Guiltless Gourmet, Inc.v.Sammie Miles

Trademark Trial and Appeal Board

Oct 20, 1998

No. 91095471 (T.T.A.B. Oct. 20, 1998)

Paper No. 50
HANAK/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 10/20/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Guiltless Gourmet, Inc.
v.
Sammie Miles
_____
Opposition No. 95,471
to application Serial No. 74/452,855
filed on November 1, 1993
_____
Roxanne Eades Morgan of Felsman, Bradley, Gunter & Dillion
for Guiltless Gourmet, Inc.
Sammie Miles, pro se.
______
Before Seeherman, Hanak and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Sammie Miles (applicant) seeks to register GUILT FREE
GOURMET for “educational services, namely conducting cooking
classes and distributing course materials in the form of
books and videos on the subject of low fat recipes.” The
application was filed on November 1, 1993 with a claimed
Opposition No. 95,471
2
first use date of November 10, 1990. Applicant disclaimed
the exclusive right to use the word GOURMET apart from the
mark in its entirety.
In its amended notice of opposition, Guiltless Gourmet,
Inc. (opposer) alleged that it is the owner of registrations
of GUILTLESS GOURMET in typed drawing form for “tortilla
chips and spicy tomato-based salsa dip” (Registration No.
1,816,047) and for “dairy-based dips and bean-based dips”
(Registration No. 1,937,014). In addition, opposer alleged
that it is the owner of Registration No. 1,927,843 for the
mark GUILTLESS GOURMET’S HEALTHY SNACKING NEWSLETTER in
typed drawing form for “periodical newsletter in the fields
of health and diet.” With regard to this latter
registration, opposer disclaimed the exclusive right to use
HEALTHY SNACKING NEWSLETTER apart from the mark in its
entirety. Opposer alleged that the “continued use” of
applicant’s mark “is likely to cause confusion, deception
and mistake with opposer’s marks.” (Amended notice of
opposition paragraph 13).
Applicant filed a response which this Board construed
as a general admission of opposer’s ownership of the
aforementioned registrations, but also as “a continuing
denial of any likelihood of confusion.” (Board order of
June 12, 1997 at page 2).
Opposition No. 95,471
3
Both parties filed briefs. Neither party requested a
hearing.
The record in this case includes the discovery
deposition of applicant (made of record by opposer), the
testimony deposition of Barton Glaser (opposer’s vice
president of finance), the testimony deposition of applicant
and the testimony deposition of Pauline Cady (an
acquaintance of applicant). In addition, opposer properly
made of record certified status and title copies of its
aforementioned registrations.
At the outset, we note that priority is not an issue in
this proceeding because opposer has properly made of record
its registrations of GUILTLESS GOURMET and GUILTLESS
GOURMET’S HEALTHY SNACKING NEWSLETTER. See King Candy v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
In 1989 opposer commenced sales of its GUILTLESS
GOURMET baked tortilla chips. From the beginning, opposer
has promoted its GUILTLESS GOURMET products as non-fat or
low-fat. Opposer has employed words such “low fat,” “fat
free,” “baked not fried” and “no oil” in a prominent manner
on virtually all of its product packaging and promotional
materials for its GUILTLESS GOURMET products. In short, all
of opposer’s GUILTLESS GOURMET products have been promoted
as “healthy” products that are good for consumers. By 1996,
Opposition No. 95,471
4
opposer’s GUILTLESS GOURMET tortilla chips had become the
second largest selling brand in the better-for-you tortilla
chip market. Only BAKED TOSTITOS had a higher market share.
Opposer’s GUILTLESS GOURMET chips and dips are sold in
supermarkets, mass merchandisers (such as K-mart), health
food stores and specialty gourmet stores. In 1993 opposer
began distributing a newsletter under the mark GUILTLESS
GOURMET’S HEALTHY SNACKING NEWSLETTER. This newsletter has
been continuously distributed since 1993 not only to
consumers, but also to health professionals who are in a
position to educate others on healthy eating. GUILTLESS
GOURMET’S HEALTHY SNACKING NEWSLETTER contains recipes,
educational materials regarding nutrition and health, and
product information and coupons for GUILTLESS GOURMET chips
and dips.
Applicant refers to herself as SAMMIE MILES, THE GUILT
FREE GOURMET. Applicant conducts classes and seminars under
the service mark GUILT FREE GOURMET. In addition, applicant
has published a cookbook with over 1,200 low-fat recipes
which is titled GUILT FREE GOURMET. The title page of this
book indicates that is was first printed in 1994. Because
priority is not an issue in the proceeding inasmuch as
opposer has made of record its aforementioned registrations,
we will not dwell on when applicant first used the mark
GUILT FREE GOURMET. In her brief, applicant claims that she
Opposition No. 95,471
5
first used this mark in 1988 “as proven by the deposition of
Pauline Cady.” (Applicant’s brief page 5, unnumbered).
However, Ms. Cady testified that in late 1988 and early
1989, she did not know applicant as the GUILT FREE GOURMET.
(Cady deposition pages 8-11). Ms. Cady also testified that
at that time, applicant did not have, to Ms. Cady’s
knowledge, any books or other printed materials which she
utilized in conducting her cooking classes. (Id.).
Applicant testified that, in the past, she recommended
to others opposer’s GUILTLESS GOURMET chips. (Miles
discovery deposition page 41). Indeed, applicant even
recommended opposer’s GUILTLESS GOURMET chips and dips on a
television program. (Miles discovery deposition page 45).
