Sunshine Raisin Corporationv.Commodity Express LLC

Trademark Trial and Appeal Board

Sep 26, 2018

No. 91230573 (T.T.A.B. Sep. 26, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Sunshine Raisin Corporation
v.
Commodity Express LLC
_______
Opposition No. 91230573
to Application Serial No. 86747410
_______
Marcus N. Dibuduo of Dowling Aaron Inc. for Sunshine Raisin Corporation.
Michael D. Stewart of The Law Offices of Michael D. Stewart for Commodity
Express LLC.
_______
Before Bergsman, Shaw, and Larkin, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Commodity Express LLC (“Applicant”) seeks registration of the mark1

1 Application Serial No. 86747410, filed on September 3, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere of August 14, 2015
and a date of first use in commerce of August 21, 2015.
Opposition No. 91230573
2
for “Fresh mangos,” in International Class 31. The description of the mark reads:
“The mark consists of the word ‘CHAMPION’ in Navy blue except the mango on the
letter ‘i’, mango on the letter ‘i’ [sic] is yellow, [the] word ‘MANGO’ is yellow under
the word ‘Champion.’” The colors navy blue and yellow are claimed as a feature of the
mark. “MANGO” is disclaimed apart from the mark as a whole.
Sunshine Raisin Corporation (“Opposer”) opposes registration of Applicant’s mark
on the ground of priority and likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), and on the ground that Applicant had not used
the mark on the identified goods at the time the application was filed. Opposer
pleaded ownership of the following registered marks:2
Mark Reg. No. Goods
CHAMPION 9968793 Raisins, in International Class 29.
CHAMPION 44968524 Dried fruits, in International Class 29.
CHAMPION 44934185 Dried prunes, in International Class 29.

17927666 Raisins, in International Class 29.
CHAMPION 19903037 Processed apricots, in International Class 29.

42113748 Dried fruits, in International Class 29.
CHAMPION 51603199 Snack mix consisting primarily of dried fruit,
in International Class 29.

2 Pleaded Registration No. 4013365 was cancelled under Section 8 on March 23, 2018.
Opposer also pleaded ownership of Application Serial No. 87121986.
3 Issued October 29, 1974; renewed.
4 Issued March 18, 2014.
5 Issued March 11, 2014.
6 Issued September 14, 1993; renewed.
7 Issued July 30, 1996; renewed.
8 Issued September 18, 2012.
9 Issued March 14, 2017.
Opposition No. 91230573
3

Applicant admitted Opposer’s ownership of the pleaded registrations but
otherwise denied the salient allegations of the notice of opposition.10
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. Both parties filed briefs.
Opposer submitted the declaration of LindaKay Abdulian, President and CEO of
Opposer,11 and the following evidence via notice of reliance:
1. Opposer’s requests for admission;12
2. The declaration of Opposer’s attorney, Marcus N. DiBuduo, averring
that Applicant failed to respond to Opposer’s requests for admission;13
3. Status and title copies of Opposer’s pleaded U.S. trademark
registrations;14 and
4. A certified copy of Opposer’s pending trademark application.15
With its brief, Applicant filed the declaration of Muhammad Babar Khan,
identified as a “Member of Applicant.” This declaration, however, was neither made
nor filed during Applicant’s testimony period. Accordingly, we have not considered it.
Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1846 n.8 (TTAB 2004)

10 5 TTABVUE. Applicant’s Answer also interposed thirteen “affirmative defenses.” The first,
third, fourth, fifth, seventh, eleventh, and twelfth defenses are not affirmative defenses. See
generally TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
§ 311.02(b) (June 2018). The other pleaded affirmative defenses were not pursued in
Applicant’s brief and are therefore waived. Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601,
1602 n.5 (TTAB 2018).
11 17 TTABVUE.
12 16 TTABVUE 6-17.
13 Id. at 18-22.
14 Id. at 23-85.
15 Id. at 86-96.
Opposition No. 91230573
4
(materials submitted outside of applicant’s assigned testimony period and which
failed to comply with the Board’s evidentiary rules given no consideration).
With respect to Opposer’s requests for admission and its assertion that Applicant
did not respond to them, this has not been contested. Accordingly, the requests for
admission are deemed admitted pursuant to Fed. R. Civ. P. 36; see also Trademark
Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i); TBMP § 407.03(a).
The admissions include the following:
• Applicant was not using Applicant’s mark in commerce on or in connection
with Applicant’s goods at least as early as September 3, 2015 [the
application filing date].16
• During the past three consecutive years, Applicant has not used Applicant’s
mark in commerce on or in connection with Applicant’s goods.17
• Applicant is not using Applicant’s mark in commerce on or in connection
with Applicant’s goods.18
• Applicant does not intend to use Applicant’s mark in commerce on or in
connection with Applicant’s goods.19
• The predominant portion of Opposer’s and Applicant’s marks is the word
“champion”.20
• Fresh fruits and dried fruits are related goods.21
• Fresh fruits and dried fruits commonly originate from the same source and
are commonly marketed under the same trademark by a single source.22
We underscore the importance of these admissions because all matters admitted
are considered to be “conclusively established unless the court on motion permits

