Celestial Seasonings, Inc.v.J. L. Franklin & Co.

Trademark Trial and Appeal Board

Sep 23, 1998

No. 91096065 (T.T.A.B. Sep. 23, 1998)

Hearing: Paper No. 28
August 27, 1997 RLS/cv
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 24, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Celestial Seasonings, Inc.
v.
J. L. Franklin & Co., dba Gelato Amare
_____
Opposition No. 96,065
to application Serial No. 74/397,075
filed on June 2, 1993
_____
William T. Gallagher of Townsend and Townsend for Celestial
Seasonings, Inc.
David E. Bennett of Rhodes, Coats & Bennett LLP for J. L.
Franklin & Co., dba Gelato Amare.
______
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Celestial Seasonings, Inc. (opposer), a Delaware
corporation whose principal place of business is in Boulder,
Colorado, has opposed the application of J. L. Franklin &
Co., doing business as Gelato Amare (applicant), a North
Carolina corporation, to register the mark SORBETTO ZINGER
for slush shake made with Italian ice and carbonated
Opposition No. 96,065
2
beverages.1 Opposer has asserted in the notice of
opposition that applicant’s mark used in connection with its
goods so resembles the marks ZINGER, RED ZINGER, LEMON
ZINGER, ORANGE ZINGER, WILD BERRY ZINGER, RASPBERRY ZINGER
and ORANGE MANGO ZINGER, previously used (and some
registered) for various tea products, as to be likely to
cause confusion, to cause mistake or to deceive. In its
pleading, opposer has asserted that the public has come to
associate the “ZINGER” marks with it, that opposer has
developed a family of “ZINGER” marks and that these marks
are “famous and well known.” In its answer, applicant has
denied the essential allegations of the notice of
opposition.
Opposer’s Record
Only opposer has taken testimony and introduced other
evidence in its behalf. In this regard, opposer has taken
testimony and submitted a notice of reliance upon
applicant’s responses to certain discovery requests, on six
registrations, and on various articles from printed
publications. The registrations cover the marks LEMON
ZINGER for herb tea, “LEMON” disclaimed (Registration No.
1,390,142, issued April 15, 1996, Sections 8 and 15
affidavit filed); RED ZINGER for herb tea, “RED” disclaimed
(Registration No. 1,390,146, issued April 15, 1996, Sections

1 Application Serial No. 74/397,075, filed June 2, 1993, based
Opposition No. 96,065
3
8 and 15 filed); ORANGE ZINGER for herb tea, “ORANGE”
disclaimed (Registration No. 1,481,773, issued March 22,
1988, Sections 8 and 15 filed); ZINGER for herb tea
(Registration No. 1,515,651, issued December 6, 1988,
Sections 8 and 15 filed); and WILD BERRY ZINGER for herb
tea, “WILD BERRY” disclaimed (Registration No. 1,834,824,
issued May 3, 1994). Opposer has also introduced a
registration covering the mark RED ZINGER for promoting and
conducting professional bicycle races.
According to the testimony of Dr. Lindsay Moore,
opposer’s Director of Creativity and an employee of opposer
since 1974, opposer introduced its first “ZINGER” product in
1972--RED ZINGER herb tea. The LEMON ZINGER herb tea
product was introduced in 1985 and other products followed—
ZINGER, ORANGE ZINGER (subsequently discontinued), ORANGE
MANGO ZINGER, WILD BERRY ZINGER, RASPBERRY ZINGER, CRANBERRY
ZINGER and MANTANGO ZINGER, the last three being ready-to-
drink tea products. These herb tea products are sold in all
50 states and internationally. In the United States, they
are sold in grocery stores, health food stores, some gift
shops, gourmet stores and some drugstores. Dr. Moore also
testified that opposer’s teas are available in restaurants
(dep., 12).

