Premio Foods, Inc.v.EDS Manufacturing, LLC

Trademark Trial and Appeal Board

Jun 16, 2015

No. 91206407 (T.T.A.B. Jun. 16, 2015)

This Opinion is Not a
Precedent of the TTAB

Hearing: March 25, 2015 Mailed: June 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Premio Foods, Inc.
v.
EDS Manufacturing, LLC
_____

Opposition No. 91206407
_____

Steven D. Lustig, Samuel D. Littlepage, and Melissa A. Alcantara of Dickinson
Wright PLLC, for Premio Foods, Inc.

Richard W. Hoffmann of Reising Ethington P.C.,
for EDS Manufacturing, LLC.
_____

Before Lykos, Shaw, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
EDS Manufacturing, LLC (“Applicant”) seeks to register the mark PREMO (in
standard characters) on the Principal Register for “fruit salads and vegetable
salads” in International Class 29 and for “packaged foods, namely, deli sandwiches
and desserts” in International Class 30.1

1 Application Serial No. 85558790, filed March 2, 2012. Applicant asserted a bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), for the Class 29 goods, and claimed first use anywhere and use in commerce since
at least as early as May 1, 2007 for the goods in Class 30.
Opposition No. 91206407
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Premio Foods, Inc. (“Opposer”) opposes registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of confusion
with its mark PREMIO, registered on the Principal Register for “sausages”2 and on
the Supplemental Register for “sausage,”3 both in International Class 29, in
standard and typed characters, respectively.4 Both registrations include statements
that the English translation of the word “PREMIO” in the mark is “premium.”
The proceeding is fully briefed, and an oral hearing was held before the Board on
March 25, 2015.
I. Evidentiary Objections
Both parties object to certain evidence submitted by the other party by notice of
reliance. Each of these objections is properly directed to the weight of the evidence,
not its admissibility, and therefore is denied. We note that each party also
“maintains and continues” objections previously asserted during testimony
depositions of Applicant’s witnesses and, in Opposer’s case, in its responses to
Applicant’s interrogatories.

2 Registration No. 3443606, issued June 10, 2008; Section 8 & 15 declaration of use and
incontestability accepted and acknowledged July 1, 2013. Opposer made this registration of
record by submitting a current printout from the Patent and Trademark Office (PTO)
Trademark Status & Document Retrieval (TSDR) database showing its status and title
pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1). See Trademark Trial and
Appeal Board Manual of Procedure (TBMP) § 704.03(b)(1)(A) (2014). Opposer’s Notice of
Reliance, Exhibit A, 22 TTABVUE 11-15.
3 Registration No. 2523622, issued December 25, 2001; renewed April 19, 2011. Applicant
introduced this registration into evidence as an official PTO record by submitting a current
printout from the TSDR database showing its status, pursuant to Trademark Rule 2.122(e).
Applicant’s Notice of Reliance, Exhibit D, 32 TTABVUE 116-20. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (January 2015).
4 Opposer also pled false association under Section 2(a), but did not argue that ground for
opposition in its brief; hence, we deem it waived. See, e.g., Knight Textile Corp. v. Jones Inv.
Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005).
Opposition No. 91206407
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II. Record
The record in this case consists of the pleadings and the file of the involved
application. Trademark Rule 2.122(b)(1).
In addition, Opposer made of record the following evidence:
• Testimony5 and rebuttal6 depositions of Marc Cinque, president of
Opposer, with exhibits (“Cinque Test.” and “Cinque Rebuttal Test.,”
respectively);
• The testimony deposition of Christine DeAngelis, Opposer’s sales and
marketing specialist, with exhibits (“DeAngelis Test.”);7 and
• by its Notice of Reliance:
o Its Registration No. 3443606 for PREMIO, as noted supra;8
o Third-party registrations including both the words “sausage” and
“sandwiches”;9
o Printouts from Applicant’s websites liparifoods.com,
eastsidedeli.com, and premobrand.com;10 and
o Certain of Applicant’s responses to Opposer’s interrogatories11 and
requests for admission.12

