Integrated Management Information, Inc.v.Frank Barrie

Trademark Trial and Appeal Board

Jan 22, 2013

No. 91195943 (T.T.A.B. Jan. 22, 2013)

Mailed:
January 22, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Integrated Management Information, Inc.

v.

Barrie
_____

Opposition No. 91195943
_____

Cheryl L. Burback of Hovey Williams LLP for Integrated
Management Information, Inc.

Frank Barrie, pro se.
______

Before Zervas, Shaw and Hightower, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On December 2, 2009, Frank Barrie (“applicant”) filed
an application (Serial No. 77883973) for registration on the
Principal Register of the mark

THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91195943
2
for the following International Class 35 services:
Promoting health and environmental awareness
within people so that they can lead a clean and
healthy life; Promoting public awareness of
shopping locally; Promoting public awareness of
the need for sustaining local agriculture;
Promoting the goods and services of others by
providing a web site at which users can link to
local agriculture sources.

The application sets forth a claim of a bona fide intention
to use the mark in commerce pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). Applicant entered (i) a
disclaimer of all the wording in the mark, and (ii) the
following description of the mark:
The mark consists of the earth with North America
and South America outlined by use of fruit and
vegetable shapes appearing in blue and white and
the words "know where your food comes from.com"
appearing in black with "your food" in bolder
black lettering. These words circle clockwise
around the top with a long directional arrow
circling counterclockwise around the bottom.

Integrated Management Information, Inc. (“opposer”),
opposed registration of applicant's mark on the ground of
priority and likelihood of confusion. At paragraph 4 and 5
of its notice of opposition, opposer pleaded that it is the
owner of the following registrations, both for “food quality
verification services, namely, verifying the origin and
handling practices of food production” in International
Class 42:
1. Registration No. 3694440 (registered October 6,
2009 on the Supplemental Register) for the mark
WHERE FOOD COMES FROM (in standard character form)
Opposition No. 91195943
3
claiming first use on October 15, 2007 and first
use in commerce on October 28, 2008; and

2. Registration No. 3837316 (registered August 24,
2010 on the Principal Register) for the mark

with a disclaimer of all of the wording in the
mark, claiming first use on July 31, 2008 and
first use in commerce in February 2009.1

In addition, opposer alleged prior common law rights in
the phrase WHERE FOOD COMES FROM since at least as early as
July 31, 2008 for “food quality verification services,
namely, verifying the origin and handling practices of food
production”; that the marks of Registration Nos. 3694440 and
3837316 “have become highly distinctive, have acquired
extensive goodwill, and are well known and recognized by the
relevant consuming pubic”; and that applicant's mark so
resembles opposer's marks as to be likely to cause

1 Opposer pleaded the underlying application, which matured into
Registration No. 3837316 during the course of the proceeding.
The registration contains the following description: “The mark
consists of two concentric circles, the words "WHERE FOOD COMES
FROM" and "VERIFIED" displayed within the outer concentric
circle, and a fanciful tree design in the inner circle.”
Opposition No. 91195943
4
confusion, mistake or deception. See Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d).
Applicant has denied the salient allegations of the
amended notice of opposition.
The record consists of the pleadings; the file of the
involved application; the trial testimony of opposer's
witness, John Saunders, opposer's founder, Chairman of the
Board and Chief Executive Officer, and exhibits thereto; and
opposer’s notice of reliance.
This case is fully briefed. Applicant did not submit
any trial testimony or other evidence during its testimony
period.
Background
Opposer verifies food origin claims of more than six-
thousand food producers and retailers, namely, farmers,
ranchers, feeding and growing operations, restaurants, food
processors and food stores, by contracting with independent
auditors who verify such claims. Opposer’s marks or
designations appear on the food products or on menus along
with quick response codes. Information on the origin of the
food product may be accessed through the quick response code
by means of a personal data device connected to the
Internet. Saunders at 12, 13, 18, 28, 33 and 37.
Opposition No. 91195943
5
Standing
We first consider whether opposer has established that
it is the owner of a valid and subsisting registration. A
registration on the Supplemental Register is sufficient to
establish a real interest in this proceeding. Otter
Products LLC v. BaseONeLabs LLC, 105 USPQ2d 1252 (TTAB
2012).
To make a registration of record which shows the status
and title of the registration, a plaintiff may take
advantage of Trademark Rule 2.122(d)(1) regarding the
introduction of pleaded registrations in inter partes
proceedings.2 In this case, opposer did not take advantage
of Trademark Rule 2.122(d)(1), but rather sought to
establish its registration by introducing a copy of its two
original registration certificates (Exhs. 2 and 3, which are
not status and title copies of the registrations) in Mr.
Saunders' testimonial deposition. See Citigroup Inc. v.

