Snow Ball’s Chance, Ltd.v.SnoWizard, Inc.

Trademark Trial and Appeal Board

Feb 13, 2019

No. 92060914 (T.T.A.B. Feb. 13, 2019)

Mailed: February 13, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
————
Snow Ball’s Chance, Ltd.
v.
SnoWizard, Inc.
___

Cancellation Nos. 92060914 and 92060915
___
Mark Edw. Andrews of Andrews Arts & Sciences Law LLC
for Snow Ball’s Chance, Ltd.

Kenneth L. Tolar and Jack E. Morris of Tolar, Harrigan & Morris, LLC
for SnoWizard, Inc.
______
Before Cataldo, Ritchie and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
These cases are the latest chapter in a series of long-running disputes between
various players in the flavored ice (snow cone/snowball) industry. The disputes have
thus far traversed both state and federal courts, including the United States Court of
Appeals for the Federal Circuit, and have spawned not only a variety of trademark
claims, but also antitrust, RICO and other causes of action. In February 2015, the
United States Supreme Court denied certiorari, finally resolving the most relevant
cases.
Around the same time, Petitioner Snow Ball’s Chance, Ltd. filed petitions with
This Opinion is not a
Precedent of the TTAB
Cancellation Nos. 92060914 and 92060915
2
this Board to cancel two of Respondent SnoWizard, Inc.’s registrations for the names
of snowball flavors: WHITE CHOCOLATE & CHIPS1 (Cancellation No. 92060914)
and CAJUN RED HOT2 (Cancellation No. 92060915). Each registration issued under
Section 2(f) of the Act for “flavoring concentrate for non-nutritional purposes, namely,
flavoring concentrate for shaved ice confections.”
While the two involved marks are obviously different, the grounds for cancellation
are the same in each case, and each case is based on essentially the same facts and
record. Accordingly, for efficiency’s sake we decide both cases in this single opinion,
but do not consolidate the cases, each of which retains its separate identity.
I. The Pleadings
Petitioner alleges that it operates a snowball stand, and that like many snowball
vendors, it purchases flavor concentrates which it mixes with simple syrup to create
the flavorings it pours over snowballs (comprised of shaved ice) at a customer’s
request. 1 TTABVUE 3-5 (Notice of Opposition (“NOO”) ¶¶ 1-8) (both cases).3
According to Petitioner, “[g]enerally, and historically, snowball flavor concentrates
are labeled with the same flavor name that the snowball customer uses to order the
snowball.” Id. at 5 (NOO ¶ 9) (both cases). In each proceeding, Petitioner alleges that

1 Registration No. 4157907, issued June 12, 2012; Section 8 Affidavit accepted.
2 Registration No. 4157906, also issued June 12, 2012; Section 8 Affidavit accepted.
3 Citations to the record reference TTABVUE, the Board’s online docketing system, and more
specifically, unless otherwise indicated, the TTABVUE record for Cancellation No. 92060914,
which for the most part is substantively the same as the record for Cancellation No. 92060915
(but for the involved marks being different). The number preceding “TTABVUE” corresponds
to the docket entry number(s), and any number(s) following “TTABVUE” refer to the page
number(s) of the docket entry where the cited materials appear.
Cancellation Nos. 92060914 and 92060915
3
the mark in question “has been a popular snowball flavor name for many years,” and
that for years, Petitioner purchased the flavors (WHITE CHOCOLATE & CHIPS and
CAJUN RED HOT) from “Alternative-Supplier Southern Snow,” which is Petitioner’s
“preferred supplier.” However, Petitioner was unable to purchase the flavors from
Southern Snow after Respondent asserted its rights in the involved marks through
cease and desist letters and other enforcement efforts, and Southern Snow stopped
offering the flavors. Id. at 7 (NOO ¶¶ 16-25) (both cases).
As grounds for cancellation, Petitioner alleges that each of the involved marks is
generic, merely descriptive and without secondary meaning and “functional;” and
that the involved registrations were obtained by fraud, specifically Respondent’s
allegedly false allegation of substantially exclusive use under Section 2(f) of the
Trademark Act.
In each of its answers, Respondent denies the salient allegations in the petitions
for cancellation and asserts several purported “affirmative defenses,” most of which
are merely amplifications of its denials. Respondent failed to pursue or prove its
remaining, actual affirmative defenses, which are accordingly waived. Miller v.
Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. Am.
Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).4