5 25-26, 30, 38-40, and 42 TTABVUE.
6 38-39 TTABVUE.
7 27-29, 31, 41, and 43 TTABVUE.
8 Exhibit A, 22 TTABVUE 7-14.
9 Exhibit B, 22 TTABVUE 16 through 24 TTABVUE.
10 Exhibits C and D, 20 TTABVUE 7-28.
11 Exhibit E, 21 TTABVUE 7-34.
12 Exhibit G, 21 TTABVUE 35-43. Opposer also attempted to introduce certain of
Applicant’s responses to Opposer’s requests for production of documents. However,
responses to document requests generally are inadmissible unless they state that no
responsive documents exist. See United Global Media Group, Inc. v. Tseng, 112 USPQ2d
1039, 1044 (TTAB 2014).
Opposition No. 91206407
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Finally, Opposer submitted with its first notice of reliance seven documents, stating
that they were produced by Applicant. Trademark Rule 2.120(j)(3)(ii) states:
A party that has obtained documents from another party
through disclosure or under Rule 34 of the Federal Rules
of Civil Procedure may not make the documents of record
by notice of reliance alone, except to the extent that they
are admissible by notice of reliance under the provisions
of § 2.122(e).
None of the proffered documents is a printed publication or official record within the
scope of Rule 2.122(e). Opposer did not explain in its notice of reliance (or its briefs)
the basis for making these documents of record by that means. We have determined
that Opposer propounded a request for admission that each of these documents is
genuine and authentic, and Applicant answered each request in the affirmative.13
Therefore, we find the documents admissible pursuant to Trademark Rule
2.120(j)(3)(i). See Trademark Trial and Appeal Board Manual of Procedure (TBMP)
§ 704.11(1) (2014).14
During its rebuttal period, Opposer also submitted a Second Notice of Reliance
with the following exhibits:
• Dictionary definitions of the words “frankfurter” and “hot dog,”15 and
• A petition Opposer filed in 2001 to cancel Registration No. 2156791,
owned by third party Johnsonville Sausage LLC, for the mark PRIMO for
“sausages.”16

13 Applicant’s Responses to Opposer’s First Set of Requests for Admissions 7-13, 21
TTABVUE 40-41.
14 Exhibit H, 20 TTABVUE 75-82. Although Opposer did not make the exhibits to its
requests for admission of record, it identified each of the documents by its document control
number, and Applicant has not objected that there is any discrepancy.
15 Exhibit I, 33 TTABVUE 5-9.
16 Exhibit J, 33 TTABVUE 10-15.
Opposition No. 91206407
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Applicant introduced the following evidence:
• The testimony deposition, with exhibits, of Thomas Lipari, president and
CEO of Lipari Foods Operating Company, which he testified wholly owns
Applicant (“Lipari Test.”);17
• The testimony deposition, with exhibits, of Jeffrey Jacobs, president and
owner of Applicant before its sale to Lipari Foods (“Jacobs Test.”);18 and
• by Notice of Reliance:
o Third-party registrations for marks including PRIMO, PREMIO,
PRIMA, and similar terms;19
o Printouts from Internet websites displaying the marks PRIMO and
PRIMA in connection with various food products;20
o Dictionary definitions of “deli,” “sandwich,” and “sausage”;21
o A portion of the file history of Opposer’s Registration No. 2523622;22
o A certified copy of an excerpt from the transcript of a 2004
trademark trial in U.S. District Court for the Eastern District of
Wisconsin between Opposer and third party Johnsonville Sausage,
and a certified copy of the official transcript of the settlement
agreement in that litigation;23
o Copies of portions of the file histories of Registration No. 2156791
for the mark PRIMO for “sausages” owned by Johnsonville
Sausage24 and Registration No. 3953005 for the mark GRAN
PREMIO for “prosciutto, excluding sausage,” owned by third party
Daniele International, Inc.;25 and
o Certain of Opposer’s responses to Applicant’s interrogatories.26

