Sunkist Growers, Inc.v.Sunkissed Families

Trademark Trial and Appeal Board

Apr 19, 2019

OPP (T.T.A.B. Apr. 19, 2019)

Mailed: April 19, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sunkist Growers, Inc.
v.
Sunkissed Families1
_____

Opposition No. 91231358
_____

Gary D. Krugman and Kevin G. Smith of Sughrue Mion, PLLC,
for Sunkist Growers, Inc.

Eve J. Brown of Barton Gilman LLP,
for Sunkissed Families.
_____

Before Cataldo, Hightower, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Sunkissed Families seeks registration on the Principal Register of the
mark SUNKISSED FAMILIES, in standard characters and with “FAMILIES”

1 Applicant filed its Answer and its trial brief in the names of “Sunkissed Families and the
Center for Social & Emotional Health, LLC.” The subject application, however, is owned only
by Sunkissed Families, a Massachusetts limited liability company.
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91231358
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disclaimed, for “information in the field of parenting concerning the health of
children,” in International Class 44.2
Opposer Sunkist Growers, Inc. opposes registration, asserting priority and a
likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).
Opposer pleaded scores of registrations for various goods and services consisting of
or comprising the word SUNKIST; it did not plead or argue that it owns a family of
marks. We base our decision on the following pleaded registration, which we find to
be the most relevant and on which the parties focused some of their arguments:
SUNKIST KIDS (typeset) for “education and
entertainment services, namely, providing a web site
featuring games, quizzes, experiments, educational lesson
plans for teachers and educators, and related multimedia
materials all in the field of food, health and diet for the
benefit of children,” in International Class 41.3
Applicant denied substantially all of the salient allegations in the notice of opposition.
I. Record
The record consists of the pleadings and, without any action by the parties, the
file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
The record also comprises the evidence summarized below.

2 Application Serial No. 87074694 was filed June 16, 2016, based on Applicant’s allegation of
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
3 Registration No. 2858143, issued June 29, 2004; renewed. Before November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. Trademark Manual of Examining Procedure
(TMEP) § 807.03(i) (Oct. 2018).
Opposition No. 91231358
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A. Opposer’s Evidence
Opposer filed notices of reliance on the following evidence:
• Printouts of its pleaded registrations from the USPTO Trademark Status
and Document Retrieval (TSDR) database showing current status and title,
pursuant to Trademark Rules 2.122(d)(2) and (g), 37 C.F.R. § 2.122(d)(2)
and (g) (15 TTABVUE, most relevant registration at 15 TTABVUE 10-13);
• Applicant’s admissions to Opposer’s Requests for Admission Nos. 13 and
14, pursuant to Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i)
(16 TTABVUE); and
• Excerpts from Applicant’s website and three third-party websites, pursuant
to Trademark Rule 2.122(e)(2) and (g), 37 C.F.R. § 2.122(e)(2) and (g)
(17 TTABVUE).
Opposer also submitted testimony declarations of the following three witnesses:
• Karen Holme, Opposer’s Manager of Intellectual Property, with Exhibits 1-
7 (18 TTABVUE);
• Mark Madden, Opposer’s Vice President of Marketing and Global Licensing
(19 TTABVUE); and
• Joan Wickham, Opposer’s Director of Communications, with Exhibits 1-7
(20 TTABVUE).
B. Applicant’s Evidence
Applicant submitted by notice of reliance pages from its website, dictionary
definitions of the word “sunkissed,” and examples of use of “sunkissed” on third-party
websites. 22 TTABVUE, Exhibits A-C.4 We sustain Opposer’s objection to the new
evidence embedded in Applicant’s brief. See Applicant’s brief at 4-5, 7, 28 TTABVUE
5-6, 8; Reply Brief at 2, 29 TTABVUE 6.

