General Mills, Inc. and General Mills IP Holdings II, LLCv.Fage Dairy Processing Industry S.A.

Trademark Trial and Appeal Board

Sep 15, 2011

No. 91182937 (T.T.A.B. Sep. 15, 2011)

Oral Hearing: Mailed:
February 24, 2011 September 14, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

General Mills, Inc. and General Mills IP Holdings II, LLC
v.
Fage Dairy Processing Industry S.A.
______

Opposition No. 91118482
to application Serial No. 75597291
filed on November 30, 1998

Opposition No. 91118950
to application Serial No. 75597292
filed on November 30, 1998

Opposition No. 91155075
to application Serial Nos. 76016809; 76016810; 76016811;
76016812; 76016813
all filed on April 4, 2000

Opposition No. 91182937
to application Serial Nos. 77037793; 77037808; 77037835;
77037851; 77037869; 77037897; 77037905; 77037924
all filed on November 6, 2006
_____

Craig S. Coleman and Marc C. Levy of Faegre & Benson LLP,
and Felicia J. Boyd of Barnes & Thornburg LLP for General
Mills, Inc. and General Mills IP Holdings II, LLC.

Virginia R. Richard, Lana C. Marina and Sanjana Chopra of
Winston & Strawn LLP for Fage Dairy Processing Industry S.A.
______

Before Quinn, Kuhlke and Mermelstein, Administrative
Trademark Judges.

THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
2
Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Fage Dairy Processing Industry S.A., seeks
registration of the marks shown below:
Application Serial No. 75597291 for “set
yoghurt –made from ewes’ milk and yoghurt culture” based on
an allegation of an intention to use the mark in commerce,
with “SHEEP’S YOGHURT” disclaimed, and the translation
statement “The Greek characters of the mark translate to
‘FAGE’ which means ‘eat’ in English”;
Application Serial No. 75597292 for
“strained yoghurt made from fresh cow milk, cream and
yoghurt culture” based on an allegation of an intention to
use the mark in commerce, with the translation statement
“The Greek characters in the mark transliterate to ‘FAGE’
and this means ‘EAT’ in English”;

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
3
Application Serial No. 76016809 for
“tzatziki, made of cucumbers, yogurt, garlic, herbs and
spices; and dairy products, namely, yogurt”1 based on an

1 This application also includes “sauces, spices and food
flavorings, not of essential oils” in International Class 30.
However, opposers have litigated this case only against
applicant’s use and registration of TOTAL in connection with
yogurt. Due to the absence of evidence submitted during trial
with regard to applicant’s goods in International Class 30, and
the absence of argument in opposers’ brief as to anything other
than yogurt, to the extent opposers’ pleading alleged a claim
against the goods in Class 30, we deem that opposers have waived
their likelihood of confusion and dilution claims as to the goods
in this class, and Opposition No. 91155075 is dismissed as to the
goods in International Class 30 in Application Serial No.
76016809. Claims, counterclaims, or defenses which are not
argued in a party’s brief are considered waived. Corporacion
Habanos S.A. v. Guantanamera Cigars Co., 86 USPQ2d 1473, 1474, n.
2 (TTAB 2008) (deceptively misdescriptive claim under Section
2(e)(1) waived), remanded on other grounds, 729 F. Supp.2d 246,
98 USPQ2d 1078 (D.D.C. 2010); Cerveceria India Inc. v. Cerveceria
Centroamericana, S.A., 10 USPQ2d 1064, 1066, n.3 (TTAB 1989),
aff’d, 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989)
(affirmative defenses waived); J.S. Paluch Co., Inc. v. Irwin,
215 USPQ 533, 536, n.4 (TTAB 1982) (counterclaim of abandonment
waived). Cf. Hynix Semiconductor Inc. v. Rambus Inc., 98 USPQ2d
1711, 1726 (Fed. Cir. 2011) (issues not presented in opening
brief waived); Finjan Inc. v. Secure Computing Corp., 626 F.3d
1197, 97 USPQ2d 1161 (Fed. Cir. 2010) (citing SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 78 USPQ2d 1097 (Fed. Cir.
2006) and noting that “arguments not raised in the opening brief
are waived”).

While it is true that claims need only be determined with regard
to one of several items in a single international class, such
that likelihood of confusion will be found as to the entire class
if there is likely to be confusion with respect to any item that
comes within the identification of goods in that class, see
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981), this determination does not extend
to other international classes. See G&W Laboratories, Inc. v. G
W Pharma Limited, 89 USPQ2d 1571, 1574 (TTAB 2009) (“[E]ach class
of goods or services in a multiple class registration must be
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
4
allegation of first use and use in commerce in July 1998,
with a disclaimer of “AUTHENTIC GREEK TZATZIKI” and the
translation statement “The non-Latin characters in the mark
transliterate to ‘Fage’, and this means ‘eat’ in English”;

Application Serial No. 76016810 for
“dairy products, namely, yogurt” based on an allegation of
first use and use in commerce in September 1998, with a
disclaimer of “LIGHT” and “THE AUTHENTIC GREEK STRAINED
YOGHURT” and the translation statement “The non-Latin
characters in the mark transliterate to ‘Fage’, and this
means ‘eat’ in English”;

considered separately when reviewing the issue of fraud, and
judgment on the ground of fraud as to one class does not in
itself require cancellation of all classes in a registration.”);
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844,
1848 n. 9 (TTAB 2004) (emphasis added) (“[I]f priority and
likelihood of confusion are established as to any of the goods or
services identified in an opposed class of goods or services, the
opposition to registration of the mark as to all of the goods or
services identified in that class will be sustained”); Electro-
Coatings, Inc. v. Precision Nat’l Corp., 204 USPQ 410, 420 (TTAB
1979) (“there are, in law, three applications and three
oppositions to be adjudicated, because each class in a multiple
class application constitutes a separate case”). Each
international class stands on its own, for all practical purposes
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
5
Application Serial No. 76016811 for
“dairy products, namely, yogurt” based on an allegation of
first use and use in commerce in July 1998 with a disclaimer
of “WITH GREEK HONEY” and “THE AUTHENTIC GREEK STRAINED
YOGHURT”;

Application Serial No. 76016812 for “dairy
products, namely, yogurt” based on an allegation of first
use and use in commerce in April 1998, with a disclaimer of
“2%” and the translation statement “The non-Latin characters
in the mark transliterate to ‘Fage’ and this means ‘eat’ in
English”;

like a separate application, and we must make determinations for
each separate class. G&W Laboratories, 89 USPQ2d at 1573-74.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
6
Application Serial No. 76016813 for “dairy
products, namely, yogurt” based on an allegation of first
use and use in commerce in November 1998, with a disclaimer
of “CHERRY” and “THE AUTHENTIC GREEK STRAINED YOGURT” and
the translation statement “The non-Latin characters in the
mark transliterate to ‘Fage’ and this means ‘eat’ in
English”;

Application Serial No. 77027793 for “dairy
products, namely, yogurt” based on an allegation of an
intention to use the mark in commerce, with a disclaimer of
“ALL NATURAL GREEK STRAINED YOGURT” and the translation
statement “The foreign wording in the mark translates into
English as to eat”;

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
7
Application Serial No. 77037808 for “dairy
products, namely, yogurt” based on an allegation of an
intention to use the mark in commerce, with a disclaimer of
“5%” and “ALL NATURAL GREEK STRAINED YOGURT” and the
translation statement “The foreign wording in the mark
translates into English as to eat”;

Application Serial No. 77037835 for “dairy
products, namely, yogurt” based on an allegation of an
intention to use the mark in commerce, with a disclaimer of
“2%” and “ALL NATURAL GREEK STRAINED YOGURT” and the
translation statement “The foreign wording in the mark
translates into English as to eat”;

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
8
Application Serial No. 77037851 for “dairy
products, namely, yogurt” based on an allegation of an
intention to use the mark in commerce, with a disclaimer of
“0%” and “ALL NATURAL-NONFAT GREEK STRAINED YOGURT” and the
translation statement “The foreign wording in the mark
translates into English as to eat”;
Application Serial No. 77037869 for “dairy
products, namely, yogurt” based on an allegation of an
intention to use the mark in commerce, with a disclaimer of
“WITH HONEY” and “ALL NATURAL GREEK STRAINED YOGURT” and the
translation statement “The foreign wording in the mark
translates into English as to eat”;