17 34 and 35 TTABVUE.
18 36 TTABVUE.
19 Exhibit A, 32 TTABVUE 7-53.
20 Exhibit B, 32 TTABVUE 54-108.
21 Exhibit C, 32 TTABVUE 109-14.
22 Exhibit D, 32 TTABVUE 115-32.
23 Exhibit E, 32 TTABVUE 133-77; Exhibit F, 32 TTABVUE 178-86.
24 Exhibit G, 32 TTABVUE 187-92.
25 Exhibit H, 32 TTABVUE 193-209.
26 Exhibit I, 32 TTABVUE 210-33.
Opposition No. 91206407
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Both parties submitted some evidence under seal. We will endeavor to discuss
only in general terms any relevant evidence that was submitted under seal and not
disclosed by the parties in the unredacted portions of their public briefs.
III. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999). Opposer’s standing to oppose registration of Applicant’s mark is
established by its pleaded registrations, which the record shows to be valid and
subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Otter Prods. LLC v. BaseOneLabs
LLC, 105 USPQ2d 1252, 1254 (TTAB 2012). In addition, because Opposer’s pleaded
registrations are of record, priority is not an issue with respect to the goods covered
by Opposer’s pleaded registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d
1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
IV. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all 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, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (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 or services, the first two du Pont factors. See
Opposition No. 91206407
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Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in
the marks.”). Opposer bears the burden of proving its claim of likelihood of
confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.
We address in turn each of the du Pont factors for which the parties submitted
evidence or argument.
A. Similarity of the Goods and Channels of Trade
The second and third du Pont factors assess the similarity or dissimilarity of the
parties’ goods and services and their established, likely-to-continue trade channels.
In comparing the parties’ goods, “[t]he issue to be determined . . . is not whether the
goods of plaintiff and defendant are likely to be confused but rather whether there
is a likelihood that purchasers will be misled into the belief that they emanate from
a common source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618,
1624 (TTAB 1989). The parties’ goods or services need not be similar or even
competitive to support a finding of likelihood of confusion. It is sufficient that the
respective goods or services are related in some manner, or that the conditions
surrounding their marketing are such that they would be encountered by the same
purchasers under circumstances that could, in light of the similarity of the marks,
give rise to the mistaken belief that they originate from or are associated with the
same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785 (TTAB 1993).
Opposition No. 91206407
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We must focus on the wording of the application and registrations, rather than
what the record may reveal regarding the parties’ particular goods and services,
because “‘the question of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the application.’” Stone Lion
Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Opposer’s identified goods are “sausages” and “sausage.” Applicant’s identified
goods are “packaged foods, namely, deli sandwiches and desserts” and “fruit salads
and vegetable salads.” We find that Opposer has not established that its sausages
are similar or related to Applicant’s packaged desserts, fruit salads, or vegetable
salads. See General Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d
1584, 1588 n.1 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d
1679 (TTAB 2014). Rather, the key question before us as to the second du Pont
factor is whether sausages are related to packaged deli sandwiches.
The record definition of “deli” is “delicatessen,” and the pertinent definition of
“delicatessen” is: “1 : ready-to-eat food products (as cooked meats and prepared
salads).”27 The record definition of “sausage” is “a highly seasoned minced meat (as
pork) usu. stuffed in casings of prepared animal intestine.”28

27 Applicant’s Notice of Reliance, Exhibit C, WEBSTER’S NINTH NEW COLLEGIATE
DICTIONARY 336 (1991), 32 TTABVUE 112.
28 Id. at 1045, 32 TTABVUE 114.
Opposition No. 91206407
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Opposer has made of record some 23 use-based registrations with 16 different
owners covering both sausage and some type of sandwiches.29 At least nine of these
registrations, however, are for grocery store house marks or otherwise include
lengthy identifications and therefore have minimal probative value as to the
relatedness of the particular goods at issue.
Opposer also proffered evidence that its sausages are marketed as sandwich
ingredients. For example, it has featured pictures of a sausage sandwich in
advertising – including on billboards30 and its trucks31 – and Opposer’s Internet site
and Pinterest page offer recipes for sandwiches and wraps.32 In addition, Opposer

