In-N-Out Burgersv.Peak Harvest Foods, LLC

Trademark Trial and Appeal Board

Sep 29, 2008

No. 91161044 (T.T.A.B. Sep. 29, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB Mailed: September 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In-N-Out Burgers

v.

Peak Harvest Foods, LLC
_______

Opposition No. 91161044
to Application No. 78287067
filed August 13, 2003

Oral Hearing May 28, 2008
_______

Edward O. Ansell, Law Office of Edward O. Ansell, for
opposer.

Peak Harvest Foods, LLC, pro se.
_______

Before Seeherman, Hairston, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of the following stylized
mark:

Opposition No. 91161044

2

for “dried fruit” in International Class 29.1
In-N-Out Burgers filed an opposition to registration,
alleging that applicant’s mark, when used in connection with
the identified goods, is likely to cause confusion in light
of opposer’s mark, QUALITY YOU CAN TASTE, previously used
and registered for restaurant services, hamburgers, french
fries, and computer services. Trademark Act § 2(d); 15
U.S.C. § 1052(d). Opposer further alleged that
“[a]pplicant’s mark so resembles [o]pposer’s previously
used, registered, and famous marks ... as to be likely, when
used in connection with the goods set forth in [a]pplicant’s
application, to lessen the capacity of [o]pposer’s ... marks
to identify and distinguish opposer’s services and goods,
regardless of the presence or absence of competition between
Opposer and Applicant, or likelihood of confusion, mistake
or deception.” See Trademark Act § 43(c); 15 U.S.C.
§ 1125(c).
By its answer, applicant denied the salient allegations
of the notice of opposition. Following a trial on the
merits, the parties submitted briefs on the case,2 and an

1 Serial No. 78287067, filed August 13, 2003, based on an
allegation of use of the mark in commerce. First use, November
9, 2002; in commerce, April 1, 2003.
2 Opposer filed its reply brief December 3, 2007. On December 6,
2007, applicant filed a paper styled an “answer” to opposer’s
“December 03, 2007 motion....” The Trademark Rules permit the
filing of a brief by the opposer, a brief by the applicant, and a
reply brief by the opposer, but do not provide for the filing of

Opposition No. 91161044

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oral hearing was held.
For the sake of brevity, this opinion assumes
familiarity with the record, all of which has been carefully
considered. We have not attempted to discuss every argument
or objection to evidence; we focus instead on the evidence
and arguments most relevant to the ultimate issues in this
case.
I. The Record
A. Parties’ Submissions
The record consists of the pleadings, the file of the
subject application, and the following evidence submitted
during trial:
• Opposer’s first notice of reliance, filed 6/2/2005;
• Testimony of Arnold Wensinger, opposer’s general
counsel, taken July 29, 2005;
• Applicant’s notice of reliance, filed January 16, 2007;
• Testimony of John Rarick, Executive Manager of
applicant Peak Harvest Foods, LLC, taken January 8,
2007;
• Testimony of Edward Lilly, a food-packager to
applicant, taken January 9, 2007;
• Opposer’s second notice of reliance, filed August 30,
2007 as part of opposer’s rebuttal evidence; and
• Rebuttal testimony of Arnold Wensinger, taken August
23, 2007.

further briefs. Trademark Rule 2.128(a)(1). Accordingly,
applicant’s December 6, 2007, filing has not been considered.
Opposition No. 91161044

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B. Evidentiary Objections
1. Opposer’s Motion to Strike
Now pending is opposer’s October 22, 2007, renewed
motion to strike Mr. Rarick’s testimony and parts of
applicant’s notice of reliance. On February 26, 2007,
opposer had filed a motion to strike the same material, on
the grounds that (1) opposer allegedly “was not given a full
opportunity to cross examine the witness”;3 (2) Mr. Rarick’s
testimony was not taken in question and answer form; and (3)
certain documents submitted under applicant’s notice of
reliance are not appropriate for such submission. Pursuant
to an interlocutory order, opposer’s motion was denied as to
the first ground. As to the second and third grounds,
ruling on opposer’s motion was deferred, since a ruling on
those grounds would require an examination of the evidence
itself, and the Board will generally not examine the
evidence prior to final decision. The motion now before the
Board is opposer’s renewed objection to applicant’s
testimony and notice of reliance. The motion has been fully
briefed.
Opposer complains that Mr. Rarick’s testimony was not
presented in question and answer form. As opposer notes,

3 Due to circumstances we need not recount here, opposer did not
attend Mr. Rarick’s testimonial deposition in person or by
telephone. Opposer alleged that its inability to attend deprived
it of its right to participate in Mr. Rarick’s testimony.
Opposition No. 91161044

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the Trademark Rules provide that testimony in a Board
proceeding “shall be taken in answer to questions, with the
questions and answers recorded in their regular order by
the” officer before whom the testimony is given. Trademark
Rule 2.123(e)(2). Our reading of Mr. Rarick’s testimony
confirms that little, if any of it, could be characterized
as a question and answer exchange as is typical during
testimony.
The purpose of requiring testimony to be taken in a
question-and-answer format is not an empty formality.
Presenting testimony in this manner prevents counsel from
essentially testifying or telling a witness what he should
say, and provides the opposing party the opportunity to
object before an answer is given. But neither factor is
relevant here. No one “led” Mr. Rarick’s testimony or
suggested his answers. His testimony would not have changed
even if he had first stated proper questions and then
answered them himself. Moreover, the form of the testimony
did not deprive opposer of its right to object to Mr.
Rarick’s testimony, because opposer was not present.
But more importantly, the objection opposer raises to
Mr. Rarick’s testimony is an objection to the form of the
proffered testimony, and could have been easily remedied,
had the objection been made at the time. It is well-
established that such an objection is waived if “it is not
Opposition No. 91161044

