Kellogg Co.v.Don R. Mueller

Trademark Trial and Appeal Board

Feb 14, 2001

No. 91100070 (T.T.A.B. Feb. 14, 2001)

2/14/01
Hearing: Paper No. 33
October 26, 2000 TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Kellogg Company
v.
Don R. Mueller
_____
Opposition No. 100,070
to application Serial No. 74/585,082
filed on October 13, 1994
_____
Jeffrey H. Kaufman and Jonathan Hudis of Oblon, Spivak,
McClelland, Maier & Neustadt, P.C. for Kellogg Company.
Robert E. Atkins, Jr. of Atkins & O'Brien LLP for Don R. Mueller.
______
Before Cissel, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Don R. Mueller to register
the following mark for goods identified as "cookies that in
addition to their nutritional value, introduce a variety of
physical formulas, with a particular formula on each cookie."1
1 Application Serial No. 74/585,082 filed October 13, 1994, alleging a
bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 100,070
2
Registration has been opposed by Kellogg Company. As its
ground for opposition, opposer asserts priority and likelihood of
confusion under Section 2(d) of the Trademark Act, contending
that applicant's mark when applied to applicant's goods so
resembles the following marks previously used and registered by
opposer for the identified goods as to be likely to cause
confusion.
NUTRI-GRAIN, NUTRI-GRAIN ALMOND RAISIN and NUTRI-GRAIN
WHEAT, all for "cereal-derived food product to be used as a
breakfast food, snack food or ingredient for making food";2
and
NUTRI-GRAIN for "waffles."3
2 Registration No. 1,255,456, issued October 25, 1983; Section 8 and 15
filed; Registration No. 1,795,160, issued September 28, 1993, Section 8
and 15 filed; and Registration No. 1,930,343, issued October 31, 1995.
Opposer had also relied on Registration No. 1,798,009 for NUTRI-GRAIN
WHEAT & RAISINS which was subsequently cancelled under Section 8 on
December 23, 2000.
3 Registration No. 1,367,960; issued October 29, 1985; Section 8 and 15
filed.
Opposition No. 100,070
3
Opposer alleges that it has built extensive goodwill in
connection with the sales of products under its marks and that
purchasers have come to recognize NUTRI-GRAIN as signifying
opposer's products.
Applicant, in his answer, has denied the allegations in the
notice of opposition.
The record includes the pleadings; the file of the involved
application; opposer's notice of reliance on evidence including
status and title copies of opposer's pleaded registrations,
certain of applicant's discovery responses (including portions of
Mr. Mueller's discovery deposition), and 58 news articles in
printed publications; applicant's notice of reliance on, inter
alia, two samples of opposer's product packaging and a newspaper
article about opposer's product packaging; and testimony (with
exhibits) of both parties submitted, pursuant to stipulation, in
the form of declarations. Only opposer filed a brief and
attended the oral hearing.
As indicated above, opposer has made of record status and
title copies of its pleaded registrations.4 Thus, there is no
issue with respect to opposer's priority. King Candy Co. v.
Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
4 In addition, Mr. David Herdman, Corporate Counsel-Trademarks for
opposer, has testified that the registrations are valid and subsisting
and owned by opposer. Opposer also introduced an unpleaded
registration (Registration No. 1,888,673) through Mr. Herdman's
testimony. However, opposer stated in its brief that it is not relying
on this registration.
Opposition No. 100,070
4
1974). In addition, the evidence shows that opposer has used its
NUTRI-GRAIN mark since at least as early as 1981.
We turn then to a consideration of 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 likelihood of confusion issue, including
the similarity of the marks and the similarity of the goods. In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). The factors deemed pertinent in this proceeding are
discussed below.
Turning first to the goods, we note that it is not necessary
that the goods be similar or even competitive to support a
finding of likelihood of confusion. It is sufficient if the
respective goods are related in some manner and/or that the
conditions surrounding their marketing are such that they would
be encountered by the same persons under circumstances that
could, because of the similarity of the marks used thereon, give
rise to the mistaken belief that they emanate from or are
associated with, the same source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The goods in this case are closely related. Opposer's goods
are identified as "cereal-derived food product to be used as a
breakfast food, snack food or ingredient for making food." The
evidence submitted by opposer shows that these breakfast foods
and snack foods consist, in part, of breakfast cereals and food
Opposition No. 100,070
5
bars. Applicant's goods are essentially cookies. Cookies, like
food bars, are snack food products and thus are closely related
to food bars in function and use. In addition, breakfast cereals
can also be consumed as a snack. In this regard, opposer has
submitted a copy of a container for a General Mills' product
called COOKIE CRISP CHOCOLATE CHIP showing a cookie-shaped
product marketed as breakfast cereal.