2 The rule, in pertinent part, reads:
A registration of the opposer or petitioner pleaded in
an opposition or petition to cancel will be received
in evidence and made part of the record if the
opposition or petition is accompanied by an original
or photocopy of the registration prepared and issued
by the United States Patent and Trademark Office
showing both the current status of and current title
to the registration, or by a current printout of
information from the electronic database records of
the USPTO showing the current status and title of the
registration.

Opposition No. 91195943
6
Capital City Bank Group Inc., 94 USPQ2d 1645 (TTAB 2010).
Opposer elicited the following testimony from Mr. Saunders:
Ex. 2 – WHERE FOOD COMES FROM:

Q. I'm going to hand you what's been marked as
Exhibit Number 2, and if you would take a moment
to look at that, and when you're finished, if you
would let me know.

A. Yes.

Q. Can you identify what's contained in Exhibit 2?

A. This is the -- our Where Food Comes From
registration document, service mark.

Saunders at 18 – 19.
Ex. 3 - WHERE FOOD COMES FROM VERIFIED and Design:
Q. And if you could identify what's contained in
Exhibit 3.

A. This is the trademark office approval of our
service mark with the black and white color of our
logo -- picture of our logo.

Q. Is that a copy of the certificate of
registration for the logo?

A. Yes.

Saunders at 23. This testimony is sufficient to establish
that opposer is the owner of the registrations, but does not
establish that the registrations are subsisting. We turn
then to applicant’s brief to consider whether applicant
acknowledged that the registrations are subsisting.
On p. 4 of his brief, applicant stated, “The Applicant
agrees with the Opponent's statement of the issue in its
Trial Brief: Whether there is a likelihood of confusion
Opposition No. 91195943
7
between the Opposer's marks WHERE FOOD COMES FROM and WHERE
FOOD COMES FROM VERIFIED (and Design) and Applicant's mark
KNOW WHERE YOUR FOOD COMES FROM.COM (and Design).” In
addition, applicant did not challenge the registrations on
the grounds that they are not subsisting (or, for that
matter, that they are not owned by applicant). We therefore
accept that the two registrations are subsisting and owned
by opposer. Opposer therefore has established its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority and Acquired Distinctiveness
Priority is not in issue in an opposition if an opposer
establishes that it is the owner of a subsisting
registration on the Principal Register or on the
Supplemental Register. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974);
Otter Products, 105 USPQ2d at 1254-55, and cases cited
therein. Because opposer established its registrations,
priority is not an issue with respect to Registration Nos.
3694440 and 3837316. Of course, priority is an issue with
respect to opposer’s common law claim.
With regard to a Supplemental Register registration,
[an] opposer cannot prevail in [a] proceeding
based solely on its Supplemental Register
Registration. In fact, to successfully oppose
registration of a mark under Section 2(d) of the
Opposition No. 91195943
8
Act, “the opposer must prove he has proprietary
rights in the term he relies upon to demonstrate
likelihood of confusion as to source ….” Otto
Roth & Co., Inc. v. Universal Foods Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); see also,
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002);
Towers v. Advent Software Inc., 913 F.2d 942, 16
USPQ2d 1039, 1042 (Fed. Cir. 1990).

* * *

Because the mark in Opposer’s Supplemental
Register Registration is presumed to be merely
descriptive, and opposer has introduced no
evidence of use of its mark sufficient to prove
that its alleged mark has acquired
distinctiveness, it cannot prevail based solely on
its ownership of this registration.