4 The parties were involved in a third Board case, Cancellation No. 92062751, which was
ultimately dismissed as a sanction for “Petitioner’s pattern of dilatory and obstructive
conduct.” 13 TTABVUE 8 (Cancellation No. 92062751).
Cancellation Nos. 92060914 and 92060915
4
II. The Records
The records consist of the pleadings and, by operation of Trademark Rule 2.122(b),
the files of Respondent’s involved registrations. In addition, Petitioner introduced:
Declaration of George Miller, its President and principal
(“Miller Dec.”). 13 TTABVUE 2-5.

Notice of Reliance on: the Miller Declaration; portions of
the trial testimony of Respondent’s President Ronald
Sciortino in one of the federal cases; portions of the file
histories of Respondent’s involved registrations; and
portions of the file histories of two of Respondent’s
uninvolved Supplemental Register registrations. 14
TTABVUE 2-97 (Cancellation No. 92060914); 12
TTABVUE 44-186 (Cancellation No. 92060915).5

Respondent introduced:
Declaration of Mr. Sciortino, its President. 11 TTABVUE
2-6.

Notice of Reliance on: portions of the file histories of its
involved registrations; documents which Petitioner
produced during discovery; the final judgment by the
federal district court in one of the court cases; the Federal
Circuit decision affirming that district court judgment in
relevant part; and an e-mail from Petitioner’s counsel. 12
TTABVUE 2-76.

While Petitioner did not file a motion to use Mr. Sciortino’s testimony from the
federal case as required by Trademark Rule 2.122(f), Respondent did not object to use
of the testimony, and Respondent relies on holdings in the federal cases. We have
therefore considered this testimony to have been stipulated into the record, for

5 As explained in the Board’s September 25, 2018 order, 24 TTABVUE, Petitioner’s evidence
was not timely filed, but has nonetheless been considered.
Cancellation Nos. 92060914 and 92060915
5
whatever evidentiary value it may have. TBMP § 704.13. Similarly, while the invoices
which Petitioner produced during discovery, and the e-mail from Petitioner’s counsel,
both of which Respondent introduced into evidence through its notice of reliance, are
not generally admissible under notice of reliance alone, Petitioner did not object, and
we have therefore considered these documents as well. Exec. Coach Builders, Inc. v.
SPV Coach Co., 123 USPQ2d 1175, 1176 n.9 (TTAB 2017); TBMP § 704.11.
III. The Federal Cases
In the federal cases, which were consolidated and tried before a jury in the U.S.
District Court for the Eastern District of Louisiana, Petitioner’s “preferred supplier”
Southern Snow challenged the same registrations at issue here, on essentially the
same grounds.6 Southern Snow was represented by the same attorney as Petitioner
in this case. The Court’s ultimate Judgment on Jury Verdict states:
… judgment is rendered in favor of SnoWizard, Inc.
regarding SnoWizard, Inc.’s claims against Southern Snow
Mfg. Co., Inc. … for infringement of SnoWizard, Inc.’s
registered trademark CAJUN RED HOT; and declaring
that SnoWizard, Inc. owns a valid and enforceable
federally registered trademark in CAJUN RED HOT; that
Southern Snow Mfg. Co., Inc. … used a reproduction,
counterfeit, copy, or colorable imitation of the trademark
CAJUN RED HOT in a manner that was likely to cause
confusion or to cause mistake, or to deceive as to the source,
origin, sponsorship, or approval of such product … for
infringement of SnowWizard, Inc.’s registered trademark
WHITE CHOCOLATE & CHIPS, and declaring that
SnoWizard, Inc. owns a valid and enforceable federally

