299614 Alberta Ltd.v.Fresh Hemp Foods, Ltd.

Trademark Trial and Appeal Board

Mar 27, 2014

No. 91201475 (T.T.A.B. Mar. 27, 2014)

Mailed: March 27, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

299614 Alberta Ltd.
v.
Fresh Hemp Foods Ltd.
_____

Opposition No. 91201475
to Serial No. 85245329
_____

Bianca L. Scheirer of Scheirer Law Office, for 299614
Alberta Ltd.

Christopher D. Erickson and Eric Beach of Tonkon Torp LLP,
for Fresh Hemp Foods Ltd.
_____

Before Ritchie, Wolfson, and Hightower, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On February 17, 2011, Fresh Hemp Foods Ltd.
(“applicant”) applied to register the mark Hemp Hearts and
design, as shown below, on the Principal Register for
“processed edible hemp seeds” in International Class 291:

1 Application Serial No. 85245329,filed on February 17, 2011,
based on a bona fide intent to use the mark in commerce, and
disclaiming the exclusive right to use the term “hemp hearts”
apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 91201475
2

On September 6, 2011, opposer, 299614 Alberta Ltd.
(“opposer”) opposed the registration of applicant’s mark.
In the notice of opposition, opposer asserts that it coined
the term “HEMP HEARTS” “to refer to its shelled hemp seeds”
and that it has used the term as a mark therefor since prior
to the filing date of the application. (notice at para. 2).
Opposer further alleged that it has priority by virtue of
such common-law use, and that it would be damaged by the
registration of applicant’s mark. Id. at paras. 4 and 9.
Opposer additionally alleged the ground of fraud on two
bases: 1) that applicant at the time of filing the
application and signing its affidavit asserted that no one
Cancellation No. 91201475
3
else “has the right to use the mark in commerce”; and 2)
that applicant disclaimed the term “hemp hearts,” and
referred to the term in response to an office action as
being descriptive; and that both of these statements were
“false, material misrepresentations of fact.” Id. at paras.
12-15.
In its answer, applicant denied the salient allegations
of the notice, and asserted several affirmative defenses,
including the following:
The alleged word mark cited by Opposer as the
basis for filing the Notice of Opposition, namely
“HEMP HEARTS” is merely descriptive of, and/or is
a generic term for, the goods Opposer claims to
offer and sell under such mark, namely shelled
hemp seeds, as evidenced by USPTO precedent and
widespread third party usage. As such, Opposer
does not have sufficient trademark rights or
standing to oppose Applicant’s design mark
application for HEMP HEARTS (and design).

