Bazzini, LLCDownload PDFTrademark Trial and Appeal BoardSep 25, 2017No. 86511110 (T.T.A.B. Sep. 25, 2017) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 25, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bazzini, LLC _____ Serial No. 86511110 _____ Holly Pekowsky of Amster, Rothstein & Ebenstein LLP for Bazzini, LLC. Patty Evanko, Trademark Examining Attorney, Law Office 119 (Brett J. Golden, Managing Attorney). _____ Before Taylor, Wolfson, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Bazzini, LLC (“Applicant”) filed an application1 for registration on the Principal Register of the mark FOCUS SNACKS in standard characters for the following goods: Dried fruit-and nut-based bars, in International Class 29; Greek yogurt covered all natural fruit pieces, in International Class 30. 1 Application Serial No. 86511110 was filed on January 22, 2015 on the basis of Applicant’s bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). Applicant has disclaimed the exclusive right to use SNACKS apart from the mark as shown. Serial No. 86511110 2 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection with Applicant’s goods, so resembles the following registered standard character marks as to be likely to cause confusion, or to cause mistake, or to deceive: FOCUS FORMULA for: Dried fruit and vegetables; Fruit-based organic food bars, also containing seeds, nuts, vegetables, and grains; Nut and seed- based snack bars; Processed vegetables and fruits, in International Class 29.2 FOCUS FOR OPTIMAL CLARITY UNDER STRESS for: Organic nut and seed-based snack bars, in International Class 29.3 The cited marks are registered in the names of different owners. When the refusal was made final, Applicant appealed to this Board and requested reconsideration. The Examining Attorney denied the request for reconsideration, and this appeal proceeded. The case is fully briefed. 1. Evidentiary matter. Applicant attached to its reply brief three (3) pages of evidence that were not previously of record.4 That evidence is untimely and we have not considered it. 37 C.F.R. § 2.142(d);5 Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1207.01 (June 2017). 2 Reg. No. 4595339, issued September 2, 2014. 3 Reg. No. 4791543, issued August 11, 2015. 4 Applicant’s reply brief, 10 TTABVUE 7-9. 5 “Evidence should not be filed with the Board after the filing of a notice of appeal. If the appellant or the examining attorney desires to introduce additional evidence after an Serial No. 86511110 3 2. Refusal under Section 2(d). Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the issue of likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the Examining Attorney have also presented evidence and arguments regarding the strength of the cited marks and the number and nature of similar marks in use in the marketplace. We will confine our analysis to the issue of likelihood of confusion between Applicant’s mark and the standard character mark in Reg. No. 4595339. This mark is more similar to Applicant’s mark than the other cited mark. If likelihood of confusion is found with respect to this mark, it will be unnecessary to address the likelihood of confusion with respect to the other cited mark; and if we do not find likelihood of confusion with respect to this mark, we would be unlikely to find it with respect to the mark in Reg. No. 4791543. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). (a) The goods. We will first consider the similarity or dissimilarity of the goods as identified in the application and the cited registration. Stone Lion Capital Partners, LP v. Lion appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination.” Serial No. 86511110 4 Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s goods in International Class 29 are legally identical, in part, to Registrant’s goods. When we compare Applicant’s “dried fruit-[ ]based bars” to Registrant’s “fruit-based organic food bars …,” we note that Registrant’s goods include within their scope bars that are based on dried fruits; and that Applicant’s goods include within their scope bars that are organic. In addition, Applicant’s “nut- based bars” include within their scope Registrant’s “nut and seed-based snack bars.” To the extent that Applicant’s identification could be interpreted to mean bars that, individually, are based on both dried fruit and nuts, such bars are still within the scope of Registrant’s “fruit-based organic food bars, also containing … nuts …” With respect to Applicant’s goods in Class 30, which are yogurt-covered