Ahold Licensing SAv.Premium Nutritional Products, Inc.

Trademark Trial and Appeal Board

Nov 7, 2011

No. 91180170 (T.T.A.B. Nov. 7, 2011)

Oral Hearing: Mailed:
August 25, 2011 November 7, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Ahold Licensing SA

v.

Premium Nutritional Products, Inc.
_____

Opposition No. 91180170
to application Serial No. 77022302
_____

Harvey Freedenberg of McNees, Wallace & Nurick LLC for Ahold
Licensing SA.

Cheryl Burbach of Hovey Williams LLP for Premium Nutritional
Products, Inc.
______

Before Grendel, Mermelstein and Bergsman,1
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Premium Nutritional Products, Inc. (“applicant”) filed
an intent-to-use application for the mark NATURE’S PROMISE,
in standard character form, for “food for caged birds, pet
food for small mammals, hay,” in Class 31.
Ahold Licensing SA (“opposer”) opposed the registration
of applicants’ mark on the ground of likelihood of confusion
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.

1 Judge Bergsman has been substituted for Judge Walters, who
participated in the August 25, 2011 hearing but who has since
retired from government service.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91180170
2
§1052(d).2 Specifically, opposer alleged ownership and
prior use of registered trademarks for NATURE’S PROMISE for
a wide variety of food products and a grocery store
department featuring natural and organic foods and that
applicant’s mark, if used in connection with the goods
identified in the application, so resembles opposer’s marks
for food products and a grocery store department featuring
natural and organic foods as to be likely to cause
confusion. For example, opposer pleaded ownership of, inter
alia, the following registrations for the mark NATURE’S
PROMISE, in standard character form:
1. Registration No. 3136604 for the following
products:3
Milk, cream, half-and-half, soy milk,
eggs, yogurt, butter, peanut butter and
other nut butters, fruit preserves,
applesauce, frozen berries, frozen
vegetables, canned vegetables, canned
fish, frozen fish, frozen entrees
consisting primarily of meat or
vegetables, vegetable-based snack chips,
soup broth, in Class 29;

Tea, frozen pizza, cookies, crackers,
bread, salsa, mayonnaise, salad
dressings, breakfast cereals, granola
bars, popped popcorn, corn chips, maple
syrup, honey, pancake mix, frozen
waffles, pasta, pasta sauce, frozen
entrees consisting primarily of pasta,
in Class 30;

2 Opposer further asserted a dilution claim under Section 43 of
the Trademark Act but did not pursue the claim at trial or
reference it in its brief. Accordingly, the dilution claim is
dismissed. Cf. Trademark Rule 2.106(c).
3 Issued August 29, 2006.
Opposition No. 91180170
3
Fresh vegetables, in Class 31; and

Fruit juice, in Class 32;

2. Registration No. 3297769 for “retail store
services, namely, a grocery store department featuring
natural and organic foods,” in Class 35;4
3. Registration No. 3497318 for the following
products:5
Applesauce; cream cheese; luncheon
meats; meat; olive oil; processed meat;
tofu; whipped topping, in Class 29;

Dumplings; flour; honey; maple syrup;
pasta; popped popcorn; pretzels;
puddings; rice; spaghetti sauce; sugar;
tea; vinegar; waffles, in Class 30; and

Soft drinks, in Class 32; and

4. Registration No. 3703391 for “Baby foods,” in
Class 5.6
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
Preliminary Issues
A. Applicant’s objection to the discovery deposition
of David Morris, applicant’s President and CEO.

During its testimony period, opposer filed a copy of
the discovery deposition of David R. Morris, applicant’s
President and CEO, with accompanying exhibits. Opposer

4 Issued September 25, 2007.
5 Issued January 15, 2008.
6 Issued October 27, 2009.
Opposition No. 91180170
4
filed the discovery deposition with a cover letter, “via
first class mail,” identifying the attachment as the
deposition with the designation “c:[sic] Cheryl L. Burbach,
Esquire” at the bottom of the letter.7 In its brief,
applicant objected to the introduction of the Morris
deposition on the ground that it had not been submitted
through a notice of reliance and, therefore, applicant did
not know why it was filed.
In fact, until [applicant] had received
Opposer’s Trial Brief, its counsel was
completely unaware that Opposer had
‘filed’ the Non-Confidential and
Confidential deposition transcripts on
June 29, 2010. [Applicant] did not
stipulate to that filing. That filing
occurred with out any notice to
[applicant] from Opposer. … As such, it
was just put on notice upon receipt of
Opposer’s trial brief.”8