6 Southern Snow Mfg. et al. v. Snowizard Holdings, et al., Case Nos. 06-CV-9170, 09-CV-3394,
10-CV-0791 and 11-CV-1499. These cases involved multiple claims by multiple parties of
infringement of multiple marks, including the marks at issue here, as well as Southern
Snow’s challenges to the validity of the marks at issue here.
Cancellation Nos. 92060914 and 92060915
6
registered trademark in WHITE CHOCOLATE & CHIPS;
that Southern Snow Mfg. Co., Inc. … used a reproduction,
counterfeit, copy, or colorable imitation of the trademark
WHITE CHOCOLATE & CHIPS in a manner that was
likely to cause confusion or to cause mistake, or to deceive
as to the source, origin, sponsorship, or approval of such
product ….

12 TTABVUE 74-75 (Judgment on Jury Verdict ¶¶ 17-18). The Federal Circuit
affirmed the Court’s Judgment on Jury Verdict with respect to both of the marks
involved in these cases, WHITE CHOCOLATE & CHIPS and CAJUN RED HOT.
Southern Snow Mfg. Co., Inc. v. SnoWizard Holdings, Inc., 567 Fed.Appx. 945 (Fed.
Cir. 2014), cert. denied, 135 S.Ct. 1416 and 135 S.Ct. 1439 (2015). 12 TTABVUE 11-
38.
IV. Standing
According to Mr. Miller, Petitioner “operates Rodney’s Snowball Stand … which
sells snowballs.” 13 TTABVUE 2 (Miller Dec. ¶ 3). In addition, Rodney’s has a desire
to use the flavor names WHITE CHOCOLATE & CHIPS and CAJUN RED HOT, but
Respondent objects to Petitioner’s use of these marks. Id. at 2-5 (Miller Dec. ¶¶ 5-6,
17). This establishes Petitioner’s standing. See e.g. Books on Tape, Inc. v. Booktape
Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Kistner Concrete
Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB
2011); Stuart Spector Designs, Ltd. V. Fender Musical Instruments Corp., 94 USPQ2d
1549, 1553 (TTAB 2009); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428
(TTAB 2007); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634
(TTAB 1999); Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974 (TTAB 1988).
Cancellation Nos. 92060914 and 92060915
7
V. Analysis
“Because a trademark owner’s certificate of registration is ‘prima facie evidence of
the validity of the registration’ and continued use of the registered mark, the burden
of proof is placed upon those who seek cancellation. 15 U.S.C. § 1057(b) … the
petitioner’s burden is to establish the case for cancellation by a preponderance of the
evidence.” Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021,
13 USPQ2d 1307, 1309 (Fed. Cir. 1989).
Here, as a general matter, none of Petitioner’s evidence establishes the elements
Petitioner must prove to prevail on its pleaded grounds for cancellation. Rather, the
Miller Declaration primarily addresses Petitioner’s snowball business and snowball
flavoring generally, the file histories for Respondent’s uninvolved Supplemental
Register registrations are essentially irrelevant to Petitioner’s claims and Mr.
Sciortino’s testimony relates primarily to Respondent and matters which are at best
tangential to Petitioner’s claims. Therefore, Petitioner has not established any
ground for cancellation. We now turn to the specific failures of Petitioner’s proof,
claim by claim.
A. Genericness
“Generic terms are common names that the relevant purchasing public
understands primarily as describing the genus of goods or services being sold. They
are by definition incapable of indicating a particular source of the goods or services,
and cannot be registered as trademarks.” In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2011) (citations omitted). Petitioner
Cancellation Nos. 92060914 and 92060915
8
“bears the burden of proving that the term is generic … by a preponderance of the
evidence.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d
1370, 1374 (Fed. Cir. 2018).
Petitioner has not met its burden with respect to either involved mark, just as
Southern Snow failed to meet its burden of establishing genericness in the federal
cases. Indeed, while Petitioner recognizes that “[e]vidence of the public’s
understanding and perception of a term may be obtained from any competent source,
including testimony, surveys, dictionaries, catalogs, trade journals, newspapers,
magazines and other publications,” 15 TTABVUE 24 (Petitioner’s Trial Brief at 23),
Petitioner did not introduce evidence from any of these, or from any other “competent
source.” There is not a single evidentiary cite in the Genericness section of Petitioner’s
Trial Brief. Quite simply, none of Petitioner’s evidence (as opposed to attorney
argument) relates to how the relevant public understands either WHITE
CHOCOLATE & CHIPS or CAJUN RED HOT. Petitioner has thus failed to meet its
burden of proving that either WHITE CHOCOLATE & CHIPS or CAJUN RED HOT
is generic, and that claim is therefore denied.7
B. Acquired Distinctiveness
Where, as here, a mark is registered “on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during