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timely made during the deposition.” Fed. R. Civ. P.
32(d)(3)(B)(ii); see Trademark Rule 2.123(k). Opposer did
not attend the deposition and therefore did not raise the
objection at the time.
We are cognizant of opposer’s position – set out in its
original motion to strike – that its absence from the Rarick
deposition was not voluntary. Nonetheless, we see no error
in the Board’s June 15, 2007, order denying opposer’s motion
to strike, finding that opposer had the opportunity to
attend Mr. Rarick’s deposition, but did not do so.
Accordingly, we find that opposer’s objections as to the
form of the Rarick testimony were waived.4
Next, opposer argues that applicant inappropriately
submitted many documents under its notice of reliance. The
categories of materials which may be submitted under a
notice of reliance are limited, consisting only of (1) an
adverse party’s discovery deposition, answer to an
interrogatory, or admission to a request for admission,
Trademark Rule 2.120(j)(3)(i); (2) printed publications,
Trademark Rule 2.122(e); and (3) official records, id. We

4 Opposer argues that the “format [of applicant’s testimony] has
tended to obscure operative facts relating to the ultimate issues
in this proceeding which opposer needs to address,” but offers no
specifics. Mot. to Strike at 2. Further, opposer was able to
(and did) offer rebuttal testimony to clarify the facts. “Notice
will not be taken of merely formal or technical objections which
shall not appear to have wrought a substantial injury to the
party raising them....” Trademark Rule 2.123(j).
Opposition No. 91161044

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have considered applicant’s notice of reliance and we agree
that many of applicant’s submissions are inadmissible under
a notice of reliance.
Although applicant may have intended a number of the
proffered documents to be admissible as “printed
publications,” that term has a specific meaning as used in
Trademark Rule 2.122 with respect to evidence submitted in a
Board proceeding. “Printed publications” are generally
defined as “books and periodicals, available to the general
public in libraries or of general circulation among members
of the public or that segment of the public which is
relevant under an issue in a proceeding....” TBMP § 704.08
(2d ed. rev. 2004) (and cases cited therein). Accordingly,
documents such as letters, e-mail correspondence, web pages,
photographs, and the like, are all inadmissible under a
notice of reliance.
Likewise, pursuant to Trademark Rule 2.120(j)(3)(i),
certain discovery materials may be admissible under a notice
of reliance. That provision is limited, however, to the
adverse party’s depositions, and responses to
interrogatories, and responses to requests for admission.
Documents produced during discovery or a party’s own
interrogatory responses are generally not admissible under
this provision.
Finally, at the time of trial in this case, a party
Opposition No. 91161044

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could make its own registration of record by notice of
reliance only by filing a copy of the registration prepared
by the Patent and Trademark Office showing both current
status and title.
Accordingly, opposer’s motion is granted with respect
to the following exhibits to applicant’s notice of
reliance:5 E2, Q, T, V, W, X, Z, DD, EE, FF, GG, HH, II,
JJ, KK, PP, QQ, RR, TT, UU, VV, YY, ZZ, BBB, CCC, DDD, EEE,
FFF, GGG, HHH, III, LLL, MMM, and NNN.
2. Opposer’s Objections to Lilly Testimony
Opposer also objected to the testimony of applicant’s
witness Edward Lilly. Mr. Lilly testified that he has been
in the food packaging business for 20-22 years, Lilly Test.
at 15, and has packaged applicant’s foods for 3-3½ years,
id. at 17. During cross-examination, however, applicant
objected to questions about Mr. Lilly’s business and its
relationship to applicant. Specifically, applicant objected
to opposer’s request that Mr. Lilly state the name of his
business, Lilly Test. at 76, and that Mr. Lilly disclose in

5 Opposer also objected to a number of proffered items consisting
of excerpts from opposer’s own testimony and first notice of
reliance. While it was not necessary for applicant to submit
these items into evidence (as opposer had already done so),
applicant is entitled to rely on opposer’s evidence for any
purpose. Opposer has also objected to applicant’s submission of
previous motions and orders already in the file of this
proceeding. While these items are not evidence (and should not
have been submitted under a notice of reliance), they are part of

Opposition No. 91161044

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round numbers, “the annual amount [applicant] paid you for
the past three years,” Lilly Test. at 77. The basis for the
first objection was that the name of Mr. Lilly’s business is
“proprietary information.” The basis for the second
objection was stated by Mr. Lilly: “I protect the
confidentiality of our customers.” Id. Rather than answer
the questions under objection, the witness refused to
provide the information.
We find that both questions were relevant, and that
neither objection was justified. Mr. Lilly testified in
part about his business relationship with applicant, and how
applicant’s products are packaged. It was reasonable, on
cross-examination, for opposer to explore that relationship,
including the name of Mr. Lilly’s company and whether Mr.
Lilly was biased as a result of his business with applicant.
While we do not suggest that any business relationship
implies bias, opposer was within its rights to raise the
question. Further, it is difficult to see what legitimate
proprietary interest would have been violated by the
witness’s response to either question.6 Applicant cannot
rely on testimony about a business relationship and at the

the file of this proceeding and may be referred to as appropriate
in discussing the procedural history of the case.
6 To the extent that applicant was genuinely concerned about the
confidentiality of proprietary information, it could have agreed
to submit those portions of the Lilly testimony under seal, as
provided for by the Board’s rules. See Trademark Rule 2.126(c).
Opposition No. 91161044

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same time foreclose opposer’s exploration of it.
[U]nlike the practice in Federal district
courts, where testimony is given before a judge
who can immediately rule on objections, in Board
proceedings testimony is submitted in the form of
a deposition transcript, and the Board panel does
not review the testimony until final hearing. It
is therefore the general, and as far as the Board
is concerned, favored practice that questions are
answered subject to any objection which has been
made. Although a party's witness may refuse to
answer a question or, as in the present case, be
instructed by the party's attorney not to answer,
a refusal to answer may, if the objection is not
well taken, be construed against the non-answering
party.

