7-Eleven, Inc.v.Mark D. Morrison

Trademark Trial and Appeal Board

Jun 2, 2008

No. 91154687 (T.T.A.B. Jun. 2, 2008)

Mailed:
2 June 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

7-Eleven, Inc.
v.
Mark D. Morrison
_____

Opposition No. 91154687
to application Serial No. 76360248
_____

Charles R. Mandly, Jr. of Foley & Lardner LLP for 7-Eleven,
Inc.

Norman P. Soloway of Hayes Soloway P.C. for Mark D.
Morrison.
______

Before Hairston, Grendel, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 18, 2002, applicant Mark D. Morrison filed
an intent-to-use application to register on the Principal
Register the mark SLURP-EZE (in typed or standard character
form) for goods identified as “dog bowls, cat bowls, ferret
bowls” in Class 21. Serial No. 76360248. On June 11, 2002,
the mark was published for opposition and, after two
extensions of time to oppose, on December 9, 2002, opposer
(7-Eleven, Inc.) filed a notice of opposition. Opposer
alleges that it owns numerous registrations for the marks
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Opposition No. 91154687
2
SLURP or SLURPEE for various goods. Specifically, opposer
alleges that since “long prior to the filing of the
application opposed herein, 7-Eleven has used trademarks,
composed, in whole or in part, of the term ‘Slurp’ for a
wide variety of products, including, but not limited to:
plastic beverage containers, clothing, candy, bubble gum,
soft drinks and frozen confections.” Notice of Opposition
at 1. Opposer alleges that it has obtained registrations1
for the following marks:
I.
0829177
SLURPEE
Reg. Date: May 23, 1967
Second renewal
For: Fruit flavored, semi-frozen soft drinks (Class 32)

II.
1507444
SLURP
Reg. Date: October 4, 1988
§§ 8 & 15 affidavits
For: Flavored, semi-frozen soft drinks for consumption on
or off the premises (Class 32)

III.
1647002
SUPER SLURPEE
Reg. Date: June 4, 1991
Renewed
For: Flavored, semi-frozen carbonated soft drinks for
consumption on or off the premises (Class 32)
“Super” disclaimed

IV.
2236874
SLURPEE SPLITZ-O
Reg. Date: April 6, 1999

1 Opposer also referred to several other registrations that were
subsequently cancelled (Nos. 2256135, 2265759, 2288228, and
2362165).
Opposition No. 91154687
3
§§ 8 & 15 affidavits
For: Flavored, semi-frozen carbonated soft drinks for
consumption on or off the premises (Class 32)

V.
2240848
SLURPEE
Reg. Date: April 20, 1999
§§ 8 & 15 affidavits
For: Clothing, namely T-shirts (Class 25)

Furthermore, opposer maintains that “[r]egistration of the
Applicant’s aforesaid SLURP-EZE mark for the Goods is likely
to confuse the public as to the source of Applicant’s
products in violation of Section 2(d).” Notice of
Opposition at 3.
Applicant denied the salient allegations of opposer’s
notice of opposition.
The Record
The record consists of the pleadings; the file of the
involved application; the testimonial and rebuttal
depositions of Jean Olsen, a paralegal at Foley & Lardner
LLP (opposer’s counsel), with exhibits; the testimonial
deposition of Jay Wilkins, opposer’s category manager, with
exhibits; the testimonial deposition, with exhibits, of
George Mantis (opposer’s survey expert); notices of reliance
of opposer submitting status and title copies of its and
third-parties registrations and applications, publications,
census records, applicant’s admissions and discovery
responses; and applicant’s notices of reliance on opposer’s
admissions and on publications.
Opposition No. 91154687
4
Preliminary Matters
Because of opposer’s proof of ownership and use of its
registered marks, we find that opposer has established its
standing to oppose. See, e.g., Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Also, priority is not an issue here in view of
opposer’s ownership of at least five registrations for its
SLURP and SLURPEE marks. See King Candy Co. v. Eunice
King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
Evidentiary Objections
Both parties raised several evidentiary objections.
Opposer objects to applicant’s notice of reliance on
excerpts from opposer’s deposition of opposer’s witness (Jay
Wilkins) on the ground that the specifically noticed
sections are not actual witness testimony. Inasmuch as
applicant has not relied on these statements, the objections
are moot since the entire deposition is otherwise of record.
We also overrule opposer’s objection to applicant’s reliance
on the testimony of opposer’s witness Wilkins that opposer
claims is applicant’s attempt “to elicit a legal opinion
from a lay witness” on the question of actual confusion.
Actual confusion is a factual question and not a legal
opinion. See, e.g., Fishking Processors Inc. v. Fisher King
Seafoods Ltd., 83 USPQ2d 1762, 1763 n.1 (TTAB 2007) (“We
Opposition No. 91154687
5
denied such motion on January 15, 2005, finding genuine
issues of material fact as to petitioner's common law rights
with respect to the mark FISHKING, the similarity of the
parties’ marks, the extent of actual confusion…”). In
addition, opposer also maintains that the witness was
confused, and while we agree that the witness appears to
have been confused by the question, that fact goes to the
weight to be given the testimony. Regarding Mr. Wilkins’
testimony on pp. 69-77, we overrule the objection based on
the ground that applicant was seeking to obtain legal
opinions from a lay witness. Questions regarding whether a
company is affiliated with another company or whether it has
a license to use a trademark are not necessarily requesting
a legal opinion. To the extent that the witness’s other
answers were typically “I don’t know” and applicant does not
rely on this part of the testimony, this objection also
appears to be moot. Finally, we overrule opposer’s
objection to the rephrased question on p. 82 that asked:
Are any of the products depicted in any of those
pictures of the possibly several hundred pages of
materials in front of us, are any of those products
intended by 7-Eleven for use in connection with any
pet?