fruit pieces, we note that such goods are similar in nature to Registrant’s “dried fruit” with the addition of a yogurt covering. To show that such goods are commercially related, the Examining Attorney has submitted copies of ten (10) use-based, third- party registrations, each of which covers both dried fruit and yogurt-covered fruit.6 Third-party registrations which individually cover different goods and are based on use in commerce may serve to suggest that the listed goods are of types which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 6 Office Action of April 27, 2015 at 12-38. Serial No. 86511110 5 n.6 (TTAB 1988). We find this evidence sufficient to demonstrate that Applicant’s and Registrant’s respective goods are related. We need not find similarity as to each and every product listed in the application and registration. For purposes of our analysis, it is sufficient that relatedness be established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). With respect to both classes of Applicant’s goods, the du Pont factor of the similarity or dissimilarity of the goods weighs in favor of a finding of likelihood of confusion. (b) The marks. We next consider the similarity or dissimilarity of the marks, FOCUS SNACKS and FOCUS FORMULA, in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citing Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 U.S.P.Q.2d 1901, 1905 (T.T.A.B. 2007)). Moreover, marks must be considered in light of the fallibility of memory. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). Serial No. 86511110 6 The marks are similar in appearance, sound, and meaning to the extent that each includes the initial term FOCUS. The remaining words of the marks, SNACKS and FORMULA, respectively, are points of difference in appearance, sound, and meaning. We agree with the Examining Attorney’s contention that FOCUS is the dominant portion of each mark.7 SNACKS is a highly descriptive term8 that would apply, with equal descriptiveness, to the goods of either Applicant or Registrant. Similarly, FORMULA, in Registrant’s mark, merely suggests the recipe for the product.9 FORMULA would be suggestive with respect to many different food products, including those of Applicant. Therefore, neither SNACKS nor FORMULA is a term upon which customers would rely in order to determine the source of the goods. Turning to the commercial impressions created by the two marks, Applicant contends that they are very different: In Applicant’s mark, the commercial impression is light- hearted and indulgent, due to the use of the word “snacks” – as in, focus on snacks, focus on having a good time, since a snack is something which is eaten between regular meals, and therefore, is about being kind to yourself, allowing yourself to “break the rules” and have a nosh between formal meals. [Citation omitted.] 7 Examining Attorney’s brief, 9 TTABVUE 6-7. 8 See definition of “snack,” Applicant’s response of June 22, 2015 at 41, “a small amount of food eaten between meals.” See also uses of “snacks” and “snack food” in identifications of goods of third-party registrations, Office Action of April 27, 2015 at 12, 15, 18, 20, 23, 26, 28, 31-2, 34, and 37. We note that Applicant has appropriately disclaimed the exclusive right to use SNACKS apart from the mark as a whole. 9 Applicant’s brief at 12, 7 TTABVUE 13. Serial No. 86511110 7 By contrast, the commercial impression of the ‘339 Registration is full throttle FOCUS FORMULA – this is the recipe that will get your mind sharp and focused.10 This interpretation of the marks is somewhat forced, and is achieved only by injecting into Applicant’s mark the word “on,” which simply is not there. We find that Applicant’s mark creates the impression of “snacks associated with focus,” and that Registrant’s mark creates the impression of “formula associated with focus.” In other words, the impression conveyed by both marks is that the respective products are foods to help one focus. Overall, we find that the two marks are substantially similar in appearance, sound, and meaning and create very similar – though not identical – commercial impressions. Therefore, the du Pont factor of the similarity or dissimilarity of the marks favors a finding of likelihood of confusion. (c) Strength of Registrant’s mark. Applicant contends that the designation FOCUS is both inherently and commercially weak, and that Registrant’s mark is therefore entitled to a narrow scope of protection. Applicant argues that “‘focus’ is highly suggestive of a desirable state to be achieved by consuming food and beverages – i.e., becoming more alert and better able to maintain concentration.”11 Applicant contends that this is partly proven by a tagline on a package of Registrant’s product, which reads, “Your Energy Solution For The Sport Called Life!”12 10 Id. at 11-12, 7 TTABVUE 12-13. 