Both parties filed briefs, and opposer filed a reply
brief.
The Record and Evidentiary Objection
The record consists of the pleadings; the file of the
involved application; and, by stipulation of the parties
attached as Schedule A to opposer’s brief, the following
affidavits, together with exhibits thereto:
1. Affidavit of Roger Snow, sole director and officer of
opposer, dated June 3, 2013, submitted by opposer
during its testimony period.
Cancellation No. 91201475
4
2. Affidavit of Mike Fata, President and co-founder of
applicant, dated August 1, 2013, submitted by applicant
during its testimony period.
3. Affidavit of Roger Snow, dated September 12, 2013,
submitted by opposer during its rebuttal period.
We note applicant’s objection to opposer’s rebuttal
testimony and evidence as “opinion evidence that lacks
personal knowledge.” However, some of the rebuttal evidence
does regard opposer’s product. To the extent the rebuttal
evidence relates to other information, such as third-party
reports analyzing the content of applicant’s product, we
accord the evidence such probative value as it may have,
including relevance to this proceeding. See Fed. R. Evid.
701.
Petitioner’s Standing and Priority of Use
Petitioner has alleged common-law rights in the mark
“HEMP HEARTS.” In particular, Mr. Snow states that
petitioner sells “shelled hemp seeds” under that mark.
(Snow June 3 affid. at para 7). Mr. Snow further attested
to sales in the U.S., including current shipments under the
mark. Id. at paras. 33, 37, and Ex. H. Opposer has thus
established its standing to bring this proceeding. Giersch
v. Scripps Network Inc., 90 USPQ2d 1020, 1022 (TTAB 2009).
To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
Cancellation No. 91201475
5
that, vis-à-vis the other party, it owns “a mark or trade
name previously used in the United States … and not
abandoned….” Trademark Act Section 2, 15 U.S.C. §1052. A
party may establish its own prior proprietary rights in a
mark through ownership of a prior registration, actual use
or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues,
newspaper advertisements and Internet websites which create
a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act §§2(d)
and 45, 15 U.S.C. §§1052(d) and 1127. See also T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879
(Fed. Cir. 1996); Giersch v. Scripps, 90 USPQ2d at 1022.
It is well settled that in the absence of any evidence
of earlier use, an intent-to-use applicant may rely on the
filing date of its underlying application to establish
constructive use of its mark on this date. See Trademark
Act Section 7(c), 15 U.S.C. § 1057(c). See also Larami
Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB
1995). In this case, and as noted above, the application
was accorded a filing date of February 17, 2011. It is an
intent-to-use application, and applicant did not introduce
evidence of an earlier use date. See Fata affid. at para.
14. (“In July 2011, Fresh Hemp began using the Heart Design
on all its hemp heart product packaging and marketing.”)
Cancellation No. 91201475
6
Inasmuch as opposer has not pleaded ownership of any
registered trademark, opposer must rely on its common-law
use of HEMP HEARTS as a trademark to prove priority. In
order for a plaintiff to prevail on a claim of likelihood of
confusion based on its ownership of common-law rights in a
mark, the mark must be distinctive, inherently or otherwise,
and plaintiff must show priority of use. See Otto Roth &
Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40
(CCPA 1981). Applicant has raised, as an affirmative
defense, that the asserted common-law mark is “merely
descriptive of, and/or is a generic term for the goods
Opposer claims to offer and sell under such mark.” In
accordance with applicant’s assertion, we examine whether
the term “hemp hearts” is generic and/or merely descriptive
of the goods for which opposer claims priority under the
mark “HEMP HEARTS,” that is, “shelled hemp seeds.”
There is a two-part test used to determine whether a
designation is generic: (1) what is the genus of goods at
issue? and (2) does the relevant public understand the
designation primarily to refer to that genus of goods? H.
Marvin Ginn Corp. v. Int’l Assn. of Fire Chiefs, Inc., 782
F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The
public’s perception is the primary consideration in
determining whether a term is generic. Loglan Inst. Inc. v.
Logical Language Group Inc., 902 F.2d 1038, 22 USPQ2d 1531,
Cancellation No. 91201475
7
1533 (Fed. Cir. 1992). Evidence of the public’s
understanding of a term may be obtained from any competent
source, including testimony, surveys, dictionaries, trade
journals, newspapers and other publications. Loglan Inst.,
22 USPQ2d at 1533; Dan Robbins & Associates, Inc. v. Questor
Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979).
We find that the category of goods for which opposer
claims priority would be adequately characterized as
“shelled hemp seeds.” See Snow June 3 affid. at paras. 4,
5, 15, 25, 39. (stating, inter alia, “Opposer has sold
shelled hemp seeds under the mark ‘HEMP HEARTS’ since at
least as early as January 2001 and has continuously done so
to date.”)2 The second part of the genericness test is
whether the relevant public understands the designation
primarily to refer to that class of goods. The relevant
public for a genericness determination is the purchasing or
consuming public for the identified goods. Magic Wand Inc.
v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551, 1553 (Fed. Cir.
1991). Mr. Snow has testified that he sells his “shelled
hemp seeds” to “offices, clinics, health foods stores and
businesses in the health and nutrition industry” but that he
targets, and reaches, “generally members of the public who
are interested in healthy foods and related products.”

2 This is also the identification of goods that opposer sought
when it applied for trademark protection in Canada. (Snow June 3
affid. at paras. 13-14, and Ex. C.)
Cancellation No. 91201475
8
(Snow June 3 affid. at paras. 16 and 18). In this regard,
applicant submitted numerous instances of competitive use of
the term “hemp hearts” to refer to the genus “shelled hemp
seeds.” Some examples from various generally-available
websites with generic top-level-domains include the
following:
divavillage: Hemp Seed Nutrition: Those who
regularly consume hemp hearts (shelled hemp seed)
report a lowering of their blood pressure and
often a drop in their bad cholesterol.
[web archive 2008]3

Hemp Hearts for Health and Weight Loss: Hemp
Hearts: Posted by admin: What are hemp hearts
anyway? Simply put they are shelled hemp seeds.
In fact, hemp hearts are the “heart” of a shelled
hemp seed. They are comparable in size and
consistency to chopped sesame seeds.
[web archive 2009]