In its reply brief, opposer argued that it complied with the
requirements of Trademark Rule 2.120(j)(3).
Trademark Rule 2.120(j)(1) provides that the discovery
deposition of an officer of a party may be introduced into
evidence by the adverse party. A discovery deposition, or
any part thereof, may be offered into evidence with a notice

7 Ms. Burbach’s name appears as counsel on many of applicant’s
papers filed in this matter, and service copies of many of
opposer’s filings have been addressed to her.
8 Applicant’s Brief, pp. 20-21. Applicant also argued that it
did not receive an electronic filing receipt from ESTTA, the
Board’s filing system, when opposer filed the deposition. ESTTA
does not generate electronic filing receipts for the opposing
party, and in any event, the Morris deposition was not filed
electronically.
Opposition No. 91180170
5
of reliance. Trademark Rule 2.120(j)(3)(i). While a notice
of reliance under 2.120(j)(3)(i) need not indicate the
relevance of the deposition, or of the parts relied on, it
is preferable that it does indicate the relevant parts.9
TBMP §704.09 (3rd ed. 2011), citing Sports Authority
Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787
(TTAB 2001) (noting that it is more effective to file only
those portions of a discovery deposition that are relevant
and explain their relevancy in the notice of reliance). In
order to avoid creating an overly large record of irrelevant
evidence, parties, should where appropriate, file only those
portions of a discovery deposition transcript that are
relevant to the pleaded claims.10 TBMP §704.09.
Opposer’s failure to include a notice of reliance is a
procedural objection that should have been raised promptly,
preferably by a motion to strike, since it was a defect that
could have been cured. TBMP §707.02(b). If the objection
is one that could have been cured promptly, and was not
timely raised, the objection is waived. Id. Because
opposer’s failure to include a notice of reliance could have
been cured had applicant promptly raised an objection,

9 We note, however, that a notice of reliance under Trademark
Rule 2.122(e) (“Printed publications and official records”) must,
inter alia, “specify the printed publication ... or the official
record and the pages to be read[ and] indicate generally the
relevance of the material being offered....”
10 By contrast, transcripts of trial testimony must be filed in
their entirety.
Opposition No. 91180170
6
applicant’s objection in its brief is not timely, and its
objection is deemed waived. In this regard, if applicant
truly had no idea why opposer sent a copy of the Morris
30(b)(6) discovery deposition during opposer’s testimony
period to applicant, it was incumbent upon applicant to
inquire. Thus, the requirement to timely make a procedural
objection removes the opportunity for the defending party to
claim studied ignorance.11
In view of the foregoing, applicant’s objection to the
introduction of the discovery deposition of David Morris is
overruled.
Although we have overruled applicant’s objection, we
must comment on opposer’s failure to point out what portions
of the David Morris discovery deposition opposer thought was
relevant. The David Morris discovery deposition is 224
pages with 15 exhibits, including insights such as “people
who are buying our products are also buying groceries.”12
In its brief, opposer referenced testimony from the
deposition on pages 20, 39, 49, 124, 128-129, 132, 189 and
213 and Exhibit 11. Although opposer relied on only 9 pages
of testimony and one exhibit, it filed the entire transcript