11 Applicant’s brief at 4, 7 TTABVUE 5. 12 See Applicant’s response of August 2, 2016 at 19. Serial No. 86511110 8 Applicant has also submitted short excerpts of a few articles about foods that purportedly “sharpen focus [and] enhance memory, attention span, and brain function.”13 These excerpts lack most parts of the articles that presumably reveal which foods have this effect; however, the excerpts provided do not mention food bars or yogurt-covered fruit pieces.14 Although this evidence does indicate that some people believe that one’s focus can be improved by the foods one eats, it does not demonstrate with any specificity what this belief entails nor does it associate this belief with the goods of Applicant or Registrant.15 As further evidence of the suggestiveness of the term FOCUS, Applicant points to the Examining Attorney’s second cited registration, and has made of record copies of various third-party registrations of marks that include the term FOCUS, all of which are listed below:16 Mark Goods FOCUS FOR OPTIMAL CLARITY UNDER STRESS Organic nut and seed-based snack bars FOCUS-UP Food supplements, nutritional drinks and mixes 13 “ADD & ADHD Health Center: Brain Foods That Help You Concentrate Slideshow,” Applicant’s response of August 2, 2016 at 22-23; see also “6 Essential Foods for Boosting Your Work Focus,” id. at 26; “7 Foods That Can Help Boost Your On-the-Job Focus,” id. at 27-29. 14 Examples of foods that are mentioned are oatmeal, blueberries, and wild salmon. Id. at 26. 15 We have given little weight to the Google “hit lists” submitted by Applicant, as they consist of fragmentary information from which we can glean little clear information. See id. at 20-21, 24-25; and Applicant’s response of January 24, 2017 at 17-18, 21-22. 16 Applicant’s response of June 22, 2015 at 27-40; Applicant’s response of August 2, 2016 at 30-34. See also Office Action of March 9, 2017 at 3-14. Serial No. 86511110 9 EXTREME FOCUS Energy drinks FOCUS YOUR ENERGY Energy drinks FOCUS PLUS Coffee, tea, cocoa, food bars, beers, waters, beverages EXPLOSIVE FOCUS Energy drinks NINJA LIKE FOCUS Energy drinks FOCUS BLEND Coffee FOCUS Chewing gum REFOCUS Energy beverages containing green coffee extract, vitamins and minerals FOCUS ME Organic energy drinks and beverages FOCUS FUSION COCOA Cocoa-based beverages infused with herbs ARTISAN TO GO A UNIQUE FOCUS ON FLAVOR Prepared meals and entrees; salads, sandwiches, bakery goods, desserts Applicant has also submitted information regarding pending third-party applications for the following marks: Serial No. 86511110 10 Mark Goods FOCUS! MENTAL ENERGY! MENTAL PERFORMANCE! Energy shots GET FOCUSED! Burritos FUEL FOCUS FINISH Beers, waters, other beverages, energy shots FOCUS BAR Nutritional and dietary supplements formed as bars FARMER FOCUS Chicken, poultry FOCUS PLUS Fruit juice beverages, syrups Evidence of extensive registration and use by others of a term on the same or very similar goods can be “powerful” evidence of weakness. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The purpose of introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that they have been educated to distinguish between different marks on the basis of minute distinctions. Palm Bay Imps., 73 USPQ2d at 1694. However, registrations alone, without evidence of actual use, are not evidence that the marks therein are in use on a commercial scale17 or 17 At best, we may assume that use-based registrations issued only after their owners asserted to the USPTO that the marks were in use. Serial No. 86511110 11 that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nonetheless, third-party registrations can be used to show the sense in which a term is used in ordinary parlance and may show that a particular term has descriptive or suggestive significance as applied to certain goods or services. See Juice Generation, 115 USPQ2d at 1675; Institut Nat’l Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). The evidence relating to pending third-party applications is of very limited probative value, being evidence only of the fact that the applications were filed for the indicated marks. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699 (TTAB 1992). They are not evidence that the marks were ever actually used in the marketplace. Considering the few news items that suggest a connection between certain foods and improved “focus,” together with the third-party trademark filings, we find that Applicant’s evidence of the purported weakness of the term FOCUS is not particularly persuasive. None of the news items mentions food bars. Only two of the third-party registrations relate to food bars, and none relates to dried fruits. Most of the registrations relate to energy drinks or other caffeinated products. While these may suggest that FOCUS is suggestive of energy drinks and caffeinated products, they are of questionable relevance to the strength or weakness of a mark in the field of food bars and snacks. We find this evidence insufficient to demonstrate that Serial No. 86511110 12 third-party use of the term FOCUS is so widespread as to “condition” the consuming public such that customers are used to seeing marks containing the term FOCUS in connection with food bars and dried fruits. Therefore, we consider the du Pont factor of the number and nature of similar marks in use on similar goods to be neutral. (d) Position taken by Registrant during prosecution. Applicant points out that, during the prosecution of the application underlying the cited registration, Registrant argued that the term FOCUS was weak. Applicant argues that “The owner’s own comments about the weakness of FOCUS is strong evidence that the term is, in fact weak, and that therefore, confusion is unlikely.”18 During prosecution, in 2014, Registrant stated, among other things, “This is evidence that mark FOCUS is in use in a crowded marketplace and not worthy of a high level of protection.”19 To the extent that Registrant took a contrary position during prosecution of the application underlying the cited registration, Registrant’s opinion cannot substitute for the Board’s reaching its own ultimate conclusion on the record now before us. Interstate Brands, Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978) (“Under no circumstances, may a party’s opinion, earlier or current, relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record.”). “That a party earlier indicated a contrary opinion respecting the conclusion in a similar proceeding involving similar marks and goods is a fact, and that fact may be received in evidence as merely illuminative of shade 18 Reply brief at 4, 10 TTABVUE 5; see also Applicant’s brief at 8-9, 7 TTABVUE 9-10. 19 See Applicant’s response of January 24, 2017 at 51. Serial No. 86511110 13 and tone in the total picture confronting the decision maker. To that limited extent, a party's earlier contrary opinion may be considered relevant and competent.” Id. (emphasis added). See also Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1283 (Fed. Cir. 1984). While we give such limited weight to Registrant’s prior statement, we need not be persuaded by it. In particular, Applicant’s comparison of Registrant’s prior statements to a consent agreement, with respect to which the USPTO “should not substitute its judgment … for the judgment of the real parties in interest”20 is not well taken. There is no reason for us to believe that Registrant, if asked, would have given its consent to the registration of Applicant’s mark; or to believe that Registrant would consider its statements, made in 2014 in a different context, to be equally applicable to Applicant’s present circumstances. (e) Balancing the factors. We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant du Pont factors. The marks at issue are substantially similar in appearance, sound, meaning and overall commercial impression. Applicant’s goods in Class 29 overlap with Registrant’s goods; and Applicant’s goods in Class 30 have been shown to be closely related to Registrant’s goods. Although some people might associate certain foods (not including food bars) with improved “focus,” the term FOCUS is not so weak that the relevant public would be conditioned to distinguish among highly similar marks on 20 Applicant’s brief at 9, citing TMEP § 1207.01(d)(viii). Serial No. 86511110 14 the basis of minor differences. In any event, the differences between the marks (the terms SNACKS and FORMULA) are very minor and insufficient to distinguish the marks. In sum, we find that Applicant’s mark so resembles the mark in Reg. No. 4595339 as to be likely to cause confusion as to the source of Applicant’s goods. Decision: The refusal under Section 2(d) is AFFIRMED. Copy with citationCopy as parenthetical citation