Chic galleria -- Eat Hemp Seed-Get Healthy: Those
who regularly consume hemp hearts (shelled hemp
seed) report a lowering of their blood pressure
and often a drop in their bad cholesterol. The
proteins and enzymes in hemp hearts, which works
to soothe inflammation and reduce swelling, can
also help arthritis sufferers.
www.chicgalleria.com

WheatgrassKits.com: Organic Hemp Seed: 16 oz.
resealable bag of organic hemp hearts (shelled
hemp seeds). Perfect for tasting, eating raw, in
cereals and much more. Excellent choice for
making your own vegan hemp milk.
www.wheatgrasskits.com

12 superfoods for 2012-Part Three: Hemp hearts:
You might need a side trip to the healthy food
store for hemp seed, but it’s worth it. Hulled
hemp seeds are spectacularly high in omega-3 and

3 The web excerpts were submitted by Mr. Fata as exhibits to his
affidavit. Several were submitted as Internet archives. See
Fata affid. at paras. 12, 13; and Exs. 4-23.
Cancellation No. 91201475
9
omega-6 fatty acids and are an excellent source of
protein. The heart of the hemp seed is also
extraordinarily rich in vitamin E, phosphorus,
manganese, and magnesium. Throw hemp hearts in
everywhere: smoothies, . . .
http://blogs.vancouversun.com/2012

Nuts.com: Organic Hemp Seeds (Raw, No Shell): All
natural organic hemp seeds out of the shell, also
known as hemp hearts. These are one of the
world’s most nutritious seeds.
www.nuts.com

Greenscope Health Solutions: organic hemp hearts:
Filled with vitamins and nutrients, hemp hearts
will help you jump-start your day. Looking to
stay focused, curb your appetite and speed weight
loss? Hemp hearts are the answer!
Greenscopehealthsolutions.com

Hippie Butter: Hippie Butter Organic Hulled Hemp
Seeds (hemp hearts) provide all the nutritional
benefits of whole hemp seeds without the crunchy
hulls.
www.hippiebutter.com

Hemp Hearts and Weight Loss: Hemp hearts are
hulled hemp seeds. They produce a smooth, white,
nutty flavored seed meal. Hemp seeds are used in
many food preparations, such as nutritional bars,
nut butters, bread, pancakes and porridge, . . .
www.livestrong.com

The Miracle Food!: The food we’re talking about
has different names, depending on who sells it.
If you’re going to do an Internet search for it
after you’ve read this article, search for
dehulled hemp seed, shelled hemp seed, hemp nuts
or hemp hearts. We know it as hemp hearts.
www.articlesbase.com/diseases-and-conditions-
articles

Nutiva – nourishing people & planet® Hemp Hearts
are a raw vegan, gluten-free, and certified
organic source of protein, vitamins, minerals, and
essential fatty acids. . . .
Note hemp hearts and hempseed are the same
delicious thing!
[web archive 2011]

Cancellation No. 91201475
10

Fri, November 10th, 2006
Wilted Kale Salad with a Creamy Chipotle
Dressing
Inspired by the classic kale & avocado salad, this dish was a hit in New York when I
made it, almost on a daily basis, for everyone at The Plant. (Postscript: The Plant is
no longer open.)
Chipotle peppers are jalapenos that have been smoked, and so are not raw. However,
I love to use them as they have such a great taste and you don’t need to use many! I
have provided an alternative combination of ingredients in the recipe as a substitute
to using jalapenos that will give a similarly distinctive taste.
This is a really hearty meal with a kick that’s perfect for those cold winter days!
Serves 2
FOR THE WILTED KALE
11 oz (300 g) kale
1/2 teaspoon fine Himalayan salt
1 cup baby tomatoes, sliced
1/2 cup hulled hemp seeds (hemp hearts)
Sign up for a free account and get my
10 Most Popular Recipes, free.
Create My Free Account Member Login
the raw chef | Wilted Kale Salad with a Creamy Chipotle Dressi...
http://www.therawchef.com/wilted-kale-salad-with-a-creamy-c...