Opposer objected (Brief at 28) to the question on the ground
that it was vague and ambiguous and “hopelessly compound.”
The witness responded: “Not to my knowledge.” While the
question referred to numerous pages of evidence, applicant
Opposition No. 91154687
6
was simply asking the witness if he was aware of any product
of opposer that was intended for use by animals. We do not
view this type of question as “hopelessly compound” or
otherwise objectionable and we overrule opposer’s objection.
Applicant has also objected to some of opposer’s
evidence. The most notable objection is his motion to
strike the trial testimony of George Mantis, who conducted a
survey for opposer. The undisputed facts, taken from
opposer’s opposition to the motion to strike and the board’s
orders, are set out below:
September 30, 2005
Opposer responds to applicant’s request for production
of documents relating to expert testimony by informing
applicant that it had no responsive documents.
Applicant did not serve any interrogatory concerning
expert witnesses.

March 30, 2007
Opposer’s motion for summary judgment is denied.

June 1, 2007
Opposer’s testimony period opened.

Early June 2007
Opposer retains Mr. Mantis to conduct a consumer
reaction test.

June 18, 2007
Opposer informs applicant that it intends to call Mr.
Wilkins and Ms. Olsen and that it “was contemplating a
potential third deposition.”

June 22, 2007
Opposer’s testimony period is extended from July 1,
2007 to July 20, 2007. The order also sets the
deposition of “witness Olsen, and any third witness, in
Chicago on July 18, 2007.” The deposition of Mr.
Wilkins was set for July 17, 2007, in Dallas, Texas.

Opposition No. 91154687
7
“early the week of July 9, 2007”
Opposer makes a final decision to offer testimony of
Mr. Mantis.

July 11, 2007
Opposer serves by facsimile and overnight courier a
notice of deposition of George Mantis. The notice
states that opposer “will take the testimony deposition
of the following named individual… Mr. George Mantis
The Mantis Group, Inc.”

July 13, 2007, Friday
Mr. Mantis completes his expert report.

July 14, 2007, Saturday
Opposer serves by next business day courier service
1300 pages of material together with a supplemental
response to applicant’s request for documents.

Applicant submits that “on the afternoon of Monday July
16, 2007, the office of Hayes Soloway in Tucson, Arizona
received approximately one thousand three hundred fifty two
pages of survey papers and a purported expert report.”
Motion to Strike at 4. Opposer had scheduled the deposition
of one of its witnesses in Dallas, Texas, the next day (the
17th) and the deposition of Mr. Mantis was scheduled at
10:00 a.m. the day after that in Chicago. This schedule was
in conformity to the board’s order of June 22, 2007.
Applicant argues that it “had no realistic opportunity even
to read Mr. Mantis’s material, let alone to analyze and
effectively prepare cross examination for Mantis’ marketing
survey and expert opinions.” Motion to Strike at 5.
Opposer argues that Mr. Mantis’s trial testimony
deposition should not be stricken because opposer “provided
a full seven (7) days written notice of the deposition …
Opposition No. 91154687
8
[and] Applicant was on notice for over a month of 7-Eleven’s
intent to call up to three witnesses.” Opposition to Motion
at 10. Opposer also argues that cases such as Penguin Books
Ltd. v. Eberhard, 48 USPQ2d 1280 (TTAB 1998) and Hamilton
Burr Publishing Co. v. E.W. Communications, Inc., 216 USPQ
802 (TTAB 1982) support its argument that applicant received
reasonable notice. See 37 CFR § 2.123(c) (“Before the
depositions of witnesses shall be taken by a party, due
notice in writing shall be given to the opposing party”).2
In Penguin Books, the board “exercise[d] its discretion to
consider this testimony. In view of the nature of the
testimony presented, we do not believe that the relatively
short notice was prejudicial.” 48 USPQ2d at 1284. In
Hamilton Burr, the board agreed that the notice was short
but it pointed out that the deposition was “taken a short
distance from the offices of applicant’s attorneys” and