29 Opposer stated that it submitted copies of 100 registrations in its 350-plus-page
Exhibit B to Opposer’s Notice of Reliance, but most of these registrations are either based
only on foreign use or otherwise not directly relevant to the issues before us. For example:
• Registration No. 4303362, based on an international registration, identifies sausages
and “hamburger meat only, not sandwiches” in International Class 29 (emphasis
added). Id. at Part 15 of 32, 22 TTABVUE 167.
• Registration No. 4390996 identifies neither sausage nor sandwiches, but “Electric
sausage stuffers” in International Class 7 and “Electric sandwich makers; Electric
sandwich toasters” in International Class 11. Id. at Part 4, 22 TTABVUE 46-47.
• Registration No. 4323720 identifies sausage and sausages in Class 29, “sandwich
bags” in International Class 16, and other goods, not including sandwiches. Id. at
Part 6, 22 TTABVUE 70-71.
Some others, such as Registration No. 4360762 for “sandwiches, namely, frozen biscuits
filled with sausage, ham, chicken, and/or cheese” in International Class 30, may be some
evidence that sausage can be a sandwich filling, but not that third parties “have adopted
and registered a single mark for sausages on the one hand, and sandwiches on the other,”
as Opposer claims. Id. at Part 5, 22 TTABVUE 54; Opposer’s Brief at 23, 44 TTABVUE 28.
30 DeAngelis Test. at 16:12-17:1, 43 TTABVUE 20-21.
31 Cinque Test. at 37:16-22, 42 TTABVUE 41.
32 Exhibits 18 and 19 to DeAngelis Test., 28 TTABVUE 59-88, 29 TTABVUE 58-80.
Opposition No. 91206407
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offered evidence that sandwiches featuring its sausages are sold for immediate
consumption at sports stadiums and from its “guerilla marketing” food trucks.33
Opposer also emphasizes that some of Applicant’s sandwiches contain types of
sausage manufactured by third parties, including salami, pepperoni, and sausage
patties. In particular, Applicant’s “Asiago Italian Sub” includes ham, pepperoni, and
Italian hard salami;34 the “Meat Lover’s Grinder” includes turkey, bologna, salami,
and pepperoni;35 and the “Flatbread Omelette Breakfast Sandwich” includes a
sausage patty.36 Opposer also asks the Board to take judicial notice that hot dogs
are sandwiches with sausages as an ingredient.
We find that Opposer has not established that the sausages identified in its
pleaded registrations are related to Applicant’s packaged deli sandwiches. Even if
consumers purchase Opposer’s sausages for use in preparing homemade sausage
sandwiches, that does not render the goods complementary; quite to the contrary,
consumers buying sausages to cook at home would seem unlikely to buy packaged
deli sandwiches to use together, for example, by serving them at the same meal. Cf.,
e.g., In re Martin’s Famous Pastry Shoppe, 223 USPQ at 1290 (holding bread and
cheese related). Nor is there any evidence that Opposer’s sausages are purchased
for use in packaged deli sandwiches.

33 DeAngelis Test. at 17:11-19:13, 22:10-23:9, 43 TTABVUE 21-23, 26-27.
34 20 TTABVUE 18, 24.
35 20 TTABVUE 29.
36 20 TTABVVUE 78.
Opposition No. 91206407
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Turning to du Pont factor three, the similarity of the parties’ channels of trade,
there are no limitations as to channels of trade in the descriptions of goods in the
application or pleaded registrations. Therefore, we presume that both parties’ goods
move in all channels of trade normal for those goods. See Paula Payne Prods. Co. v.
Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); Kalart Co. v.
Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139, 130 (CCPA 1958); In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).37
Opposer’s president testified that Opposer’s sausage is sold “to customers like
wholesale clubs, traditional supermarkets, mass merchandise retailers, stadiums,
military and they then in turn sell our products to their consumers.”38 Mr. Lipari,
the president and CEO of Applicant’s parent company, testified that the normal
channel of trade for its products is retail convenience stores: “The majority of our
customers are what would be called convenience stores where they’re people
walking in and looking for product that they can grab and pretty much eat pretty
immediately.”39 Mr. Lipari testified that Applicant’s sandwiches also are sold in
hospitals, colleges, other retail food outlets, and could be sold in groceries.40

