Shurfine Foods, Inc.v.Suremeal LLC

Trademark Trial and Appeal Board

Nov 30, 2018

No. 91231817 (T.T.A.B. Nov. 30, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 30, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Shurfine Foods, Inc.
v.
Suremeal LLC
_____

Opposition No. 91231817
_____

Sheila Fox Morrison of Davis Wright Tremaine LLP,
for Shurfine Foods, Inc.
Christopher M. Pham of Christopher M. Pham Law Group PLLC,
for Suremeal LLC.
_____

Before Cataldo, Wolfson and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Suremeal LLC (“Applicant”) filed an application for registration on the Principal
Register of the standard character mark SUREMEAL for
Liquid and powder protein based dietary and nutritional
supplement and meal replacement shakes for the purpose
of strengthening the immune system, in International
Class 5.1

1 Application Serial No. 88649948 was filed on June 3, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as January 1, 2015.
Opposition No. 91231817
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Shurfine Foods, Inc. (“Opposer”) opposes registration pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
applied to Applicant’s goods, so resembles Opposer’s numerous previously registered
SHUR-formative marks “for various goods sold in retail grocery stores, including
dietary supplements,” as to be likely to cause confusion.2
Applicant, in its answer, denied the salient allegations in the Notice of
Opposition.3
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of application Serial No. 86649948.
Opposer submitted no testimony. However, during its assigned testimony period,
Opposer filed a Notice of Reliance on:
1. TSDR printouts of Opposer’s pleaded registrations for the marks SHURFINE
(one in standard characters and two in identical stylized format displayed as
) and SHURFRESH and design, displayed as , all

2 1 TTABVUE 16-17, ¶¶ 1-2. Opposer also alleges likelihood of confusion based on Opposer’s
prior use of its pleaded marks, and that it has a family of SHUR-formative marks (id., ¶¶ 3-
7 and 8-12). These claims are deemed waived because Opposer did not pursue them at trial.
See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises, 107
USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014).
3 Applicant’s first “affirmative defense” of failure to state a claim was not pursued at trial,
and therefore is deemed waived. See Alcatraz, 107 USPQ2d at 1753, n.6. We construe
Applicant’s other putative affirmative defenses as mere amplifications of its general denials.

Opposition No. 91231817
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for solid and liquid foodstuffs, several of which contain protein, in
International Classes 29 and/or 30;4
2. TESS printouts of use-based third-party registrations for goods of the type
identified in the application and pleaded registrations;5 and
3. Dictionary definitions for the terms “sure,” “meal,” “fine” and “fresh.”6
Applicant submitted no testimony or evidence, and only Opposer filed a brief.
Nonetheless, Opposer, as plaintiff in this proceeding, must prove its standing and its
claims by a preponderance of the evidence. See Cerveceria Centroamericana, S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
II. Standing
Opposer has established its standing by properly introducing into evidence four of
its pleaded registrations. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).