See Levi Strauss & Co. v. R. Josephs Sportswear Inc.,
28 USPQ2d 1464, 1467 (TTAB 1993). “Because we find
[applicant’s] objections to be not well taken, we must
presume that the answers would have been adverse to
opposer's position.” Id. Accordingly, we presume that Mr.
Lilly’s testimony was to some extent influenced by his
business relationship with applicant.
Opposer objects to much of the rest of Mr. Lilly’s
testimony because the witness did not testify from personal
knowledge, nor was he qualified as an expert. In this
regard, Mr. Lilly testified about the predilections of
vegetarians and vegans, but admitted that he is neither; he
testified about opposer’s business, but admitted that he has
never visited one of opposer’s establishments; and he
testified about the meaning and commercial impression of the
parties’ marks, although he is not an expert in language or
Opposition No. 91161044

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trademarks or the businesses of the respective parties.
We again agree with opposer. It is clear that much of
Mr. Lilly’s testimony was not based on personal knowledge,
nor was he qualified as an expert witness in these fields.
Accordingly, his testimony about such matters has no
probative value. Fed. R. Evid. 701.
3. Applicant’s Objections
In its brief, applicant interposed numerous objections
to opposer’s testimony, exhibits, and notices of reliance.
See App. Br. at 30-43 (“All of Mr. Wensinger’s testimony is
objectionable as hearsay, incompetent, irrelevant or
otherwise objectionable”). Applicant further objected to
most or all of Mr. Wensinger’s rebuttal testimony and the
associated exhibits as being improper rebuttal. Id. at 31.
We have read opposer’s testimony applying the same
rules set out above with respect to applicant’s evidence.
Again, we will not discuss each objection.
We reject applicant’s characterization of all of
opposer’s testimony as hearsay, lacking in foundation, or
consisting of “altered” documents. See App. Br. at 32.
While some of applicant’s objections have merit, others do
not.
We reject applicant’s objection to Mr. Wensinger’s
initial testimony as lacking in foundation. Applicant did
not attend Mr. Wensinger’s first deposition, and thus did
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not raise its objections when the testimony was offered.
Had an objection been made on this basis when the testimony
was offered, counsel could have adduced additional facts
supplying a foundation for Mr. Wensinger’s testimony. But
having not timely objected, applicant has waived this
objection. Fed. R. Civ. P. 32(d)(3)(B)(ii); see Trademark
Rule 2.123(k).
On the other hand, Mr. Wensinger’s testimony regarding
events which occurred prior to his employment was clearly
not made on the basis of his first-hand knowledge. To the
extent it was not supported by documents regularly kept as a
part of opposer’s records, this testimony is hearsay, and
has not been considered.7 We have nonetheless considered
the documents introduced during Mr. Wensinger’s testimony
because they are corporate records, regardless of their date
of creation.
Applicant also complains that Mr. Wensinger’s testimony
is suspect because he is “biased.” We reject applicant’s
contention that Mr. Wensinger’s testimony “is suspect”
because he is employed by opposer. There is a distinction
between testimony regarding facts and opinion, and with
respect to the fact testimony, Mr. Wensinger’s testimony is
no more biased in this regard than is applicant’s.

7 We hasten to add that consideration of Mr. Wensinger’s
historical testimony would not change our ultimate decision.
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Likewise, we emphatically reject applicant’s contention
that Mr. Wensinger violated Patent and Trademark Rule 10.63
because he is a practitioner who has offered testimony on
behalf of his client. While Mr. Wensinger is opposer’s
general counsel, he has not appeared in this case as
opposer’s lawyer. The cited rule is part of Canon 5, which
states that “[a] practitioner should exercise independent
professional judgment on behalf of a client.” Patent and
Trademark Rule 10.61. Because Mr. Wensinger is not
representing his client before the Board, there is no
legitimate concern about the independence of his judgment.
Finally, applicant complains that Mr. Wensinger’s
rebuttal testimony exceeded the scope of applicant’s
testimony. As discussed above, there were numerous problems
with the Lilly testimony and applicant’s notice of reliance.
And while we have denied opposer’s motion to strike Mr.
Rarick’s testimony because opposer did not timely object to
it, the Rarick testimony was unfocused and in many cases of
questionable relevance.
We find that opposer’s rebuttal testimony and evidence
were a reasonable attempt to “deny, explain or otherwise
discredit the facts and witnesses of applicant.” The Ritz
Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1466, 1469
(TTAB 1990). Given the state of this record, we will not
attempt to precisely limn the scope of each fact introduced
Opposition No. 91161044

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during opposer’s rebuttal period and compare it strictly
with the scope of applicant’s evidence.
We have likewise considered applicant’s cross-
examination of Mr. Wensinger on rebuttal, for whatever
probative value it may be entitled to.
II. Applicable Law
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Rest. Enterp., Inc., 50 USPQ2d 1209 (TTAB 1999), and
cases cited therein.
Opposition No. 91161044

