Milnot Co.v.Federated Foods Ltd.

Trademark Trial and Appeal Board

May 3, 2000

No. 91094226 (T.T.A.B. May. 3, 2000)

Paper No. 23
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 3,00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Milnot Company
v.
Federated Foods Limited
_____
Opposition No. 94,226 to application Serial No. 74/263,926,
filed on April 8, 1992
_____
Andrew B. Mayfield of Armstrong, Teasdale, Schlafly & Davis for
Milnot Company.
Robert L. Epstein of James & Franklin, LLP, for Federated Foods
Limited.
_____
Before Hohein, Rogers and McLeod, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Federated Foods Limited has filed an application to
register the mark "SUNSHINE" for "meats, sausage rolls, lobster,
scallops, shrimp, vegetable and peanut oil, vegetable and animal
shortening, beef fat, soup mixes, and fruit topping, nut topping
and whipped topping, pickles, jam, marmalade, jellies, jelly
powders, fruit fillings, peanut butter, processed mushroom and
walnuts, fish and fowl" in International Class 29, "salt, spices,
mustard, relish, ketchup, vinegar, sauces, flavoring syrups,
pancake syrup, pies, honey, gravies, gravy mixes and puddings,
Opposition No. 94,226
2
salad dressings and mayonnaise" in International Class 30 and
"orange juice, syrups for use in making soft drinks, and fruit
drinks" in International Class 32.1
Milnot Company, as set forth in its amended pleading,
has opposed registration on the ground that, "since 1978, [it]
has been, and is now, using its trademark SUNSHINE in connection
with food products distributed to the consuming public through
retail grocery chain stores and the like"; that it is the owner
of federal registrations for the following marks and goods:
(1) the mark "SUNSHINE" for "evaporated
filled milk"2 and "sweetened condensed milk";3
(2) the mark "SUNSHINE BRAND" for
"butter";4 and
(3) the mark "SUNSHINE" and design, as
shown below,

1 Ser. No. 74/263,926, filed on April 8, 1992, which is based upon
Canadian Reg. No. 199,414, issued on May 24, 1974.
2 Reg. No. 1,140,479, issued on October 14, 1980, which sets forth
dates of first use of January 22, 1979; combined affidavit §§8 and 15.
3 Reg. No. 1,250,587, issued on September 6, 1983, which sets forth
dates of first use of October 1981; combined affidavit §§8 and 15.
4 Reg. No. 1,131,910, issued on March 11, 1980, which sets forth dates
of first use of January 31, 1924; combined affidavit §§8 and 15. The
word "BRAND" is disclaimed. While, at present, there is no indication
as to whether such registration has been renewed, the six-month grace
period for effecting a renewal thereof has not yet expired.
Opposition No. 94,226
3
for "evaporated milk";5
that there is no issue as to opposer’s priority; and that
applicant’s mark, which "is identical to Opposer’s SUNSHINE
marks," so resembles such marks as to be likely, when applied to
applicant’s goods, to cause confusion, mistake or deception.
Applicant, in its answer, has denied the allegations of
the amended notice of opposition.
The record consists of the pleadings; the file of the
involved application; and certified copies of opposer’s pleaded
registrations showing that, in each instance, the registrations
are subsisting and owned by opposer. Neither party took
testimony or properly introduced any other evidence. In
addition, neither party filed a brief6 or requested an oral
hearing.
Opposer’s priority of use of its various "SUNSHINE"
marks, with the possible exception of its "SUNSHINE BRAND" mark,
is not in issue since, as noted previously, the certified copies
of its pleaded registrations demonstrate that the registrations
are subsisting and owned by opposer. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974). The only issue to be determined, therefore, is

5 Reg. No. 1,150,549, issued on April 7, 1981, which sets forth dates
of first use of July 14, 1978.
6 Inasmuch as it was apparent, from the motion for reconsideration
filed by opposer on February 27, 1998 after the Board entered judgment
against opposer under Trademark Rule 2.128(a)(3), that despite its
failure to file a brief it has not lost interest in this case, the
Board, in an order issued on June 15, 1999, allowed the parties until
August 16, 1999 to finalize any settlement in this proceeding. No
response thereto, however, has been received.
Opposition No. 94,226
4
whether applicant’s "SUNSHINE" mark, when used in connection with
one or more of the goods identified in its involved application,
so resembles opposer’s various "SUNSHINE" marks for, inter alia,
evaporated filled milk, sweetened condensed milk and evaporated
milk as to be likely to cause confusion, mistake or deception as
to source or sponsorship.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists, we find that, on this record, opposer has
failed to satisfy its burden of demonstrating that confusion as
to source or sponsorship is likely to occur. In particular,
while applicant’s "SUNSHINE" mark is identical, in terms of
sound, meaning and commercial impression, to opposer’s "SUNSHINE"
marks, there is simply no evidence which shows that any of
applicant’s goods are so closely related to any of opposer’s
goods that the purchasing public would be likely to attribute a
common source thereto when marketed under the respective marks.
See, e.g., In re Mars, Inc., 741 F.2d 395, 222 USPQ 938, 938-39
(Fed. Cir. 1984). It is settled, in this regard, that there is
no "per se" rule that all food products sold within supermarkets
and grocery stores are related merely by virtue of their being
sold through the same retail establishments. See, e.g.,
Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d
926, 198 USPQ 151, 152 (CCPA 1978); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976);
Recot Inc. v. Becton, 50 USPQ2d 1439, 1445 (TTAB 1998); Hi-
Opposition No. 94,226
5
Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ 1169, 1171-
72 (TTAB 1987); and In re August Storck KG, 218 UPSQ 823, 825
(TTAB 1983). Here, the respective goods of the parties, which on
their face are distinctly different in nature, have not been
shown to be of the kinds that, for instance, would normally be
sold in the same sections of food stores or would typically be
expected to originate from the same entity. Moreover, there has
been no demonstration by opposer that its "SUNSHINE" marks are
famous and, consequently, would be entitled to a broad ambit of
protection. See, e.g., Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992),
cert. denied, 506 U.S. 862, 113 S.Ct. 181 (1992). Accordingly,
the opposition must fail.
Decision: The opposition is dismissed.
G. D. Hohein
G. F. Rogers
L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board