Pioneer Valley Family Brands, Inc.v.Tropical Snowball, Incorporated

Trademark Trial and Appeal Board

Feb 1, 2010

No. 91187879 (T.T.A.B. Feb. 1, 2010)

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.

WINTER Mailed: February 1, 2010

Opposition No. 91187879
Pioneer Family Brands, Inc.
v.
Tropical Snowball,
Incorporated

Before Seeherman, Holtzman, and Cataldo,
Administrative Trademark Judges.

By the Board:

Tropical Snowball, Incorporated (hereafter “applicant”)
seeks to register the mark TROPICAL SNOWBALL for various
goods in International Class 30, including “shaved ice and
shaved ice based desserts combined with fruit, nuts, cereal,
candy, cookies, ice cream, and soy based products; frozen
yogurt and frozen yogurt desserts combined with nuts,
cereal, fruit, candy and shaved ice; and ice cream.”1
Pioneer Family Brands, Inc. (hereafter “opposer”)
opposes registration of the applied-for mark on the ground

1 Application Serial No. 77329997, filed November 15, 2007, based
on applicant’s alleged bona fide intent to use the mark in
commerce. The term SNOWBALL has been disclaimed.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91187879
2
of priority and likelihood of confusion. In support of its
claim, opposer alleges ownership of trademark registration
No. 1359508 for the mark TROPICAL SNO for use with “flavored
shaved ice and flavorings for shaved ice” (¶2) and that it
has, through its predecessor-in-interest, used its mark
since 1983, which is prior to any date on which applicant
can rely.
In its answer, applicant admits that opposer is the
record owner of U.S. Reg. No. 1359508 for the mark TROPICAL
SNO (¶2) and admits that it has not started using the mark
TROPICAL SNOWBALL (¶4). Applicant has denied all other
allegations set forth in the notice of opposition.
This case now comes up on opposer’s fully briefed
motion (filed October 8, 2009) for summary judgment on the
ground of priority and likelihood of confusion.
Opposer argues that summary judgment should be granted
in its favor because there are no genuine issues of material
fact concerning the similarity of the marks, the relatedness
of the parties’ respective goods, and relatedness of trade
channels used by the parties (motion, p. 9). Specifically,
opposer argues that applicant’s mark encompasses opposer’s
mark in its entirety and that the marks TROPICAL SNO and
TROPICAL SNOWBALL are very similar in sight, sound and
meaning because they contain the same dominant, first word,
“tropical,” and both marks evoke the same oxymoron resulting
Opposition No. 91187879
3
from a term relating to a hot, humid climate juxtaposed with
a term used in connection with weather featuring snow.
Additionally, opposer argues that because the terms “sno”
and “snow” may be used interchangeably and the term “ball”
describes the shape of applicant’s intended goods, when the
term “ball” is “discounted appropriately, the marks TROPICAL
SNO and TROPICAL SNOWBALL become virtually identical”
(motion, p. 12).
As to the du Pont factor of relatedness of the parties’
goods, opposer argues that “the goods associated with
applicant’s mark are closely related, if not identical, to
Pioneer’s goods” (motion, p. 13), and that applicant’s goods
are “at least very ‘similar in use and function’ to
Pioneer’s goods” (motion p. 14). Specifically, opposer
asserts that both parties’ goods can be described as “cold
frozen treats or shaved ice desserts containing shaved ice
as a primary ingredient combined with flavorings” (motion,
p. 14). To illustrate how the goods are related, opposer
points out applicant’s response to the examining attorney’s
office action in regard to the subject application, provided
during discovery, in which applicant describes its goods as
“hav[ing] a base of vanilla ice cream with finely shaved ice
in the form of [a] sphere on top of the ice cream with fruit
and other delectable toppings on top of and on the side of
the dessert” (motion, Exh. D). Opposer also asserts that
Opposition No. 91187879
4
the parties’ similar goods may be purchased in a similar
price range of about five dollars (motion, Exhibits D & H;
answer ¶17) and, based thereon, argues that such inexpensive
products are likely to be purchased on impulse with the
result that confusion as to the source of the parties’ goods
is likely (motion, pp. 16-17).
In regard to the channels of trade for the involved
goods, opposer emphasizes that its products are offered to
the general public alongside or in the same vicinity of
establishments that sell a variety of frozen confections
such as ice cream, frozen yogurt, popsicles, and/or sherbet
(motion, p. 15).
To support its motion, opposer has provided the
declaration of its President, Donald Griffiths, by which he
testifies that opposer is the owner of Trademark Reg. No.
1359508 for TROPICAL SNO for “flavored shaved ice and
flavorings for shaved ice” (¶5); that opposer is currently
using and has continuously used, through its predecessor-in-
interest, the mark TROPICAL SNO in interstate commerce since
at least as early as June 1983 (¶5); and that opposer’s
products are sold nationwide to the general public through a
network of dealers and distributors, which sell TROPICAL SNO
products through brick and mortar outlets, and through
mobile retail outlets such as kiosks, trailers and carts,
which are typically located in high foot traffic areas
Opposition No. 91187879
5
including stadiums featuring sporting and cultural events,
parks, schools, fairs, amusement parks, shopping centers and
malls, and the like; and that opposer has expended hundreds
of thousands of dollars in the promotion and advertising of
its TROPICAL SNO products (¶¶ 6, 7, 8, 10, 11 and 13).
Opposer has also provided the declaration of its attorney,
J. Abby Barraclough, to support opposer’s Exhibit E
(printouts on the definition of “ball” from www.merriam-
webster.com, http://encarta.msn.com/dictionary, and
http://education.yahoo.com).
In opposition, applicant argues that summary judgment is
inappropriate because there are facts in this case that are