Application Serial No. 77037897 for “dairy
products, namely, yogurt” based on an allegation of an
intention to use the mark in commerce, with a disclaimer of
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
9
“WITH STRAWBERRY” and “ALL NATURAL GREEK STRAINED YOGURT”
and the translation statement “The foreign wording in the
mark translates into English as to eat”;

Application Serial No. 77037905 for “dairy
products, namely, yogurt” based on an intention to use the
mark in commerce with a disclaimer of “2%” and “WITH HONEY”
and “ALL NATURAL GREEK STRAINED YOGURT” and the translation
statement “The foreign wording in the mark translates into
English as to eat”; and

Application Serial No. 77037924 for “dairy
products, namely, yogurt” based on an intention to use the
mark in commerce with a disclaimer of “WITH CHERRY” and “ALL
NATURAL GREEK STRAINED YOGURT” and the translation statement
“The foreign wording in the mark translates into English as
to eat.”
Opposers, General Mills, Inc. and General Mills IP
Holding II LLC (hereinafter “opposers”), opposed
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
10
registration of applicant’s various marks on several
grounds, and applicant filed answers by which it admitted
that it did not use its marks in the United States prior to
1998, and filed counterclaims against opposers’ pleaded
registrations. As noted in the Board order, dated November
2, 2009, applicant withdrew its counterclaims, and the
remaining grounds in the oppositions before us are 1) that
applicant’s marks so resemble opposers’ previously used and
registered TOTAL marks as to be likely to cause confusion,
mistake or to deceive under Trademark Act Section 2(d), 15
U.S.C. §1052(d), and 2) that applicant’s marks dilute the
distinctive quality of opposers’ marks under Trademark Act
Section 43(c), 15 U.S.C. §1127(c). The pleaded registered
marks are TOTAL in typed form for “wheat flakes”2 and TOTAL
in typed form for “ready to eat breakfast cereal.”3
EVIDENCE OF RECORD
As a preliminary matter, we must address a few
remaining evidentiary issues. We begin by noting the
acrimonious nature of this litigation, manifested not only
by the size of the record and the prosecution history but
also by the excessive discourse throughout the taking of

2 Registration No. 0724897, filed on March 9, 1961, issued on
December 5, 1961, alleging first use and first use in commerce on
February 23, 1961, renewed.

3 Registration No. 1394264, filed on October 15, 1985, issued on
May 20, 1986, alleging a date of first use and first use in
commerce on February 23, 1961, renewed.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
11
testimony and motion practice, all fraught with multiple
objections and pages of arguments over whether a given
objection is proper. We understand the importance of this
matter to the parties; however, we encourage parties and
their counsel, not only to cooperate with each other, but
also to recognize the very limited nature of the Board’s
jurisdiction.
The Board is an administrative tribunal of the USPTO
empowered to determine the right to registration only. The
Board has no authority to determine the right to use, or the
broader questions of infringement, unfair competition,
damages or injunctive relief. Even counsel at the oral
hearing acknowledged that the present record is of a
magnitude generally reserved for district court litigation.
Extremely rare is the Board proceeding that generates a
record of the size in this case.
The first two proceedings were filed in 2000, the third
in 2002 and the last one in 2008. Thus, this dispute has
been ongoing for eleven years. The prosecution history
through the conclusion of trial included 365 prosecution
history entries. For five years, from 2000 to approximately
2005, the parties represented to the Board that they were
engaged in settlement negotiations. In August 2006, at
prosecution entry number 36, applicant retained new counsel.
Thereafter, opposers moved to add claims, applicant moved to
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
12
add counterclaims, the parties filed summary judgment
motions, motions to compel, and applicant petitioned the
USPTO Director, which brings us to entry number 106, and
February 1, 2008. In the meantime, in the middle of all of
this, applicant, in 2006, filed eight more TOTAL
applications which form the subject matter of Opposition No.
91182937. From entry number 119, November 25, 2008, through
entry number 163, August 27, 2009, the parties brought
additional motions to amend pleadings, motions to compel,
motions to strike, motions for summary judgment and for
sanctions.
The trial begins at entry number 176, December 15,
2009, and continues through entry number 359, August 2,
2010. These entries also include motions to strike,
confidential and redacted versions of the various entries,
and some duplicates.4 The trial record is over 20,000
pages.

4 We further note the excessive marking of various information as
confidential and urge parties to limit such designations. It
greatly complicates the record, and frequently the matter is
improperly designated or not useful to the disposition of the
case. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
1399, 1402 (TTAB 2010). Board proceedings are designed to be
public, therefore, only truly confidential material should be so
designated. In cases where this is not done, the Board may
require parties to resubmit those documents so that only truly
confidential material is redacted.

In addition to complying with the policy that TTAB proceedings be
public, where the record created is entirely or almost entirely
public, briefs may be drafted to include as part of the
references to the record, a citation to the relevant TTABVUE
entries and page numbers. This cross-referencing to the TTABVUE
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
13
To reiterate our frustrations expressed to the parties
at the oral hearing, the issues herein do not warrant a
record of this size. This is not the first time the Board
has expressed its displeasure about overzealous litigation
in our proceedings. See, e.g., CareFirst of Maryland Inc.
v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1495-
96 (TTAB 2005), aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed.
Cir. 2007) (“So many of the actions herein needlessly added
to the expense of the parties, not to mention the drain on
resources of the Board. Many, many dollars would have been
saved if the parties and their attorneys had simply
cooperated in good faith with each other as this litigation
proceeded for over five years.”) In the most plain and
concise terms we emphasize that “scorched earth” litigation
tactics and “leave no stone unturned” trial strategy do not
improve a party’s odds before the Board.5
After the oral hearing the Board ordered the parties to
submit a joint appendix to prepare the record for
consideration on the merits and amended briefs with
citations to the joint appendix. Although still formidable
at over 8000 pages, entry numbers 375 – 575, the joint

entries greatly aids the Board when reviewing the record,
particularly in cases with a large record.
5 In addition, where the Board identifies overly contentious
advocacy or the potential for the creation of excessive records,
it may in the future exercise its authority under Trademark Rule
2.120(i)(2) to order a pretrial conference in person at the
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
14
appendix greatly assisted the Board in reviewing the
record.6
In the July 1, 2010 Board order, the Board deferred
ruling on opposers’ motions to strike certain pieces of
evidence submitted by applicant under Notices of Reliance
and certain testimony and related exhibits of Mr.
Athanassios Filippou (CEO of Fage Dairy Industry S.A.
hereinafter Filippou).7
Specifically, opposers object to 1) emails from
applicant’s customers to applicant and various reports and
presentations created by third parties for opposers and
produced by opposers during discovery, such emails, reports
and presentations all loosely referred to as “business
records” by applicant and submitted under Notice of
Reliance, 2) evidence of third-party use of the term TOTAL
introduced into the record under testimony, 3) demonstrative
exhibits created by applicant’s counsel submitted under
Notice of Reliance, and 4) testimony and exhibits reflecting
advice of counsel.

office of the Board in Alexandria, Virginia. Blackhorse v. Pro
Football Inc., 98 USPQ2d 1633 (TTAB 2011).
6 Citations herein to the parties’ briefs are to the amended
trial briefs and citations to the record include the joint
appendix reference. We note generally that a joint appendix is
not required under our rules, and should not be filed unless
specifically requested by the Board.