Opposer argues that these uses began after applicant
filed its application in 2011, and therefore would not have
been considered generic at the time of the filing of the
application. However, we find that according to web
archives and other noted dates in the excerpts, a number of
the uses pre-date 2011. Furthermore, the issue at hand, as
noted above, is that it is incumbent on opposer to prove
that it has a distinctive mark – at the time of trial. See
Otto Roth & Co. v. Universal Foods Corp., 209 USPQ 40. We
find, on this record, that the designation “hemp hearts” is
generic for “shelled hemp seeds,” and that therefore opposer
has not established proprietary rights in its claimed mark.
As we have found opposer’s asserted mark to be generic,
we cannot find associated secondary meaning. See 2 J.
Cancellation No. 91201475
11
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 12:1 (4th ed. 2013). We note nevertheless,
for purposes of discussing secondary meaning, that for the
reasons discussed above, based on the evidence of record, we
would find the term to be highly descriptive of “shelled
hemp seeds.” The higher the level of descriptiveness, the
greater the proportionate showing of acquired
distinctiveness need be. Yamaha Int’l Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed.
Cir. 1988). As such, we do not find that opposer has
adequately established secondary meaning. Among other
things, we note the substantial number of third-party uses
of the term. In re Franklin County Historical Society, 104
USPQ2d 1085, 1093 (TTAB 2012); Nextel Communications Inc. v.
Motorola Inc., 91 USPQ2d 1393, 1408 (TTAB 2009); Quaker
State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296,
172 USPQ 361, 363 (CCPA 1972). We note, moreover, that
opposer admits to not being able to assert its claimed
rights in “HEMP HEARTS,” with Mr. Snow stating that opposer
contacted several alleged infringers in 2011 but received
“varying responses” which included some “denying having
infringed” and others which “did not respond.” (Snow June 3
affid. at para. 59 and Ex. O). It does not appear from the
record that opposer has been able to police its claimed
rights effectively to the extent that any competitors have
Cancellation No. 91201475
12
acquiesced to opposer’s claimed rights to the term “HEMP
HEARTS” for “shelled hemp seeds.” Id. Overall, we find
that that there are significant third-party uses, and that
opposer’s use has not been substantially exclusive such as
to show acquired distinctiveness.
Without priority of rights in a mark, opposer
cannot prevail in its claim of likelihood of confusion.
Fraud
The second ground for the opposition is fraud.
Specifically, opposer avers, on two different bases, that
applicant made intentionally false statements during the
prosecution of its application. The first of these
statements was made in the application under oath: that
applicant was “entitled to use the mark in commerce” and “to
the best of his/her knowledge and belief no other person,
firm, corporation, or association has the right to use the
mark in commerce.”4 (notice at para 12). Second, applicant
stated in its June 9, 2011 Response to Office Action that
‘HEMP HEARTS’ is sometimes used to describe the inner part
of a hemp seed within the applicant’s industry.” Id. at
para. 13.
The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d

4 We note that opposer did not specifically assert that applicant
was aware of opposer’s “superior” rights. For this reason, the
fraud claim was not properly pleaded. See Qualcomm, Inc. v. FLO
Corp., 93 USPQ2d 1768, 1771 (TTAB 2010).
Cancellation No. 91201475
13
1938, 1939 (Fed. Cir. 2009), set out the relevant standard
for proving fraud:
Fraud in procuring a trademark
registration or renewal occurs when an
applicant knowingly makes false,
material representations of fact in
connection with his application.”
Torres v. Cantine Torresella S.r.l., 808
F.2d 46, 48 [1 USPQ2d 1483] (Fed. Cir.
1986). A party seeking cancellation of
a trademark registration for fraudulent
procurement bears a heavy burden of
proof. W.D. Byron & Sons, Inc. v. Stein
Bros. Mfg. Co., 377 F.2d 1001, 1004 [153
USPQ 749] (CCPA 1967). Indeed, “the
very nature of the charge of fraud
requires that it be proven ‘to the hilt’
with clear and convincing evidence.
There is no room for speculation,
inference or surmise and, obviously, any
doubt must be resolved against the
charging party.” Smith Int'l, Inc. v.
Olin Corp., 209 USPQ 1033, 1044 (TTAB
1981).

As indicated above, we have found that the term “hemp
hearts” is used generically to describe or to refer to
shelled hemp seeds. Accordingly, applicant’s statement that
it is entitled to use the term in its application for
“processed edible hemp seeds,” goods that would be
generically identified by the term, was not fraudulent.
Likewise, its response to the Office action was not in
derogation of opposer’s rights or misrepresentative of the
nature of the term “hemp hearts” for these goods. Since
opposer has failed to show that any of the alleged
statements made by applicant were false, let alone proving
this to the hilt, petitioner’s claim of fraud fails.
Cancellation No. 91201475
14
DECISION: The opposition is dismissed.