11 It appears that applicant in fact received a copy of the Morris
deposition consistent with the notation on opposer’s cover
letter. Any potential objection relating to the method of
service is also procedural in nature and if timely raised could
have been corrected. Accordingly, any objection to the means of
the service of the Morris deposition is waived.
12 Morris Discovery Dep., p. 213.
Opposition No. 91180170
7
with all the exhibits apparently in the hope that the Board
will wade through it and find something probative. Because
opposer saw fit to reference only 9 pages of testimony from
the Morris discovery deposition in its brief, we only
considered those portions of the discovery deposition
referenced by opposer.
B. Over-designation of confidential testimony.
All the deposition testimony introduced into evidence
was designated confidential and filed under seal. Suffice
it to say, most of the testimony was not confidential. For
example, in the third-party depositions, the names of the
witnesses, their educational and work experience, and the
third-party uses of the marks were deemed confidential.
Oppositions before the Board are public proceedings and the
improper designation of materials as confidential thwarts
the right of public access to testimony and evidence that
form the basis of our decision. It is more difficult to
make findings of fact, apply the facts to the law, and write
decisions that make sense when the facts in evidence may not
be discussed. The Board needs to be able to discuss the
evidence of record, unless there is an overriding need for
confidentiality, so that the parties and a reviewing court
will know the basis of the Board's decision. Therefore, in
this opinion, we will treat as confidential only testimony
and evidence we deem to have been appropriately designated
Opposition No. 91180170
8
as confidential. See Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1402-1403 (TTAB 2010). We will not
be bound by all of the unnecessary confidential designations
made by the parties.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
testimony and evidence identified below.
A. Opposer’s testimony and evidence.
1. Notice of reliance on opposer’s pleaded
registrations printed from the electronic records of the
USPTO showing the current status of and title to the
registrations;
2. Discovery deposition of David Morris, applicant’s
President and CEO, with one exhibit. See the discussion
supra; and
3. Testimony deposition of Erik Keptner, Senior Vice
President of Marketing and Consumer Insights for Ahold USA,
a company related to opposer,13 with attached exhibits.
B. Applicant’s testimony and evidence.
1. Applicant’s notice of reliance on the following
items:

13 Keptner Dep., p. 8. Mr. Keptner did not explain the precise
relationship between opposer and Ahold USA.
Opposition No. 91180170
9
a. Opposer’s responses to applicant’s
interrogatories;
b. Photocopy of a package of one of opposer’s
NATURE’S PROMISE products;
c. Some documents from the prosecution of one of
opposer’s registrations;
d. An advertisement from one of opposer’s
grocery stores; and
e. Copies of four third-party registrations for
NATURE’S PROMISE or variations thereof.14
2. Testimony deposition of David Morris with attached
exhibits;
3. Testimony deposition of Paul Otim, a purported
third-party user of the mark NATURE’S PROMISE, with attached
exhibits;
4. Testimony deposition of Derrik Kassebaum, a
purported third-party user of the mark NATURE’S PROMISE,
with attached exhibits; and
5. Testimony deposition of George Atkinson, the
Director of Marketing for Zelenka Nursery, Inc., a purported
third-party user of the mark NATURE’S PROMISE, with attached
exhibits.

14 Applicant also submitted a copy of an application for NATURAL
PROMISE printed from the USPTO electronic database. A pending
application is not competent to prove anything other than the
fact that it was filed. Merritt Foods Co. v. Americana
Submarine, 209 USPQ 591, 594 (TTAB 1980).
Opposition No. 91180170
10
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982).
Priority
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks and the products and services covered by the
registrations. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In
re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s marks.

This du Pont factor requires us to consider the fame of
opposer’s mark. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
Opposition No. 91180170
11
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1305-1306 and 1309. Although raw numbers of product
sales and advertising expenses may have sufficed in the past
to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1309.
Finally, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
Opposition No. 91180170
12
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
NATURE’S PROMISE is a corporate brand used to identify
a wide variety of natural and organic products sold by
opposer. NATURE’S PROMISE is used to identify approximately
550 different products. Because opposer’s sales figures
have been designated as confidential, we can only refer to
them in general terms but they are substantial.15
In 2007, opposer compiled a brand awareness study
“based on our customer frequent shopper card data on the
customer usage of various corporate brand products.”16 The
study “indicates that a very significant portion of
[opposer’s] customer base are users of Nature’s Promise or
purchasers of Nature’s Promise.”17
In 2008, opposer authorized a “consumer research study
on awareness and attitudes of [opposer’s] customers towards
private label or corporate brands.”18 According to the
study, “71 percent of consumers that [opposer] surveyed were