7 Opposers did not maintain their objection to the testimony of
Jessica La May of Country Life LLC in their brief and have,
therefore, waived this objection. Wet Seal Inc. v. FD Management
Inc., 82 USPQ2d 1629, 1632 (TTAB 2007).
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
15
With regard to applicant’s customer emails, applicant
submitted these emails under a Notice of Reliance.
Separately, applicant’s witness Mr. Filippou testified to
their existence and to his review of them, and opposers
cross examined the witness as to those emails and their
content. See, e.g., Filippou Test. pp. 61-63, 406 (JA00312-
314, 428). A Notice of Reliance may only be used for the
specific categories of documents set out in the relevant
rules. See Trademark Rules 2.120(j)(3)(i), 2.120(j)(4),
2.120(j)(5), 2.122(d)(2) and 2.122(e). However, while
applicant’s customer emails are not admissible under a
Notice of Reliance, given the testimony on direct and cross
examination, there is sufficient indicia of reliability to
accept them into the record as being authenticated. We do
not consider these customer emails to be business records as
defined by Fed. R. Evid. 803(6), but we are not considering
them for the truth of the matter asserted therein, inasmuch
as the statements therein constitute hearsay; however, we
have considered their receipt by applicant and what they
show on their face (e.g., references to “Fage” or “Fage
total” yogurt). As stated by opposers’ counsel during cross
examination, the emails “speak for themselves.” Filippou
Test. p. 407 line 14; JA00428. In view thereof, the motion
to strike Exhibits 5-518; JA04225-5252 is denied.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
16
With regard to the third-party reports and
presentations prepared for opposer and referred to as
“business records” by applicant, such documents are clearly
not the type of documents contemplated for submission under
Notices of Reliance by the Board’s rules. Trademark Rule
2.122. However, during the course of this rather torturous
litigation, stipulations were made, Board orders were
issued, and follow-up email communications were exchanged by
the parties, regarding the submission of evidence during
trial. At one point, opposers’ counsel, in an effort to
avoid additional depositions, sent an email to applicant’s
counsel, representing that “Mr. Kaihoi’s deposition is
certainly not necessary to allow you to present the email to
Bally’s to the Board. The Board’s November Order already
deemed certain records as authenticated for the purpose of
this trial. No additional authentication is needed for any
of the parties’ records.” App. Appendix of Response to
Objections p. 2. In fact, that part of the Board order
related only to documents submitted “during opposers’
testimony periods,” not applicant’s testimony period.
November 2, 2009, Board Order p. 35. By their email,
opposers extended this order to encompass applicant’s
testimony period. The full scope of the order is as
follows:
...any document produced by opposer is deemed
authentic and admissible into evidence if
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
17
submitted by notice of reliance or through
testimony (as appropriate) during opposer’s
testimony periods.

Id.

In view of the ambiguity arising out of opposers’
email, applicant may reasonably have believed that it could
submit produced documents under Notice of Reliance.
Accordingly, we deny the motion to strike Exhibits 23, 24,
29, 30, 32, 38, 40, 41, 42; JA05618-5632, 5647-5652, 5656-
5659, 5680-5682, 5687-5697. That being said, the probative
value of these documents is limited, to the extent that
there is very little testimony elicited as to these
documents.
As to the evidence of third-party use of the term
“total,” these exhibits were properly made of record through
testimony. Opposers’ arguments go to the probative value of
the evidence, not to admissibility. For example, opposers
cite to Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104,
1110 (TTAB 2007), in their effort to have this material
excluded from the record entirely. In Jansen, the Board
merely commented on the value of the evidence submitted and
whether or not it was sufficient to support a finding of
third-party use such that this factor would weigh in favor
of the defendant. This case does not stand for the
proposition that testimony and exhibits that may not provide
full information as to the sales or exposure to consumers of
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
18
this “use” is inadmissible. Obviously it is relevant, the
question is how probative it is. In view thereof, the
motion to strike Exhibits 37-38, 40, 43, 45, 77, 81, 83, 85,
91-92, 94, 100, 104, 226, 229; JA00913-915, 918-919, 930,
933-934, 1171, 952-959, 963-969, 976, 979, 2259, 2262 is
denied.
Opposers also seek to strike various demonstrative
exhibits created by counsel. While it is true that
summaries are permitted, Fed. R. Evid. 1006, such summaries
should be introduced under testimony.8 There is no
provision under the Trademark Rules to submit such exhibits
under Notice of Reliance and these exhibits are not covered
by stipulation, the November Board order, or the subsequent
email exchange between counsel. See, e.g., Trademark Rules
2.120(j), 2.122(d)(2), 2.122(e). In view thereof, the
motion to strike Exhibits 1, 2, 3, 4, 43 and 44; JA003160-
3161, 4219-4224, JA05698-5701, is granted.9
Finally, opposers move to strike trial Exhibits 163 and
164 and Mr. Filippou’s testimony regarding those exhibits.
As best as can be discerned from argument, it is applicant’s
position that during a discovery deposition on October 31,

8 Applicant’s reliance on Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937 (Fed. Cir. 1983) is misplaced. In Squirtco, the
summaries were introduced into the record by way of witness
testimony, not by Notice of Reliance.

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
19
2008, its witness testified that he had relied on advice of
counsel in filing the subject applications, and by this
statement, applicant had waived any privilege that attached
to the letters from counsel listed on the privilege log.
Thus, applicant contends, opposers should have then argued
that the letter from counsel on the privilege log was no
longer protected; and opposers should have moved to compel
production of that letter, and cannot now be heard to
complain, when applicant “supplemented” its responses a day
before taking the trial testimony of that witness nearly two
years later on February 10, 2010, during applicant’s
testimony period. By this logic, if we view the witness’
prior statement as a waiver, then applicant was under a duty
to remove that item from the privilege log and forward it to
opposing counsel as a responsive document no longer subject
to privilege. This would mean that applicant actively
withheld a responsive document.
In any event, we do not find the statement made during
the discovery deposition to constitute a waiver of the
privilege with regard to these letters. The facts of this
case are closer to those of Presto Products, Inc. v. Nice
Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988) (Board granted
motion to strike testimony, where a party refused to produce

9 Nonetheless, all of the information which forms the basis of
these exhibits is in the record, which has been exhaustively
reviewed.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
20
information sought in a discovery request based on attorney-
client privilege, and did not allow the party to later rely
on that information as evidence in its behalf), than
Vignette Corp. v. Marino, 77 USPQ2d 1408, 1411 (TTAB 2005)
(Board, on summary judgment motion, considered evidence
where applicant did not “unequivocally refuse to provide the
requested information” noting it would be unduly harsh to
impose the preclusion sanction). In fact, this case
presents a more egregious set of facts than Presto in that
applicant failed for two years in its duty to supplement its
discovery responses. Of course, applicant could have simply
introduced the trademark searches that had been produced and
elicited testimony on the reliance of those searches, but
instead chose this tactic. While opposers did cross examine
the witness on these exhibits, they did so under protest and
after lodging their objection. In view thereof, the motion
to strike Exhibits 163 and 164 and related testimony is
granted.10

10 We add, however, as we did in Presto, that the striking of
these exhibits and related testimony are of “no particular
moment” because our determination of the issue of likelihood of
confusion would be the same regardless of whether applicant
adopted its mark in good faith. Indeed, we have not, in
determining this case, drawn any inference of bad faith on
applicant’s part. Certainly, the evidence of use of the mark in
Greece and throughout Europe point to applicant’s good faith in
simply seeking to extend its brand to the United States market.
Filippou Test. pp. 35-37; JA00288-90. Moreover, there is no
dispute that applicant sought advice of counsel and conducted
trademark clearance searches. Nonetheless, good faith adoption
of a mark is not a defense to a claim of likelihood of confusion.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
21
The record in these consolidated proceedings is
voluminous and we refer to the parties’ briefs which, absent
the exhibits and testimony discussed above, accurately
present the evidence of record.11
THE PARTIES
Opposers are the sixth largest food manufacturer in the
world, selling a wide variety of products, including ready-
to-eat cereal and yogurt. David V. Clark, Opposers’ Vice
President of Marketing, Adult Cereal (hereinafter Clark)
Test. p. 6; JA00028-29.
Applicant, Fage Dairy Processing Industry, S.A., is a
Greek dairy company that introduced its Greek strained
yogurt into the United States market in 1998. Filippou
Test. pp. 15, 44-45, 48-55; JA00273, 297-298, 301-303. The
record shows that applicant has been successful in its
effort to market its yogurt in the United States, not only
as measured by sales, but also as measured by quality.
Filippou Test. p. 117, Exhs. 182, 183; JA00338, 1389-1390.
Its yogurt has received several culinary awards, favorable
media mentions and has a loyal and dedicated consumer fan
base. Filippou Test. pp. 87, 185-186; JA00326, 366-367;

E.g., Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511,
1516 (TTAB 2009).