The fact that applicant's cookies may be nutritionally
enhanced or imprinted with the depiction of one of a variety of
scientific formulas (such as "E=MC²") does not change the nature
of the goods from cookies. Applicant claims that the display of
the formula on each cookie demonstrates the "educational" nature
or focus of its products. However, there is nothing inherently
educational about these cookies even with the imprinted formula.
It is just as likely that these cookies would be perceived as a
novelty snack food as opposed to a snack food with "educational"
value. Moreover, the question of likelihood of confusion is
based on the goods as identified in the application rather than
on any evidence of actual (or intended) use. See J & J Snack
Foods Corp. v. McDonalds' Corp., 932 F.2d 1460, 1464, 18 USPQ2d
1889, 1892 (Fed. Cir. 1991) and Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987). The language in applicant's identification does not
effectively describe any specialized intended use or function of
its cookies.
Opposition No. 100,070
6
In fact, both parties' products are ordinary consumer food
items which would be sold in the same channels of trade to the
same classes of customers. Opposer states that it sells its
cereals and snack food products through supermarket chains and
independent grocery stores. Applicant has not yet used his mark,
but he initially claimed that the primary marketing of his
cookies will be "through schools, specialty retailers marketing
to children and other outlets featuring educational products."
(Mueller decl. p.2). However, applicant subsequently admitted
that the anticipated channels of trade for his cookies would
include food stores and other retail outlets for food, and that
his customers would not be restricted to any age group or level
of sophistication. (Applicant's responses to adm. reqs. nos. 10
and 17; and Mueller disc. dep. pp.40 and 110). In any event,
applicant's products are not restricted in the identification as
to channels of trade or classes of purchasers. Thus, they must
be presumed to travel through the channels of trade normally
associated with those goods, including all the usual retail
outlets for food, and, although children may be among the
intended customers of applicant's cookies, applicant's goods, as
identified, would be purchased by customers of all types,
including opposer's customers. See In re Elbaum, 211 USPQ 639
(TTAB 1981) and In re Optica International, 196 USPQ 775 (TTAB
1977).
Opposition No. 100,070
7
In this regard, we note that the respective products are low
cost, ordinary consumer food items and that the purchasers of
these products are members of the general public who would not
necessarily be likely to exercise the high degree of care
necessary to prevent confusion. See Kimberly-Clark Corp. v. H.
Douglas Enter., Ltd., 774 F.2d 1144, 1146, 227 USPQ 541, 542
(Fed. Cir. 1985).
Turning our attention to the marks, we find that although
there are specific differences between opposer's mark NUTRI-GRAIN
and applicant's mark NUTRI BRAIN (and design), the similarities
strongly outweigh those differences. Viewing the marks in their
entireties, as we must, it is nonetheless true that more or less
weight may be given to a particular feature of a mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
In this case, the most prominent part of applicant's mark is
the term NUTRI BRAIN. The remaining portion of applicant's mark
consists of a cartoon-like depiction of a classroom setting
(including a blackboard, chair and books) where the caricatures
of two men are engaged in "dialog balloon" type conversation, and
scientific formulas and symbols and mathematical equations are
scattered about the room. Neither the illustration as a whole
nor its individual elements serves to differentiate applicant's
and opposer's marks. The composition is so visually cluttered
and crowded with activity that it is not likely to be recognized
Opposition No. 100,070
8
by consumers as a source-distinguishing feature of the mark.