4 11 TTABVUE. Respectively, Registration No. 3557357 (issued on January 6, 2009, Section
8 and 15 affidavits accepted and acknowledged); Registration No. 1134376 (issued on May 6,
1980, second renewal); Registration No. 2170823 (issued on July 7, 1998, renewed); and
Registration No. 2276332 for the SHURFRESH and design mark (issued on September 7,
1999, renewed. This design mark is lined for the colors red, yellow and orange, but the
registration does not include a description of the mark.).
5 12 TTABVUE.
6 13 TTABVUE.
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III. Priority
Because four of Opposer’s pleaded registrations are of record and Applicant did
not file a counterclaim against them, priority is not at issue with respect to the goods
identified in those registrations. King Candy Co., Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
IV. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). We discuss below these and other relevant factors. See M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006) (even within du Pont list, only factors that are “relevant and of record” need be
considered).
A. Focus on Registration No. 3557357
For purposes of our likelihood of confusion analysis, we focus on the most relevant
pleaded and proved registration, Registration No. 3557357, for the standard
character mark SHURFINE for goods including “Pre-packaged dinners consisting
primarily of meat, poultry and fish with pasta,” “frozen meals consisting primarily of
meat, poultry and/or vegetables” and “frozen meals consisting primarily of potatoes,”
Opposition No. 91231817
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in Class 29. If we find a likelihood of confusion as to this registration, we need not
find it as to the others. On the other hand, if we do not find a likelihood of confusion
with the mark in this registration, we would not find it as to the other registrations,
which identify arguably less similar products, and as to the SHURFRESH and design
mark, additional visual differences. See, e.g., Fiserv, Inc. v. Elec. Transaction Sys.
Corp., 113 USPQ2d 1913, 1917 (TTAB 2015).
B. Similarity of the Goods and Channels of Trade
We turn first to the du Pont factors involving the relatedness of the goods and
their established, likely to continue channels of trade. We base our evaluation on the
goods as they are identified in the application and pleaded registration. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “[L]ikelihood of confusion can be found ‘if the
respective goods are related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that they
emanate from the same source.” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
The goods identified in the application are “Liquid and powder protein based
dietary and nutritional supplement and meal replacement shakes for the purpose of
strengthening the immune system,” and the goods identified in the registration
include “pre-packaged dinners consisting primarily of meat, poultry and fish with
pasta,” “frozen meals consisting primarily of meat, poultry and/or vegetables” and
Opposition No. 91231817
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“frozen meals consisting primarily of potatoes.” The identified goods are inherently
related on their face in that meal replacement shakes are alternatives to frozen meals
and pre-packaged dinners, and frozen meals and pre-packaged dinners may be
consumed with dietary and nutritional supplement shakes.
The numerous third-party, use-based registrations submitted by Opposer for
marks that identify some of the products identified in both the application and
registration buttress these findings.7 For example, Reg. No. 3614283 for the mark
SANO FOODS identifies meal replacement drinks and dietary supplemental drinks
plus prepared or packaged entrees consisting primarily of meat, fish, poultry or
vegetables; Reg. No. 4352342 for the mark FUNFRESH FOODS identifies a
nutritional drink mix for use as a meal supplement and nutritional meal replacement
powders plus frozen boxed dinners; Reg. No. 4470956 for the mark HOUSE FOODS
identifies dietary supplemental drinks and pre-cooked packaged entrees; and Reg.
No. 3723633 for the mark PROTEIN BAR identifies nutritional supplement shakes
containing protein for use as a meal substitute and prepared entrees.8 While third-
party registrations are not evidence that the marks shown therein are in use or that
the public is familiar with them, they have probative value to the extent that they
suggest, in general, that the goods identified in the application and some of the goods
identified in the registration are of a type that may emanate from a single source.