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We have made specific rulings on other items of
evidence below, as necessary.
III. Discussion
A. Background
1. Opposer
Opposer owns a chain of approximately 180 IN-N-OUT
BURGER restaurants which operate primarily on the West
coast.8 The restaurants serve hamburgers, cheeseburgers,
french fries, and soft drinks for consumption on or off the
premises. In addition to its IN-N-OUT BURGER mark, opposer
uses the trademark QUALITY YOU CAN TASTE in connection with
its restaurant services, and pleaded ownership of the
following trademark registrations9 (in typed format) for
this mark:
Reg. No. Goods/Services Date Issued
1090096 Restaurant Services (Class 42) Apr. 25, 1978
2604277 French fried potatoes for consumption on or off the premises (Class 29) Aug. 6, 2002
2634516 Computer services, namely, providing online databases in the field of mail
order merchandising services (Class 35); and Computer services, namely,
providing online databases in the fields of restaurant services and nutrition
(Class 42)
Oct. 15, 2002

8 Opposer did not offer clear testimony as to the number of
restaurants it operates. Applicant refers to opposer as having
177 to 200 locations, e.g., App. Br. at 28, which opposer did not
dispute, and opposer’s witness made mention of a “Store Number
178,” in discussing another matter, Wensinger Test. at 37.
9 Opposer submitted copies of these registrations, prepared by
the USPTO, showing status and title, with its notice of reliance.
See Trademark Rule 2.122(d)(2). In each registration, post-
registration filings under Trademark Act §§ 8, 9, and/or 15 have
been accepted, granted, and acknowledged at the appropriate
times.
We note that the ‘096 Registration, claiming dates of use and
use in commerce as of April 30, 1950, was assigned to opposer on
August 11, 1999. The original registrant appears not to have
been related to opposer.
Opposition No. 91161044

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2839431 Hamburger and cheeseburger sandwiches made-to-order for consumption
on or off the premises (Class 30)
May 11, 2004

In addition to its pleaded registrations, during
testimony opposer introduced Registration No. 2614730, for
the mark QUALITY YOU CAN TASTE for “clothing, namely,
shirts, caps and jackets,” in International Class 25.
Wensinger Test. at 14; Exh. 5. However, applicant objected
to consideration of this registration because it was not
pleaded in the notice of opposition. App. Br. at 1, 13.
We agree that this registration was neither pleaded as
a bar to registration nor was likelihood of confusion with
this mark tried by consent. See App. Br. at 17; Fed. R.
Civ. P. 15(b). Accordingly, we will not consider likelihood
of confusion as it specifically relates to the ‘730
Registration.
2. Applicant
On August 13, 2003, John C. Rarick filed the subject
application for registration of the mark QUALITY YOU CAN
CRUNCH for “dried fruits.” On October 15, 2003, Mr. Rarick
assigned the application to Peak Harvest Foods, LLC.10 Mr.

10 The assignment of the subject application to Peak Harvest
predated the commencement of this proceeding, and opposer
correctly named Peak Harvest as the defendant in its notice of
opposition. However, for reasons which are not clear, this
proceeding was instituted by the Board naming Mr. Rarick as the
sole defendant. The Board referred to Mr. Rarick as the
defendant until April 18, 2006, when an order was issued noting
the assignment and joining Peak Harvest as a party defendant.
This appears to have been an error. Because Peak Harvest was the
owner of the application at the time the opposition was filed and

Opposition No. 91161044

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Rarick is and has been the Executive Manager of Peak
Harvest.
Peak Harvest produces packaged dried apples. A package
of applicant’s product in the record displays the QUALITY
YOU CAN CRUNCH™ mark along with the designations PEAK
HARVEST™ FOODS, and CRUNCHY APPLE STIX™. Applicant sells
its products in natural food stores and convenience stores.
Rarick Test. at 45-46.
B. Standing and Priority
Opposer made its pleaded registrations of record, thus
establishing its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, priority is not an issue. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Further, as noted below, opposer has
established use of its mark at least as early as December
30, 1967, well prior to any date upon which applicant may
rely.

at all times thereafter, it should have been substituted for Mr.
Rarick as the sole defendant herein. See TRADEMARK BOARD MANUAL OF
PROCEDURE (TBMP) § 512.01 (2d ed rev. 2001). The caption of this
case has been corrected to indicate that Mr. Rarick is not a
party in his personal capacity.
Opposition No. 91161044

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D. Likelihood of Confusion
1. The Similarity or Dissimilarity of the Marks
in Their Entireties

In comparing two marks to ascertain whether confusion
is likely, we consider the marks’ appearance, sound, meaning
and commercial impression. Palm Bay, 73 USPQ2d at 1692.
[T]he test 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 impression so that confusion as to the
source of the goods offered under the respective marks is
likely to result.” H.D. Lee Co. v. Maidenform Inc., 87
USPQ2d 1715, 1727 (TTAB 2008).
The mark in the subject application is QUALITY YOU CAN
CRUNCH (stylized), while the mark in the pleaded
registrations is QUALITY YOU CAN TASTE (typed). We begin by
noting that although applicant seeks registration of its
mark in stylized format, opposer’s marks are registered as
words only, without respect to “font style, size or color.”
Trademark Rule 2.52(a). Thus, opposer’s registrations
provide protection for its registered word mark without
limitation as to font, size, or color, including those
similar to applicant’s mark. Contrary to applicant’s
argument, any attempt to distinguish the respective marks on
the basis of their “typefaces [or] colors” or the fact that
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“[o]pposer’s mark is displayed in neon,” App. Br. at 7-8, is
simply incorrect as a matter of law. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir.
2000) (“Registrations with typed drawings are not limited to
any particular rendition of the mark and, in particular, are
not limited to the mark as it is used in commerce.”)
The marks bear obvious similarities in appearance,
sound, and connotation in that they both start with the
words “quality you can...,” although they differ in their
last word. Applicant emphasizes that the final words of the
marks differ, creating a different commercial impression.
App. Br. at 6-7. On the other hand, opposer argues that
this difference is insignificant because “[t]he term
‘crunch’ shares an inseparable association with the word
‘taste.’” Opp. Br. at 8. Opposer makes much of its
contention that its foods “crunch,” going so far as to
introduce a patent that it holds for a toaster which is
asserted to make its hamburger buns crunchy.
“Crunch” (or the lack of it) and “taste” are clearly
sensations one encounters while eating. However, the words
do not look or sound identical, and – contrary to opposer’s
arguments – they do not mean the same thing. While
opposer’s dictionary definition supports the notion that
“touch” – along with taste and smell – is a component of
Opposition No. 91161044