11 As noted above, much of the evidence was submitted under seal.
Thus, in certain sections, the decision must necessarily present
the facts in more general terms.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
22
App. 1st NOR Exhs. 2-189; JA03162-4136; App. 2d NOR Exhs. 5-
518; JA04225-5252.
PRIORITY/STANDING
It has already been established that opposers have
standing and priority in each of these consolidated
proceedings. Board Order dated November 2, 2009.12
Accordingly, we turn to the question of likelihood of
confusion.
LIKELIHOOD OF CONFUSION
Statement of the Law
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,

12 For clarification we note that General Mills, Inc. was the
original owner of the pleaded and proven registrations and that,
during the course of this litigation, these registrations were
assigned to General Mills IP Holding II, LLC, which was joined,
upon motion, as a party plaintiff. See February 16, 2006, Board
Order. Where there are multiple plaintiffs, each plaintiff must
prove its standing and, in the case of likelihood of confusion
and dilution claims, prior use. Further, as is well established,
only the owner of a registration may rely on the presumptions
afforded by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057.
Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d
1139, 1144 (TTAB 1986); Yamaha International Corp. v. Stevenson,
196 USPQ 701, 702 (TTAB 1979); and Joseph S. Finch & Co. v. E.
Martinoni Co., 157 USPQ 394, 395 (TTAB 1968). To the extent that
General Mills Inc. is not covered by the prior order because it
is no longer the owner of the registrations, the record
establishes its use of the mark in connection with ready-to-eat
cereal prior to any of applicant’s filing or first use dates.
The manner of use of the TOTAL mark includes a basic block form
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
23
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Further, “[a]lthough confusion, mistake or deception about
source or origin is the usual issue posed under Section
2(d), any confusion made likely by a junior user’s mark is
cause for refusal; likelihood of confusion encompasses
confusion of sponsorship, affiliation or connection.”
Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1429 (TTAB 1993); Federal Bureau
of Investigation v. Societe: “M. Bril & Co.,” 172 USPQ 310,
315 (TTAB 1971) (under Section 2(d) party must show
purchasing public would mistakenly assume that the
applicant’s goods or services originate with, are sponsored
by, or are in some way associated with it”). See also
Majestic, 65 USPQ2d at 1205 (“...mistaken belief that [a
good] is manufactured or sponsored by the same entity ...
is precisely the mistake that Section 2(d) of the Lanham Act
seeks to prevent”); In re Save Venice New York, Inc., 259
F.3d 1346, 59 USPQ2d 1778, 1784 (Fed. Cir. 2001) (“The
related goods test measures whether a reasonably prudent
consumer would believe that non-competitive but related
goods sold under similar marks derive from the same source,
or are affiliated with, connected with, or sponsored by the
same trademark owner”).

which does not measurably alter the analysis of the similarity of
the marks discussed infra.

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
24
The parties presented evidence and argument on the du
Pont factors of the fame, strength and renown of the marks,
the similarity or dissimilarity and nature of the goods and
channels of trade, the conditions under which and buyers to
whom sales are made, the similarity or dissimilarity of the
marks, the number and nature of similar marks in use on
similar goods, the nature and extent of any actual
confusion, and the length of time during and conditions
under which there has been concurrent use without evidence
of actual confusion.
Fame
We begin with the factor of fame because when fame
exists it “plays a ‘dominant’ role in the process of
balancing the du Pont factors.” Recot Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). This is
so because a famous mark “casts a long shadow which
competitors must avoid.’” Id. quoting Kenner Parker Toys,
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). Thus, “[f]amous marks enjoy a
wide latitude of legal protection.” Id. “[T]he fame of a
mark may be measured indirectly, among other things, by the
volume of sales and advertising expenditures of the goods
traveling under the mark, and by the length of time those
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
25
indicia of commercial awareness have been evident.”13 Bose
Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002).
As noted above, the record shows that opposers own two
registrations for the mark TOTAL, dating from 1961 (wheat
flakes) and 1986 (ready-to-eat cereal). Opposers have been
using the mark TOTAL in connection with ready-to-eat cereal
since 1961. Clark Test. pp. 16-18, 22-23; JA00032-34, 36-
37. TOTAL is one of a handful of cereal brands that have
been marketed continuously for so many years and is
considered by opposers to be one of their “most prized
equities.” Id. The sales data has been submitted under
seal, but suffice it to say that opposers’ sales are
substantial, as are the expenditures on advertising. With
regard to sales, TOTAL cereal comprises an impressive market
share in this highly fragmented market. Clark Test. pp. 22,
53-55; JA00036, 63-65; see also Opp. 3d NOR Opposers’ former
marketing director, Sean M. Foster, Dep. p. 122; JA07422

13 In relation to its earlier applications, applicant argues that
opposers “have no evidence of consumer awareness of Total cereal
in 1998, the operative date in [the earlier oppositions].” App.
Br. p. 25. For purposes of likelihood of confusion, the Board
generally accepts and considers evidence related to likelihood of
confusion for the period up to the time of trial, and this
includes evidence of the fame of a plaintiff’s mark. This is
distinct from a claim of dilution under Section 43(c) of the
Trademark Act where an element of the claim is the acquisition of
fame prior to the defendant’s first use or application filing
date.

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
26
(TOTAL ranks among the top 10 or 15 of all cereal brands).14
Given the market share, long history of use, and extensive
advertising campaigns, opposers view the mark as “iconic.”
Rebecca L. O’Grady, opposers’ President of Yoplait Division
(hereinafter O’Grady), Test. p. 10; JA00663. TOTAL cereal
is sold in “pretty much any store that’s selling
grocer[ies].” Clark Test. p. 132; JA00104. That includes
Kroger, Publix, Wal-Mart, Target, drugstores, convenience
stores, discount stores, etc. Id. TOTAL branded cereal,
including the flankers,15 commands significant premium shelf
space, and on the packaging the TOTAL mark is always
prominently featured, as shown below. Clark Test. 138-140;
JA00107-109
16

14 This testimony was submitted under seal, however, these
specific numbers were referenced in the unredacted portion of
opposers’ public brief.
15 A “flanker” cereal is essentially a flavor spin off from the
baseline product.

16 Opp. Exhs. 1, 3; JA02272, 2274.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
27
The impact of the exposure is amplified by the number
of flanker cereal products for which the TOTAL brand is
used. Thus, because 93% of all households purchase cereal,
as stated by opposers, “nearly all consumers are regularly
exposed to TOTAL in grocery stores.” Br. p. 13 and
citations to record. Moreover, household penetration, i.e.,
the number of U.S households that have TOTAL cereal on the
pantry shelf is, for this industry, very high.17
Opposers advertise their TOTAL brand cereal in a
variety of media (national television, radio, internet,
nationally distributed magazines and newspapers, coupons,
and partnerships). Their advertising has been so pervasive
and penetrating that one of their television commercials,
the “Stacking Bowls” campaign running from the late 1960s
through the early 2000s, permeated popular American culture
through Phil Hartman’s parody on the television show
Saturday Night Live. Opposers have used public figures such
as Paul Harvey and Richard Lewis to promote TOTAL brand
cereal. On television, opposers have an ongoing partnership
with the Food Network to feature TOTAL cereal on its
programs. Clark Test. 86; JA00083. In newspapers,
nutrition columns regularly feature TOTAL cereal.18 TOTAL