2 We add that the USPTO’s rules now require that “[d]isclosure of
expert testimony must occur in the manner and sequence provided
in Federal Rule of Civil Procedure 26(a)(2).” 72 Fed. Reg.
42242, 42260 (August 1, 2007). However, this change applies to
proceedings that were filed on or after November 1, 2007. 72
Fed. Reg. at 42242. Accord HighBeam Marketing LLC v. Highbeam
Research LLC, 85 USPQ2d 1902, 1906 n.4 (TTAB 2008) (While
“Federal Rule 26(b)(4) now does apply to Board proceedings, its
application is not retroactive. Thus, even if we presume that it
would be reasonable and expected for applicant to pay some fee
for the time Ms. Saurage would have to spend at the deposition,
opposer's reliance on Rule 26(b)(4)(C) is misplaced”).
Therefore, cases dealing with mandatory disclosure of experts in
Federal court are “largely inapposite” inasmuch as “Fed. R. Civ.
P. 26 mandatory disclosure requirements [are] not applicable to
Board proceedings” in cases such as this. Pioneer Kabushiki
Kaisha v. Hitachi High Technologies America Inc., 74 USPQ2d 1672,
1679 n.14 (TTAB 2005).
Opposition No. 91154687
9
“applicant’s counsel has pointed to no specific prejudice
that it sustained as a result of this short notice.” 216
USPQ at 804 n.6. We do not read these cases as establishing
that minimal notice of an expert witness is always
appropriate. We add that the board has held that “[w]hether
notice is reasonable is determined under the individual
circumstances of each case.” Duke University v. Haggar
Clothing Co., 54 USPQ2d 1443, 1444 (TTAB 2000). In that
case, which did not involve expert witnesses, the board also
held that: “Given the more than adequate thirty-day period
allowed for trial for each party in inter partes proceedings
before the Board, there must be a compelling need to require
adverse counsel to prepare with such haste at the close of a
party’s testimony period.” Id. See also Sunrider Corp. v.
Raats, 83 USPQ2d 1648, 1653 (TTAB 2007) (Opposer’s “notice
of six days was reasonable”).
Here, on June 22, 2007, the board order included a
provision that opposer could call a third witness in Chicago
on July 18, 2007. On July 11, 2007, opposer informed
applicant that it was calling George Mantis of the Mantis
Group, Inc. as its witness. However, at no point did
opposer inform applicant that the witness was an expert
witness until applicant received thirteen hundred pages of
documents on the afternoon of the 16th, the day before
depositions were scheduled to begin in Texas the next day.
Opposition No. 91154687
10
Although opposer never took the simple step of
informing applicant that Mr. Mantis was an expert witness,
it now argues (Opposition to Motion at 6) that the
responsibility was apparently applicant’s to determine:
7-Eleven notes that even if Applicant’s counsel did not
wish to make such an inquiry of 7-Eleven’s counsel,
Applicant had other ways to identify the probable
subject matter of Mr. Mantis’ testimony. For example,
a simple GOOGLE search engine search of “‘George
Mantis’ + Chicago” would have disclosed that Mr. Mantis
had lectured on use of consumer survey evidence in
trademark proceedings.

However, despite the fact that opposer did not provide
applicant any indication that it was contemplating calling
an expert witness, applicant apparently expressed no
interest in discovering who the potential third witness was
after the board order of June 22, 2007, scheduled this
potential deposition or even after being informed of the
witness’s name and affiliation a week before the deposition.
Also, inasmuch as applicant had not submitted an
interrogatory on the question of an expert witness, opposer
was under no duty to supplement a discovery response as soon
as it decided to call an expert. Furthermore, while
applicant did “object to the introduction into evidence of
Opposer’s Trial Exhibit 20” and to “any expert testimony of
the witness,” it did not seek any other accommodation
regarding cross-examination of the witness. Mantis dep. at
12-15. See, e.g., Penguin Books, 48 USPQ2d at 1284 (“In
response, applicant maintains that he gave opposer notice as
Opposition No. 91154687
11
early as possible. Moreover, during the deposition,
applicant's attorney agreed to give opposer access to the
witness to remedy any potential problem, including allowing
opposer another opportunity in which to cross-examine
applicant's expert witness”). Here, when we consider all
the factors in this case, we conclude that the notice was
adequate and we deny applicant’s motion to strike the
deposition of Mr. Mantis.
Applicant also moves to strike the testimony of Jay
Wilkins (dep. at p. 52, lines 4-10) “who (without foundation
or prior disclosure) proffered ‘expert testimony’ trial
testimony as to ‘likelihood of confusion.’” Motion to
Strike at 1. The testimony of Mr. Wilkins reads:
The Slurpee brand I believe is so iconic and
representative of our product. And the use of the
Slurpee brand through other Slurpee products, I think
there’s a high likelihood that a consumer could be
confused by seeing a version of Slurpee put on a
product and it would be interpreted that it was an
extension of ours.

The “opinions of witnesses, including those qualified as
expert witnesses, on the question of likelihood of confusion
are entitled to little if any weight and should not be
substituted for the opinion of the tribunal charged with the
responsibility for the ultimate opinion on the question.”
Mennen Co. v. Yamanouchi Pharmaceutical Co., Ltd., 203 USPQ
302, 305 (TTAB 1979). To the extent that this excerpt
constitutes expert testimony on the issue of likelihood of
Opposition No. 91154687
12
confusion, we sustain the objection and give this testimony
little weight. Land-O-Nod Co. v. Paulison, 220 USPQ 61, 63-
64 (TTAB 1983):
Further, the Board has consistently held that although
opinion testimony on the question of likelihood of
confusion is admissible, it is entitled to little or no
weight. On the other hand, factual information
relating to use of opposer's marks and advertising
thereunder manifestly constitutes evidence to be
considered in resolving the issue before us.
Therefore, applicant's objection is sustained only to
the extent that the opinion testimony on the issue of
likelihood of confusion has been given little
consideration in our determination of this case.

Applicant “has also objected to certain trial testimony
of Opposer’s company witness Jay Wilkins, on the ground that
this witness proffered certain marketing, advertising and
sales composite data compromising a “Summary of Voluminous
Documents,” but refused to disclose to Applicant during
cross-examination, upon explicit request, the voluminous
documents upon which his testimony was predicated.” Brief
at 2, referring to Wilkins dep. at 42, 44, 46-47, and 53-57.
Opposer responds by arguing that the objected-to
testimony concerns:
1. 7-Eleven costs for SLURPEE marks advertising.
2. 7-Eleven’s pet product sales.
3. internet traffic to 7-Eleven’s websites
Opposer maintains that “Wilkins testified as to each of the
Testimony Categories based on personal knowledge.” Reply
Brief at 16.
Opposition No. 91154687
13
When we review the testimony, we agree with opposer
that the testimony is based on the witness’s personal
knowledge:
Q. And do you have any knowledge as to whether or not
the level of advertising expenditures for Slurpee
branded products subsequent to 2002 have been
maintained at this level?

