are applied to the skin for entirely different purposes.”); Omaha Steaks Int’l, Inc. v. Greater
`
`Omaha Packing Co., 908 F.3d 1315, 1325 (Fed. Cir. 2018) (declining to assume that because
`
`popcorn and meat can generally be labeled as foods or grocery store products, the products are
`
`sufficiently similar).
`
` Whether two products are complementary in nature is also relevant to determining whether
`
`the goods are related for purposes of likelihood of confusion. In re Martin’s Famous Pastry
`
`Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1984). For example, in John Walker & Sons, Limited
`
`v. Tampa Cigar Co., 124 F. Supp. 254, 256 (S.D. Fla. 1954) aff’d 222 F.2d 460 (5th Cir. 1955),
`
`the court found that “[w]hiskey and cigars are closely related in distribution and use.” By contrast,
`
`in In re Mars, Inc., 741 F.2d 395, 396 (Fed. Cir. 1984), the court concluded that candy bars and
`
`fresh fruit are not closely related.
`
`
`
`9
`
`

`

`Registrant’s analysis of this factor consists of a summary conclusion that because,
`
`according to Registrant, both goods can be classified as a snack food, they are sufficiently similar.
`
`Not so. First, Registrant fails to establish that its goods identified in the Opposition are properly
`
`classified as a snack, as opposed to a dessert.2 Indeed, the word “confection” is defined as “a
`
`sweet food.” (Ex. F.)3 Second, even if Registrant’s relevant goods and services are properly
`
`classified as a snack, such broad classification is not determinative of the issue. Rather, the goods
`
`and services as used in the application and registration are the relevant point of inquiry; that is,
`
`“[v]egetable based food products, namely, vegetable based snack foods; meat substitutes” versus
`
`“frozen confections” and “frozen dairy confections.” Third, this factor examines whether the
`
`consumer would associate the goods in such a manner as to believe the products came from the
`
`same source; that is, would consumers believe that low calorie ice cream came from the same
`
`source as plant-based chips that taste like bacon but are in fact made out of mushrooms?
`
`Absolutely not. Nor can Registrant contend that, despite the obvious differences between the two
`
`products, they are nevertheless complementary. Indeed, Registrant fails to argue or submit
`
`evidence suggesting that low calorie ice cream and Pigless bacon chips go together like bread and
`
`cheese. Cf. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d at 1567 (noting that “the
`
`complementary nature of bread and cheese cannot be ignored”). Rather, the two products serve
`
`vastly different objectives to consumers. In particular, Applicant’s product offers consumers with
`
`certain lifestyle choices or beliefs (such as vegetarians, vegans or those keeping Kosher) or
`
`
`2 The fact that an article has referred to ice cream as a snack does not mean ice cream is sufficiently
`similar to plant-based snacks. (See Mtn, at p.10) Thus, Opposer’s evidence is insufficient in this
`regard.
`
` 3
`
` The Board may also take judicial notice of dictionary definitions. Eveready Battery Co., Inc. v.
`Green Planet, Inc., 91 U.S.P.Q.2d 15115, 2009 WL 2176668, *4 n.13 (T.T.A.B. 2009).
`
`
`
`10
`
`