37 Opposer contends that we must presume that the parties’ goods move through the same
channels of trade and to the same class of purchasers because the subject application is
unrestricted. Opposer’s Brief at 25, 44 TTABVUE 30. This presumption applies only if the
goods are identical. See Stone Lion Capital Partners, 110 USPQ2d at 1161-62; United
Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014). Here, the goods
are not identical.
38 Cinque Test. at 7:21-8:4, 42 TTABVUE 11-12.
39 Lipari Test. at 11:10-20, 34 TTABVUE 12; see also id. at 18:10-22, 34 TTABVUE 19
(stating that the consumers of its products “would be individuals coming into those stores to
pick up a snack or grab-and-go item to eat”), 19:2-6, 34 TTABVUE 20.
40 Lipari Test. at 33:6-13, 34 TTABVUE 34.
Opposition No. 91206407
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However, he testified that, if Applicant’s packaged deli sandwiches were sold in a
grocery store, they would be sold in a different location from sausages: “Based on
my 30 or 40 years in the food business, it would be sold in different sections. My
product is a grab-and-go to be consumed immediately; sausage is usually displayed
and sold in a meat department or different parts of the store where the fresh meats
are.”41 Overall, Mr. Lipari testified that he considered the channels of trade for the
parties’ identified goods to be different:
Where we sell our sandwiches, they go into where the
consumer is looking for a product that they’re going to
most likely consume in a very short period of time, if not
immediately, from making the purchase.
The sausages are usually purchased from supermarkets
and are then taken home and prepared for a meal. They
are not created, as far as I know, to be consumed
immediately, in most cases.42
Although this testimony is self-serving, it is also clear, consistent, and
uncontroverted by other record evidence.
With respect to Opposer’s common-law use of the PREMIO mark for sausage
sandwiches sold for immediate consumption at sports stadiums and from its
“guerilla marketing” food trucks, there is no evidence that normal trade channels
for the packaged deli sandwiches identified in the subject application include sports
venues or food trucks.
Considering the record evidence as a whole, we find that the dissimilarity of the
parties’ respective goods and trade channels weigh against a likelihood of confusion.

41 Lipari Test. at 33:22-34:14, 34 TTABVUE 34-35.
42 Lipari Test. at 19:14-20:5, 34 TTABVUE 20-21.
Opposition No. 91206407
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B. Strength of Opposer’s Mark
The sixth du Pont factor is the number and nature of similar marks in use on
similar goods or services. Applicant argues that Opposer’s mark is weakened by
third-party use of similar marks. In support of its contention, Applicant made of
record third-party registrations for food and beverages for marks similar to the
parties’ marks, only a few of which identify similar goods. These include PRIMO for
“sausages”43; PRIMO for “sandwiches”44; PREMIO PRONTO for “sausage”45;
PRIMA PORTA for “processed meats; namely, sausages”46; and PRIMO GUSTO for
“meats.”47 Applicant also submitted printouts from third-party websites, most of
which are not probative because they too relate to food or beverage products other
than sausages. One printout from the site sfgate.com references “Safeway’s Primo
Taglio brand” prosciutto,48 while another printout is from the home page for
“Johnson’s Premium Sausage.”49
Evidence of third-party use of similar trademarks can be relevant in
determining the strength of a mark. Third-party registrations, however, are