upon applicant’s claim of use in commerce since October 1, 1992.
Opposition No. 96,065
4
In the 1970s, opposer also introduced a product called
RED ZINGER Rocky Mountain Thirst Quencher (dep., 43). This
product was apparently offered until 1983. In 1992, opposer
introduced a product called LEMON ZINGERADE, a ready-to-
drink product, sold in grocery stores, convenience stores,
some health food stores and restaurants. Also, since 1984
opposer has also sold frozen iced tea pops (under a
different mark).
At its headquarters in Boulder, Colorado, opposer
opened the Celestial Café in September 1992 (dep., 57).
Approximately 70,000 to 100,000 people per year frequent
this café. According to Dr. Moore, at this café there is a
ZINGERADE iced tea dispenser as well as a frozen yogurt
dispenser which dispenses a tea-flavored frozen yogurt.
Sales of opposer’s ZINGER products over the years have
exceeded $105 million (dep., 14). Opposer has advertised
its products in the print media and on television, has sent
samples of its products to at least 1.5 million people, has
distributed millions of coupons and has sold under its
ZINGER marks such promotional items as trays, travel mugs,
refrigerator magnets, posters, canisters, placemats,
calendars, sweatshirts and water bottles. Bicycle jerseys
and uniforms for its international race team members have
also been distributed in connection with the RED ZINGER
Bicycle Classic, a professional bicycle race started in
Opposition No. 96,065
5
1975. According to Dr. Moore, there is also a RED ZINGER
ski trail at the Vail Ski Resort, a use permitted through a
licensing arrangement. With respect to the renown of its
marks and the question of confusion, Dr. Moore testified,
68-69:
I’d like to comment on the miraculous history
of our Zinger name, which was initiated with the
Red Zinger products which commonly have a product
life which begins low, goes up high, falls, only
to be replaced by another product. Red Zinger has
been a miraculous product for this organization
since its inception. It’s climbed up high, it’s
stayed in our top 10 products for 25 years now and
has never fell [sic] down below its high on the
chart marking. It has become a classic in the
organization from a marketing perspective, because
few products that any company ever has has [sic]
attained this level of notoriety in recognition
both domestically and internationally…
…We have expanded it to many other products,
both within our hot tea product line and our
ready-to-drink product line, numbering, in total,
9 or 10 products carrying the Zinger name at this
time…
Without a doubt, [applicant’s mark is]
harmful to our mark. Our products are sold as hot
teas and iced teas and ready-to-drink teas, and we
also sell products as Popsicles, as Ice Pops. So
I think it must be confusing to people who would
go into these stores to find that product listed
there. They wouldn’t be at all surprised to see
either a frozen product or an iced tea product or
a ready-to-drink product, all of which are cold
products from Celestial Seasonings under the
‘Zinger’ mark.
The answers to opposer’s discovery requests reveal that
the mark SORBETTO ZINGER is used in connection with a “slush
drink similar to a milkshake made with sorbetto (Italian
ice) and sprite [sic].” See Responses to Interrogatory Nos.
1 and 8. The responses also indicate that, prior to 1992,
Opposition No. 96,065
6
applicant’s goods were marketed under the “descriptive name”
Sorbetto Slush. Further, applicant indicates that the goods
are sold in ice cream parlors, with sales averaging around
$2,000 per year.
Arguments of the Parties
Opposer argues that it has established a family of
ZINGER marks which is strong and famous, the first ZINGER
mark being used in the 1970s. Except for the mark ZINGER
per se, opposer argues that its family of marks consists of
the arbitrary word ZINGER preceded by a flavor, color or
other descriptive term. Opposer argues that applicant’s
mark is similarly structured, consisting of a descriptive
food term (SORBETTO, meaning “sorbet”) plus the term ZINGER.
Opposer also notes that there is no evidence of any third-
party use of similar marks. Concerning the goods, opposer
argues that, by a natural expansion of its business, it now
sells chilled ready-to-drink products as well as iced tea
pops which are flavored with tea. Opposer argues that
applicant’s slush-type shake as well as opposer’s beverages
are all refreshing non-alcoholic beverages. Opposer also
notes that there is no limitation in the identification of
goods in applicant’s application. Applicant’s goods must,
therefore, be presumed to move through all ordinary and
usual channels of trade to all usual customers. Applicant’s
Opposition No. 96,065
7
slush-type shake, accordingly to opposer, could well be sold
in the dairy or frozen food sections of grocery stores.
While applicant concedes that opposer has established a
family of ZINGER marks, applicant denies that opposer’s
marks are strong or famous. Instead, applicant contends
that opposer’s marks are “descriptive or highly suggestive”
(brief, 6) because “zinger” is a derivative of “zingy,”
meaning sharply piquant. Applicant also argues that there
is no probative evidence concerning the extent of opposer’s
advertising of its marks. While applicant concedes that
both parties sell beverages, applicant contends that its
slush-type drink is a made-to-order drink sold exclusively
in ice cream parlors and is not packaged for sale. Opposer
goods, on the other hand, are sold to retail outlets and in
restaurants.2
Opinion
The record, including opposer’s valid and subsisting
registrations, establishes opposer’s priority. Upon careful
consideration of this record and the arguments of the
attorneys, we agree with opposer that confusion is likely.
First, opposer has demonstrated use of a group of marks

2 Applicant raises several objections to opposer’s record.
Applicant’s objections are overruled. We believe that the
witness was sufficiently responsible for the marketing materials
and print advertisements and had personal knowledge concerning
the relevant facts in this case. We also believe that the
printed publications tend to show the recognition and strength of
opposer’s marks. They are not being submitted for the truth of
the matter asserted therein.
Opposition No. 96,065
8
with a recognizable common characteristic. See J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1884 (Fed. Cir. 1991). We agree with opposer that the
public, familiar with opposer’s family of well-known ZINGER
marks used in connection with herb tea and, more recently,
its chilled drinks and frozen snacks, are likely to believe
that applicant’s SORBETTO ZINGER slush shake, because of the
similarities of the marks, is a product which is endorsed
by, sponsored by or otherwise associated with opposer. In
this regard, we note, as did opposer, that we must reach a
conclusion on the issue of likelihood of confusion on the
basis of the description of goods in the application,
regardless of what the record may reveal as to the
particular nature of applicant’s goods and the particular
channels of trade in which they actually travel. See
Octocom Systems v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990). We see nothing
inherent in the description of applicant’s goods that would
limit their sale to ice cream parlors. These goods could be
sold in the frozen drink or chilled beverage sections of
grocery stores and supermarkets. However, even if we must
assume that applicant’s goods could only be available in a
food service establishment, we nevertheless believe that,
because of the similarities of the marks, the purchasing
public may well believe that applicant’s SORBETTO ZINGER
Opposition No. 96,065
9
shakes come from or are endorsed by or sponsored by opposer.
We have also taken into consideration the fact that the
respective goods are relatively inexpensive and may be the
subject of impulse purchases made without great care as to
the source or origin of the products.
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board