7 In the federal cases, WHITE CHOCOLATE & CHIPS and CAJUN RED HOT were found to
be not generic and otherwise valid, and Southern Snow’s use of the marks was found to be
infringing. Southern Snow’s infringing use of these marks does not establish that either is
generic.
Cancellation Nos. 92060914 and 92060915
9
prosecution presumes that the mark is descriptive.” Cold War Museum, Inc. v. Cold
War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009).
Accordingly, there is no issue with respect to descriptiveness. We presume that
Respondent’s marks are merely descriptive. The question is whether they have
acquired distinctiveness.
Cold War Museum set forth the burdens of proof and persuasion in cancellation
proceedings grounded in Section 2(f) of the Act:
The party seeking to cancel registration of a mark always
bears the burden of persuasion, that is, the ultimate burden
of proving invalidity of the registration by a preponderance
of the evidence. Initially, the party seeking cancellation also
bears the “burden to establish a prima facie case” that the
registration is invalid. Yamaha [Int’l Corp. v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1007 n.9
(Fed. Cir. 1988)]. In a Section 2(f) case, the party seeking
cancellation bears the initial burden to “establish a prima
facie case of no acquired distinctiveness.” Id. at 1576. To
satisfy this initial burden, the party seeking cancellation
must “present sufficient evidence or argument on which
the board could reasonably conclude” that the party has
overcome the record evidence of acquired distinctiveness –
which includes everything submitted by the applicant
during prosecution. Id. at 1576-77. The burden of
producing additional evidence or argument in defense of
registration only shifts to the registrant if and when the
party seeking cancellation establishes a prima facie
showing of invalidity. The Board must then decide whether
the party seeking cancellation has satisfied its ultimate
burden of persuasion, based on all the evidence made of
record during prosecution and any additional evidence
introduced in the cancellation proceeding.

Id. at 1629-30 (emphasis added).
Here, Petitioner failed to introduce any evidence that either mark lacks acquired
distinctiveness (or that either mark is otherwise invalid), just as Southern Snow, its
Cancellation Nos. 92060914 and 92060915
10
preferred supplier, failed to do in the federal cases.8 Southern Snow’s use of the marks
in years past does not establish a lack of acquired distinctiveness because those uses
were found to be infringing and enjoined in the federal cases.9 Thus, Petitioner has
also failed to meet its burden of establishing even a prima facie case that either mark
has not acquired distinctiveness. This claim is also denied.
C. Functionality
Petitioner alleges that the marks at issue are “the functional flavor name on the
label of a container of flavor concentrate for making ready-to-use” flavoring syrup. 1
TTABVUE 12 (Petition ¶ 51) (Canc. No. 92060914); 1 TTABVUE 11 (Petition ¶ 51)
(Canc. No. 92060915). However, functionality typically relates to features of products