`

`consumers with various allergies or restrictions (such as dairy, soy or gluten) with a snack option
`
`that allows them to enjoy the taste of bacon. Registrant’s product, on the other hand, offers
`
`consumers a low calorie option for dessert. As an aside, it bears noting that Registrant’s contention
`
`that “vegans and vegetarians seek protein-rich foods as meat substitutes, such as cheese, cottage
`
`cheese, eggs, nuts, peanut butter, and yogurt” (Mtn, at p. 4) is demonstrably false, as vegans by
`
`definition do not eat animal-derived products, such as cheese, cottage cheese, eggs and yogurt.
`
`(Ex. G.)
`
`In sum, because Applicant’s and Registrant’s goods are dissimilar and because consumers
`
`are unlikely to confuse the two products as originating from the same source, this factor weighs
`
`against a likelihood of confusion.
`
`3.
`
`The Third DuPont Factor – the Similarity or Dissimilarity of
`Established, Likely-To-Continue Trade Channels – Weighs Against a
`Likelihood of Confusion.
`
`The third DuPont factor analyzes whether the two products travel in the same trade
`
`channels. See DuPont, 476 F.2d at 1361. The fact that two products are both sold in supermarkets,
`
`however, does not establish a likelihood of confusion because “products should not be deemed
`
`related simply because they are sold in the same kind of establishments.” Recot, Inc., 214 F.3d at
`
`1330.
`
`Here, Registrant fails to meet its burden of establishing the similarity of trade channels
`
`between its product and Applicant’s product. Most notably, while Registrant discusses where its
`
`products are sold, it wholly fails to discuss the trade channels applicable to Applicant. Thus, the
`
`fact that Registrant sells its products in bakeries, sports stadiums, parks and community events is
`
`irrelevant, as there is no evidence that Applicant sells its products at these places.4 To the contrary,
`
`
`4 It is worth noting that much of Opposer’s “evidence” in support of this factor pertains to Yarnell
`products generally and not to Opposer’s ‘GUILT FREE’ products. (See Exs. 44, 45, 46, 47, 48,
`
`
`
`11
`
`

`

`Applicant’s product is sold at high-end supermarkets, such as Whole Foods, and natural food
`
`stores, such as Good Earth Natural Foods. (Exs. H, I.) Another distinguishing fact is that
`
`Applicant’s product is available for purchase online (including from Applicant’s own website,
`
`Amazon.com and vegan websites) whereas it comes as no surprise that Registrant submitted no
`
`evidence that its frozen confections can be purchased online (much less from vegan websites).
`
`(Exs. B, J.)
`
`Moreover, even if Registrant had argued that this factor weighs in its favor because both
`
`products are sold in supermarkets, its argument still would fail. See Federated Foods, Inc. v. Fort
`
`Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976) (stating that the mere existence of
`
`modern supermarket containing a wide variety of products should not foreclose further inquiry
`
`into the likelihood of confusion arising from the use of similar marks on any goods so displayed).
`
`Thus, Registrant’s claim that it sells its frozen confections to supermarkets is irrelevant, as
`
`Registrant does not contend that its ‘GUILT FREE’ frozen confections are sold in close proximity
`
`to Applicant’s product. Nor could it have made such a contention, given that Applicant’s product
`
`is not frozen, and therefore is logically not contained in the frozen aisle. See Recot, Inc., 214 F.3d
`
`at 1330 (finding no error in the Board’s failure to consider the trade channels as weighing in prior
`
`owner’s favor where both products were sold in supermarkets and where there was no evidence
`
`“that the products are sold in close proximity to one another.”); cf. Kimberly-Clark Corp. v. H.
`
`Douglas Enterprises, Ltd., 774 F.2d 1144, 1146 (Fed. Cir. 1985) (finding likelihood of confusion
`
`based in part on the fact that “the trade channels are precisely the same – both types of diapers
`
`being sold in the same shopping section of the same type of retail stores.”).
`
`
`50.) Though Exhibit 45 includes a screenshot of a social media add for ‘GUILT FREE’ ice cream,
`the exhibit does not show where the ice cream is sold.
`
`
`
`12
`
`

