My Own Meals, Inc.v.My Own Mail, Inc.

Trademark Trial and Appeal Board

Sep 10, 1999

No. 91106022 (T.T.A.B. Sep. 10, 1999)

Hearing: Paper No. 19
February 17, 1999 BAC

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/10/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
My Own Meals, Inc.
v.
My Own Mail, Inc.
_____
Opposition No. 106,022
to application Serial No. 75/112,617
filed on May 31, 1996
_____
John A. Franczyk of Butler, Rubin, Saltarelli & Boyd for My
Own Meals, Inc.
Steven G. Mahon of Ryan Mahon & Brown P.A. for My Own Mail,
Inc.
______
Before Cissel, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
An intent-to-use application was filed by My Own Mail,
Inc. on May 31, 1996 to register the mark MY OWN MAIL on the
Principal Register for services described as “mail order
services featuring children’s merchandise and children’s
gift packages.”
Opposition No. 106022
2
My Own Meals, Inc. has opposed registration of the mark
alleging that opposer has continuously used the mark MY OWN
MEAL since April 2, 1987; that opposer currently uses the
mark on “shelf-stable, prepackaged, prepared children’s
meals and adult meals” (Notice of Opposition, paragraph 3);
that since 1987 opposer has sold its products through retail
grocery stores and by mail order directly to consumers; that
the target market for opposer’s goods and applicant’s
services, is the same, “namely consumers of children’s
products” (Notice of Opposition, paragraph 5); and that
applicant’s mark, if used in connection with its services,
would so resemble opposer’s previously used and registered
well-known trademark MY OWN MEAL1, as to be likely to cause
confusion, mistake, or deception.
Applicant denied the salient allegations of the notice
of opposition.
The record consists of the pleadings; the file of the
opposed application; the testimony, with exhibits, of Mary
Anne Jackson, opposer’s president and founder (taken
February 10, 1998 by opposer and April 2, 1998 by

1 Opposer pleaded ownership of two registrations, both for the
mark, MY OWN MEAL. Reg. No. 1,470,809, issued December 29, 1987,
Section 8 affidavit accepted, Section 15 affidavit acknowledged,
for “prepackaged prepared meals, namely, meat and vegetable
entrees.” The claimed dates of first use and first use in
commerce are April 2, 1987.
Reg. No. 1,548,528, issued July 18, 1989, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, for “prepackaged,
prepared pasta dinners.” The claimed date of first use and first
use in commerce is January 9, 1988.
Opposition No. 106022
3
applicant); the testimony, with exhibits, of Deirdre
McDonald, applicant’s president and founder; the affidavit
testimony of Ms. McDonald; and the rebuttal affidavit
testimony of Ms. Jackson.2 Both parties filed briefs on the
case. An oral hearing was held before this Board on
February 17, 1999.
Opposer was founded in 1986 by Mary Anne Jackson.
Opposer has used the mark MY OWN MEAL for prepackaged
prepared meals, namely meat and vegetable entrees,
continuously since April 1987, and for prepackaged prepared
pasta dinners since January 1988. Opposer’s products are
shelf-stable prepared meals, and were originally developed
for children ages three through ten. Today opposer produces
these products for such children as well as for adults. In
1990 opposer shifted its product direction to kosher meals
for children and adults.
Opposer first sold its products under the mark MY OWN
MEAL through mail order, and later added a retail market
through grocery store chains, day care institutions,
military commissaries, and through Toys “R” Us stores.
Today, opposer sells directly to consumers, to institutions,

2 In letters accompanying the two affidavits, the attorneys
referred to the “parties’ agreement.” The Board presumes the
parties agreed that certain testimony could be presented by
affidavit. Note that Trademark Rule 2.123(b) now requires that
such agreements be in writing.
Opposition No. 106022
4
and to the military; the former two of which are through
mail order, while the military is by contract.
Approximately 60-70% of opposer’s sales of these products
are to the military, with 10-15% to institutions, and the
remainder are direct mail order sales. The minimum order is
six meals of any variety, and the shipments to institutions
are generally 48 meals to a case.
In 1986 opposer advertised through newspapers and later
added national magazines and couponing. Today, opposer’s
advertising is through newsletters, direct mail, and ethnic
magazines. Opposer has spent approximately $2 million for
advertising, marketing and promotion from 1986 to date.
Ms. Deirdre McDonald, applicant’s founder and
president, testified that applicant was incorporated in
1996; and that she selected the trademark MY OWN MAIL as
part of the idea behind the corporation, which was “the idea
of doing a club for kids where they receive their own mail
and get a package with a craft activity, et cetera, in it.”
(Dep., p. 9).
Applicant’s services are intended for children ages
four to ten. The children’s products included in the mail
order craft package include a complete craft project (e.g.,
materials from which to create a book made from pages, yarn
and glue), a recipe (related to the craft activity), a gift-
wrapped surprise (e.g., snow globe, inflatable dinosaur),
Opposition No. 106022
5
and a brochure for the adults. Applicant’s mail order
children’s merchandise and gift packages cost $14.95 plus
$3.50 shipping for the first child in the household and
$10.00 plus $3.50 shipping for the second child in the
household.
Applicant sent out a mailing of about 2000 brochures
for the holiday mailing of December 1996,3 and applicant has
continuously marketed and rendered these mail order services
under its mark. In the last two years applicant’s mark has
been exposed to approximately 150,000 households in 34
states and its mail order services were ordered by customers
in 13 states. Applicant advertises through direct mailings,
and through magazines, newspapers and journals. Applicant
sponsored an arts and crafts festival and followed up with a
coupon mailing to those who signed up at the festival.
In the December 1996 holiday mailing, there is a
reference to a “free bonus” birthday party pack “sponsored
by Betty Crocker®.” Ms. McDonald explained that this
birthday package includes six craft projects to do with
friends, a Betty Crocker cake decorating item and a dessert
mix coupon, the latter two of which were provided through a
contract with General Mills, Inc.