8 Petitioner’s reliance on the file histories for Respondent’s uninvolved applications to register
WHITE CHOCOLATE & CHIPS (Serial No. 77471425) and CAJUN RED HOT (Serial No.
77472649) on the Supplemental Register is misplaced. In each of those cases, which were
appealed to this Board, we found that the marks were merely descriptive (which is now a
nonissue given Respondent’s Section 2(f) claims and Cold War Museum), and thus not
registrable on the Principal Register, but that they were entitled to registration on the
Supplemental Register. 14 TTABVUE 66-75 (Canc. No. 92060914); 12 TTABVUE 134-148
(Canc. No. 92060915). Neither of those 2011 decisions addressed acquired distinctiveness,
however, and evidence from the files of these uninvolved applications is not admissible in
this case. Moreover, even if those ex parte decisions addressed acquired distinctiveness, which
they did not, the evidentiary standards in ex parte cases are not as strict as those applicable
in these inter partes cases, and Respondent, as a nonparty in that ex parte appeal, has never
had the opportunity to counter the evidence of third-party use cited in the ex parte decisions.
See In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590, 1597 (TTAB 2018) (“The Board
generally takes a somewhat more permissive stance with respect to the admissibility and
probative value of evidence in an ex parte proceeding than it does in an inter partes
proceeding … the affidavit or 37 CFR § 2.20 declaration is an established method of
introduction of evidence in an ex parte proceeding without the option of cross examination.”)
(citing TBMP § 1208).
9 Mr. Sciortino testified that “Southern Snow has repeatedly copied flavor names created by
Respondent in an attempt to profit from the notoriety and popularity of Respondent’s original
and proprietary flavoring concentrates known to the public by those names.”11 TTABVUE 3
(Sciortino Dec. ¶ 12).
Cancellation Nos. 92060914 and 92060915
11
or their packaging which serve a purpose, not to word marks. See AS Holdings, Inc.
v. H & C Milcor, Inc., 107 USPQ2d 1829, 1833 (TTAB 2013); TBMP § 1202.02(c)(i)(A).
We therefore construe the claim that the involved marks are “functional” as
coextensive with Petitioner’s genericness claim. This claim fails for the same reason
as the genericness claim. In any event, even if this claim is different than the
genericness claim, there is no evidence (as opposed to attorney argument) that
WHITE CHOCOLATE & CHIPS or CAJUN RED HOT are functional.
D. Fraud
“Fraud in procuring a trademark registration occurs when an applicant knowingly
makes false, material representations of fact in connection with its application with
intent to deceive the USPTO.” Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d
1361, 1365 (TTAB 2014) (citing In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938
(Fed. Cir. 2009)) (emphasis added). Here, Petitioner has not presented any evidence,
direct, indirect or circumstantial, let alone the requisite “clear and convincing”
evidence, In re Bose, 91 USPQ2d at 1939, that Respondent made false statements
with the requisite intent to deceive the USPTO. See also DaimlerChrysler Corp. v.
American Motors Corp., 94 USPQ2d 1086, 1090 (“It is clear that under the holding of
Bose that intent must be separately proved ….”). Furthermore, and relatedly, Section
2(f) requires substantially exclusive and continuous use. “This makes allowance for
use by others which may be inconsequential or infringing and which therefore does
not necessarily invalidate the applicant’s claim.” L.D. Kichler Co. v. Davoil Inc., 192
F.3d 1349, 52 USPQ2d 1307, 1309 (Fed. Cir. 1999) (emphasis added); Heaton Enter.
Cancellation Nos. 92060914 and 92060915
12
Of Nev. Inc. v. Lang, 7 USPQ2d 1842, 1849 (TTAB 1988) (“Where, as in this case, the
affiant believed and was claiming that it had a right to the mark superior to that of
other parties who might be using it, fraud is not shown by proof that registrant was
aware of those other uses.”). Thus, Petitioner’s fraud claim also fails, just as Southern
Snow’s fraud claim failed in the federal cases.

Decision: Both petitions to cancel are denied.