17 The specific number was submitted under seal.
18 Applicant attempts to minimize the probative value of these
columns because they were “written at [opposers’] direction by
their paid independent contractor.” App. Br. p. 28. While this
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
28
also is the subject of regular media mentions, including
television shows such as The Biggest Loser and The Jay Leno
Show.
Opposers regularly track the success of their
advertising campaigns for the TOTAL brand and annually
achieve high household penetration and media impressions,
the average number of times an advertisement reaches a
consumer over the course of a year. Opposers have achieved
nearly universal household penetration with their
advertising. Clark Test. p. 81; JA00078.
As part of their ordinary course of business, opposers
regularly conduct consumer surveys that measure brand
awareness, which is consistently very high. See e.g., Opp.
Exh. 50; JA02482; Clark Test. pp. 188-219; JA00138-169;
O’Grady Test. 10-14; JA00663-667.
Finally, in addition to the overwhelming evidence of
TOTAL’s brand awareness discussed in summary form above,
opposers submitted a consumer awareness survey conducted by
their testifying expert. The combined aided and unaided
awareness number is very high and is in line with the
numbers opposers have seen in their own regularly conducted
consumer awareness surveys made during the ordinary course

removes them from the category of unsolicited “media mentions,”
they continue to have probative value in terms of consumer
exposure to the brand. In addition, applicant’s argument that
TOTAL receives negative media mentions does not serve to undercut
a finding of regular exposure of the brand to consumers.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
29
of business. Steven D. Akerson (opposers’ expert witness)
Test. 3-4; JA00002-3; Opp. Exh. 53; JA02692-2706.19
Applicant argues that the unaided awareness numbers are low
and that aided awareness is of no significance. While
unaided awareness numbers are more significant, that does
not mean that aided awareness numbers have no significance.
Carefirst of Maryland Inc., 77 USPQ2d at 1506-07. Based on
the record, opposers have shown that in the context of this
industry and fragmented market, the unaided awareness
numbers are high. Moreover, the very high aided awareness
numbers have significance and have not been shown to be
compromised. Nat’l Pork Bd. v. Supreme Lobster & Seafood
Co., 96 USPQ2d 1479 (TTAB 2010).
Finally, the trade publication Brandweek has
consistently recognized TOTAL as one of the top 2000
“Superbrands” in the United States. See Opp. 1st NOR 0001-
269; JA05937-6205 (rankings from 1998 – 2008).
Applicant argues that the TOTAL brand is in general
decline and bases this argument primarily on decreasing
sales figures. However, the record supports opposers’
position that, whatever the sales’ ebb and flow, the brand

19 Applicant’s reference to its previous motion to strike the
Akerson report has been given no consideration. The Board
already denied this motion in the November 2, 2009 order and, in
addition, the order imposed sanctions on applicant prohibiting
applicant from objecting to opposers’ evidence. However, we have
reviewed the report and accorded it appropriate weight.

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
30
awareness has remained steady, even as competitive new
entrants have further fragmented the market.20 See, e.g.,
O’Grady Test. pp. 10-16; JA00663-JA00669.
Based on the totality of the evidence, we find that,
for purposes of likelihood of confusion, TOTAL is a famous
mark for ready-to-eat cereal. Having made this finding, we
recognize that TOTAL, from its inception, is conceptually a
suggestive mark in that it suggests a significant feature of
the product, namely that it contains 100 percent of daily
recommended vitamins and minerals. If there were any doubt
as to the suggestiveness of the mark, opposers’ marketing
makes clear the intended meaning of TOTAL in this context –
total nutritional needs satisfied in one bowl. In fact,
opposers make this clear in the brief where they state “the
TOTAL brand stands for 100 percent nutrition.” Br. p. 17.
But even marks that enter the market as conceptually weak
may attain fame and, consequently, the scope of protection
afforded famous marks. Opposers’ product has been on the
market for many years, and its mark has achieved a high
level of exposure and recognition for several generations of
American consumers. In view of our finding, opposers’ mark
is entitled to broad protection. Recot, 54 USPQ at 1897.
Goods, Trade Channels, Consumers, Conditions of Purchase

20 We also note that sales began to increase in the last fiscal
year for which we have evidence. Clark Test. p. 59; JA00069.

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
31
This brings us then to our consideration of the
similarities between opposers’ and applicant’s respective
goods, channels of trade and classes of purchasers. We must
make our determinations under these factors based on the
goods as they are recited in the applications and
registrations. See Octocom Systems Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“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”).
The respective goods do not have to be identical or
even competitive in order to determine that there is a
likelihood of confusion. It is sufficient that the
respective goods are related in some manner, or the
conditions surrounding their marketing must be such that the
goods will be encountered by the same purchasers under
circumstances that would give rise to the mistaken belief
that they originate from the same source. See, e.g., On-
line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
32
(MARTIN’S for wheat bran and honey bread held likely to be
confused with MARTIN’S for cheese).
Opposers argue that cereal and yogurt are sufficiently
related to “give rise to the mistaken belief that they come
from a common source” because 1) as breakfast foods they
compete against one another for a share of the consumer’s
market basket and breakfast table, 2) they are commonly
eaten together and, as such, are complementary products, and
3) yogurt is within opposers’ natural zone of expansion.
In their opening brief, opposers assert that “[g]iven
the close and complementary relationship between yogurt and
ready-to-eat cereal, there is a strong danger that the
public will mistakenly assume an association between yogurt
and cereal products both using TOTAL marks.” Br. p. 1.
Applicant is correct in its statement of the law that
foods, even “breakfast foods,” are not per se related.
However, the evidence of record clearly establishes a close
relationship between opposers’ ready-to-eat cereal and
applicant’s yogurt given consumers’ longstanding mixing of
these types of products and the circumstances surrounding
their marketing.21

21 Applicant seeks to differentiate the products by essentially
cordoning off Greek strained yogurt from yogurt generally and,
thus, minimize the weight of opposers’ evidence regarding the
competitive and complementary nature of the goods. First, except
for application Serial Nos. 75597291 and 75597292, which list
“set yogurt” and “strained yogurt” respectively, the remaining
applications merely list yogurt and are not specific as to Greek
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
33
Based on the evidence of record we find that:22
• Yogurt and ready-to-eat cereal are viewed and
consumed as breakfast foods;23
• Yogurt and cereal compete for a share of
consumers’ market baskets and breakfast tables;24
• Consumers mix and consume yogurt and cereal
together;25
• Consumers are regularly exposed to yogurt and
cereal combined as a food product, both in the
marketplace as a parfait and in the media in the
form of information about eating options.26

or strained. See In re La Peregrina Ltd., 86 USPQ2d 1645, 1646
(TTAB 2008) (“it is the identification of goods that controls,
not what extrinsic evidence may show about the specific nature of
the goods”). Moreover, all yogurt has multiple uses and the fact
that applicant’s yogurt is consumed at other meals or used as an
ingredient for other dishes does not obviate the fact that it is
consumed at breakfast, either with cereal or instead of it.

22 We cite to merely a representative sample from this voluminous
record.

23 Clark Test. pp. 171-72; JA00128-129; Michele S. Meyer,
opposers’ President, Small Planet Foods, Natural and Organic
Division, (hereinafter Meyer) Test. pp. 105-6; JA00622-623;
O’Grady Test. p. 4, 47, 80-82, 96, 146; JA00691-738.

24 Id.

25 Id. See also Opp. 3rd NOR 0633, 0756; JA07590, 7677; Opp. Exh.
48; JA02447-2449; App. Exh. 184; JA01481. Much of the evidence
here is under seal, however, suffice it to say that yogurt and
cereal strongly skew as breakfast items in the consumers’ mind
and consumers frequently mix in various items with yogurt,
including cereal.