3 This mailing brochure includes the following opening statement:
“MY OWN MAIL (tm) Craft Pack Club is a great new program in which
a child receives his or her own exciting package in the mail
every other month. Each shipment has a craft project complete
Opposition No. 106022
6
Mary Anne Jackson, opposer’s president and founder,
testified at her February 10, 1998 deposition as to the
status and ownership of opposer’s two pleaded registrations,
and copies of the pleaded registrations were included as
exhibits to this testimony. See Trademark Rule 2.122(d)(2).
Because opposer owns valid and subsisting registrations
of its pleaded mark, the issue of priority does not arise.
See King Candy Company v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974); and Carl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125
(TTAB 1995). Moreover, the evidence clearly shows that
opposer’s first use preceded the filing date of applicant’s
intent-to-use application.
The only issue to be determined, therefore, is whether
applicant’s MY OWN MAIL mark, when used in connection with
“mail order services featuring children’s merchandise and
children’s gift packages,” so resembles opposer’s MY OWN
MEAL mark for its “prepackaged prepared meals, namely, meat
and vegetable entrees” and “prepackaged, prepared pasta
dinners,” that confusion is likely as to the origin or
affiliation of the parties’ goods and services. 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

with all necessary materials, plus stickers and a gift-wrapped
surprise....”
Opposition No. 106022
7
(CCPA 1973), for determining whether a likelihood of
confusion exists, we find that confusion is not likely.
Regarding the parties’ respective goods and services,
applicant’s mail order services featuring children’s
merchandise and gift packages are obviously very different
from opposer’s prepackaged prepared meat, vegetable and
pasta meals. It is true that applicant’s packages include a
recipe card, and that when a child is signed up for
applicant’s mail order services, on the child’s birthday
applicant provides a free bonus party pack sponsored by
Betty Crocker. But, there are no food items of any type
included in applicant’s packages.4 The inclusion of a
recipe card and/or a coupon for a dessert mix does not
sufficiently tie applicant’s services to foods for purposes
of our likelihood of confusion analysis. Applicant’s
services and opposer’s goods are dissimilar.
The channels of trade may overlap in that opposer sells
its prepackaged food products through, inter alia, mail
order, and applicant’s services are mail order services.
There are no limitations in opposer’s identifications of
goods, and the record shows that a percentage of opposer’s
prepackaged prepared dinners are in fact sold by mail order.
The fact that opposer sells some of its goods through mail

4 When asked if she was aware of whether there is food contained
in applicant’s craft packs, Ms. Jackson answered that she was
Opposition No. 106022
8
order does not establish a likelihood of confusion with
applicant’s (and all other) mail order services. That is,
purchasers of opposer’s prepackaged foods are not likely to
believe that applicant’s mail order services emanate from or
are in some way associated with the same entity solely
because both are available through mail order.
Opposer argued in its brief that children’s food
products are frequently marketed in conjunction with toys
and playthings, citing the examples of at fast-food
restaurants, with breakfast cereals, and crayons and
coloring mats given to children in sit-down restaurants
(brief, pp. 13-14). However, the record is devoid of any
evidence on this point.
Turning to a consideration of the marks, obviously both
share the words MY OWN. However, when considered in their
entireties, the marks are dissimilar in appearance and
connotation. See General Mills Inc. v. Health Valley Foods,
24 USPQ2d 1270 (TTAB 1992). The terms MEAL and MAIL are
common words with different readily understood meanings.
Opposer’s mark connotes or signifies that the person has his
or her own food or meal; whereas, applicant’s mark connotes
receiving something in the mail in one’s own name.5

aware of a “connection to food through Betty Crocker. Other than
that, no.” (April 2, 1998 Dep. p. 11).
5 Opposer’s argument that the acronym for both marks is MOM is
not relevant herein as it is the involved marks which we must
Opposition No. 106022
9
Both Ms. Jackson and Ms. McDonald testified that they
were aware of no instances of actual confusion. The absence
of any actual confusion is not a crucial factor to our
decision, but it is not surprising, given the differences
between applicant’s mark and opposer’s mark, the dissimilar
products and services, and the disparate actual trade
channels.
The Trademark Act does not speak in terms of remote
possibilities of confusion, but rather, the likelihood of
such confusion occurring in the marketplace. Our primary
reviewing court has stated that more than a mere possibility
of confusion must be shown; instead, there must be
demonstrated a probability or likelihood of confusion. See
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
quoting from Witco Chemical Company, Inc. v. Whitfield
Chemical Company, Inc., 418 F.2d 1403, 164 USPQ 43 (CCPA
1969) as follows: “We are not concerned with mere
theoretical possibilities of confusion, deception, or
mistake or with de minimis situations but with the
practicalities of the commercial world, with which the
trademark laws deal." See also, Triumph Machinery Company
v. Kentmaster Manufacturing Company Inc., 1 USPQ2d 1826
(TTAB 1987).

consider. Further, Ms. McDonald testified that applicant does
Opposition No. 106022
10

not use any acronym for its mail order services.‘
Opposition No. 106022
11
Decision: The opposition is dismissed.
R. F. Cissel
T. J. Quinn
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board