7 Opposer’s Second Notice of Reliance, 12 TTABVUE.
8 The first pages of the listed registrations are located at 12 TTABVUE 11, 33, 39 and 58,
respectively.
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See, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
As to the channels of trade, because the identifications of goods in the application
and registration contain no limitations as to channels of trade and classes of
purchasers, it is presumed that the identified goods move in all channels of trade
normal for those goods, such as groceries and convenience stores that sell food, and
that they are available to all classes of purchasers for those goods, including members
of the general public. See Stone Lion, 110 USPQ2d at 1161; see also Coach Servs., 101
USPQ2d at 1723 (absent limitation, “goods are presumed to travel in all normal
channels … for the relevant goods.”); In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992).
The second and third du Pont factors strongly support a finding of a likelihood of
confusion.
C. Strength of Opposer’s Registered Mark
Next, we address Opposer’s contention that its mark SHURFINE is strong
because it is a coined, arbitrary term, and because it has been registered for many
years and has achieved incontestable status.
In determining the strength of a mark, we consider both inherent strength, based
on the nature of the mark itself, and commercial strength based on marketplace
recognition of the mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d
1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual
strength (distinctiveness) and its marketplace strength (secondary meaning).”); Top
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Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011)
(the strength of a mark is determined by assessing its inherent strength and its
commercial strength); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881,
1899 (TTAB 2006); 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION § 11:83 (5th ed. June 2018 update) (“The first enquiry focuses on the
inherent potential of the term at the time of its first use. The second evaluates the
actual customer recognition value of the mark at the time registration is sought or at
the time the mark is asserted in litigation to prevent another’s use.”).
Concerning conceptual strength, we find that Opposer’s mark SHURFINE is
arbitrary as applied to the various food products identified in the registration, and
therefore it is inherently distinctive. Moreover, there is no evidence of conceptual
weakness based on consumer exposure to extensive third-party use of the same or
similar marks in connection with the same or similar goods. Cf. Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (at least fourteen relevant third-
party uses or registrations of record); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (at least twenty-six relevant
third-party uses or registrations of record).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Board of India, 80 USPQ2d at 1899. However, Opposer
submitted no evidence to support a finding that the mark SHURFINE is
commercially strong. Opposer posits that its mark is strong because it is
Opposition No. 91231817
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incontestable, but this argument conflates two distinct concepts. Opposer’s mark is,
indeed, incontestable, but that only means that it is not subject to challenge based on
certain sections of the Trademark Act. That does not mean that the mark is strong.
Because Opposer submitted no evidence of use, and instead relied solely on its four
pleaded and proven registrations, there is no evidence of consumer exposure to and
recognition of the mark SHURFINE. Cf. Bose Corp. v. QSC Audio Prods. Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (commercial strength of a mark
“may be measured indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the mark, and by the length of
time those indicia of commercial awareness have been evident.”). Thus, we have no
basis for concluding that Opposer’s mark is commercially strong.
On this record, we find that Opposer’s mark SHURFINE is inherently distinctive
and accord it the normal scope of protection to which inherently distinctive marks are
entitled. See Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d
1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that likelihood of confusion
fame varies along a spectrum from very strong to very weak).
D. Similarity of the Marks
Under this du Pont factor, we compare Opposer’s mark SHURFINE and
Applicant’s mark SUREMEAL in their entireties for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. Stone Lion, 110
USPQ2d at 1160. “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
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impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., 101 USPQ2d at 1721 (quotation
omitted). The marks “‘must be considered … in light of the fallibility of memory ….’”
In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014)
(quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,
196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See St. Helena Hosp., 113 USPQ2d at 1085; Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971).
Our analysis cannot be predicated on dissection of the involved marks. Stone Lion,
110 USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties.
Id.; see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233,
234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). Nonetheless, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161. For instance, as the Court of Appeals for the Federal
Circuit has observed, “[t]hat a particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted rationale for giving less
weight to a portion of a mark ….” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985).
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The marks SHURFINE and SUREMEAL are similar because they begin with the
phonetically equivalent terms SHUR and SURE,9 and they each consist of two
syllables with eight letters. The placement of the term SHUR/SURE in the lead
position in each mark highlights the importance of that term. See Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve’ is the first word in the mark and the first word to appear
on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word).
The trailing terms FINE and MEAL are entitled to less weight in this analysis
because they are descriptive or at least highly suggestive of the identified goods.
Descriptive matter typically is less significant or less dominant when comparing
marks. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846 (quoting Nat’l Data
Corp., 224 USPQ at 752 (the “descriptive component of a mark may be given little
weight in reaching a conclusion on likelihood of confusion”)). In particular, the term
“fine,” which means “of superior quality,” is a laudatory descriptive term connoting a
positive attribute of Opposer’s products.10 And the term “meal” is descriptive, if not
generic, of Applicant’s meal replacement products.11

9 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE lists “shŏŏr, shur”
as the two ways to pronounce the word “sure.” 13 TTABVUE 3.
10 13 TTABVUE 7-8.
11 Id. at 5-6.
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Taking into account the close relationship between the identified goods and the
fallibility of human memory, and giving more weight to the phonetically equivalent
lead terms SHUR and SURE, we find that when the marks are viewed in their
entireties, their aural, visual and structural similarities create marks with similar
commercial impressions. See In re Detroit Athletic Co., 128 USPQ2d 1047, 1049 (Fed.
Cir. 2018) (“Indeed, in view of the marks’ structural similarity, the lead words are
their dominant portion and are likely to make the greatest impression on
consumers.”).
Overall, we find the marks SHURFINE and SUREMEAL to be more similar than
they are different, and resolve this du Pont factor in favor of a finding of likelihood of
confusion.
E. Conclusion
Having considered all the evidence and arguments bearing on the relevant du
Pont factors, we conclude that the identified goods are related food products that
move through the same channels of trade to the same classes of purchasers, the
marks are more similar than they are different, and Opposer’s SHURFINE mark is
entitled to a normal scope of protection. Ultimately, we find Applicant’s mark
SUREMEAL is likely to cause confusion with Opposer’s SHURFINE mark when used
in association with the identified goods.
Decision: The opposition is sustained.