15 Keptner Dep., pp. 8-9.
16 Keptner Dep., p. 22 and Exhibit 9.
17 Keptner Dep., p. 23.
18 Keptner Dep., p. 25 and Exhibit 10.
Opposition No. 91180170
13
aware of the Nature’s Promise brand” suggesting a “very high
awareness of the Nature’s Promise brand.”19
While opposer’s NATURAL PROMISE product line has
achieved commercial success and brand awareness among
opposer’s customers, the evidence of record is not
sufficient to establish that opposer’s NATURAL PROMISE mark
is famous for purposes of likelihood of confusion. For
example, a study demonstrating that a significant percentage
of opposer’s own customers recognize opposer’s corporate
brand is derived from such a narrow universe of consumers
that it is not sufficient to establish the fame of the mark
especially because there is no evidence regarding opposer’s
market share and the renown of the mark among all consumers
in the market for organic and natural foods. Furthermore,
opposer did not introduce any evidence recognizing the
renown of the NATURE’S PROMISE mark in any media. Finally,
we note that opposer argues that “the consuming public
consists of consumers exposed to [opposer’s] advertising.
As a result of [opposer’s] advertising efforts and
extensive use of its mark, [opposer’s] NATURE’S PROMISE mark
is its most recognized brand.”20 The problem with this
argument is that the consuming public is not limited to
consumers exposed to opposer’s advertising and opposer did

19 Keptner Dep., p. 26.
20 Opposer’s Brief, p. 6.
Opposition No. 91180170
14
not introduce testimony or evidence regarding the extent of
its advertising, including its advertising expenditures.
Moreover, as indicated above, opposer did not introduce any
evidence regarding its market share and, therefore, we
cannot draw any conclusions regarding the renown of the mark
even if it is opposer’s “most recognized brand.”
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The marks are identical.

C. The similarity or dissimilarity and nature of the
products described in the application and
registrations, the likely-to-continue trade channels
and classes of consumers.

Applicant is seeking to register its NATURAL PROMISE
mark for, inter alia, pet food for small mammals.21
“Mammals” are “any vertebrate of the class Mammalia, having
the body more or less covered with hair, nourishing the
young with milk from the mammary glands, and, with the
exception of the egg-laying monotremes [i.e., echidnas and
the platypus], giving birth to live young.”22 Dogs and cats

21 It is sufficient for a finding of likelihood of confusion if
the relatedness is established for any item encompassed by the
identification of goods or services in the application. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981).
22 American Heritage Dictionary of the English Language
(Unabridged) p. 1165 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91180170
15
are mammals.23 There is no testimony or evidence that the
term “small mammals” is a term of art or has any special
meaning in the pet food industry. Accordingly, the term
“small mammals” in the applicant’s description of goods
could include cats and dogs.
Opposer, on the other hand, has registered the mark
NATURE’S PROMISE for natural and organic food and a grocery
store department featuring natural and organic foods.
Applicant argues that the goods of the parties are
different: “Opposer’s goods … are solely for human
consumption, while [applicant’s] goods are for consumption
by a very narrow category of animals, including rabbits,
hamsters, chinchillas and other small mammals,”24 “and not
for traditional pets like cats and dogs.”25 Applicant
further contends that “Opposer’s natural or organic human
food products marked with NATURE’S PROMISE are sold only in
its own stores in segmented sections of the store marked
with the NATURE’S PROMISE trademark.”26
With respect to applicant’s argument, this proceeding
concerns applicant’s right to registration of a trademark,

23 Encyclopedia Britannica (Academic Edition) (2011). The Board
may also take judicial notice of standard reference works.
B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727,
6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (encyclopedias may be
consulted); In re Broyhill Furniture Industries Inc., 60 USPQ2d
1511, 1514 n.4 (TTAB 2001); Sprague Electric Co. v. Electrical
Utilities Co., 209 USPQ 88, 96 n.3 (TTAB 1980).
24 Applicant’s Brief, p. 11.
25 Applicant’s Brief, p. 12.
26 Applicant’s Brief, p. 13.
Opposition No. 91180170
16
not applicant’s actual trademark use. Because the scope of
the registration applicant seeks is defined by its
application (and not by its actual use) it is the
application (and not actual use) that we must look to in
determining applicant’s right to register:
The authority is legion that the
question of registrability of an
applicant's mark must be decided on the
basis of the identification of goods set
forth in the application regardless of
what the record may reveal as to the
particular nature of an applicant's
goods, the particular channels of trade
or the class of purchasers to which
sales of the goods are directed.

Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Likewise, in
considering the scope of opposer’s registrations, we look to
the description of goods and services in the registrations,
and not to extrinsic evidence about opposer’s actual goods
and services, customers, or channels of trade. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
Accordingly, in analyzing the similarity of the goods and
services, channels of trade and classes of consumers, there
are no restrictions or limitations in the descriptions of
goods and services in the application or opposer's
registrations and, therefore, applicant’s arguments
regarding the how the marks are actually used cannot be
given any consideration.
Opposition No. 91180170
17
With that premise in mind, we note that because
opposer’s food products are on their face different from
applicant’s pet food, it is incumbent upon opposer to show
that the goods of the parties are related in some manner
and/or the conditions surrounding the marketing of the
products are such that they would be likely to be
encountered by the same person under circumstances that
could give rise (because of the similarity of the marks) to
the mistaken belief that the products originate from or are
in some way associated with the same producer. Autac Inc.
v. Walco Systems, Inc., 195 USPQ 11, 15 (TTAB 1977). In
this case, the testimony and evidence establishes that the
channels of trade and classes of consumers are the same, at
least in part. That testimony and evidence is summarized
below.
Opposer uses NATURE’S PROMISE to identify “a broad
assortment of natural and organic products.”27 Opposer
sells pet food, but not under the NATURE’S PROMISE mark.
Opposer sells pet food through national brands or its
COMPANION house or corporate brand.28 Opposer’s COMPANION
pet food generates substantial revenues.29 Opposer competes
with pet food stores.30

27 Keptner Dep., p. 8.
28 Keptner Dep., p. 28.
29 Keptner Dep., p. 28.
30 Keptner Dep., pp. 29-30.
Opposition No. 91180170
18
Applicant sells its NATURE’S PROMISE pet food through
independent pet stores, pet superstores, veterinarians, and
mail order and internet sales through third-parties.31
Applicant, through Mr. Morris, testified that it competes
with mass merchandisers for the sale of pet food32 because
mass merchandisers, such as Wal-Mart and Target, sell as
much as 60% of all pet food.33 The testimony and evidence
establishes that pet food is sold through grocery stores,
mass merchandisers, pet stores, pet superstores,
veterinarians, and mail order and internet sales. Since
there are no restrictions as to the channels of trade in
applicant’s description of goods, we must presume that
applicant’s pet foods move in all channels of trade normal
for those goods, including those indicated above. See In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Finally, pet owners who purchase pet food also purchase
groceries. “I would think that people who are buying
[applicant’s] products are also buying groceries.”34
Although, opposer introduced testimony and evidence
regarding the channels of trade and classes of consumers,
there was no testimony or evidence regarding the similarity
or dissimilarity of the goods and services. The fact that

31 Morris Discovery Dep., p. 132; Morris Testimony Dep., pp. 19
and 22.
32 Morris Testimony Dep., pp. 93-94.
33 Morris Testimony Dep., pp. 50-51, and 95 and Exhibit 20.
34 Morris Discovery Dep., p. 213.
Opposition No. 91180170
19
the particular products are sold through the same channels
of trade to the same classes of consumers does not, ipso
facto, establish that such products are related. Autac Inc.
v. Walco Systems, Inc., 195 USPQ at 15. See also Canada Dry
Corp. v. American Home Products Corp., 468 F.2d 207, 175
USPQ 557, 557 (CCPA 1972) (despite fact that laundry
detergent and soft drinks are sold in the same channels of
trade to the same classes of consumers, they are
not related products). In this regard, we note that human
food and pet food are not competitive or complementary
products. Based on the record before us, the only
similarity between pet food and human food is that they are
both sold in grocery stores. This contention for finding
that the goods are related has been rejected by the Court of
Customs and Patent Appeals, the predecessor of our primary
reviewing court.
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 customer. 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. See: Canada Dry Corp. v.
American Home Products Corp., 468 F, 2d
207, 175 USPQ 557 (CCPA, 1972). The
means of distribution and sale, although
certainly relevant, are areas of
peripheral inquiry. The fundamental
inquiry mandated by §2(d) goes to the
cumulative effect of differences in the
Opposition No. 91180170
20
essential characteristics of the goods
and differences in the marks.