“highly in dispute” (brief, p. 5). Essentially, applicant
asserts that whether the parties’ goods are similar and will
be offered to the same or similar class of purchasers are
facts in dispute (brief, pp. 8-9, 11-12); and that whether the
marks are similar is in dispute because a reasonable person
will not necessarily conclude either that “sno” (in opposer’s
mark) is a misspelling of “snow” (brief, p. 13) or that “Sno”
and “Snowball” are related terms (brief, p. 14). In
particular, applicant contends that “SNO” in opposer’s mark
will be perceived as referring to The Sudbury Neutrino
Observatory. In support of its contentions, applicant has
provided, inter alia, a copy of opposer’s admissions that the
goods in its registration do not include fresh fruit, ice
Opposition No. 91187879
6
cream or smoothies (brief, Exh. B); the declaration of
applicant’s officer, William Hacket, who testifies regarding
the nature of applicant’s intended goods and the intended
market for its goods (brief, Exh. D, ¶3); and copies of
opposer’s marketing materials (brief, Exh. H).
In reply, opposer contends that applicant’s argument that
“SNO” in opposer’s mark would be perceived by consumers as the
acronym for The Sudbury Neutrino Observatory is “outlandish”
(reply, p. 5); that whether the terms “snow” or “snowball” are
similar in meaning is not in dispute (reply, p. 5, referencing
applicant’s definition of “snowball” in its brief, p. 13); and
that the purported differences between the parties’ goods and
how such goods are provided to consumers are insignificant, if
not non-existent (reply, p. 7 and Exh. E, which includes
applicant’s admission no. 27, stating that applicant’s goods
“are or will be sold to consumers for immediate consumption”).
Additionally, opposer argues that none of the alleged
distinctions between the parties’ channels of trade is set
forth in either the involved application or in opposer’s
registration. Consequently, argues opposer, the alleged
differences in channels of trade should not be considered by
the Board.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
Opposition No. 91187879
7
matter of law. See Fed. R. Civ. P. 56(c). The purpose of
summary judgment is one of judicial economy, that is, to save
the time and expense of an unnecessary trial. A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it is
entitled to judgment as a matter of law. Fed. R. Civ. P.
56(c); and Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct.
2548 (1986). Additionally, the nonmoving party must be given
the benefit of all reasonable doubt as to whether genuine
issues exist, and the evidentiary record on summary judgment,
and all justifiable inferences to be drawn from the
undisputed facts, must be viewed in a light most favorable to
the nonmoving party. The Board may not resolve issues of
material fact; it may only ascertain whether such issues are
present. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987
F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc.
v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d
1471 (Fed. Cir. 1993); Olde Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Further, when a moving party’s motion for summary
judgment is supported by evidence sufficient to indicate that
there is no genuine issue of material fact and the moving
party is entitled to judgment, the burden shifts to the
nonmoving party to demonstrate the existence of at least one
genuine issue of material fact that requires resolution at
Opposition No. 91187879
8
trial. See Opryland USA, 970 F.2d at 850, 23 USPQ2d at 1473.
See also Hornblower & Weeks Inc. v. Hornblower & Weeks Inc.,
60 USPQ2d 1733, 1739 (TTAB 2001) (“to avoid entry of an
adverse judgment, [nonmovant] must present sufficient
evidence to show an evidentiary conflict as to one or more
material facts in issue”).
Before we consider the merits of the motion for summary
judgment, we must first consider the question of whether
genuine issues exist as to opposer’s standing to bring this
opposition proceeding. Although not discussed by either
party, standing is a threshold issue that must be proven by a
plaintiff in every inter partes case. Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999) and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). The purpose of the standing
requirement, which is directed solely to the interest of the
plaintiff, is to prevent litigation when there is no real
controversy between the parties. Lipton Industries, 213 USPQ
at 189.
The declaration of opposer’s president establishes that
opposer owns its pleaded registration for the mark TROPICAL
SNO and has used said mark in connection with flavored shaved
ice and flavorings for shaved ice through brick and mortar
retail outlets and mobile retail outlets since 1983.
Additionally, applicant has admitted opposer’s ownership of
Opposition No. 91187879
9
its pleaded registration, and has essentially treated the
registration as of record. We find this evidence of
opposer’s registration and use of the mark TROPICAL SNO
sufficient to establish that opposer has a real interest in
the outcome of this proceeding; that is, opposer has a direct
and personal stake in preventing the registration of
applicant’s mark for the identified goods.2 In view thereof,
we find that there is no genuine issue of material fact as to
opposer’s standing. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Jewelers
Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021 (Fed. Cir. 1987).
Turning to the merits of the motion for summary
judgment, we similarly find that there is no genuine issue
of material fact that opposer has priority of use. First,
because of the evidence of opposer’s registration, namely,
opposer’s averment of ownership of U.S. Reg. No. 1359508 set
forth in the declaration of opposer’s president and
applicant’s admission in its answer of opposer’s allegation
of ownership of said registration set forth in the notice of
opposition, priority is not in issue. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Moreover, the undisputed evidence of record