`

`In sum, Registrant has failed to introduce evidence establishing that the similarity of trade
`
`channels supports a finding of a likelihood of confusion. Rather, Applicant’s evidence that
`
`Applicant’s product is sold in higher-end supermarkets, is not located in the frozen aisle, and is
`
`available online weighs against a likelihood of confusion.
`
`4.
`
`The Fourth DuPont Factor – the Conditions Under Which and Buyers
`to Whom Sales Are Made – Weighs Against a Likelihood of Confusion.
`
`
`
`The fourth DuPont factor considers the conditions of sale; that is, whether the purchaser is
`
`impulsive or careful and sophisticated. See DuPont, 476 F.2d at 1361. The case law plainly
`
`provides that “diet conscious purchasers” are more likely to carefully examine the packages of
`
`food before purchasing, and thus “a lesser standard of care is not justified.” See Stouffer Corp. v.
`
`Health Valley Natural Foods Inc., 1 U.S.P.Q.2d 1900, 1986 WL 83342, *2 (T.T.A.B. 1986); see
`
`also Weight Watchers Int’l, Inc. v. I. Rokeach & Sons, Inc., 211 U.S.P.Q. 700, 1981 WL 40493,
`
`*6 (T.T.A.B. 1981) (“While supermarket purchasers are generally in a hurry, it seems to us that
`
`weight-conscious supermarket purchasers are quite apt to be more deliberate. . . . such purchasers
`
`are inclined to examine labels carefully.”); Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 831-32
`
`(8th Cir. 1999) (finding no likelihood of confusion with respect to the conditions of purchase in
`
`part because consumers of healthy products are not impulsive or careless).
`
`
`
`Here, Registrant claims, with no supporting facts or analysis, that products of both
`
`Registrant and Applicant are “impulse consumer items.” (Mtn, p. 12.) Not so. Applicant’s
`
`product appeals not only to those consumers attempting to eat healthier, but also to those discerning
`
`consumers that are looking for plant-based foods, dairy-free foods, gluten-free foods, soy-free
`
`foods and Kosher certified foods. (Ex. C.) Like the “diet conscious purchaser,” purchasers with
`
`allergies or dietary lifestyle choices are similarly more likely to examine food packages before
`
`purchasing. (Ex. K.) In addition, studies reveal that vegans are more likely than other consumers
`
`
`
`13
`
`

`

`to focus on brand over price when shopping. (Ex. L.) Thus, Applicant’s evidence suggests that
`
`this factor weighs against a likelihood of confusion.
`
`5.
`
`The Fifth DuPont Factor – the Fame of the Prior Mark – Weighs
`Against a Likelihood of Confusion.
`
`Though this factor refers to the “fame” of the prior mark, the Federal Circuit often uses the
`
`terms “famous” and “strong” as synonyms. See, e..g., Kenner Parker Toys Inc. v. Rose Art
`
`Industries, Inc., 963 F.2d 350, 352 (Fed. Cir. 1992) (“The fifth duPont factor, fame of the prior
`
`mark, plays a dominant role in cases featuring a famous or strong mark.”). Accordingly, a mark’s
`
`strength is measured by both its marketplace strength (i.e., has it acquired secondary meaning?)
`
`and its conceptual strength (i.e., is it distinctive?). In re Chippendales USA Inc., 622 F.3d 1346,
`
`1353-54 (Fed. Cir. 2010).
`
`In evaluating marketplace strength, courts consider “sales, advertising, length of use of the
`
`mark, market share, brand awareness, licensing activities, and variety of goods bearing the mark.”
`
`Coach Services, Inc. v. Triumph Learning LLC, 669 F.3d 1356, at 1367 (Fed. Cir. 2012). “It is the
`
`duty of a party asserting that its mark is famous to clearly prove it.” Leading Jewelers Guild, Inc.
`
`v. LJOW Holdings, LLC, 82 U.S.P.Q.2d 1901, 2007 WL 749713, *5 (T.T.A.B. 2007). “Famous
`
`marks are accorded more protection precisely because they are more likely to be remembered and
`
`associated
`
`in
`
`the public mind
`
`than a weaker mark.”
`
` Recot, Inc., 214 F.3d at
`
`1327.https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=2000375286&pubNu
`
`m=506&originatingDoc=I282da7945ca711e1ac60ad556f635d49&refType=RP&fi=co_pp_sp_506_1326&
`
`originationContext=document&transitionType=DocumentItem&contextData=(sc.UserEnteredCitation) -
`
`co_pp_sp_506_1326
`
`By contrast, where a party chooses a conceptually weak trademark, it will not enjoy the
`
`wide latitude of protection afforded the owners of strong trademarks. Sure-Fit Prod. Co. v.
`
`
`
`14
`
`