Federated Foods, Inc. v. Fort Howard Paper Company, 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Pet food and human food are specifically different
items of merchandise, a fact which would not be lost on
average purchasers; they are different in appearance,
general purpose and manner of use. While the products are
sold in the same stores, this fact is not conclusive because
as discussed above, supermarkets carry a vast assortment of
goods.
Regardless, opposer contends that “it remains relevant
that human and pet foods can and do emanate from the same
source.”35
Other courts have decided there exists a
likelihood of confusion between marks
for human and pet foods. See Recot,
Inc. v. Becton, [214 F.3d 1322] 54
USPQ2d 1894, 1898 (Fed. Cir. 2000);
[sic] In Recot [sic] the court observed
“several large companies produce and
sell both human and pet food.” Id. The
court in Recot found such evidence,
which the Board had ignored, extremely
pertinent to the issue of whether
consumers might believe that a trademark
used on human food might be licensed for
use on pet foods, or whether that
trademark owner might produce or sponsor
pet foods under its mark. Id.36

35 Opposer’s Brief, p. 7.
36 Opposer’s Brief, p. 7. In Recot, the court noted that
witnesses of both parties testified that several companies
produce and sell both pet and human foods. 54 USPQ2d at 1898.
Opposition No. 91180170
21
However, unlike the case in Recot, the evidence in this case
does not support opposer’s argument.37 With exception of
opposer itself, there is no evidence that other companies
produce and sell both human and pet food. In fact, opposer
is the only company identified in this record that produces
and sells both human and pet food and, in that regard,
opposer’s pet food has a different trademark (i.e.,
COMPANION).
Moreover, as noted by the Court of Appeals in Federated
Foods, the “modern supermarket” sells “[a] wide variety of
products” from many producers and industries. Absent
evidence, there is no reason to assume that opposer’s
customers would believe that its NATURE’S PROMISE organic
and natural foods and its COMPANION pet food – different in
kind and sold under different marks – would share a common
source merely because they are sold under the same roof.
Here, opposer has produced no evidence that opposer’s
customers are aware that COMPANION pet foods come from the
same source as opposer’s NATURE’S PROMISE (human) food and
related services. Thus, while opposer’s own sale of
COMPANION pet food makes opposer a competitor of applicant,
that fact provides little or no support for the argument
that relevant consumers would be confused as to the source

37 We must decide this case based on the facts placed in evidence
by the parties. Findings in other cases based on other records
do not establish those factual matters in this proceeding.
Opposition No. 91180170
22
of the goods and services at issue, sold here under a
different mark.
Another reason opposer’s reliance on Recot is misplaced
is because the court found that Recot’s FRITO-LAY mark was
famous and that the Board erred when it limited the weight
accorded to the fame of the FRITO-LAY mark. 54 USPQ2d at
1897. The court reasoned that the fame of a mark may also
affect the likelihood that consumers will be confused when
purchasing products even when they are not closely related.
Id. As discussed above, opposer failed to prove that its
mark was famous.
While opposer failed to introduce any testimony or
evidence to show that pet food and human food are related
for purposes of likelihood of confusion, it likewise failed
to introduce any testimony or evidence regarding the
similarity or dissimilarity of pet food and a grocery store
department featuring natural and organic foods. For
example, there is no evidence that such a department in a
grocery store would normally feature pet food or that pet
food manufacturers promote their products as being natural
and/or organic such that they might be found within a
department within a grocery store featuring natural or
organic products. Without any evidence supporting the
relationship between pet foods and a department in a grocery
store featuring natural and organic food, we cannot find
Opposition No. 91180170
23
that the goods and services are related merely because they
may both be found within a grocery store.
In view of the foregoing, we find that the goods and
services at issue move in the same channels of trade and are
sold to the same classes of consumers, there is no evidence
demonstrating the goods and services are related.
D. The conditions under which and buyers to whom sales are
made, i.e., “impulse” vs. careful, sophisticated
purchasing.