A. Yes. I do. It’s the responsibility of the category
managers that fall under my jurisdiction.

Wilkins at 42.

Q. Let me ask you a slightly different question. Do
you have any information about the number of consumers
who visit your web sites?

A. We track consumers – you can – you can track
consumers two ways. Total visitors and unique
visitors. We track unique visitors because it shows
new activity. And in 2007 our -- our average is
running at 108,000 visitors per month.

Wilkins at 44.

Q. And does 7-Eleven monitor the number of unique hits
that are received by its web sites?

A. Yes, we do.

Q. And in your response – in your capacity as category
manager for Slurpee, do you receive information with
respect to those hits with relationship to online
materials for Slurpee?

A. Yes, we do.

Q. And is that the basis of the testimony you’re giving
here today, are the business records of 7-Eleven that
describe these unique hits?

A. Yes. Yes, it is.

Wilkins at 45.

Q. Did you prepare Exhibit 19?

Opposition No. 91154687
14
A. I did not prepare Exhibit 19. I verified the
information that was on Exhibit 19.

Q. How did you verify it?

A. I pulled the data within our information system to
validate that that number was correct.

Q. Off your computer?

A. Correct.

Wilkins dep. at 54.

Therefore, we overrule applicant’s objection. The
witness’s testimony is not a summary of a voluminous record,
it is information given about a business by someone with
personal knowledge.
We add that opposer, in its notice of opposition,
refers to its ownership of nine registrations and one
application. Four of these registrations have expired.
With its notice of reliance, opposer included status and
title copies of five of the registrations that were pled
(Nos. 829177; 1507444; 1647002; 2236874; and 2240848) as
well as No. 2660731, which was identified as Application
Serial No. 76298363 but has subsequently issued as No.
2660731. In addition, opposer also included status and
title copies of the following registrations that were not
identified in the notice of opposition: Nos. 2689393;
2794922; 2830269; 2938850; 3079803; 3151476; 3193253; and
3221508. Opposer relies on these registrations in its Brief
at pages 5-6. Applicant (Brief at 3 n.2) has responded by
Opposition No. 91154687
15
noting that “Opposer’s marks covering gum and candy, a toy
SLURPEE maker, and several others included on pgs. 4 and 5
were filed after Applicant’s Application. Nevertheless, all
of these products are directly related to the SLURPEE
beverage. Most of the remaining marks and the evidence
supplied by opposer lists the following goods and services:
‘semi-frozen soft drinks.’” We hold that the issues raised
by these additional registrations were tried by implied
consent. TBMP § 507.03(b) (2d ed. rev. 2004). See also
Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.7
(TTAB 2007) (“[A]pplicant has not objected to opposer's
reliance on the three unpleaded registrations. Accordingly,
we treat these unpleaded registrations as having been tried
by implied consent of the parties”).
These registrations include:
VI.
SLURP AND GULP
2660731
Reg. Date: December 10, 2002
For: Plastic beverage containers (Class 21) and Soft drinks
(Class 32)

VII.
2689393
SLURPEE SPLITZ-O
Reg. Date: February 18, 2003
For: Bubble gum and chewing gum (Class 30)

VIII.
2794922
SLURPEE INFUSED GUM
Reg. Date: December 16, 2003
For: Chewing gum (Class 30)
“Gum” disclaimed
Opposition No. 91154687
16

IX.
2830269
SUPER SLURPEE STRATA
Reg. Date: April 6, 2004
For: Semi-frozen soft drinks (Class 32)
“Super” disclaimed

X.
2938850
CANDEE SLURPEE
Reg. Date: April 5, 2005
For: Confectionary products, namely candy (Class 30)
“Candy” disclaimed

XI.
3079803
SLURPEE
Reg. Date: April 11, 2006
For: Toy battery operated beverage maker (Class 28)

XII.
3151476
SLURPEE
Reg. Date: October 3, 2006
For: Confectionery products, namely candy (Class 30)

XIII.
3193253
SLURPEE FREEZER POPS
Reg. Date: January 2, 2007
For: Frozen confections (Class 30)
“Freezer Pops” disclaimed

XIV.
3221508
SLURPEE SPORTS
Reg. Date: March 27, 2007
For: Beverage containers, namely plastic bottles sold empty
(Class 21)
“Sports” disclaimed3