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“taste,”11 it is a considerable leap to the notion that
consumers would understand the words “crunch” and “taste” to
mean essentially the same thing.
The marks are somewhat similar in connotation, in that
they imply that the relevant goods or services are of (high)
quality. Viewing the marks as a whole, opposer’s mark
implies that this quality is evident in the taste of
opposer’s food, while applicant’s mark implies that one can
judge the quality of its dried fruit by its crunch.
The marks at issue share the common words “quality you
can ...,” and are therefore similar. However, as discussed
more fully below, the marks are both suggestive to the
extent that they convey a laudatory message about the nature
and quality of the associated goods and services. When the
marks involved are weak, small differences may be sufficient
to distinguish them. While it is sometimes said that the
first word or words in a mark create the strongest
impression, e.g., Presto Prod., Inc. v. Nice-Pak Prods.
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988), that is not
necessarily true when, as here, these words are highly
suggestive.
Because the marks share some similarities, in this

11 “taste n ... 5a: a sensation obtained from a substance in the
mouth that is typically produced by the stimulation of the sense
of taste combined with those of touch and smell....” MERRIAM-

Opposition No. 91161044

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respect this factor favors opposer. However, because the
marks are weak, we also find that the differences in the
marks are significant.
2. The Similarity or Dissimilarity and Nature of
the Goods or Services

Although opposer has introduced a registration covering
various computer services,12 for purposes of this factor, we
concentrate on opposer’s registrations for food and
restaurant services, as they are the most relevant.
Opposer’s goods and services primarily relate to its
restaurants, and the food it serves there, namely,
hamburgers, cheeseburgers, and french fries, while
applicant’s goods are identified as dried fruit. The
evidence of record indicates that applicant sells its
product through food stores and through direct sales.
In arguing that the goods are related, opposer states
that “[i]t is common for fruit to be served as part of a
menu item featuring hamburgers, cheeseburgers, and french
fries. Opposer serves tomatoes in association with its
hamburgers and cheeseburgers.... Tomatoes are a fruit....”
Opp. Br. at 8 (citations omitted). Applicant disagrees,

WEBSTER’S COLLEGIATE DICTIONARY (11th ed.)(no year provided). Opp.
First Not. of Rel., Exh. 6.
12 Registration No. 2634516. Opposer’s testimony made clear that
these services essentially provide information about opposer’s
restaurants and the food served therein, and provide for the
online ordering of promotional items. Wensinger Test. at 11-12,
13, 32-33.
Opposition No. 91161044

22

citing Nix v. Hedden, 149 U.S. 304 (1893), for the
proposition that tomatoes are a vegetable – at least so far
as the Tariff Act of 1883 was concerned. Opposer testified
that it also provides “cookout trailers” to serve its food
at special events. When it does so, it serves “a selection
of fresh fruit, including apples, bananas, grapes, sometimes
nectarines, et cetera.” Wensinger Test. at 29-31; Opp. Br.
at 9.
Both parties miss the point. The question is not
whether tomatoes are classified as a fruit or vegetable, but
whether and to what extent “dried fruit” is related to
restaurant services, and prepared hamburgers, cheeseburgers,
and french fries.
Opposer introduced evidence that some other similar
food establishments (e.g., McDonald’s, Wendy’s, Orange
Julius, and Friendly’s) serve fruit-based menu items, such
as “apple dippers and some type of fruit parfait,” and
argues that these items are within its logical zone of
expansion. Nonetheless, opposer has not introduced any
evidence showing that it or any other restaurant serves
dried fruit, or that there is any other reason why potential
purchasers would associate applicant’s packaged dried fruit
with opposer’s restaurant services and prepared food.
Our precedent has often noted that there is no rule
that food and restaurant services are related. To the
Opposition No. 91161044

23

contrary, our cases have long cautioned that “something
more” is needed to prove an association between such goods
and services. E.g., Jacobs v. Int’l Multifoods Corp., 668
F.2d 1234, 212 USPQ 641, 642 (CCPA 1982)(“To establish
likelihood of confusion a party must show something more
than that similar or even identical marks are used for food
products and for restaurant services.”); In re Coors Brewing
Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003); In re
Opus One Inc., 60 USPQ2d 1812, 1813 (TTAB 2001).
We conclude that although the goods and services at
issue here are all food or food-related services, opposer
has not demonstrated that they are related in such a way
that consumers encountering them under the same or similar
marks would be likely to believe that they share a common
source.
3. The Similarity or Dissimilarity of
Established, Likely-to-Continue Trade
Channels

Opposer argues that because there are no limitations in
the application or the pleaded registrations, we must assume
that the parties’ “products are sold through all customary
trade channels for their respective services and
products....” Opp. Br. at 10. Therefore, opposer
concludes, “the products should be treated as though they
are sold in juxtaposition.” Id. Opposer’s statement of the
law is correct, but its conclusion is not.
Opposition No. 91161044