43 Registration No. 2156791, owned by Johnsonville Sausage, Inc., as discussed elsewhere.
Applicant’s Notice of Reliance, Exhibit A, 32 TTABVUE 17.
44 Registration No. 4416691. Id., 32 TTABVUE 51.
45 Registration No. 2639522. Id., 32 TTABVUE 26.
46 Registration No. 1710223. Id., 32 TTABVUE 15.
47 Registration No. 2329572. Id., 32 TTABVUE 21.
48 Applicant’s Notice of Reliance, Exhibit B, 32 TTABVUE 56-57; see also id. at 96 (printout
from Safeway.com showing PRIMO TAGLIO mark, including for salame and mortadella).
49 Id., 32 TTABVUE 78-79. Applicant also submitted a printout from the site
primaportasausage.com referencing Prima Porta Italian sausage, but because it does not
display the date it was published or printed, it does not meet the admissibility
requirements of Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
Id., 32 TTABVUE 55.
Opposition No. 91206407
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evidence neither of use of a mark nor of customer familiarity with it. Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992);
AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269-70
(CCPA 1973); Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1200 (TTAB 2007).
On its face, Applicant’s third-party Internet evidence is probative that the
websites exist and that the public may have been exposed to them and therefore
may be aware of the information contained in them. See Rocket Trademarks Pty
Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011). Yet such evidence
generally has minimal probative value where, as here, it is not accompanied by any
evidence of the extent of the use and promotion by third parties of their marks, or
consumer awareness of them. “Without such evidence, we cannot assess whether
third-party use has been so widespread as to have had any impact on consumer
perceptions.” 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1729 (TTAB 2007). Thus,
the record is devoid of evidence of third-party use of the mark PREMIO in
association with sausage.
Nonetheless, PREMIO, translated as “premium,” is inherently laudatory and
descriptive, as Opposer previously admitted. During the prosecution of Opposer’s
Registration No. 2523622, in a response to Office action dated November 10, 2000,
Opposer amended its application to seek registration on the Supplemental Register
after a refusal on the basis of mere descriptiveness under Section 2(e)(1) of the
Trademark Act.50 The registration on the Supplemental Register is an admission

50 Applicant’s Notice of Reliance, Exhibit D, 32 TTABVUE 126-27.
Opposition No. 91206407
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that PREMIO is not inherently distinctive and an implied admission that the term
was merely descriptive at least at the time of Opposer’s first use. Perma Ceram
Enters. Inc. v. Preco Indus. Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992); see also
In Eddie Z’s Blinds & Drapery Inc., 74 USPQ2d 1037, 1039 (TTAB 2005).
In the same response to Office action, arguing against refusals under
Section 2(d) on the ground of likely confusion with three different registrations
incorporating the term “premium,” Opposer also repeatedly characterized the mark
PREMIO as weak. For example, Opposer argued:
Multiple registrations on the Principal Register utilizing
the term “PREMIO” or its English equivalent,
“PREMIUM” in connection with goods which the
Examiner has deemed related, establishes that the term
“PREMIO” has become common place and diluted in the
industry. Accordingly, any registration for the term
“PREMIO” in the food industry has a very narrow scope of
protection such that a similar descriptive term is
registrable.51
Similarly, during opening statements in its 2004 litigation with Johnsonville
Sausage Co., owner of Registration No. 2156791 for PRIMO for sausages, Opposer
stated that it was told by trademark counsel when it selected the PREMIO mark
that “because so many people were out there using Premio you’re going to get very
narrow protection.”52 Counsel also told the jury:
There are hundreds, hundreds of companies out there all
using the word “Primo” or “Prima” or similar such names
throughout the United States. And when you have so
many people using essentially the same mark or name the