3 “In an opposition, the board must consider existing
registrations of subsequent-user opposers.” King Candy Co. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Opposition No. 91154687
17
Likelihood of Confusion
We now move on to the central issue in this case,
whether there is a likelihood of confusion. When
considering this issue, we rely on the thirteen factors set
out by the Court of Appeals for the Federal Circuit and its
predecessor, the Court of Custom and Patent Appeals, in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) and In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003), to the
extent that there is relevant evidence.
We begin by comparing the marks. “The first DuPont
factor requires examination of ‘the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). In this
case, applicant’s mark is SLURP-EZE, while opposer’s marks
are based on the terms SLURPEE and SLURP. Applicant’s and
opposer’s marks do not include any stylization or design so
it must be assumed that there is no difference between the
marks on this basis. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument
concerning a difference in type style is not viable where
one party asserts rights in no particular display. By
Opposition No. 91154687
18
presenting its mark merely in a typed drawing, a difference
cannot legally be asserted by that party”).
Opposer owns registrations for the mark SLURPEE alone
for semi-frozen soft drinks, T-shirts, toy battery beverage
maker, and candy. The only difference in appearance between
opposer’s SLURPEE mark and applicant’s SLURP-EZE mark is the
presence of the letter “Z” in applicant’s mark and the
hyphen. The presence or absence of a hyphen is not a
significant difference. See Goodyear Tire & Rubber Co. v.
Dayco Corp., 201 USPQ 485, 488 n.4 (TTAB 1978) (“[T]he mark
‘FAST-FINDER’ with a hyphen (which mark is in legal
contemplation substantially identical to the mark ‘FAST-
FINDER’ without a hyphen…”). See also Harvey Hubbell, Inc.
v. Red Rope Industries, Inc., 191 USPQ 119, 123 (TTAB 1976)
(“[T]he marks “DATALOK” and “DATA . LOK”, although used by
the parties in different graphic presentations, create the
same general commercial impression and are, for all purposes
herein, legally identical”). Thus, the difference in the
appearance of the marks is relatively minor and many
purchasers may not even notice. The pronunciation of the
marks is also very similar. Indeed, for many purchasers,
the marks may sound virtually the same or perhaps SLURP-EZE
may be recognized as the plural form of SLURPEE. See
Opposer’s Brief at 18 (The “aural impression of Applicant’s
SLURP-EZE marks is identical to the aural impression of a
Opposition No. 91154687
19
pluralized form of 7-Eleven’s mark – SLURPEES”). Indeed,
there are numerous examples of members of the public using a
plural form of opposer’s mark. See, e.g., Chicago Sun-
Times, November 19, 2001 (“Slurpees have been around since
1965…”); Tampa Tribune, August 16, 1996 ((Nearly 5 billion
Slurpees have been sold”); and Puget Sound Business Journal,
May 28, 1993 (“Robin Pavlish, merchandiser for the Northwest
division of Southland Corp., … hails the Acorto 990 as the
best thing for sales since Slurpees”). Therefore, even if
the marks are pronounced as a singular and a plural, this
would not distinguish the marks. Wilson v. Delauney, 245
F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that
there is no material difference, in a trademark sense,
between the singular and plural forms of the word "Zombie"
and they will therefore be regarded here as the same mark”).
Quizzically, applicant admits that “SLURPEE is a
fanciful name for … a slurpee, or as Opposer would prefer a
‘semi-frozen soft drink.’” Brief at 9 (punctuation in
original). Applicant argues that “the SLURP-EZE mark is
highly suggestive of the product’s use, i.e., a bowl that
eases the mess that results from pets slurping up food and
water.” Id. Inasmuch as neither mark is a common English
word and they are both based on the word “SLURP,” it is
unlikely that purchasers would discern any significant
difference between the meanings of the marks SLURPEE and
Opposition No. 91154687
20
SLURP-EZE. We point out that our “focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.”
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d
1844, 1848 (TTAB 2004).
Finally, the commercial impressions of these marks are
also very similar if not virtually identical. There is
virtually no difference between the marks. Therefore, we
conclude that the similarities of the marks’ sound,
appearance, meaning, and commercial impression outweigh any
potential differences. Mennen Co., 203 USPQ at 305
(“Considering the marks ‘MINON’ and ‘MENNEN’ in such light
and taking into account that average consumers are not
infallible in their recollection of the many trademarks that
they are exposed to through the various communications
media, much less the spelling thereof, it is our opinion
that the marks are similar in appearance and are reasonably
susceptible of a similar pronunciation and that therefore
purchasers would be likely to assume that applicant's
product, when offered, is another ‘MENNEN’ product”).
Furthermore, when both parties are using or intend to
use virtually identical designation, “the relationship
between the goods on which the parties use their marks need
not be as great or as close as in the situation where the
marks are not identical or strikingly similar.” Amcor, Inc.
Opposition No. 91154687
21
v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). See
also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1689 (Fed. Cir. 1993) (“[E]ven when goods or services are
not competitive or intrinsically related, the use of
identical marks can lead to an assumption that there is a
common source”).
Opposer has also submitted status and title copies of
its registrations for SLURP for semi-frozen soft drinks for
consumption on or off the premises and SLURP AND GULP for
plastic beverage containers and soft drinks. The term
“Slurp” is the first term in these marks and dominates these
marks and applicant’s SLURP-EZE mark. Palm Bay Imports, 73
USPQ2d at 1692 (“To be sure, CLICQUOT is an important term
in the mark, but VEUVE nevertheless remains a ‘prominent
feature’ as the first word in the mark and the first word to
appear on the label. Not only is VEUVE prominent in the
commercial impression created by VCP's marks, it also
constitutes ‘the dominant feature’ in the commercial
impression created by Palm Bay's mark”). Applicant’s mark
has taken the entire registered mark and added the term
“Eze” to it, which merely emphasizes the “Slurp” portion of
the mark. The SLURP AND GULP mark and SLURP-EZE marks both
emphasize the act of “Slurping.” Inasmuch as the dominant
portion of these marks is identical, the similarities in
Opposition No. 91154687
22
sound, appearance, meaning, and commercial impressions of
the marks outweigh their differences.
Another factor that we consider is the question of fame
or public recognition and renown. The Federal Circuit “has
acknowledged that fame of the prior mark, another du Pont
factor, ‘plays a dominant role in cases featuring a famous
or strong mark.’” Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.
Cir. 1992), quoting, Kenner Parker Toys v. Rose Art
Industries, 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992). “Famous marks thus enjoy a wide latitude of legal
protection.” Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000) (FIDO LAY for “natural
agricultural products, namely, edible dog treats”
confusingly similar to FRITO-LAY for snack foods).
Applicant acknowledges that “Opposer has established through
hundreds or [sic] LEXIS articles that the term SLURPEE has
become a well-known mark synonymous for Opposer’s goods, the
‘semi-frozen soft drink’ for human consumption, and perhaps
related beverage containers, straws or other products used
in conjunction with human consumption of beverages.” Brief
at 9.
Opposer has submitted the following evidence to show
the public recognition and renown for its marks. In
general, “there’s over 32,000 7-Elevens. And we actually
Opposition No. 91154687
23
hit a milestone just recently where we surpassed McDonalds
as having more retail outlets.” Wilkins at 9. In the
United States there are approximately 6,000 stores. Id. at
10. “The Slurpee product has been available under that
brand since 1966.” Id. at 10. Mr. Wilkins identified
numerous cups for its semi-frozen soft drink that are
“representative of the kinds of promotional cups that 7-
Eleven has used.” Wilkins at 19. Many of these cups
contain the marks SLURPEE and SLURP. Wilkins Ex. 1. In
addition to using the mark on soft drinks, opposer has also
used the SLURPEE mark on straws, key chains, T-shirts,
novelty items, watches, hats shirts, and shoes. Wilkins
dep. at 25 and Ex. 5. Opposer sells a toy SLURPEE machine
at such retailers as Wal-Mart. Wilkins at 27. Since the
SLURPEE soft drink was introduced, opposer has sold billions
of these beverages and the annual sales generate millions of
dollars in sales. Opposer’s Brief at 3; Wilkins dep. at 28.
Opposer has advertised its SLURPEE brand soft drinks in
television, radio, print, and internet advertisements.
Copies of many of these advertisements have been made of
record. It also spends in excess of five million dollars in
advertising the SLURPEE brand annually. Wilkins dep. at 42.
SLURPEE drinks have been sold in cups that, in addition to
the SLURPEE mark, also promoted the World Wrestling
Federation, the X GAMES on ESPN, “Hulk Only in theaters,”
Opposition No. 91154687
24
“‘Superman Returns’ in Theaters June 30,” and “Superman IV.”
Wilkins Exhibits 4-5. See also Wilkins Ex. 15 (“The
Simpsons Movie Collectible Slurpee Cups and Magnetic
Straws”).
In addition, opposer has submitted hundreds of articles
from newspapers and other publications that show that the
term SLURPEE associated with opposer has received
significant press recognition. Some examples (with bold
added) are set out below.
For the fifth year, Denver police officers are
distributing coupons for a free 12-ounce Slurpee from
7-Eleven to schoolchildren exhibiting positive
behavior.
Denver Post, September 19, 1999.