Otter Products, 105 USPQ2d at 1255. See also, Hi-Shear
Corp. v. Nat’l Automotive Parts Ass’n, 152 USPQ 341, 344
(TTAB 1966) (“[A] Supplemental Registration is not accorded
the prima facie presumptions afforded by Section 7(b) of the
Statute with regard, inter alia, to the validity of the
registration and registrant's exclusive right to use the
mark in commerce; and manifestly therefore cannot be
considered as evidence of a proprietary right in the
registered mark.”). Thus, without evidence of acquired
distinctiveness, opposer cannot prevail based solely on its
ownership of the Supplemental Register registration.
Therefore, we next consider whether opposer has acquired
distinctiveness in the designation WHERE FOOD COMES FROM.
Opposition No. 91195943
9
The Board explained in In re Ennco Displays Systems
Inc., 56 USPQ2d 1279, 1283 (TTAB 2000), that to establish
acquired distinctiveness,
an applicant must show that the primary
significance of the product configuration in the
minds of consumers is not the product but the
producer. Acquired distinctiveness may be shown
by direct and/or circumstantial evidence. Direct
evidence includes actual testimony, declarations
or surveys of consumers as to their state of mind.
Circumstantial evidence, on the other hand, is
evidence from which consumer association might be
inferred, such as years of use, extensive amount
of sales and advertising, and any similar evidence
showing wide exposure of the mark to consumers.
(Internal citations omitted).

The type and amount of evidence necessary to show that a
designation has acquired distinctiveness in relation to the
goods or services in connection with which it is used
depends on the nature of the designation and the
circumstances surrounding its use. Yamaha Int'l Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed.
Cir. 1988); Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823,
829, 166 USPQ 34 (CCPA 1970); and In re Hehr Mfg. Co., 279
F.2d 526, 126 USPQ 381 (CCPA 1960).
The following evidence in the record is relevant to the
question of acquired distinctiveness:3
● revenue for 2010 – 2011;

● advertising expenses for 2009 - 2011;4

3 Opposer’s revenue and advertising expenses have been designated
confidential and hence are not revealed in our opinion.
4 According to Mr. Saunders, opposer advertised on television and
radio, in online sponsored advertising, at in-person meetings, at
Opposition No. 91195943
10

● use of WHERE FOOD COMES FROM since at least as
early as 2008;

● use of WHERE FOOD COMES FROM on opposer’s
website;

● approximately seven to eight thousand online
users of the WHERE FOOD COMES FROM website each
month at www.wherefoodcomesfrom.com; and

● Facebook (social media).5

At pp. 3 and 4 of its rebuttal brief, opposer states
that its “marks have been in substantially exclusive use in
commerce for more than four years and, therefore, should be
considered to be strong and have acquired secondary meaning.
And, in any event, [opposer’s] service marks on the
Principal and Supplemental Register, at a minimum, possess
distinctiveness sufficient to sustain the opposition against
Applicant.”
Upon careful consideration of opposer’s arguments and
the evidence in the record, we conclude that opposer has not
demonstrated that the designation WHERE FOOD COMES FROM has
acquired distinctiveness and would be perceived as an
indicator of the source of opposer’s services. Opposer’s
designation is highly descriptive, immediately informing
consumers of an aspect of opposer’s services, i.e.,

trade shows, on food packaging, on point-of-purchase displays,
and in press releases distributed to news agencies around the
globe. Saunders at 44 - 45, 47 - 53, 58 - 59, and 66 – 67; Exhs.
6 - 10, 13, and 20 – 22.
5 Saunders at 46 - 47, and 62 – 64; Exhs. 16, 18 and 19.
Opposition No. 91195943
11
identifying where the product the consumer intends to
purchase originated from. See:
● Saunders Ex. 11, Heinen’s Fine Foods press
release entitled “Your meal has a story”
discussing opposer and its food verification
program, stating in relevant part, “‘Where did my
food come from?’ It’s the question that everyone
seems to be asking these days”; and “Heinen’s Fine
Foods to offer customers a first-of-its-kind look
at where their food comes from.”

● Saunders Ex. 12, Heinen’s Fine Foods press
release entitled “Heinen’s Fine Foods Launches
Where Food Comes From® Meat Labeling Program,”
stating in relevant part, “‘Knowing where your
food comes from is the basis for knowing
everything about what you eat,’ said Tom Heinen.
The Where Food Comes From® labeling program helps
us to provide our customers information about the
source of our beef and pork products, and lets
consumers learn firsthand about where, how and by
whom their food was raised.”