24

When an application or registration is not limited as
to its trade channels or customers, the identified goods or
services are legally construed to move in all usual channels
of trade, and to all of the usual customers for those goods
or services. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958). But it does not follow that non-identical
goods or services move in identical channels of trade merely
because neither of them is explicitly limited in its
channels of trade.
Opposer’s hamburgers and french fries for consumption
on or off the premises are presumed to be sold in all usual
channels of trade for hamburgers and french fries for
consumption on or off the premises. Goods such as
opposer’s, which are prepared food items, are normally sold
to customers in restaurants and take-out places including,
but not limited to, fast food restaurants. Likewise,
applicant’s dried fruit is presumed to be sold in the usual
channels of trade for dried fruit. Such items are typically
sold in grocery stores, convenience stores and other such
retail food outlets.
Contrary to opposer’s contention, the lack of
limitations in applicant’s and opposer’s channels of trade
does not raise a presumption that such goods or services are
rendered through identical channels of trade. There is no
Opposition No. 91161044

25

evidence that goods such as applicant’s are typically sold
in restaurants or that opposer’s goods are normally found in
grocery stores. Without such evidence, we cannot agree with
opposer’s assertion that one would normally expect to find
such products being sold “in juxtaposition.”
Finally, opposer points out that both parties’ goods
and services are advertised and sold “on the internet.”
Opp. Br. at 10. But given the vast array of goods and
services available online, the mere fact that two products
or services can be found in cyberspace is no more meaningful
than saying that both products are sold in “brick-and-
mortar” stores. Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d
1012, 1021 (TTAB 2007).
We conclude that the channels of trade for the relevant
goods and services are not similar.
4. The Conditions Under Which and Buyers to Whom
Sales are Made

The parties have spent considerable effort arguing
about the price of their respective goods and services and
whether their customers overlap in fact. Without discussing
these arguments in great detail, we conclude that neither
parties’ goods and services are particularly expensive, and
that they are all of a type which are typically purchased
without the kind of extensive investigation that would
mitigate any confusion which might otherwise occur.
Opposition No. 91161044

26

Applicant stresses the healthful qualities of its
product, and argues that its customers are sophisticated
about their food choices and “would not eat at the
[o]pposer’s restaurants.” App. Br. at 22. Nonetheless,
applicant’s goods are identified simply as “dried fruit.”
In an opposition proceeding, our analysis is limited to
consideration of the goods as recited in the application or
registration, and not what the goods may actually be in the
marketplace. See In re Bercut-Vandervoort & Co., 229 USPQ
763, 764 (TTAB 1986). Thus, regardless of the nature of
applicant’s actual products and customers, we cannot presume
that the purchasers of applicant’s identified goods are
limited to vegetarians, people with concerns (or particular
knowledge) about nutrition and health, or persons who are
more sophisticated or discerning than are ordinary
purchasers of “dried fruit.” And since there is no evidence
that consumers of dried fruit in general exercise unusual
caution, we consider such purchasing decisions to be made
with no more than ordinary care.
5. The Fame of the Prior Mark (Sales,
Advertising, Length of Use)

We consider next opposer’s evidence that its mark is
famous. Fame, when found, is entitled to great weight in a
likelihood of confusion analysis. Recot Inc. v. M.C.
Becton, 54 USPQ2d 1894, 1897-98 (Fed. Cir. 2000). Opposer
Opposition No. 91161044

27

argues that by the nature and extent of its use of QUALITY
YOU CAN TASTE, the mark has become famous. As noted in the
seminal du Pont decision, the primary factors in assessing
fame are “sales, advertising, [and] length of use.” du
Pont, 177 USPQ at 567.
Opposer testified that it sold gift certificates
bearing the QUALITY YOU CAN TASTE mark in the amounts of
“almost $4,000,000 in 2002, over $5,000,000 in 2003 and
short of $5,000,000 in 2004,” Opp. Br. at 13, Wensinger
Test. 40; Exh. 40A, and that it “has advertised on radio,
television, the internet, newspapers, newsletters,
magazines, lapmats, billboards ..., mobile cookout trailers
and handbills....” Id. According to an internal e-mail, in
2005, the sum of $235,329 was spent on radio advertisements,
slightly less than the sum spent in the years 2002-2004.
Wensinger Test. 46-47; Exh. 40. In addition, opposer
maintains a web site which promotes its goods and services.
Opposer sells shirts bearing the mark as promotion. Id. at
14. Opposer also points to five articles about its business
in widely-circulated newspapers,13 favorable mentions in the

13 The San Francisco Chronicle, The Boston Globe, The New York
Times (two articles) and The Dallas Morning News.
In addition, opposer submitted two other items: a web article,
Brian Vance, In-N-Out Burger: “Quality You Can Taste,”
www.jour.unr.edu/outpost/Dining/din.vance.in-n-out.html. (Feb.
17, 2005)(apparently posted on April 1, 2000); and what appears
to be a press release: In-N-Out Burger Orders up to 100 ZAPPY
Electric Scooters to be Given Away in New Sweepstakes, Prime

Opposition No. 91161044

28

book Fast Food Nation, and one instance of opposer’s
business being discussed on national television. Id. at 15-
16. Nonetheless, only one of these items mentions opposer’s
QUALITY YOU CAN TASTE trademark. See Wensinger Test., Exh.
37, (Leslie Earnest, Chain is Not Only In-N-Out, It Lands On
Top In A Survey, Los Angeles Times, Part C, p.3 (Mar. 6,
2001)).
The relevant question is not whether opposer or its IN-
N-OUT BURGER mark is famous, but whether opposer’s QUALITY
YOU CAN TASTE mark is famous. Articles, books, and
television stories which make no mention of that mark cannot
contribute to its fame or renown, no matter how favorable
they may be to opposer in other respects. While we have
taken the Los Angeles Times article into account, as well as
the web article and press release, they provide – at best –
only scant evidence of public recognition for opposer’s
QUALITY YOU CAN TASTE mark.
Opposer asserts that its “sales for 2001 were estimated
at $160,000,000,” citing a New York Times article introduced
during Mr. Wensinger’s testimony. Wensinger Test. at 48-49;
Exh. 42. While the article does include this estimate, we
cannot view the article as evidence of opposer’s actual 2001