26 O’Grady Test. pp. 96, 146; JA00708, JA00738; Mindy Herman,
Herman Group Inc., (hereinafter Herman) Test. pp. 31-38, JA00447-
454.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
34
Thus, the record clearly supports the complementary and
competitive relationship between cereal and yogurt and the
likely confusion resulting from the use of a famous cereal
brand name on yogurt. Martin’s, 223 USPQ at 1290.
With regard to opposers’ position that yogurt is within
its natural expansion of trade, under this doctrine the
first user of a mark in connection with particular goods or
services possesses superior rights in the mark as against
subsequent users of the same or similar mark for any goods
or services which purchasers might reasonably expect to
emanate from it in the normal expansion of its business
under the mark.27 Mason Engineering and Design Corporation
v. Mateson Chemical Corp., 225 USPQ 956 (TTAB 1985).
Generally, this doctrine is used in the context of parties’
dueling claims of priority. Id. (applicant argued it had
priority because opposer’s goods were within applicant’s
zone of expansion of the goods in its prior registration).
But see Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650 (TTAB 2002) (evidence of licensing ROADRUNNER mark on
wide variety of goods and use of another mark BUGS BUNNY on
maps supported finding that road maps were within the

27 Applicant cites to Accu Personnel, Inc. v. Accustaff, Inc., 30
USPQ2d 1497, 1507 (D. Del. 1994). However, that case involves
another species of “zone of expansion” that concerns the
geographic extent of use and a plaintiff’s natural, geographic
zone of expansion. That is not in issue in this case. Before
the Board this type of expansion is more relevant in a concurrent
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
35
natural area of expansion of products for plaintiff); May
Department Stores Co. v. Prince, 200 USPQ 803 (TTAB 1978)
(shampoo is natural expansion from plaintiff’s health and
beauty aids inasmuch as shampoo falls within the category of
health and beauty aids). Moreover, this doctrine requires a
specific analysis that does not appreciably add to our
understanding of the relatedness of the goods in this
case.28
Opposers’ arguments and evidence presented under this
doctrine are better analyzed by simply adding to our
understanding of consumer perceptions regarding these goods

use proceeding. See Weiner King, Inc. v. The Wiener King Corp.,
615 F.2d 512, 204 USPQ 820 (CCPA 1980).
28 The factors to be considered are 1) whether the second area of
business (that is, the subsequent user’s area of business, into
which the first user has or potentially may expand) is a distinct
departure from the first area of business (of the prior user),
thereby requiring a new technology or know-how, or whether it is
merely an extension of the technology involved in the first area
of business, 2) the nature and purpose of the goods or services
in each area, 3) whether the channels of trade and classes of
customers for the two areas of business are the same, so that the
goodwill established by the prior user in its first area of
business would carry over into the second area, 4) whether other
companies have expanded from one area to the other, and 5) the
determination must be made on the basis of the circumstances
prevailing at the time when the subsequent user first began to do
business under its mark, i.e., what was “natural” in the relevant
trade at that time. Mason, 225 USPQ 956 at 962.

As noted in the McCarthy treatise, this doctrine “appears to be
no more than a specific application of the familiar ‘related
goods’ test. The ‘natural expansion’ thesis seems to be nothing
more than an unnecessarily complicated application of the
likelihood of confusion of source or sponsorship test to a
particular factual situation. If the ‘intervening’ use was
likely to cause confusion, it was an infringement, and the senior
user has the right to enjoin such use, whether it had in fact
already expanded itself or not.” McCarthy, J.T., McCarthy on
Trademarks and Unfair Competition §24:20 (4th ed. updated 2011).
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
36
and whether they are related in the minds of consumers in a
way that is likely to cause confusion.
The record shows that opposers, through their Yoplait
Division, have a history of making and selling yogurt. It
is undisputed in the record that, in the past, opposers have
sold a yogurt with grains already mixed in and with grains
as a mix-in packaged on the top cap of the yogurt container.
O’Grady Test. pp. 92-96; JA00734-738. Starting in
approximately 2007, opposers began using their cereal brand
names TRIX and FIBER ONE on their Yoplait branded yogurt.
O’Grady Test. pp. 92-96; JAO0734-738; Meyer Test. pp. 112-
113; JA00629-630). Examples of packaging are shown below:

29 30
Opposers cross-promote their yogurt and cereal
products, as shown by the cereal packaging below.31

29 Opp. Exh. 82; JA03086.

30 Opp. Exh. 84; JA03089.
31 Opposers also engage in a seasonal cross-marketing associated
with breast cancer awareness promotion and cross promotion in
relation to health benefits and breakfast options. O’Grady Test.
p. 57; JA00700.

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
37
32
In addition, opposers offer cereal with “yogurt coated
clusters.”33
34
At a minimum, this evidence shows that 1) a natural
progression reflecting consumers’ eating habits, namely
mixing cereal with yogurt, has occurred in the marketplace,
as yogurt is sold with a packet of cereal to mix in or with
the cereal brand name used for the yogurt itself, and 2)
consumers are exposed to yogurt and cereal being either
marketed together or cross marketed.

32 Opp. Exh. 45; JA02436.
33 This product is not actually yogurt, although it is yogurt-
flavored.

34 Opp. Exh. 46; JA02438. See also Clark Test. pp. 168-169, 173;
JA00125-126, 130. During this lengthy litigation opposers also
offered, for a time, a TOTAL branded yogurt-flavored cereal.
Opp. Exh. 14; JA02285; Clark Test. pp. 40-41; JA00054-55.

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
38
The evidence of record supports a finding that yogurt
and ready-to-eat breakfast cereal are related in the minds
of consumers such that use of a similar mark, in particular
a famous mark, would give rise to a likelihood of
confusion.35 Martin’s Pastry, 223 USPQ 1289.
With regard to the channels of trade and classes of
purchasers, absent restrictions in the identifications as to
trade channels and purchasers, we must presume that the
parties’ goods would be sold in all ordinary channels of
trade for those goods. See Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002); and Octocom, 16 USPQ2d at 1787.
The parties’ goods are simple consumer food items that
would be sold wherever groceries are sold and the record
establishes that cereal and yogurt are sold in the same
stores, including grocery stores, convenience stores,
drugstores, and mega stores. As such, the channels of trade

35 Even applicant has marketed a product that combines cereal in
yogurt. See O’Grady Test. Exh. 94 (page from applicant’s website
displaying yogurt product that contains cereal and fruit);
JA03127. However, based on this record this product is not
marketed in the United States.

Opposers’ evidence of third-party registrations submitted to show
yogurt and cereal registered under a single mark, has little
probative value. Many are registered for a wide range of goods
under Section 44 and, as such, have no probative value on this
point. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993) (third-party registrations issued under Section 44(e)
of the Trademark Act, without any use in commerce basis, have
very little persuasive value). One, Registration No. 3230950 for
the mark YOVANNA for, inter alia, “yogurt ... granola, granola-
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
39
and purchasers overlap. However, as has long been held, the
presence of goods in the same store does not necessarily
lead to the conclusion that confusion would arise under such
conditions. Interstate Brands Corp. v. Celestial Seasonings
Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA 1978); Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). In this regard, while cereal is
frequently in the center aisle and yogurt is in the
refrigerated section on the perimeter of a store, the record
shows increasing utilization of smaller refrigerated units,
display bunkers, which are used in grocery stores where
dairy products, including yogurt, are placed next to cereal.
Meyer Test. 101-4; JA00618-621; O’Grady Test. pp. 56-57;
JA00699-700. Further, the record shows that opposers
promote cereal in the dairy aisle and yogurt in the cereal
aisle. Opp. Exh. 81; JA03057-3085; O’Grady Test. 57-59;
JA00700-702. In view of these marketing conditions within
the overlapping channels of trade, this factor tips in favor
of opposers.
Finally, not only do the purchasers overlap in general
inasmuch as these are relatively low-cost food items
purchased by a broad range of ordinary people, more
specifically, there is a strong overlap in the parties’
consumer base in the sector of the health-conscious

based snack bars,” while on point, is not by itself enough upon
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
40
consumer, which is reflected in both parties’ advertising.
Consequently, these products are targeted at and purchased
by the same types of consumers. O’Grady Test. pp. 32-33,
81; JA00681-682, 724; Opp. Exh. 48; JA02447-2449; Clark
Test. 182-83; JA00136-137.
As to the conditions of purchase, groceries are
generally purchased on impulse at the shelf and the consumer
decision is made fairly quickly. Meyer Test. 95-105;
JA0612-622; O’Grady Test. pp 60-63; JA00703-706. In
addition, the record shows the goods involved are relatively
inexpensive. Clark Test. p. 272; JA00198; Filippou Test.
pp. 359-60; JA0417-418. Generally, purchasers of casual,
low-cost ordinary consumer items exercise less care in their
purchasing decisions and are more likely to be confused as
to the source of the goods. Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281
(Fed. Cir. 1984); and Eveready Battery Co. v. Green Planet
Inc., 91 USPQ2d 1511 (TTAB 2009). Although some of the
parties’ more health-conscious consumers may be more careful
in their purchase, we must base our decision on the least
sophisticated potential purchasers. E.g., Giersch v.
Scripps Networks Inc., 90 USPQ2d 1020, 1027 (TTAB 2009)
(citing Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301,
1306 (TTAB 2004)).