Applicant contends that its customers are focused on
the nutritional quality of their pet food. “They understand
the ingredients or the nutritional requirements of their
pets.”38 By the same token, we assume that consumers for
organic and natural foods are focused on the nutritional
quality of their own food. However, applicant’s description
of goods is pet food for small mammals and it is not limited
to an expensive or highly-specialized product line and,
thus, average consumers may include those products among the
ordinary items found on their weekly shopping list.
Likewise, there is nothing inherent in opposer’s products
and services that would demand that consumers exercise a
heightened degree of care although they may be more
concerned about their health than the average consumer. We
must presume that both applicant’s goods and opposer’s goods

38 Morris Discovery Dep., p. 129. See also Morris Testimony Dep.,
p. 24.
Opposition No. 91180170
24
and services would be sold to all nature of customers. In
this regard, there is no evidence in this record
establishing that the customers for pet food and organic and
natural foods inherently exercise a high degree of care when
making their purchasing decisions. See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence
that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the
absence of any such restrictions in the application or
registration).
E. Instances of actual confusion.
Opposer first began using the mark NATURE’S PROMISE in
May 2004.39 Opposer’s NATURE’S PROMISE is a corporate
brand, or private label, for a broad assortment of natural
and organic products.40 The products are sold through
opposer’s grocery stores (e.g., GIANT, STOP & SHOP, PEAPOD
and TOPS MARKET).41
Applicant first began using its NATURE’S PROMISE mark
for pet foods in February, 2007. As indicated above,
applicant sells its NATURE’S PROMISE pet food through
independent pet stores, pet superstores, veterinarians, mail

39 Keptner Dep., p. 9.
40 Keptner Dep., pp. 8 and 20.
41 Opposer’s response to Interrogatory No. 10.
Opposition No. 91180170
25
order and over the internet through applicant’s
distributors.42
Applicant argues that neither applicant nor opposer are
aware of any reported instances of confusion. The absence
of any reported instances of confusion is meaningful only if
the record indicates appreciable and continuous use by
applicant of its mark for a significant period of time in
the same markets as those served by opposer under its marks.
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). In other words, for the absence of actual
confusion to be probative, there must have been a reasonable
opportunity for confusion to have occurred. Barbara’s
Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007)
(the probative value of the absence of actual confusion
depends upon there being a significant opportunity for
actual confusion to have occurred); Red Carpet Corp. v.
Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406-
1407 (TTAB 1988); Central Soya Co., Inc. v. North American
Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of
actual confusion over a reasonable period of time might well
suggest that the likelihood of confusion is only a remote
possibility with little probability of occurring”). The
record shows that applicant’s pet foods actually move in
different markets than those served by opposer under its

42 Morris Discovery Dep., p. 132; Morris Testimony Dep., p. 19.
Opposition No. 91180170
26
marks, and the period of the parties’ concurrent use of the
mark has been relatively brief. Under the circumstances, we
find that there has not been a significant opportunity for
actual confusion to have occurred, and so we give the
absence of such confusion little weight.
F. Balancing the factors.
Although the marks are identical and the goods and
services move in same channels of trade and are sold to the
same classes of consumers, there is simply no evidence that
consumers would expect that pet food and organic or natural
food and a department in a grocery store featuring organic
or natural food are related. In other words, opposer has
failed to meet its burden of proving that consumers would
mistakenly believe that pet food and organic or natural food
emanate from the same source because of the similarity of
the marks. Accordingly, applicant’s registration of the
mark NATURE’S PROMSISE for “food for caged birds, pet food
for small mammals, hay” is not likely to cause confusion
with opposer’s mark NATURE’S PROMISE for organic and natural
food and “a grocery store department featuring natural and
organic foods.”
In reaching this conclusion, we have carefully
considered all of the evidence pertaining to the relevant du
Pont factors, as well as all of the parties’ arguments with
Opposition No. 91180170
27
respect thereto (including any evidence and arguments not
specifically discussed in this opinion).
Decision: The opposition is dismissed and a notice of
allowance will be issued in due course.