● Saunders exh. 22. “Have you ever gone to the
grocery store and wondered about the meat you’re
buying? Some might not be fussed about where
their meat comes from and how the animals were
treated before slaughter, but there are some who
do care.”

Further, opposer’s revenue and advertising expenses are
small and opposer has used its designation only for a
limited time period. There are no details in the record
regarding opposer’s use of social media, such as the number
of followers or the length of time opposer has had its
Facebook page(s). Opposer’s association with Heinen’s, a
supermarket chain in Cleveland, Ohio is relatively recent,
beginning in October 2011. Saunders exhs. 12 and 22. There
is no information about how long opposer has had its
Opposition No. 91195943
12
association with Delmonico’s, a restaurant in New York City;
and no or limited information about the frequency and
quantity of television, radio and online-sponsored
advertising, food packaging, point-of-purchase displays and
press releases, and participation at trade shows. In
addition, there is no information about how long opposer has
maintained its volume of visitors to its website.
In prior cases involving use of a mark of comparable or
even longer duration, some uses even being coupled with
significant sales and advertising expenditures (not to
mention direct evidence of customers' perceptions), the
Board or its primary reviewing court has found a failure to
demonstrate acquired distinctiveness within the meaning of
Section 2(f). See In re Andes Candies, Inc., 478 F.2d 1264,
178 USPQ 156 (CCPA 1973) (evidence held insufficient to show
registrability under Section 2(f) for “CREME DE MENTHE” on
chocolate mint candy squares notwithstanding 20 years use,
$2.5 million in annual sales, $25,000 per year in
advertising and promotion, national distribution through
1,400 distributors in 49 states and Canada, nearly 100
unsolicited letters purportedly showing mark recognition,
and affidavits of president of applicant and of a chocolate
distributing firm); and In re Packaging Specialists, Inc.,
221 USPQ 917 (TTAB 1984) (acquired distinctiveness not found
despite evidence demonstrating 16 years of continuous and
Opposition No. 91195943
13
substantially exclusive use, between $1 and $4 million in
annual sales under the mark for six years, and advertising
expenditures in trade shows, trade publications and “yellow
page” telephone directory listings involving estimated
outlays of $50,000 for several years).
Thus, opposer has not established that it has
proprietary rights in WHERE FOOD COMES FROM and cannot
prevail based on its Supplemental Register registration or
its claim of common law trademark rights.
We next turn to opposer’s claim of likelihood of
confusion based on its Principal Register mark WHERE FOOD
COMES FROM VERIFIED and Design, for which priority and
acquired distinctiveness are not in issue.
Likelihood of Confusion
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 issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976) (“The fundamental inquiry
Opposition No. 91195943
14
mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks”). We consider these two
factors and any other relevant du Pont factors in the
proceeding.
A. Similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression and strength of opposer’s
mark.

Regarding the similarity or dissimilarity of the marks,
we consider similarities or dissimilarities in their
entireties as to appearance, sound, connotation and
commercial impression. du Pont, 177 USPQ at 567. For
convenience, the marks are reproduced below:

The marks have significantly different design elements,
one depicting a stylized representation of a tree and the
other depicting a stylized representation of a globe showing
North and South American through the use of vegetables. As
discussed above, the wording WHERE FOOD COMES FROM in
opposer’s mark is highly descriptive and all of the wording
Opposition No. 91195943
15
in each mark has been disclaimed.6 (VERIFIED simply
indicates that the food item on which the mark is applied
has been “verified” through opposer’s services.) Opposer
has not established that the wording in its mark – which
opposer emphasizes in arguing that the marks are similar –
identifies opposer as the source of its services; and
applicant's mark is dissimilar in appearance and commercial
impression to opposer’s mark.
B. The similarity or dissimilarity and nature of the
products/services described in the application and
registration and identity of purchasers.

As noted earlier in this decision, opposer’s services
are “food quality verification services, namely, verifying
the origin and handling practices of food production” and
applicant’s services are as follows:
Promoting health and environmental awareness
within people so that they can lead a clean and
healthy life; Promoting public awareness of
shopping locally; Promoting public awareness of
the need for sustaining local agriculture;
Promoting the goods and services of others by
providing a web site at which users can link to
local agriculture sources.