16 16 TTABVUE 14, Admission No. 14.
17 Id. at 13, Admission No. 7.
18 Id., Admission No. 2.
19 Id., Admission No. 3.
20 Id. at 15, Admission Nos. 27 and 28.
21 Id., Admission No. 29.
22 Id., Admission Nos. 32 and 33.
Opposition No. 91230573
5
withdrawal or amendment of the admission.” See Fed. R. Civ. P. 36(b). There is no
such motion before us and Applicant has made no attempt to otherwise set aside the
admissions. Thus, even to the extent that Applicant attempts to rebut the admissions
with the untimely Khan declaration, it is to no avail. Tex. Dep’t of Transp. v. Tucker,
95 USPQ2d 1241, 1244 (TTAB 2010); see also Am. Auto. Ass’n v. AAA Legal Clinic of
Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991) (“An
admission that is not withdrawn or amended cannot be rebutted by contrary
testimony or ignored by the district court. . . .”). Likewise, even if Applicant filed a
brief arguing that we should not rely upon the admissions, we would disregard the
arguments to avoid any prejudice to Opposer. Id. at 1145. That is, Opposer was
entitled to rely on the admissions and may have forgone introducing additional
evidence to support its case on the issues that are conclusively established by the
admissions.
As already noted, Applicant did not timely introduce any evidence. Nonetheless,
as plaintiff in this proceeding, Opposer bears the burden of proof. Threshold TV, Inc.
v. Metronome Enters., Inc., 96 USPQ2d 1031, 1040 (TTAB 2010).
II. 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), cert. denied, 135 S. Ct. 1401 (2015). Our primary
reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a
liberal threshold for determining standing, namely that a plaintiff must demonstrate
Opposition No. 91230573
6
that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler,
and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco at
1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir.
1999)). A “real interest” is a “direct and personal stake” in the outcome of the
proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
In this case, Opposer made of record by notice of reliance copies of its pleaded
registrations. In view thereof, Opposer has established its standing. See 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, 189 (CCPA 1982).
In addition, priority is not an issue in the opposition as to the marks and the goods
covered by the registrations. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
III. Likelihood of Confusion
Our determination of the issue is based on an analysis of all the probative facts in
evidence 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 Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the goods and the
similarities between the marks. 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 and differences in the marks.”).
Opposition No. 91230573
7
Because Opposer’s CHAMPION mark in Registration No. 4496852, and the goods
identified therein, “dried fruits,” are most similar to Applicant’s mark and identified
goods, we focus our likelihood of confusion analysis on this CHAMPION mark. If we
do not find a likelihood of confusion with this registered mark and its goods, then
there would be no likelihood of confusion with the marks in the other registrations.
See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
1. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression
We first consider the marks, comparing them for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. See Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). Similarity in any one of these elements is sufficient to support a
determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause confusion.”).
The marks are and CHAMPION in standard characters. As
discussed above, Applicant has admitted that “CHAMPION” is the dominant term in
both marks. CHAMPION is the entirety of Opposer’s mark. In Applicant’s mark, the
addition of the generic term “mango” and the representation of a mango as part of the
letter “i” are comparatively minor elements and deserve less weight in our analysis
because customers will use the wording of the mark, CHAMPION, in describing and
requesting the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11
(Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565,
Opposition No. 91230573
8
218 USPQ2d 390, 395 (Fed. Cir. 1983)). CHAMPION is also dominant because it is
the first word in Applicant’s mark. Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered.”). Given that
both marks consist, in whole or in part, of the term “CHAMPION,” we find the marks
to be similar in connotation and commercial impression.
Turning to the similarity of the marks in terms of sound, we note that they both
will be pronounced the same, or nearly the same, particularly as consumers have a
habit of shortening marks, in this case by dropping the generic term “mango” from
Applicant’s mark. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA
1978) (Rich, J., concurring: “the users of language have a universal habit of
shortening full names – from haste or laziness or just economy of words.”).
In terms of appearance, the marks also are similar. Opposer’s mark is registered
in standard characters, therefore, Opposer is entitled to all depictions of its standard
character mark regardless of font style, size, or color. Opposer’s mark could at any
time in the future be displayed in a manner similar to that of Applicant’s mark, e.g.,
the word(s) displayed in the same color, font style and size. In re Viterra Inc., 101
USPQ2d at 1909-11; Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983) (“[A]rgument concerning a difference in type style is
not viable where one party asserts rights in no particular display.”). The addition of
the term “mango” and a minor design element to Applicant’s mark does not otherwise
Opposition No. 91230573
9
distinguish the appearance of the marks.
In sum, the marks are similar in appearance, sound, connotation and commercial
impression. The du Pont factor regarding the similarity of the marks weighs in favor
of finding a likelihood of confusion.
2. The similarity or dissimilarity of the goods, trade channels, and
conditions of sale
We next consider the du Pont factors regarding the similarity or dissimilarity of
the parties’ respective goods, their channels of trade and conditions of sale. It is not
necessary that the goods be identical or competitive, or even that they move in the
same channels of trade, to support a finding of likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner, or that the circumstances
surrounding their marketing are such that they would or could be encountered by the
same persons in situations that would give rise, because of the similarity of the
marks, to a mistaken belief that they originate from the same source or that there is
an association or connection between the sources of the goods. Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); In
re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
As discussed above, Applicant has admitted that the goods are related. In addition
to this admission, which is significant by itself, Opposer’s goods are broadly defined
as “dried fruits” and, therefore, could include dried mangos. See In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.’”). Dried fruits and fresh fruits are
Opposition No. 91230573
10
related goods. “[T]he specific differences between fresh fruits and canned or dried
fruits are so slight as to be inconsequential in determining the question of probable
confusion.” Francis H. Leggett & Co. v. Cowin and Ryan, 69 USPQ 174 (Comm’r Pats.
1946) (finding fresh apples and pears related to dried fruit). Cf. In re Wilson, 57
USPQ2d 1863 (TTAB 2001) (fresh fruits found to be related to canned fruits); Gentry
Canning Co. v. Blue Ribbon Growers, Inc., 138 USPQ 536 (TTAB 1963) (fresh fruit
found to be related to canned fruit).
As for the channels of trade and conditions of sale, Opposer states that its goods
are distributed “primarily through grocery stores, convenience stores, and other
similar retail outlets.”23 Although Applicant did not introduce any testimony or other
evidence, it argues that it “sells its mangos directly by mail order”24 and “[t]he
“channels of trade are therefore different, lessening any potential confusion.”25 Even
if this argument was supported by testimony or other evidence, it is unpersuasive.
Applicant has admitted that fresh fruits and dried fruits commonly originate from
the same source and are commonly marketed under the same trademark by a single
source. Moreover, Applicant’s identification of goods contains no limitation as to
channels of trade or conditions of sale. As stated by the Court of Appeals for the
Federal Circuit:
The 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

