Smart Foods, LLCDownload PDFTrademark Trial and Appeal BoardJun 10, 2013No. 85348924 (T.T.A.B. Jun. 10, 2013) Copy Citation Mailed: June 10, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Smart Foods, LLC ________ Serial No. 85348924 _______ David M. Carter of the Van Winkle Law Firm, for Smart Foods, LLC. Ahsen Khan, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Bergsman, Ritchie, and Masiello, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Smart Foods, LLC has filed an application to register on the Principal Register the mark SMART GRAIN,1 in standard character format, for goods listed as “Bread, buns, rolls, English muffins, sage stuffing mixes containing bread, croutons, bread crumbs and bakery goods, namely boules and 1 Serial No. 85348924, filed June 17, 2011, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce, and disclaiming the exclusive right to use the term “GRAIN” apart from the mark as shown. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 85348924 2 loaves of bread; none of the foregoing goods are for institutional distribution,” in International Class 30. The examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when applied to the identified goods, so resembles the registered mark SMART GRAINS,2 also in standard character format, for goods listed as follows, that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive: International Class 29: Prepared frozen foods, namely, meat, fish, and poultry; pre-packaged and prepared foods, namely, meat, fish, poultry; frozen, prepared or packaged meals consisting primarily of meat, fish, poultry or vegetables; prepared entrees made of meat, fish, poultry or vegetables; snack foods, namely, fruit-based snacks, potato-based snacks, chicken nuggets; ready-to-eat vacuum-packaged entrees, meals, and snacks, namely, meat, fish, poultry, fruits, and vegetables; prepared frozen foods, namely, prepared entrees consisting primarily of meat, fish, poultry, fruits, or vegetables; pre- packaged and prepared foods, namely, meat, fish, and poultry; snack foods, namely, meat, fish, poultry, and fruits; ready-to- eat vacuum- packaged entrees, meals and snacks, namely, prepared entrees primarily consisting of meat, fish poultry, fruits, vegetables; all of the foregoing goods are for institutional distribution, and none of the foregoing goods include snack bars, energy bars, or meal- replacement bars. 2 Registration No. 3633312, issued June 2, 2009, and disclaiming the exclusive right to use the term “GRAINS” apart from the mark as shown. Ser No. 85348924 3 International Class 30: Ready-to-eat vacuum- packaged entrees, meals, and snacks, namely, breads; prepared frozen foods, namely, prepared entrees and side-dishes consisting of breads and processed grains; pre-packaged and prepared foods, namely, breads and processed grains: frozen, prepared or packaged meals consisting primarily of pasta or rice; snack foods, namely, breads and processed grains; burritos; ready-to- eat vacuum-packaged entrees, meals and snacks, namely, prepared entrees and side-dishes primarily consisting of breads and processed grains; all of the foregoing goods are for institutional distribution, and none of the foregoing goods include snack bars, energy bars, or meal-replacement bars, or breakfast cereals or cereal bars. Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs. We reverse the refusal to register. Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). While all the DuPont factors must be considered when they are of record, the various factors "may play more or less weighty roles in any particular determination." In re E.I. du Pont, 177 USPQ at 567. "Indeed, any one of the factors may control a particular case." In re Dixie Ser No. 85348924 4 Restaurants Inc., 41 USPQ2d at 1533 citing du Pont, 177 USPQ at 567. We first consider the du Pont factor of the similarity or dissimilarity of the marks. The mark in the cited registration is SMART GRAINS, while applicant’s mark is SMART GRAIN. The marks are nearly identical, with the insignificant and non-source-identifying difference of the plural. When applied to the respective identifications of goods, they give the same commercial impression of food that is prepared in a smart or healthy manner. This du Pont factor weighs strongly in favor of finding a likelihood of confusion. Next, we consider the du Pont factor of the similarity or dissimilarity of the goods. It is apparent that there is overlap between the broadly identified “bread” in applicant’s identification, and the more specific breads in the cited registration, including “ready-to-eat vacuum- packaged entrees, meals, and snacks, namely, breads”; also “prepared dishes consisting of breads and processed grains” as well as “pre-packaged and prepared foods, namely, breads;” and “snack foods, namely bread and processed grains.” Accordingly, we find the goods to be in-part legally identical, and therefore this du Pont factor also favors finding likelihood of confusion. Ser No. 85348924 5 Next, we consider the du Pont factor of the similarity or dissimilarity of the channels of trade. Here, as always, we are limited to the actual wording of the identification in the application as well as that in the cited registration. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he authority is legion that 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 regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” [citations omitted]). The clear wording of the cited registration says that “all of the foregoing goods are for institutional distribution.” We read that to mean “institutional distribution only.” Otherwise, the limitation would have no effect. The clear wording of the application, on the other hand, says that “none of the foregoing goods are for institutional distribution.” The examining attorney submitted third-party registrations and web evidence to show that companies may distribute to both institutional and non-institutional buyers. This is not at issue however, since both applicant Ser No. 85348924 6 and registrant have elected in their respective identifications either one or the other exclusively. Accordingly, they appear to be using completely different channels of trade. While it might be theoretically possible for a customer to buy from both if that customer buys for both institutional and non-institutional purposes, such evidence is not of record. Accordingly, we find this du Pont factor to weigh heavily against a likelihood of confusion. We note that applicant argued other du Pont factors, including the number and nature of similar marks on similar goods (although applicant submitted only a list, and not registration printouts or websites evidencing use), the conditions surrounding purchase, and the fact that applicant has a registration for the mark SMART TREAT. We consider these factors to be neutral. In conclusion, although the marks are highly similar, and the goods are in-part identical we do not find a likelihood of confusion since they will travel in different channels of trade, and there is no evidence that the same consumers will come across both.3 Decision: The refusal under Section 2(d) is reversed. 3 It may be noted that the prosecution history of the cited registration is useful in this regard. Copy with citationCopy as parenthetical citation