For Tonya Rucker, visiting 7-Eleven is a family affair
– for a Slurpee for herself, morning coffee for her
husband, and after-school potato chips for her
children.
Virginian-Pilot, September 19, 1999.

Did you know that you can now get wine at 7-
Eleven? Not just Thunderbird. Actual wine.
Chardonnay and stuff. For real. You can walk in your
local convenience store and get beef jerky, a lottery
ticket and a fine $6 Merlot. That is highly
suspicious.
If they cared about my feelings at 7-Eleven, they
would at least come up with an arrangement where people
can feel comfortable. Hey, hook the wine to the
Slurpee machine. Slurpee Zinfandel, that’s the future.
Charleston Daily Mail (West Virginia), November 14,
2001.

Scientists may not have cured the common cold, but
after years of research, they have figured out a way to
make a diet Slurpee, which could show up in Chicago as
early as this spring.
It wasn’t easy. Slurpees have been around since
1965, and since the mid-1980’s scientists at 7-Eleven
Opposition No. 91154687
25
have been trying to come up with a low-cal version of
the carbonated beverage.
Chicago Sun-Times, November 19, 2001.

If you didn’t know Bob Stanford, you probably knew his
creations.
Ever had a Slurpee? He named it.
Remember this one? “Oh, thank heaven for 7-Eleven.”
He thought of it.
Dallas Morning News, December 8, 2001.

Every student who drove home from Dakota High
School Thursday was wearing a seat belt. So were the
passengers.
That’s because Macomb County Sheriff Mark Hackel
and several police officers were at the parking lot
exit to hand out coupons for free Slurpees at Seven-11
stores and to remind students to buckle up.
Detroit News, December 7, 2001.

Dallas-based 7-Eleven is testing a new sugar-free
Slurpee formula at 106 stores in the Detroit area and
35 in Kansas City, Mo., before a scheduled roll out to
the rest of the country next summer, the Wall Street
Journal reported.
National Petroleum News, December 1, 2001.

For the past bazillion years … well, as long as I can
remember, my family has taken advantage of the few
things open on Christmas Day: 7-Eleven (for Coke
Slurpees to sneak into the movie)…
Washington Post, December 24, 2001.

Here’s an update on the 7-Eleven Slurpee war between
Coke and Pepsi. Pepsi Slurpees you may recall, have
been test-marketed here since last summer, much to the
ire of Coke fans such as myself.
St. Petersburg Times, January 20, 2002.

Consider the Slurpee – a sugary slush synonymous with
7-Eleven for about 35 years. The super-sweet cherry
version has 177 calories per 12 ounces – and that’s the
teensy size. More than 11 million thigh-busting
Slurpees are sold every month.
Dallas Morning News, January 5, 2002.

Click onto the “Where’s Barry?” icon and check out the
latest Barry Sanders sightings. Maybe he and Elvis are
in charge of Slurpees at a 7-Eleven in Kalamazoo.
Opposition No. 91154687
26
Detroit Free Press, December 29, 2001.

Durst [Fred Durst of Limp Bizkit] wore his trademark
red baseball cap (Flipped around Ken Griffey Jr.
style), black T-shirt and khaki pants. He could be the
guy trafficking Slurpees at a 7-Eleven because nothing
about him said “rock star.”
Seattle Post-Intelligencer, October 19, 1999.