Further, no single element of the composite makes an impression
separate and apart from the remaining elements.5 Ultimately,
consumers will not rely on this illustration in making their
purchasing decisions, but will instead look to the part of
applicant's mark that makes the strongest visual impression,
i.e., NUTRI BRAIN, to distinguish source. As applicant admits,
these are the words that purchasers would use to request his
goods in a store. (Mueller dep. p.146). See In re Continental
Graphics Corp., 52 USPQ2d 1374 (TTAB 1999) citing In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
The term NUTRI BRAIN, the most significant portion of
applicant's mark, and NUTRI-GRAIN, which is opposer's entire
mark, are substantially similar in sound. The two phrases rhyme
and have the identical cadence. Indeed, the differences in sound
between the letters G and B may even be lost on purchasers when
the marks are spoken. It has been held that similarity in sound
alone may be sufficient to support a finding of likelihood of
confusion. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156
USPQ 523, 526 (CCPA 1968). Nevertheless, these terms are also
quite similar in appearance. In fact, they differ in appearance
essentially only by one letter. Both consist of two terms which
5 Applicant claims that the characters appearing in the drawings are
intended to depict famous scientists. However, the characters are not
recognizable as such and even applicant admits that relatively few
Opposition No. 100,070
9
begin with the identical prefix NUTRI and are followed
respectively by GRAIN and BRAIN, both spatially separated from
NUTRI, and both consisting of five-letter words with four
identical letters.
It is true that the words GRAIN and BRAIN have different
meanings. However, this difference is strongly overshadowed by
the visual and phonetic similarities of NUTRI-GRAIN and NUTRI
BRAIN when viewed as a whole. Moreover, the difference in
meaning of those two individual words becomes less significant
when we consider that NUTRI-GRAIN and NUTRI BRAIN have a somewhat
similar overall connotation in relation to the parties' cereals,
food bars and cookies, as suggesting healthy and nutritious food
products.6
We also note that there is no evidence of third-party
registrations or uses of similar marks in the cereal and snack
food field, or any other evidence which would show that opposer's
mark is weak in the relevant market. In fact, opposer has
demonstrated that NUTRI-GRAIN is strong in its field and thus
entitled to a broad scope of protection. Opposer has used its
NUTRI-GRAIN mark on a nationwide basis for over 15 years. In
addition, total sales of opposer's breakfast cereals and cereal
people would even be able to identify the characters. (Mueller disc.
dep. p.157).
6 Ms. Susan Jefferson, opposer's Director of Marketing, states in her
declaration that NUTRI-GRAIN conveys "the combined attributes of
nutrition and that the company's cereal products are derived from
grains...." (p.2). Mr. Mueller states that NUTRI BRAIN suggests both
nutrition and science. (dep. p.57).
Opposition No. 100,070
10
bars under the NUTRI-GRAIN marks for the years 1991 through 1998
exceeded $1.2 billion, with yearly sales for the combined
products increasing from $89 million in 1991 to over $200 million
in 1998, and opposer's promotional and advertising expenditures
for that same time period exceeding $380 million. The evidence
also shows that opposer advertises and promotes its marks in
national magazines and newspapers and by nationwide television
commercials, and that its marks have received considerable media
recognition and attention. We find that NUTRI-GRAIN is a strong,
well-recognized mark in the cereal and snack food market, thus
increasing the likelihood that the marks, when used on related
products are likely to be confused.7
Finally, we note opposer's apparent claim that applicant
acted in bad faith in adopting his mark. However, applicant's
prior knowledge of the existence of opposer's marks (whether or
not applicant conducted a "proper" search of PTO records) is not,
in itself, sufficient to constitute bad faith. See Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10
USPQ2d 1307 (Fed. Cir. 1989). Establishing bad faith requires a
showing that applicant intentionally sought to trade on opposer's
good will or reputation. See Big Blue Products Inc. v.
International Business Machines Corp., 19 USPQ2d 1072 (TTAB
1991). There is no such evidence in this case.
Opposition No. 100,070
11
Nevertheless, applicant was clearly aware of opposer's marks
and, as the newcomer, had both the opportunity and the obligation
to avoid confusion by adopting a mark which is not similar to
those marks. It has often been said that a party which knowingly
adopts a mark similar to the well-known mark of another for
closely related goods does so at his own peril, and all doubt on
the issue of likelihood of confusion, even if we had any such
doubt, is resolved against him. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993); and Nina Ricci S.A.R.L. v.
E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir.
1989).
Decision: The opposition is sustained.
7 Opposer does not claim, nor do we find, that NUTRI-GRAIN is a famous
mark.