`

`Saltzson Drapery Co., 254 F.2d 158, 160 (C.C.P.A. 1958); see also Welding Servs., Inc. v. Forman,
`
`509 F.3d 1351, 1361 (11th Cir. 2007) (“the weaker the mark, the less protection it receives.”).
`
`Descriptive marks are considered to be conceptually weak. See Servo Corp. of Am. v. Servo-Tek
`
`Prod. Co., 289 F.2d 955, 956 (C.C.P.A. 1961) (“[I]t is well settled that descriptive words will not
`
`be accorded as great weight in determining the similarity of marks as arbitrary words.”); Lauritzen
`
`& Co. v. Borden Co., 239 F.2d 405, 407 (C.C.P.A. 1956) (“It has been repeatedly held, however,
`
`that trademarks will not ordinarily be found to be confusingly similar on the basis of a word or
`
`syllable included in each of them which is of a descriptive nature.”); Intercontinental Mfg. Co. v.
`
`Cont’l Motors Corp., 230 F.2d 621, 623 (C.C.P.A. 1956) (“Normally, the degree of similarity
`
`which is permissible between trade-marks consisting of ordinary words, especially when such
`
`words are descriptive or geographical, is greater than that permissible between arbitrary or fanciful
`
`marks.”).
`
`Here, there can be no doubt that the conceptual strength of Registrant’s mark is weak, and
`
`thus worthy of less protection. In particular, Registrant’s mark ‘GUILT FREE’ is descriptive, as
`
`it describes what the consumer can expect when using the product. Stated otherwise, just as a
`
`product that says “sugar-free” informs the consumer that she will not encounter sugar when
`
`consuming the product, Registrant’s mark similarly informs the consumer that she will not
`
`encounter guilt when consuming the product. Indeed, Registrant has conceded the descriptive
`
`nature of its mark by relying on the dictionary definition of ‘guilt’ to explain its mark. (See Mtn,
`
`at pp. 13-14.)
`
`Registrant’s Motion, however, entirely fails to address the conceptual weakness of its mark.
`
`(See Mtn.) Instead, Registrant attempts to submit evidence to establish its marketplace strength,
`
`which “often requires a very distinct mark, enormous advertising investments, and a product of
`
`
`
`15
`
`

`

`lasting value.” Kenner Parker Toys Inc., 963 F.2d at 353. As evidence of its purported
`
`marketplace strength, Registrant submits a declaration in which its Vice President contends that
`
`Registrant sold over one million dollars of ‘GUILT FREE’ frozen confections since December
`
`2011. (Mtn, at p. 13.) Registrant further contends that it has “invested over a quarter-million
`
`dollars in selling and marketing expenses for ‘GUILT FREE’ frozen confections.” (Id.)
`
`Registrant’s evidence of its purported marketplace strength is insufficient for three reasons.
`
`First, Registrant fails to provide any context for its sales and marketing expenses, instead
`
`collectively grouping nine years of data with no information about how these numbers fit into the
`
`market share. See Bose Corp. v. QSC Audi Products, Inc., 293 F.3d 1367, 1375 (Fed. Cir. 2002)
`
`(“Raw numbers of product sales and advertising expenses may have sufficed in the past to prove
`
`fame of a mark, but raw numbers alone in today’s work may be misleading . . .. Consequently,
`
`some context in which to place raw statistics is reasonable.”). Second, buried in a footnote in
`
`Registrant’s Motion is a disclaimer that contends “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.” (Id. at p. 13 n.3.) Thus, Registrant’s disclaimer suggests that its data is
`
`based on estimates and not actual figures. Third, even if Registrant had provided relevant context
`
`and reliable figures, the figures simply do not establish a sufficient amount of sales or advertisi