which to base a finding of relatedness.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
41
Similarity of the Marks
We turn now to a consideration of the first du Pont
factor, i.e., whether applicant’s marks that incorporate the
term TOTAL and opposers’ mark TOTAL are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source, sponsorship or
affiliation of the goods offered under the respective marks
is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
For our analysis, we separate the 15 marks into two
sets of applications. Opposers, it appears, believe the
marks should all be considered together, arguing that
“[applicant] seeks to register a family of fifteen marks for
its TOTAL brand yogurt ... [such that] TOTAL is the family
name (in this case, the product brand) that unites all
fifteen trademarks for varieties of [applicant’s] TOTAL
yogurt [and i]n comparing [applicant’s] family of TOTAL
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
42
marks to [opposers’] TOTAL mark, the question is not whether
each of [applicant’s] marks is similar to the TOTAL mark,
but whether the family name TOTAL is similar to [opposers’]
TOTAL mark.” Br. p. 34.
To be clear, as noted infra, because each application
stands alone we must make our determination as to each mark
in each application. The issue here concerns the marks
which applicant seeks to register, not simply one component
of them; while some features of applicant’s marks may be
more prominent than others, in the end we must consider each
of applicant’s marks as a whole. Moreover, in determining
likelihood of confusion, we consider whether each of
applicant’s separate marks is similar to either of opposers’
marks. Opposers’ reliance on Black & Decker Corp. v.
Emerson Elec. Co., 84 USPQ2d 1482 (TTAB 2007) is misplaced.
In that case, the Board found that the plaintiff had
established a family of “HOG” marks, and that applicant’s
separate marks DIRT HAWG and WATER HAWG would be perceived
as part of plaintiff’s family. However, for ease of
explanation, it is appropriate to group applicant’s marks
for a similarity analysis where similar characteristics
exist that lead to likely confusion.
The first set of seven includes the marks in
Application Serial Nos. 75597291; 75597292; 76016809;
76016810; 76016811; 76016812; and 76016813. See supra. In
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
43
this set of seven applications, the word TOTAL is clearly
the most prominent and memorable component of the mark. All
of the additional English wording is descriptive, and has
been disclaimed: “sheeps’ yogurt,” “authentic Greek
tzatziki,” “light, the authentic Greek strained yogurt,”
“with Greek honey the authentic Greek strained yogurt,”
“2%,” and “cherry, the authentic Greek strained yogurt.”
The design elements comprise a simple background
design, for example the lines in Application Serial No.
76016812, or are visually suggestive of the ingredients or
origin of the product, for example, the sheep in Application
Serial No. 75597291, the honeycomb and Greek ionic columns
in Application Serial No. 76016811, the traditional Greek
architecture in Application Serial No. 76016809, and the
cherry and Greek ionic columns in Application Serial No.
76016813.36 The word ΦΑΓΕ (FAGE) appears in Greek lettering
in each of these marks. To the American consumers who
cannot read or recognize the Greek alphabet, this would
appear as a design element, or, at a minimum, not be
pronounceable and not used by the consumer to call for the

36 Opposers also argue that the similarity is “compounded by
[applicant’s] decision to use font, styling, and color schemes on
its packaging that are quite similar to TOTAL cereal.” Reply Br.
p. 10. As to any similarity in color, applicant’s drawings are
in black and white and applicant does not claim color as a
feature of the mark. While we may consider trade dress to fully
address the question of commercial impression, in this case we
find it unnecessary to do so, given the other points of
similarity. Kenner Parker Toys Inc., 22 USPQ2d at 1458.

Opposition Nos. 91118482; 91118950; 91155075; and 91182937
44
goods. Moreover, because of this, it is unlikely to be
perceived by such consumers as a house mark.
We further find that the common element TOTAL evokes
the same meaning of “complete nutrition” in applicant’s and
opposers’ marks. See Opp. Exhs. 1, 3; JA02272, 2274; App.
Exhs. 176, 178; JA01349-1374, 1377-1382.
Clearly, in these marks consumers will focus on the
word TOTAL as the source-identifying element. It is well
settled that marks must be considered in their entireties,
not dissected or split into component parts and each part
compared with other parts. It is the impression created by
the involved marks, each considered as a whole, that is
important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). However, “[t]hat
a particular feature is descriptive [or otherwise lacking in
distinctiveness] ... with respect to the involved goods or
services is one commonly accepted rationale for giving less
weight to a portion of a mark.” In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) Moreover,
in general, wording dominates over design. In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
The second set of eight marks includes Application
Serial Nos. 77027793; 77037808; 77037835; 77037851;
77037869; 77037897; 77037905; and 77037924. See supra.
This group of marks, wherein the TOTAL portion is depicted
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
45
in smaller font in the middle of the marks, was adopted in
2006, six years after the original oppositions were filed
and about midway through this litigation.
The analysis is the same with regard to the other
wording and design elements present in these marks. As
compared to the descriptive wording and the design elements,
the word TOTAL continues to be more dominant, despite its
diminution in size. However, in these marks, the additional
word FAGE (this time in Roman letters), presented in larger
typeface and emphasized by the background banner design is
also a strong source identifier and, as applicant argues,
could be perceived as a house mark. The problem, however,
is that even if consumers perceive these marks such that
FAGE is the house mark and TOTAL is the product mark, this
would not dispel likely confusion as to sponsorship or
affiliation. In general, use of a house mark does not
obviate confusion. In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010).
The exceptions to this general rule are where 1) the
marks in their entireties convey significantly different
commercial impressions, or 2) the matter common to the marks
is not likely to be perceived by purchasers as
distinguishing source because it is merely descriptive or
diluted. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238,
73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
46
create different commercial impressions); Citigroup Inc. v.
Capital City Bank Group, Inc., 94 USPQ2d 1645 (TTAB 2010),
aff’d, 637 F.3d 1344, 98 USQ2d 1253 (Fed. Cir. 2011)
(CAPITAL CITY BANK held not likely to be confused with
CITIBANK). Neither exception applies here.
Applicant argues that its “famous” house mark, FAGE,
sufficiently distinguishes the marks with the common element
TOTAL. We first note that the du Pont factors only list
fame of the prior mark as relevant to our analysis, and the
fame of a prior mark under our jurisprudence does not
minimize confusion but rather is a factor strongly
supporting a finding of likely confusion. Kenner, 22 USPQ2d
at 1456-57. Moreover, a junior party’s fame cannot excuse
likelihood of confusion created by its use of a mark similar
to one already in use. See In re Christian Dior, S.A., 225
USPQ 533 (TTAB 1985) (inclusion of applicant’s house mark in
LE CACHET DE DIOR does not obviate confusion with
registrant’s CACHET mark and in fact may serve to aggravate
confusion).
In any event, while the record establishes that
applicant’s TOTAL yogurt has been successful, the record
does not show the level of advertising and household
penetration of the FAGE mark needed to establish fame.
Of course, where the common element of the marks is
“weak” in that it is highly suggestive of the goods, other
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
47
matter in the marks may be sufficient to avoid likely
confusion. In re Bed & Breakfast Registry, 791 F.2d 157,
229 USPQ 818 (Fed. Cir. 1986). However, here opposers’
TOTAL mark is famous, and while both marks are suggestive,
we do not find them to be so highly suggestive that the use
of applicant’s house mark FAGE (along with other descriptive
and non-distinctive matter) is sufficient to eliminate
likely confusion with a famous mark, when used on related
goods, in particular in a marketplace where consumers
themselves combine these goods and are exposed to food
products offered for sale that combine these goods and brand
names. The facts presented here, where opposers’ asserted
mark, TOTAL, is famous, are quite different from the facts
in General Mills Inc. v. Kellogg Co., 824 F.2d 622, 3 USPQ2d
1442 (8th Cir. 1987), relied upon by applicant. In that
case, Kellogg claimed that General Mills’ use of OATMEAL
RAISIN CRISP infringed on its mark APPLE RAISIN CRISP;
however, the court found that plaintiff’s mark APPLE RAISIN
CRISP was weak. See also, Worthington Foods Inc. v. Kellogg
Co., 732 F. Supp. 1417, 14 USPQ2d 1577 (S.D. Ohio 1990)
(HEARTWISE weak and use of house marks served to dispel
likely confusion). Given the fame of opposers’ mark, the
differences in overall commercial impression are not
sufficient to outweigh the similarity caused by use of the
identical term TOTAL.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
48
In view of the above, we find that the points of
similarities in sound, appearance, connotation and overall
commercial impression, outweigh the dissimilarities. Thus,
we find each of applicant’s marks to be similar to opposers’
TOTAL mark.
Third-Party Use/Failure to Police
Applicant also submitted evidence and argument on the
du Pont factors of third-party use and opposers’ failure to
police their mark.
With regard to third-party use of the term TOTAL, the
vast majority of the evidence pertains either to very
unrelated products, e.g., COLGATE TOTAL for toothpaste, OLAY
TOTAL EFFECTS for skin cream, TIDE TOTAL CARE for laundry
detergent, or for more closely related products that use the
term “totally” as part of an informative phrase, e.g.,
TOTALLY VANILLA for yogurt or ANNIE’S HOMEGROWN TOTALLY
NATURAL HONEY BUNNIES for toasted oat and corn cereal.
Overall, we do not find this evidence sufficient to limit
the scope of protection of the famous TOTAL mark, and in
particular when it is presented and would be perceived by
consumers as a brand name.
Applicant specifically focuses on one third-party use
and registration by Bally Total Fitness of its mark BALLY
TOTAL FITNESS on a variety of goods, including snack bars,
yogurt-based beverages, grain-based food and frozen yogurt.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
49
As opposers state, and the record reflects, “Bally’s has
never sold its products in grocery stores, a fact that
General Mills confirmed when it decided not to prosecute to
conclusion its opposition to the Bally’s marks.” Opp. Br.
pp. 44-45 and citations to the record.
Suffice it to say, we cannot find, based on the BALLY
TOTAL FITNESS marks combined with applicant’s registration
for FAGE FETA TOTAL for cheese, that opposers have
“abandoned” TOTAL or even that this “acquiescence to use and
registration” of these specific marks makes “indefensible”
opposers’ position that use of TOTAL as a brand name for
yogurt is likely to cause confusion. App. Br. pp. 36-37.
Actual Confusion
Applicant argues that despite over twelve years of
concurrent use of the products under the brand name TOTAL
there is no evidence of actual confusion.37 “A showing of
actual confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not necessarily true, however. The lack of evidence of
actual confusion carries little weight.” Majestic, 65
USPQ2d at 1205, citing J.C. Hall Co. v. Hallmark Cards,
Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965). See
also Herbko Int’l, Inc. Kappa Books, Inc., 64 USPQ2d 1375,