4 On June 8, 2018, the Board granted as conceded Opposer’s motion to strike Applicant’s
testimony of Jeannine M. Lenehan. See 21 TTABVUE and 24 TTABVUE.
Opposition No. 91231358
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II. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v.
Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). In its order denying
Opposer’s motion for summary judgment, the Board found that standing and priority
are no longer issues in this proceeding as long as Opposer remained the owner of the
valid and unchallenged registrations submitted in support of it motion for summary.
July 24, 2017 Order at 9, 14 TTABVUE 9. Because the evidence of record submitted
at trial demonstrates that Opposer remains the current owner of the registration for
the mark SUNKIST KIDS and that this registration is valid and subsisting, Opposer
has established its standing and priority of use with respect to the services identified
in the SUNKIST KIDS registration. We therefore proceed to consider the question of
likelihood of confusion.
III. 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). Opposer bears the burden of proving its claim of
likelihood of confusion by a preponderance of the evidence. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
As noted above, we focus our analysis on the mark in Opposer’s pleaded
Registration No. 2858143. If we find that there is a likelihood of confusion between
Opposition No. 91231358
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this mark and Applicant’s mark, there is no need for us to consider the likelihood of
confusion with Opposer’s other pleaded marks. Conversely, if we find there is no
likelihood of confusion with this mark, we would find no likelihood of confusion with
Opposer’s other pleaded marks. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243,
1245 (TTAB 2010).
We address in turn each of the du Pont factors bearing on our decision for which
the parties submitted evidence or argument.
A. Strength of Opposer’s Mark
Opposer contends that its SUNKIST mark is famous. Applicant disagrees. In
determining a mark’s strength, we consider both inherent strength, based on the
nature of the mark itself, and commercial strength or recognition. Couch/Braunsdorf
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also 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).”)
1. Conceptual Strength of Opposer’s Mark
As to the conceptual strength of Opposer’s mark, Applicant submitted dictionary
definitions of “sun-kissed” meaning “made warm or brown by the sun,”5 “having
plenty of bright sunlight : sunny,”6 and “of a person’s skin : having an attractive color
because of having been in the sun.”7 These definitions do not establish that “sun-

5 Applicant’s Notice of Reliance, Exhibit B (from Google.com), 22 TTABVUE 42-44.
6 Id. (from Merriam-Webster online), 22 TTABVUE 45.
7 Id.
Opposition No. 91231358
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kissed” or SUNKIST has a descriptive meaning in association with Opposer’s services
(“education and entertainment services, namely, providing a web site featuring
games, quizzes, experiments, educational lesson plans for teachers and educators,
and related multimedia materials all in the field of food, health and diet for the
benefit of children”). We find Opposer’s mark to be inherently strong. Indeed,
Applicant admits as much, arguing that: “By adopting a fanciful misspelling of a
dictionary word as its mark, and by consistently using only that misspelling
(‘SUNKIST’) rather than the dictionary version (‘sunkissed’), Opposer has become
associated exclusively with its misspelling.” Applicant’s Brief at 13-14, 28 TTABVUE
14-15.
2. Commercial Strength of Opposer’s Mark
In the likelihood of confusion analysis, fame varies along a spectrum from very
strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). A famous mark has extensive
public recognition and renown. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Kenner Parker Toys Inc. v. Rose Art Indus.
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods or services traveling under the mark, “the length of time
those indicia of commercial awareness have been evident,” widespread critical
assessments and notice by independent sources of the products identified by the
marks, as well as the general reputation of the products. Bose, 63 USPQ2d at 1305-
06, 1309. Raw numbers alone may be misleading, however. Thus, some context in
Opposition No. 91231358
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which to place raw statistics may be necessary, for example, market share or sales or
advertising figures for comparable types of goods. Id. at 1309; see also Omaha Steaks
Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1690
(Fed. Cir. 2018) (“Market share is but one way of contextualizing ad expenditures or
sales figures.”). Because of the extreme deference that we accord a famous mark in
terms of the wide latitude of legal protection it receives, and the dominant role fame
plays in the likelihood of confusion analysis, it is the duty of the party asserting that
its mark is famous to clearly prove it. Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Although Opposer provided significant evidence of fame “in the fruit field,”
Opposer’s Brief at 25, 27 TTABVUE 29, it introduced no evidence of commercial
strength specific to the SUNKIST KIDS mark in association with its identified
services. In fact, Opposer submitted no evidence concerning sales, advertising, or
length of use of that mark.8 We therefore find Opposer’s evidence of fame to be of
limited probative value in assessing the commercial strength of its SUNKIST KIDS
mark in connection with the services identified thereby.
Evidence of use of similar marks by third parties for the same or similar goods or
services also is relevant to a mark’s commercial strength. In re i.am.symbolic, LLC,
866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Applicant