2 We also note that applicant has not challenged opposer’s
standing to oppose the involved application.

Opposition No. 91187879
10
clearly establishes opposer’s prior use. Opposer has used
its mark in connection with “flavored shaved ice and
flavorings for shaved ice” since 1983, which is long prior
to the filing date of the involved application, which date,
because applicant has admitted that it has not yet begun to
use its mark, is the earliest date on which applicant can
rely. See Trademark Act Section 7(c), 15 U.S.C. § 1057(c);
Zirco Corp. v. American Telephone and Telegraph Co., 21
USPQ2d 1542, 1544 (TTAB 1991). We also note that applicant
has not disputed opposer’s priority.
With regard to the likelihood of confusion under
Trademark Section 2(d), 15 U.S.C. § 1052(d), our analysis is
based on the consideration of all of the probative facts in
evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
With respect to the similarity of the marks, we look to
Opposition No. 91187879
11
the marks in their entireties as to appearance, sound,
connotation and commercial impression. The focus is on the
perception and recollection of the average purchaser, who
normally retains a general rather than specific impression
of trademarks. See Chemetron Corp. v. Morris Coupling &
Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In this case, for the following reasons, there is no
genuine issue that the marks TROPICAL SNO and TROPICAL
SNOWBALL are substantially similar. We note first that both
marks start with the term “TROPICAL.” See Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondée En 1772, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005) (“as the first word in
the mark and the first word to appear on the label,” VEUVE
in “VEUVE CLIQUOT” is a “prominent feature” and “also
constitutes the ‘dominant feature’ in the commercial
impression created by [opposer’s] mark”); and Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and
remembered”). Further, applicant’s argument that “SNO” will
not necessarily be perceived as a misspelling of “snow” or
that it is the acronym for The Sudbury Neutrino Observatory
is not sufficient to raise a genuine issue of material fact.
In this connection, we take judicial notice that “sno” is a
Opposition No. 91187879
12
recognized variant spelling of “snow” in “sno-cone,” goods
which are the same as or similar to the goods at issue
herein.3 Thus, as used in opposer’s mark, the term “SNO”
will be understood as “SNOW.” Additionally, both marks
contain the same incongruity resulting from a term that
refers to a hot, humid climate being juxtaposed with a term
that suggests a cold climate, i.e. “SNO” and “SNOWBALL,”
respectively. Further, because a snowball is made of snow
and applicant’s goods will be comprised of shaved ice in the
shape of a ball or sphere, the word SNOWBALL in the context
of applicant’s mark will be viewed as having the same
connotation of “snow.” In view of the foregoing, the marks
are highly similar in appearance, pronunciation and
connotation, and evoke essentially the same commercial
impression. While there are minor differences in the marks,
they are insufficient to raise a genuine issue of material
fact as to the similarity of the marks.
Turning to the factor of the similarity of the goods,
opposer’s goods as identified in its registration comprise
“flavored shaved ice and flavorings for shaved ice,” and