37 We have given opposers’ purported “anecdotal instances of
consumer confusion,” namely a “tweet” found on Twitter by some
person in the virtual world, no probative value.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
50
1380 (Fed. Cir. 2002) (showing of actual confusion not
necessary to establish a likelihood of confusion).
The lack of evidence of actual confusion occurring over
a significant period takes on greater weight if it can be
shown that there have been meaningful opportunities for such
confusion to occur. Based on this record, the time period
for which a meaningful opportunity to exist is somewhat more
limited than is apparent at first blush. Contrary to
applicant’s claim that the time period of meaningful
contemporaneous use is twelve years, the significant period
is closer to three years. Although applicant’s yogurt has
been sold in the United States since 1998, during the first
year sales were limited to local ethnic stores. Filippou
Test. pp. 41-43; JA00293-296. Thereafter, applicant began
selling its yogurt in upscale or specialty grocery stores
such as Whole Foods and Trader Joe’s. Id. at 44, 349;
JA00297, 414. There is nothing in the record to establish
that opposers sell their TOTAL cereals in these stores.
Over time, applicant expanded into more “mass market” stores
such as Safeway, Publix and Costco, both in terms of
geographic distribution and sales. Id. pp. 204-206;
JA00376-378. Applicant relies on certain testimony to show
that ample opportunity for actual confusion has existed,
however, this testimony, at best, is vague as to where and
when applicant’s products were sold and, at worst, confirms
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
51
that it was not until 2008 when applicant completed its
production plant in New York state that it greatly expanded
into more mass market retailing nationwide. App. Fifth NOR,
Exh. 6 pp. 38-39 (2008 deposition of Mr. Ioannis
Papageorgiou, president of Fage USA Dairy Corporation);
JA05907-5908. See also, App. Fifth NOR, Exh. 7 pp. 26, 75
(2008 deposition of Mr. Antonios Maridakis, Executive Vice
President, Sales and Marketing for Fage USA Dairy
Corporation); JA05918; 5921.
At a minimum, the record is not clear as to when
applicant expanded its distribution to include the same
stores where opposers sell their TOTAL cereal.
Applicant’s advertising history followed a similar
pattern, starting as essentially word-of-mouth and then
expanding into more high-end exposure in such magazines as
Vogue, Gourmet, Food & Wine and The New Yorker, and sampling
tours in the Hamptons, Beverly Hills, and Miami. Later,
applicant’s advertisements and media mentions expanded into
more general interest publications. In sum, based on this
record, meaningful opportunities for actual confusion to
occur span at most three years.
We add that, with these grocery products, it is not
clear from the record that, even if confusion did occur,
consumers would report such confusion, making evidence of
actual confusion difficult to obtain. In general, evidence
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
52
of actual confusion is notoriously difficult to come by and,
in particular, where relatively inexpensive items such as
food products are involved, confusion about sponsorship or
affiliation would not necessarily be brought to the
attention of either applicant or opposers. Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1623
(TTAB 1989). As to this factor, we find it to be neutral,
and to the extent any inference could be made in applicant’s
favor, it would not outweigh the other relevant du Pont
factors discussed herein.
Finally, in connection with its argument that there is
no evidence of actual confusion, applicant requests the
Board to make an adverse inference based on opposers'
failure to conduct a likelihood of confusion survey. It is
well-established that we do not make such adverse
inferences. McDonald’s Corp. v. McClain, 37 USPQ2d 1274,
1277 (TTAB 1995).38
DETERMINATION
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto, including
any evidence and arguments not specifically mentioned or
discussed in this opinion. In balancing the relevant

38 We note that if applicant believed that a survey would have
supported its position it was, of course, free to conduct one
itself.
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
53
factors, we conclude that because opposers’ TOTAL mark is
famous, the similarities in the marks in their entireties
outweigh the dissimilarities, the goods are related, travel
in the same channels of trade and are purchased by the same
consumers, the goods are low-cost items such that the
conditions of purchase are more vulnerable to confusion,
third-party use is either not relevant or minimal, and the
lack of actual confusion is not highly probative, there is a
likelihood of confusion between opposers’ TOTAL marks and
applicant’s TOTAL marks.
Finally, it is a well-established principle that one
who adopts a mark similar to the mark of another for the
same or closely related goods does so at his own peril, and
any doubt as to likelihood of confusion must be resolved
against the newcomer and in favor of the prior user or
registrant. See W.R. Grace & Co. v. Herbert J. Meyer
Industries, Inc., 190 USPQ 308 (TTAB 1976). The Court of
Appeals for the Federal Circuit in Recot took this principle
even further in the case of a famous mark. “When a famous
mark is at issue, a competitor must pause to consider
carefully whether the fame of the mark, accorded its full
weight, casts a ‘long shadow which competitors must avoid.’”
Recot, 54 USPQ2d 1894 at 1897. The Court went on to quote
Nina Ricci S.A.R.L. v. E.T.F. Enters., 889 F.2d 1070, 1074,
12 USPQ2d 1901, 1904 (Fed. Cir. 1989): “There is no excuse
Opposition Nos. 91118482; 91118950; 91155075; and 91182937
54
for even approaching the well-known trademark of a
competitor.”
In view of our determination as to the likelihood of
confusion claims, we do not reach the claims of dilution by
blurring.
Decision: Opposition No. 91155075, which involves
Application Serial No. 76016809, is dismissed as to the
goods in International Class 30 and sustained as to the
goods in International Class 29. Application Serial No.
76016809 will proceed to registration solely with respect to
the goods in International Class 30. The remaining
oppositions are sustained.