Media Network (October 11, 2000). Although both of these items
include the QUALITY YOU CAN TASTE mark, we find them to be
entitled to relatively little weight because it is not clear

Opposition No. 91161044

29

sales or even as an estimate of them because the statement
made in the article is hearsay. Life Zone, Inc. v.
Middleman Group, Inc., __ USPQ2d __, Slip. Op. at 4, n.5
(TTAB July 15, 2008)(“a printed publication is only
admissible for what it shows on its face; unless it falls
within an exception to the hearsay rule it will not be
considered to prove the truth of any matter stated in the
publication.” Citing 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1717 n.2 (TTAB 2007)).
The level of opposer’s sales was a matter which could
have been introduced by testimony and by the introduction of
appropriate business records. However, Mr. Wensinger did
not specifically discuss this or any other annual sales
figures, nor was any other evidence introduced on the volume
of opposer’s sales, and we must therefore consider the
record silent on this issue.
Mr. Wensinger also testified that part of opposer’s
advertising is its gift certificate program. According to a
spreadsheet identified by the witness, applicant’s sale of
gift certificates amounted to between approximately $4
Million and $6 Million for the years 2002 – 2005.14

whether the public has been exposed to them (particularly the
press release), and if so, to what extent.
14 The 2005 figures were estimated.
Opposition No. 91161044

30

Wensinger Test. at 45; Exh. 40A.15
The biggest problem with all of these figures is the
lack of context: “Raw numbers of product sales and
advertising expenses may have sufficed in the past to prove
fame of a mark, but raw numbers alone in today’s world may
be misleading.” Bose Corp. v. QSC Audio Prod. Inc., 293
F.2d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). Applicant
does not provide the market share represented by its
receipts and expenditures, so it is difficult to determine
whether they are substantial for the purpose of proving
fame.
As to how long opposer has been using its QUALITY YOU
CAN TASTE mark, we note some uncertainty in the record.16

15 Mr. Wensinger did not discuss Exhibit 40A in detail, see
Wensinger Test. at 45, and we find it rather unclear. This small
spreadsheet apparently itemizes certain receipts and expenditures
(although the two are not differentiated) for the years 2002-
2004, and estimates for 2005. The first row in the spreadsheet
is “Radio/Traffic,” and lists $118,657 for 2003 and an estimated
$310,570 for 2005, with nothing under 2002 or 2004. (The 2005
figure seems to conflict with Exhibit 40, which shows traffic
sponsorships for 2005 in the amount of $235,329.) The next row
shows figures for “Gift Certificates Sold,” followed by rows for
“G.C. Radio,” “G.C. TV,” “G.C. Lapmats,” “G.C. In-Store POP.”
It is not clear from Mr. Wensinger’s testimony or from the
exhibit itself just what information appears on this spreadsheet.
For instance, “Radio/Traffic” may refer to some sort of radio
advertisement, but the spreadsheet also includes a line item for
“G.C. Radio.” It is not clear what the latter item is and how it
differs from the “Radio/Traffic” item. That said, even regarding
this evidence in a light most favorable to opposer, we do not
find these advertising expenditures to be of a level sufficient
to prove the fame of opposer’s mark.
16 Opposer argues that it is entitled to a date of first use of
the mark of April 30, 1950, the date of first use set out in the
‘096 Registration. In support of that date, opposer has
submitted the declaration of Harvey Gough, who assigned the

Opposition No. 91161044

31

Mr. Wensinger testified “I know it’s been at least as early
as 1968, 1967, somewhere in that time frame. And for some
reason, 1963 comes to mind, but I could be confusing it with
another mark. I know for sure at least as early as 1968.”
Wensinger Test. at 17.
As discussed above, to the extent Mr. Wensinger’s
statements were not supported by documents from opposer’s
records, they are hearsay. In this regard, Mr. Wensinger
identified a newspaper advertisement dated December 30,
1967, using the mark. We find that this evidence
establishes that opposer has been using the QUALITY YOU CAN
TASTE mark since at least as early as December 30, 1967.
Although we agree that opposer has used its mark for a
substantial length of time, it is important to note that the
geographic extent of opposer’s business is limited. The
record establishes that opposer operates approximately 180
restaurants in Southern California, Nevada, and Arizona.

registration to opposer in 1999. Wensinger Test. at 18; Exh. 8.
Mr. Gough did not offer testimony and was not subject to cross-
examination. While the parties may stipulate to the submission
of evidence by affidavit, Trademark Rule 2.123(b); Boyds
Collection Ltd. v. Herrington & Co., 65 USPQ2d 2017, 2020 (TTAB
2003), they have not done so in this case. The statements in Mr.
Gough’s declaration are accordingly hearsay, and have not been
considered.
We further note that because an allegation of a date of first
use in a registration is not itself evidence, Trademark Rule
2.122(b)(2), the earliest date upon which opposer is entitled to
rely by virtue of the ‘096 Registration itself is the filing date
of the application which matured into that registration, i.e.,
July 29, 1976. See Henry Siegel Co. v. M&R Int’l Mfg. Co., 4
USPQ2d 1154, 1160 (TTAB 1987).
Opposition No. 91161044

32

Wensinger Test. at 44, 54. While opposer’s newspaper
articles, the excerpt from Fast Food Nation, and mention on
one national television program indicate that opposer has
received some mention outside this area, we cannot conclude
that the QUALITY YOU CAN TASTE mark has achieved any
significant recognition outside opposer’s area of operation.
As we noted in a case with some similarities (but a better-
developed record on fame):
Opposer certainly has enjoyed considerable
success with its restaurants. Opposer's sales in
the period 1986-1992 exceed $3.3 billion, with
1992 sales of over $614 million. Opposer
traditionally spends 4% of its gross sales
revenues on advertising. Opposer's figures for
the period 1983-1990 show that opposer spent
almost $247.5 million on advertising, with
expenditures in 1990 of $39.2 million.