8 The Board’s order denying Opposer’s motion for summary judgment stated: “Opposers are
well-advised to limit their pleading of registrations to those most pertinent to the matter.”
July 24, 2017 Order at 2 n.4, 14 TTABVUE 2. Opposer chose not to narrow the registrations
at trial, instead relying on its 64 pleaded registrations then still existing.
Opposition No. 91231358
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submitted as Exhibit C to its Notice of Reliance evidence of some nine instances of
use online of “sunkissed” formatives by third parties. Most, however, are for goods or
services unrelated to Opposer’s services. The more relevant uses are:
• Archived food and health entries from a website titled “Sun Kissed Violet”
(sunkissedviolet.com/category/food-health, 22 TTABVUE 48);
• The “Healthy & Happy Archives” from a website titled “Sunkissed in
December” (sunkissedindecember.com/category/healthy-happy, 22
TTABVUE 49-50); and
• An Australian website with a post titled, “The dos and don’ts of the ‘sun-
kissed diet,’ the 100-year-old eating plan” (coach.nine.com.au/2016/
04/13/12/32/sun-kissed-diet, 22 TTABVUE 65-67).
Leaving aside the fact that the last listed use is foreign, because none of the services
are similar to Opposer’s identified services, the evidence of use of “sunkissed” by third
parties is irrelevant to the commercial strength of Opposer’s SUNKIST KIDS mark.
3. Conclusion as to Strength
Considering as a whole the record pertaining to the fifth and sixth du Pont factors,
we accord Opposer’s mark SUNKIST KIDS the normal scope of protection for
inherently distinctive marks. Specifically, Opposer remains entitled to the
presumptions flowing from its registration under Trademark Act Section 7(b), 15
U.S.C. § 1057(b).
Confusion is confusion. The likelihood thereof is to be
avoided, as much between “weak” marks as between
“strong” marks, or as between a “weak” and a “strong”
mark. Similarly, the statute, by providing remedies to
trademark owners, enables those owners to protect their
marks. It is through such owner-action that the public is
protected from confusion.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109
(CCPA 1974).
Opposition No. 91231358
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B. Similarity of the Marks
We next consider the similarity of the marks. In a likelihood of confusion analysis,
we compare the marks in their entireties for similarities and dissimilarities in
appearance, sound, connotation and overall commercial impression. In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). “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, 101 USPQ2d at 1721 (quotation omitted). We bear in mind our findings
regarding the strength of Opposer’s mark as we turn to the first du Pont factor.
Opposer’s mark is SUNKIST KIDS, while Applicant’s mark is SUNKISSED
FAMILIES, with FAMILIES disclaimed. KIDS and FAMILIES are highly descriptive
or generic in association with the parties’ identified services, which concern children’s
health. Therefore, consumers are likely to focus on the first and what we find to be
the dominant portion of each mark, SUNKIST and SUNKISSED, respectively. See,
e.g., Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods. Inc. v. Nice-Pak
Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first part
of a mark which is most likely to be impressed upon the mind of a purchaser and
remembered”).
Applicant admitted in its Answer to ¶ 16 of the Notice of Opposition that its mark
and Opposer’s marks are “similar in sound.” In fact, they are phonetic equivalents.
SUNKIST and SUNKISSED would be pronounced identically, or nearly so, under
Opposition No. 91231358
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normal English pronunciation, as confirmed by the pronunciation of “sun-kissed”
submitted by Applicant: /sən kist/. Applicant’s Notice of Reliance, Exhibit B (from
Google.com), 22 TTABVUE 42. The terms also are nearly identically visually and in
meaning. As discussed above, Applicant acknowledges that “SUNKIST” is a
misspelling of “sunkissed.”
As to the second term in each mark, KIDS and FAMILIES look and sound
different, but they carry a related connotation, given that the singular “family” is
defined as “spouse and children” or “the basic unit in society traditionally consisting
of two parents rearing their children.”9 Consumers familiar with Opposer’s prior use
of its mark SUNKIST KIDS may view SUNKISSED FAMILIES as a variation or line
extension of Opposer’s services when used with Applicant’s similar services.
Although there are differences between the marks in appearance and
pronunciation, we find them to convey similar meanings and overall commercial
impressions. The first du Pont factor supports a finding that confusion is likely.
C. Similarity of the Services, Customers, and Channels of Trade
We next consider the second and third du Pont factors, assessing the similarity or
dissimilarity of the parties’ services, customers, and trade channels. Our
determination must be based on the recitation of services in the pleaded registration
and subject application. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746