3 See Merriam-Webster Online Dictionary. 2010. Merriam-Webster
Online. 22 January 2010 . The Board may take judicial
notice of online dictionary definitions where the resource is
also available in printed format. See In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002); see also University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983) (Board may take judicial notice of use of a term in
dictionaries).
Opposition No. 91187879
13
applicant’s goods include “shaved ice and shaved ice based
desserts” combined with various toppings. There is no
genuine issue that the goods as identified in the
application and registration are in part identical. The
fact that even one of the products listed in an application
is identical to one of opposer’s identified products is
sufficient to support a finding that there is a likelihood
of confusion. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)
(likelihood of confusion must be found if there is likely to
be confusion with respect to any items that come within the
identification of goods in the application). Applicant’s
evidence and arguments about the different nature of its
shaved ice and shaved ice based desserts are insufficient to
raise a genuine issue of material fact. The question of
likelihood of confusion must be determined based on an
analysis of the marks as applied to the goods and/or
services recited in an applicant’s application vis-à-vis the
goods and/or services recited in an opposer’s registration,
rather than what the evidence shows the goods and/or
services to be. Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Because applicant’s identification in its
application includes “shaved ice” and opposer uses its mark

Opposition No. 91187879
14
for “flavored shaved ice,” any specific differences between
applicant’s “shaved ice” and opposer’s products are
insufficient to raise a genuine issue of material fact. The
du Pont factor of the similarity of the goods favors a
finding of likelihood of confusion.
In regard to the trade channels for the goods, the
identifications in the involved application and opposer’s
registration include no limitation with respect to channels
of trade or classes of purchasers. Thus, we must presume
that the parties’ goods move in all normal channels of trade
for such goods and that they are available to all potential
customers. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1005 (2002) (“absent
restrictions in the application and registration, goods and
services are presumed to travel in the same channels of
trade to the same class of purchasers”). Consequently,
applicant’s evidence and arguments concerning the asserted
“upscale” nature of its goods and the specific nature of the
channels of trade and classes of consumers to whom it
intends to sell its products (high-end retail outlets in
upscale locales to high-end customers) are not sufficient to
raise a genuine issue of material fact; applicant’s
identification of goods contains no such restrictions.
Moreover, there is no reason why the same consumers who
would purchase applicant’s “high-end” shaved ice and shaved
Opposition No. 91187879
15
ice based desserts would not also encounter opposer’s shaved
ice in shopping malls, amusement parks and the like. The du
Pont factor of the similarity of the channels of trade
favors a finding of likelihood of confusion.
Similarly, the parties’ arguments and evidence
regarding the conditions of sale, in particular, the prices
of opposer’s goods and the goods applicant intends to sell,
which vary from approximately $1.50 to $7.00, are
insufficient to raise a genuine issue of material fact. The
record establishes that shaved ice and shaved ice based
desserts are inexpensive items. Further, by their very
nature, they are subject to impulse purchase. As noted, the
identification of applicant’s goods is not restricted in any
manner. The goods could be sold in amusement parks or fairs
or other venues where they would not be purchased with care.
See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1899 (Fed. Cir. 2000) (“When products are relatively
low-priced and subject to impulse buying, the risk of
likelihood of confusion is increased because purchasers of
such products are held to a lesser standard of purchasing
care”) (citations omitted). The du Pont factor of the
conditions of purchase also favors a finding of likelihood
of confusion.
The foregoing are the only du Pont factors discussed by
the parties. In particular, applicant has not asserted a
Opposition No. 91187879
16
genuine issue of fact that would apply to any other du Pont
factor. Accordingly, we treat all other du Pont factors as
neutral.
In summary, we find that there are no genuine issues of
fact that opposer has standing to bring this action; that
opposer has prior use of its mark; that the marks are
substantially similar; that applicant’s goods are in part
identical to opposer’s goods; that applicant’s goods must be
presumed to travel in the same trade channels and be sold to
the same classes of purchasers as opposer’s identical goods;
and that the goods are inexpensive and subject to impulse
purchase. In view thereof, opposer has met its burden of
demonstrating, on motion for summary judgment, that it is
entitled to judgment on its pleaded ground of priority and
likelihood of confusion.
Accordingly, opposer’s motion for summary judgment on
its claim of likelihood of confusion under Section 2(d) is
granted. Judgment is entered against applicant, the
opposition is sustained, and registration to applicant is
refused.
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