Finally, applicant testified that when she selected the mark
GUILT FREE GOURMET, she believed that the GUILT FREE portion
of the mark was unique. (Miles testimony deposition page
27). Indeed, at the time she selected her mark, applicant
was unaware of the use by any other company of GUILT FREE,
and that subsequently she learned of only one other company
using this term, namely, GUILT FREE ICE CREAM COMPANY.
(Id.).
Turning to the issue of likelihood of confusion, it
appears that it is applicant’s position that there is no
likelihood of confusion because her services are different
from applicant’s goods. (Applicant’s brief page 3,
Opposition No. 95,471
6
unnumbered). As applicant stated at page 42 of her
discovery deposition, “you’re [opposer] chips and dips and
things. I’m an author, a person, a minor educational [sic]
and video and things. It’s a gourmet book. It’s not chips
and dips.” As for opposer’s registration of GUILTLESS
GOURMET’S HEALTHY SNACKING NEWSLETTER for “periodical
newsletter in the fields of health and diet,” applicant
dismisses this registration by noting that “opposer started
distributing GUILTLESS GOURMET’S HEALTHY SNACKING NEWSLETTER
after these proceedings started.” (Applicant’s brief page
3, unnumbered). See also pages 42-43 of applicant’s
discovery deposition where applicant stated as follows:
“And I know you guys [opposer] have come out lately with a
newsletter, but that, too, was after me.”
Of course, what applicant fails to understand is that
because opposer has properly made of record its Registration
No. 1,927,843 for GUILTLESS GOURMET’S HEALTHY SNACKING
NEWSLETTER, opposer has superior rights in this mark over
applicant’s rights in her mark GUILT FREE GOURMET. In
comparing the goods set forth in opposer’s Registration No.
1,927,843 with the services as set forth in applicant’s
application, we find that they are clearly related.
Opposer’s goods consist of a newsletter in the fields of
health and diet. Applicant’s services include the
distribution of course materials (books) on the subject of
Opposition No. 95,471
7
low fat recipes. As applicant has noted on numerous
occasions, low fat recipes are one important factor
contributing to a proper diet and good health. Thus, not
only are the goods of opposer’s registration (newsletters)
similar in form to applicant’s course materials (books) in
that they are all printed matter, but in addition, both
opposer’s newsletters and applicant’s course materials
(books) cover subjects which are closely related and indeed,
in part, identical.
In comparing opposer’s mark GUILTLESS GOURMET’S HEALTHY
SNACKING NEWSLETTER and applicant’s mark GUILT FREE GOURMET,
it need hardly be said that the marks must be compared in
their entireties. However, in making this comparison, it is
not improper to give more weight to an arbitrary portion of
a mark and less weight to a descriptive or highly suggestive
portion of a mark. With regard to opposer’s mark, we find
that the dominant portion is GUILTLESS GOURMET’S. The
remaining portion (HEALTHY SNACKING NEWSLETTER) is
descriptive of the contents of opposer’s newsletter, and has
quite properly been disclaimed. On the other hand, not only
is the first portion (i.e. GUILTLESS GOURMET’S) of opposer’s
mark arbitrary, but in addition, it serves as a clear
reference to opposer’s GUILTLESS GOURMET chips and dips. As
previously noted, opposer’s GUILTLESS GOURMET tortilla chips
are reasonably well known in that they are the second
Opposition No. 95,471
8
leading selling brand of low-fat tortilla chips. Finally,
we note that applicant herself has acknowledged the
uniqueness of the GUILTLESS GOURMET’S portion of opposer’s
mark by stating that other than opposer and herself, she is
unaware of any other names or marks which include the words
“guilt” and “gourmet.” (Applicant’s testimony deposition
page 27).
Obviously, the most prominent portion of opposer’s mark
(GUILTLESS GOURMET’S) is extremely similar to applicant’s
mark GUILT FREE GOURMET in terms of visual appearance and
pronunciation. Moreover, in terms of meaning, the most
prominent portion of opposer’s mark and applicant’s mark are
virtually identical. The word “guiltless” is defined as
meaning “free from guilt.” Webster’s New World Dictionary
(2d ed. 1970).
Given the fact that opposer’s goods (newsletters in the
field of health and diet) are very similar to applicant’s
services which include the distribution of course materials
(books) on the subject of low fat recipes, we find that the
use of GUILTLESS GOURMET’S HEALTHY SNACKING NEWSLETTER on
the former and GUILT FREE GOURMET on the latter is likely to
result in confusion. Moreover, opposer’s Registration No.
1,927,843 depicts opposer’s mark GUILTLESS GOURMET’S HEALTHY
SNACKING NEWSLETTER in typed drawing form. This means that
opposer’s rights in this mark are “not limited to the mark
Opposition No. 95,471
9
depicted in any special form.” Phillips Petroleum v. C. J.
Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971).
Accordingly, in our likelihood of confusion analysis, we
“must consider all reasonable manners in which those words
[in opposer’s mark] could be depicted.” INB National Bank
v. Metrohost, 22 USPQ2d 1585, 1588 (TTAB 1992). Should
opposer depict its mark with GUILTLESS GOURMET’S in large
lettering on one line and HEALTHY SNACKING NEWSLETTER in
smaller lettering on a second line, then the similarities
between opposer’s mark and applicant’s mark GUILT FREE
GOURMET would be such that confusion is almost inevitable.
Decision: The opposition is sustained.
E. J. Seeherman
E. W. Hanak
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board