9 We take judicial notice of these definitions of “family” in the online Merriam-Webster
dictionary (merriam-webster.com/dictionary/families, last visited April 19, 2019). The Board
may take judicial notice of definitions from dictionaries, including online dictionaries that
exist in printed format. E.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9
(TTAB 2018); RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1813 n.66
(TTAB 2018).
Opposition No. 91231358
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F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). That is because the goods or
services recited in an application determine the scope of the benefit of registration.
Id.
Applicant’s services are “information in the field of parenting concerning the
health of children,” while Opposer’s services are “education and entertainment
services, namely, providing a web site featuring games, quizzes, experiments,
educational lesson plans for teachers and educators, and related multimedia
materials all in the field of food, health and diet for the benefit of children.”
Opposer’s services include providing lesson plans in the field of health for the
benefit of children. Applicant’s services are providing information concerning the
health of children. Because these services, as identified, are highly similar or
overlapping, the second du Pont factor weighs strongly in favor of a likelihood of
confusion.
And, because the services overlap, the classes of customers also overlap. In
particular, we assume that some consumers of Opposer’s “education and
entertainment services, namely, providing a web site featuring games, quizzes,
experiments . . . and related multimedia materials all in the field of food, health and
diet for the benefit of children” also consume Applicant’s “information in the field of
parenting concerning the health of children.” Applicant’s services in the field of
parenting are not restricted solely to parents. Similarly, Opposer’s services, aside
from educational lesson plans, are not restricted to teachers and educators. Thus, the
consumers for both parties’ services may include anyone interested in child health.
See, e.g., Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
Opposition No. 91231358
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986, 988 (CCPA 1981); In re FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
We find that the third du Pont factor weighs in favor of a finding that confusion is
likely.
D. Lack of Evidence of Actual Confusion
Finally, Applicant argues that there has been no actual confusion between the
marks although its services have been publicly offered for more than two years.
Applicant’s Brief at 18, 28 TTABVUE 19. Applicant’s argument falls under the eighth
du Pont factor, “the length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.”
There is no record evidence that Applicant’s mark has been in use for more than
two years; the subject application was filed under Trademark Act Section 1(b), and
the earliest record printouts from Applicant’s website date to January 24, 2018,
during trial. See Opposer’s Notice of Reliance on Internet Materials, 17 TTABVUE 5-
9. Even assuming the parties’ services have been offered concurrently for more than
two years, that is a short period of time, particularly considering there is no evidence
demonstrating that in light of the parties’ actual business activities, confusion, if
likely, would have occurred. See Cunningham, 55 USPQ2d at 1847. “A showing of
actual confusion would of course be highly probative, if not conclusive, of a high
likelihood of confusion.” In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1205 (Fed. Cir. 2003). “However, evidence of actual confusion is notoriously difficult
to come by and, in any event, such evidence is not required in order to establish
likelihood of confusion.” Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650, 1662
(TTAB 2002). The eighth du Pont factor is neutral.
Opposition No. 91231358
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E. Conclusion as to Likelihood of Confusion
We have carefully considered all arguments and evidence properly of record,
including those not specifically discussed herein, as they pertain to the relevant
likelihood of confusion factors. To the extent that any other du Pont factors for which
no evidence was presented by Applicant or Opposer nonetheless may be applicable,
we treat them as neutral.
We have found that the parties’ identified services and classes of customers are
highly similar or overlapping and that Applicant’s SUNKISSED FAMILIES mark is
similar to Opposer’s mark SUNKIST KIDS. The remaining du Pont factors are
neutral.
We are mindful that, in any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See 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
[or services] and differences in the marks.”); see also, e.g., Bell’s Brewery, 125 USPQ2d
at 1345. Here, both of these crucial factors favor a finding that confusion is likely.
Considering the record as a whole, we find that Opposer has carried its burden to
establish by a preponderance of the evidence that Applicant’s mark SUNKISSED
FAMILIES when used in association with the services identified in its application is
likely to cause consumer confusion with Opposer’s SUNKIST KIDS mark used in
connection with the services identified in Registration No. 2858143.
Opposition No. 91231358
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Decision: The opposition to registration of application Serial No. 87074694 is
sustained.