51 32 TTABVUE 124.
52 Applicant’s Notice of Reliance, Exhibit E at 35:9-11, 32 TTABVUE 168.
Opposition No. 91206407
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scope of protection narrows, narrows down. . . . And any
difference then becomes meaningful and significant.53
We do not construe Opposer’s arguments during ex parte prosecution or third-
party litigation as conclusive on the issue of the strength of its mark. See Top
Tobacco L.P. v. North Atlantic Operating Co., 101 USPQ2d 1163, 1172 (TTAB 2011).
Rather, we have considered Opposer’s earlier arguments to be “illuminative of
shade and tone in the total picture confronting the decision maker.” Interstate
Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA
1978); see also Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95
USPQ2d 1271, 1281 (TTAB 2009) (same), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010).
Opposer’s more recent registration, No. 3443606, issued on the Principal
Register on Opposer’s claim pursuant to Trademark Act Section 2(f) that it had
acquired distinctiveness through substantially exclusive and continuous use for five
years. Opposer now has used its mark for some 15 years in association with sausage
products sold in 36 states.54 Opposer did not provide evidence regarding its sales
volume in terms of dollars or market share, but did submit under seal its
advertising and marketing budget, which is significant.55 Thus, although Opposer’s
mark PREMIO is inherently weak, it is likely to have acquired commercial strength
through use. We find the strength of Opposer’s mark to be neutral.

53 Id. at 36:17-37:1, 32 TTABVUE 169-70. The litigation was settled by an agreement that
Opposer would pay $2.75 million to Johnsonville Sausage. Applicant’s Notice of Reliance,
Exhibit F, 32 TTABVUE 178-86; Cinque Rebuttal Test. at 12:15-15:21, 38 TTABVUE 16-19.
54 See Cinque Test. at 5:13-18, 42 TTABVUE 9.
55 Exhibit 13 to Cinque Test., 26 TTABVUE 403-04. Opposer also submitted under seal its
2012 sales by tonnage, which appears to be quite a large number but lacks context.
Exhibit 6 to Cinque Test., 26 TTABVUE 67-70.
Opposition No. 91206407
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C. Similarity of the Marks
We turn next to the first du Pont factor, which is the similarity of the parties’
marks. In a likelihood of confusion analysis, we compare the marks in their
entireties for similarities and dissimilarities in appearance, sound, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The
proper test is not a side-by-side comparison of the marks, but instead ‘whether the
marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
Applicant’s mark is PREMO. Opposer’s mark is PREMIO. The marks are
visually similar, but distinguished in pronunciation by an additional syllable via the
“I” in PREMIO. They also are distinguishable in meaning and overall consumer
impression. Opposer’s mark is the Italian word for “premium,” but there is no
evidence that Applicant’s mark has any recognized meaning. We cannot agree with
Opposer that PREMO would be an expected “truncation or derivative” of PREMIO.
Taking into account both the similarities and differences conveyed by the marks as
a whole, we find the first du Pont factor to be neutral.
D. Actual Confusion
Finally, we address Applicant’s argument that it and Opposer had coexisted for
some seven years at the time of trial without evidence of actual confusion. Proof of
actual confusion is not necessary to show a likelihood of confusion. See Weiss Assocs.
Opposition No. 91206407
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Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed. Cir. 1990). A
showing of actual confusion would be highly probative, if not conclusive, of a
likelihood of confusion. Yet the opposite is not true; an absence of evidence of actual
confusion carries little weight. See J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d
960, 144 USPQ 435, 438 (CCPA 1965). Furthermore, it has often been recognized
that such evidence is difficult to obtain. Lebanon Seaboard Corp. v. R&R Turf
Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012).
In this case, the parties have used their marks in overlapping geographic
markets for several years. We find that the eighth du Pont factor, pertaining to the
length of time during and conditions under which there has been concurrent use
without evidence of actual confusion, weighs slightly against finding that there is a
likelihood of confusion. See, e.g., G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917
F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (lack of actual confusion in more
than a decade weighs against finding that confusion is likely).
V. Conclusion
In sum, we have found that the second, third, and eighth du Pont factors weigh
slightly against a likelihood of confusion, while the first and sixth factors are
neutral. Considering the record evidence as a whole, we find that Opposer has not
carried its burden to establish by a preponderance of the evidence that the parties’
marks are likely to cause confusion when used in association with their respective
goods.
Decision: The opposition is dismissed.