The evidence of record, when taken as a
whole, indicates that opposer's star marks are
well known in its specific area of operation,
namely California, Arizona, Oregon and Nevada. In
other words, the evidence does not establish that
opposer's marks are nationally famous. Rather,
opposer has established local notoriety in its
trading area. See, Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
394 (Fed. Cir. 1983); and Berghoff Rest. Co. v.
Washington Forge, Inc., 225 USPQ 603 (TTAB 1985).

Carl Karcher Enters. Inc. v. Stars Rests. Corp., 35 USPQ2d
1125, 1130 (TTAB 1995).
In that perspective, opposer’s evidence falls far short
of convincing us that QUALITY YOU CAN TASTE is a famous
mark. While opposer is undoubtedly well-known, at least
within its area of operation, it has not clearly shown a
Opposition No. 91161044

33

level of recognition for its mark which would justify the
heightened scope of protection afforded truly famous marks.
In view of the extreme deference that is accorded to a
famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, we think that it is
the duty of a plaintiff asserting that its mark is famous to
clearly prove it. Accordingly, we cannot conclude
applicant’s mark is “famous” for purposes of a likelihood of
confusion analysis.
In addition to the fame or renown of a mark, we also
consider the inherent distinctiveness of the mark, i.e.,
where it fits in the continuum described as ranging from
generic through fanciful. See Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 189 USPQ2d 759, 764 (2d
Cir. 1976). While “the lines of demarcation ... are not
always bright,” id., it is axiomatic that those marks which
are highly distinctive are usually entitled to a broader
scope of protection, while marks falling towards the other
end of the spectrum typically enjoy little or no protection.
We find in this case that both opposer’s and
applicant’s marks are suggestive in that they both convey a
somewhat laudatory message about the quality of the goods,
Opposition No. 91161044

34

opposer’s mark more so than applicant’s.17 As noted above,
the marks both directly indicate to the prospective customer
that the vendor’s goods or services are of high quality, and
that this quality can be judged by the product’s “crunch” or
“taste.” In this respect, both marks are less distinctive
than purely arbitrary or fanciful marks. As a result of
this inherent weakness, any similarity of the marks is less
likely to cause confusion than would be the case if the
marks were arbitrary or fanciful. Sure-Fit Prod. Co. v.
Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA
1958)(“Where a party chooses a weak mark, his competitors
may come closer to his mark than would be the case with a
strong mark without violating his rights.”).
6. Balancing the Factors
We have carefully considered opposer’s evidence and
arguments regarding the remaining du Pont factors. We will
not belabor this opinion with a detailed analysis of them,
however, because we find them to be essentially neutral.
As noted above, applicant’s mark, QUALITY YOU CAN
CRUNCH, is somewhat similar to opposer’s QUALITY YOU CAN

17 Applicant contends that opposer’s mark is descriptive and
unregistrable. App. Br. at 12-13, 15. While applicant may
appropriately argue that opposer’s mark is weak, in the absence
of a counterclaim applicant may not attack the validity of
opposer’s registration. Trademark Rule 2.106(b)(2)(ii); Contour
Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ
285, 287 (CCPA 1963); NASDAQ Stock Market Inc. v. Antartica
S.r.l., 69 USPQ2d 1718, 1735 (TTAB 1998).
Opposition No. 91161044

35

TASTE marks, in that they both begin with the same words.
However, because these words, as well as the marks as a
whole, are both suggestive, the impact that we would
normally accord to the similarity of the initial words is
undercut. When considering the parties’ goods and services,
the evidence does not establish that they are related in any
meaningful way, beyond the fact that they are all food or
food-related services. Moreover, while neither party’s
goods and services are of a type purchased only after a
careful investigation, opposer has not established that the
parties’ goods and services are sold or offered in the same
channels of trade, or that potential purchasers would see
(or expect to see) goods and services of this type sold or
offered in close proximity. Finally, we do not find
opposer’s mark to be famous and thus entitled to very broad
protection.
After careful consideration of the evidence and
arguments of the parties, we conclude that confusion is not
likely.
E. Dilution by Blurring
Opposer claims that use of applicant’s mark would be
likely to “lessen the capacity of [o]pposer’s ... marks to
identify and distinguish opposer’s services and goods.”
In order to prevail on a claim of dilution, opposer
must prove, as a threshold matter, that its mark became
Opposition No. 91161044

36

famous prior to applicant’s first use. Trademark Act
§ 43(c)(1). As we have noted in other cases, “[f]ame for
dilution purposes is difficult to prove. ... The party
claiming dilution must demonstrate by the evidence that its
mark is truly famous.” Toro Co. v. ToroHead Inc., 61 USPQ2d
1164, 1180 (TTAB 2001). In other words, the requirement for
proving “fame” for dilution purposes under Trademark Act
§ 43(c) is considerably more stringent than the proof of
“fame” in a likelihood of confusion analysis. Moreover,
while proof of the fame or renown of the plaintiff’s mark is
optional in a likelihood of confusion case, it is a
statutory requirement in a dilution analysis.
As noted, we do not find opposer’s mark famous for
likelihood of confusion purposes. Since it is even harder
to prove fame for dilution purposes, we need go no further;
because opposer has not established that its mark is famous,
it cannot prevail in its dilution claim.

Decision: The opposition to the registration of applicant’s
mark is dismissed.