The newlywed couple helps Church of the Open Door
Pastor Bob Christopulos work with homeless girls.
Christopulos, a Baptist minister who performed the
ceremony, has a sort of foster home set up for the
troubled teens. After the ceremony, the couple feed
each other cake and had a Slurpee toast.
Deseret News (Salt Lake City), October 17, 1999.

History’s soft-focus lens obscures the dish. It is
either a bowl of sherbet or a sharbat, a drink of rose
water chilled with snow collected from the mountains of
Lebanon. Either way, it is one of the first, and
greatest, examples of East-West culinary exchange, and
a seminal moment in the grand tradition of frozen
desserts, one of the most universal of all foods. The
Arabic word becomes the French “sorbet” and the Italian
“sorbetto.” The offspring of that Lebanese slush
include the 7-Eleven Slurpee and ice cream in every
form, from vanilla to jalapeno.
New York Times, December 29, 1999.

Or, as Alexi Lalas could be asking himself: How can I
sign a million-dollar soccer contract if it means
living in a place with no 7-Eleven Slurpee around the
corner?
Orange County Register, July 20, 1994.

“We went to the ballpark last night and within eight
seconds all these people are yelling, ‘Kato, Kato,’”
says 98 Rock newsman Bob Lopez. “How does this guy
ever go to a 7-Eleven for a Slurpee anymore?”
Baltimore Sun, June 6, 1995.

The evidence of record demonstrates that opposer’s
SLURPEE mark has received significant public recognition and
Opposition No. 91154687
27
renown.4 As a result of this recognition, its SLURPEE mark
is well known and this factor weighs heavily in opposer’s
favor.
We also point out that this case is different from a
somewhat similar case that involved opposer. 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715 (TTAB 2007). In that case, the
board held that opposer’s “BIG GULP trademark has a very
high degree of public recognition and renown.” Id. at 1723.
However, the applicant’s mark GULPY in that case was not
virtually identical to opposer’s famous mark. Furthermore,
“Gulp is a suggestive designation in the fountain drink
field” (83 USPQ2d at 1721), while the term SLURPEE is
arbitrary or at most only slightly suggestive.
The next factor we consider is whether the applicant’s
and opposer’s goods are related. We must compare the goods
as described in the application and the registrations to
determine if there is a likelihood of confusion. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). Therefore, applicant’s
goods include all types of cat, dog, or ferret bowls not
just “lipped pet-bowl[s] meant to ease the mess associated
with pet feeding and watering” (Brief at 9) or pet bowls
that cost between $11 and $16” (Brief at 11). Opposer has

4 This evidence of public recognition and renown is primarily
directed to opposer’s SLURPEE mark and not its other “Slurp-”
marks.
Opposition No. 91154687
28
submitted evidence that pet bowls can cost as little as
$2.99. Olsen Exhibits 21 and 22.
“In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services on
or in connection with which the marks are used be identical
or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
Applicant’s goods are dog bowls, cat bowls, and ferret
bowls. Opposer’s goods for the mark SLURPEE include
fruit flavored, semi frozen soft drinks (No. 0829177) and
T-shirts (No. 2240848). Opposer has also obtained a
registration for the mark SLURP AND GULP (No. 2660731) for
plastic beverage containers.5 Opposer has continued to
expand the use of its marks on other products with its more
recent registrations SLURPEE SPLITZ-O for gum, CANDEE
SLURPEE for candy, SLURPEE FREEZER POPS for frozen
confections, and SLURPEE SPORTS for beverage containers,

5 Applicant accuses opposer of filing for this mark “six months
after the date of publication” of his mark in the Official
Gazette. Brief at 11 (emphasis omitted). However, opposer’s
underlying application was filed on August 10, 2001, more than
five months before applicant had even filed his application.
Opposition No. 91154687
29
namely plastic bottles sold empty. While opposer has never
offered a pet food product under the SLURPEE mark, (Wilkins
dep. at 50), its stores sell significant quantities of pet
food and cat litter (Wilkins dep. at 48). Opposer has
offered evidence that shows that beverage containers for
humans and bowls for pets are marketed under the same mark
or slogan. See Olsen Ex. 23 (LIFE IS GOOD mug and pet
bowl); Ex. 25 (SIGNATURE mug and pet bowl); Ex. 26 (OUR NAME
IS MUD dog food bowl and mug); Ex. 28 (BIG SKY CANINE dog
food bowl and mug); Ex. 29 (KASEY KAHNE pet bowl and mug);
and Ex. 31 (TROJANS (USC) mug and dog bowl). Opposer also
included some registrations to show that there is a
relationship between pet bowls and mugs, cups, or glasses.
See Registration Nos. 2683137, 2915536, 3252132, and
3259041.6 In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1786 (TTAB 1993).
We add that opposer’s expert, Mr. Mantis, testified
that: “Yes, indeed, there’s likelihood of confusion. At
least 19 percent of our survey respondents demonstrate