6 Opposer notes that there is an absence of third-party
registrations containing the term WHERE FOOD COMES FROM and this
absence “demonstrates the strength” of opposer’s marks. Brief at
20. This argument is without merit; the wording is highly
descriptive for services of the type offered by opposer. In
addition, absent evidence of actual use, third-party
registrations have little probative value because they are not
evidence that the marks are in use on a commercial scale or that
the public has become familiar with them. See Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973)
(the purchasing public is not aware of registrations reposing in
the U.S. Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983).
Opposition No. 91195943
16
In determining whether the services are related, it is
not necessary that the services of the parties be similar or
competitive in character to support a holding of likelihood
of confusion; it is sufficient for such purposes that a
party claiming damage establish that the services are
related in some manner and/or that conditions and activities
surrounding marketing of these services are such that they
would or could be encountered by same persons under
circumstances that could, because of similarities of marks
used with them, give rise to the mistaken belief that they
originate from or are in some way associated with the same
producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94
USPQ2d 1399 (TTAB 2010); Schering Corp. v. Alza Corp., 207
USPQ 504 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter
Bros. Inc., 201 USPQ 851 (TTAB 1978).
There is no dispute that members of the general public
will encounter opposer’s mark when purchasing food from food
retailers or restaurants. Applicant identifies his
consumers as members of the general public who have an
interest in food issues. Thus, members of the general
public who are interested in food safety and the origin of
food products would be exposed to, and would be targeted
for, both opposer’s and applicant’s services.
In this age of personal data devices which access the
Internet from almost anywhere in the United States, such
Opposition No. 91195943
17
individuals may view opposer’s and applicant’s marks at more
or less the same time as they make their food purchases. A
shopper at a grocery store such as Heinen’s may consider a
quick response code bearing opposer’s mark and then consider
the information on applicant’s website regarding the health
benefits of certain vegetables or recipes available on
applicant’s website. We therefore find the services to be
related to each other in that they may be used by the same
persons at the same time in connection with food purchases.
C. The similarity or dissimilarity of trade channels.

Mr. Saunders testified as to various methods of
advertising, including advertising online, on the radio and
in print. In light of the food-related nature of some of
applicant’s services, and the fact that both parties
ultimately are providing information to members of the
general public to assist in food related purchases, we are
persuaded that the trade channels for both parties’ services
overlap to the extent that they focus on members of the
general public.
D. Consumer sophistication/purchaser care.
Opposer states that “high consumer sophistication is
not required to receive or use the services of the parties.”
Brief at 18. Applicant has not raised arguments on consumer
sophistication in his brief. Because both parties’ services
are provided to the general public, and the general public
Opposition No. 91195943
18
does not need any particular level of sophistication to use
their services, we agree with opposer that “high consumer
sophistication is not required.”
The more relevant question is whether those members of
the general public using the parties’ services use care when
considering sources of information on food. Opposer states
that “[b]ecause the services at issue here are free to
consumers, those consumers are likely to access the parties’
websites or receive the information on impulse ….” Brief at
18. There is no information in the record as to what level
of care consumers use in considering services of the type
listed in opposer’s registration and applicant’s
application. The information is free to the general public,
but the information concerns food products, and would likely
be accessed by those who have concern about what food they
ingest. Thus, on balance we find that the du Pont factor
involving purchaser care to be neutral in our analysis.
E. Conclusion.
Upon careful consideration of all of the evidence in
the record and the arguments made by each party in the
briefs, we find that opposer has not established that there
is a likelihood of confusion between opposer’s combination
word and design mark of Registration No. 3837316 and
applicant’s mark. WHERE FOOD COMES FROM and VERIFIED in
opposer’s mark are highly descriptive, opposer has not
Opposition No. 91195943
19
established that it has acquired distinctiveness in WHERE
FOOD COMES FROM, and the design elements in the marks are
very different in appearance and commercial impression. The
differences in the marks and the weakness in the wording in
opposer’s mark outweigh those factors that favor opposer.
As a final matter, opposer urges us to resolve and
doubt in its favor as the prior registrant; we do not have
any doubts in our conclusion.
DECISION: Opposer’s claims of likelihood of confusion
based on Registration Nos. 3694440 and 3837316, as well as
under the common law, are dismissed.
The opposition hence is dismissed.