6 Opposer’s reference to applications and expired registrations
are not entitled to any weight. Glamorene Products Corp. v. Earl
Grissmer Co., Inc., 203 USPQ 1090, 1092 n.5 (TTAB 1979) (“The
filing of a notice of reliance upon third-party applications is a
futile act because copies of those applications or the
publication thereof in the Official Gazette is evidence only of
the filing of the applications and nothing else”) and Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10
USPQ2d 1307, 1309 (Fed. Cir. 1989)(“[A] cancelled registration
does not provide constructive notice of anything”).
Opposition No. 91154687
30
confusion.” Mantis dep. at 38. The survey requested
respondents to view the term SLURP-EZE on a card and it
asked them what company or companies makes or puts out dog
bowls or pet bowls with the name on the card.7 While the
survey sample was small (162 respondents), it is still
entitled to some weight. In re Spirits International, N.V.,
86 USPQ2d 1078, 1089 (TTAB 2008) (“[W]here as here, the
number of participants is rather small (231), the survey
provides limited information about consumer views”).
While this evidence is not extensive, it, at least,
suggests that applicant’s pet bowls and opposer’s soft
drinks, beverage containers, and other goods are related in
the mind of the consuming public as to the origin of the
goods. Compare Wechsler, 83 USPQ2d at 1724 (“[T]here is no
evidence in the record that any companies use the same
trademarks for products for human consumption and products
for animal consumption or for accessories for animals”) with
Recot, 54 USPQ2d at 1898 (“The Board erred when it refused
to consider the lay evidence that several large companies
produce and sell both pet and human food in deciding whether
a consumer would reasonably believe that FIDO LAY dog treats
originated from the same source as FRITO-LAY human snacks”).

7 See also Mantis Ex. 19 at 8 (“Based on the results of this
study, it is my opinion that the concurrent use of the trademark
SLURPEE by 7-Eleven for beverages and other products and the mark
SLURP-EZE for a pet bowl product is likely to cause confusion”).
Opposition No. 91154687
31
Regarding channels of trade, we begin by noting that
there are no limits in the channels of trade in the
identification of goods and, therefore, we must presume that
the goods move through all the normal channels of trade for
those goods. Morton-Norwich Products, Inc. v. N.
Siperstein, Inc., 222 USPQ 735, 736 (TTAB 1984) (“Since
there is no limitation in applicant's identification of
goods, we must presume that applicant's paints move in all
channels of trade that would be normal for such goods, and
that the goods would be purchased by all potential
customers”). Therefore, we cannot accept applicant’s
argument (Brief at 12-13) that “opposer controls the only
channel of trade where a customer would likely be confused
under these circumstances – their own stores… Opposer simply
does not have to stock Applicant’s pet bowls.” There are no
limits to opposer’s channels of trade in its identification
of goods, and we do not limit opposer’s goods to those that
are sold only in its stores. We must assume that its goods
are sold in other stores where applicant’s bowls can also be
sold.
Opposer has included evidence that retailers do sell
both food items as well as pet bowls. Olsen Exhibits 21 and
22. See also Olsen Exhibits 35 and 36 (other pet products
and food items). Opposer itself sells a wide variety of
human and pet food. We do add that the fact that products
Opposition No. 91154687
32
are sold in the same stores does not necessarily demonstrate
that the goods are related even if the general channels of
trade may overlap. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) ("A
wide variety of products, not only from different
manufacturers within an industry but also from diverse
industries, have been brought together in the modern
supermarket for the convenience of the consumer. The mere
existence of such an environment should not foreclose
further inquiry into the likelihood of confusion arising
from the use of similar marks on any goods so displayed”).
But here, the evidence supports the conclusion that there
would be at least some similarity in the channels of trade.
We add that the purchasers would overlap in this case
inasmuch as pet owners who were interested in a pet bowl
would also include individuals who were interested in
purchasing opposer’s soft drinks, T-shirts, plastic beverage
containers, and other promotional items associated with its
SLURPEE and SLURP AND GULP drinks.
Finally, applicant argues that “the complete absence of
any actual confusion by any actual human being is probative
and telling.” Brief at 16. While there is no evidence of
actual confusion, we cannot give this factor much weight.
We have little evidence of applicant’s actual use and we
note that his application was based on an intent to use.
Opposition No. 91154687
33
See also Applicant’s Supplemental Response to Opposer’s
First Set of Interrogatories to Applicant, p.3 (“While
products bearing the mark (broadest products) have been
displayed at pet product industry shows…, Applicant has not
as yet sold branded products”). It would be surprising if
there was evidence of actual confusion under these
circumstances. Of course, the question is whether there is
a likelihood of confusion, not actual confusion. Majestic
Distilling, 65 USPQ2d at 1205 (“A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual
confusion carries little weight”).
In this case, applicant has chosen a trademark that is
virtually the same as opposer’s well-known mark SLURPEE.
Opposer has used and registered the mark for a variety of
consumer products most notably soft drinks. The evidence
shows that the term SLURPEE is widely recognized as a mark
associated with opposer. While applicant’s pet bowls are
different than opposer’s soft drinks, T-Shirts, and other
items, our case law requires that we must resolve doubts in
registrant’s favor. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179
USPQ 729, 729-30 (CCPA 1973); In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Opposition No. 91154687
34
Furthermore, the Federal Circuit and its predecessor have
held that “there is no excuse for even approaching the well-
known trademark of a competitor and that all doubt as to
whether confusion, mistake, or deception is likely is to be
resolved against the newcomer, especially where the
established mark is one which is famous.” Nina Ricci
S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12
USPQ2d 1901, 1904 (Fed. Cir. 1989), quoting, Planter's Nut &
Chocolate Co. v. Crown Nut Co., Inc., 305 F.2d 916, 134 USPQ
504, 511 (CCPA 1962) (internal punctuation marks omitted).
Opposer’s evidence supports the conclusion that the goods of
the parties are at least associated in some way so that
consumers are likely to assume that their sources are
related.
Under these circumstances, we hold that applicant’s
mark SLURP-EZE when used on cat bowls, dog bowls, and ferret
bowls, would be likely to cause confusion in view of
opposer’s registered SLURPEE and various SLURP marks for the
identified goods.
Decision: The opposition is sustained and registration
to applicant of his mark is refused.