23 Abdulian Dec., 17 TTABVUE 4.
24 Applicant’s Br., p. 3, 20 TTABVUE 4.
25 Id. at 4, 20 TTABVUE 5.
Opposition No. 91230573
11
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.
Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Accordingly, we must consider Applicant’s fresh mangos to be
sold in all normal channels of trade for such goods, including grocery stores,
convenience stores, and other similar retail outlets, and to all normal consumers of
fresh and dried fruits.
We find these du Pont factors to favor a finding of likelihood of confusion as to the
parties’ goods.
3. Fame of Opposer’s mark
Relying primarily on its use of the CHAMPION marks for nearly fifty years,
opposer argues that its marks are famous.26 Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis; famous marks enjoy a broad scope of protection
or exclusivity of use because they have extensive public recognition and renown. Bose
Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002). Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the mark at issue, by “the length
of time those indicia of commercial awareness have been evident,” by widespread
critical assessments, by independent sources’ notice of the products identified by the
marks, as well as by the general reputation of the products and services. Id., 63
USPQ2d at 1305-06 and 1309.

26 Opposer’s Br., p. 16, 18 TTABVUE 22; Abdulian Dec., 17 TTABVUE 4.
Opposition No. 91230573
12
On this limited record, we cannot find that Opposer’s CHAMPION marks are
particularly famous. Although long use of a mark is indicative of commercial success,
it is not conclusive evidence of fame. See Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d
1629, 1635-36 (TTAB 2007) (“Long use and/or registration of a mark, without
evidence of the extent of consumer exposure to or recognition of the mark over the
years, is not sufficient to prove fame.”); Saks & Co. v. Snack Food Ass’n, 12 USPQ2d
1833, 1836 (TTAB 1989) (“In making our determination we have taken into
consideration the long use and advertising of ‘SFA’ made by opposer, but the evidence
of record is not sufficient for us to find ‘SFA’ is a famous mark which consumers are
likely to associate with opposer when used for such different services as those
rendered by applicant.”). Accordingly, we find that the registered mark is of average
strength.
This du Pont factor is neutral.
4. Conclusion
After considering all of the applicable du Pont factors, including any factors not
discussed herein, we find that Applicant’s mark, , for fresh mangos
is likely to cause confusion with Opposer’s mark, CHAMPION, for dried fruits.
IV. Nonuse
Under Section 1(a) of the Trademark Act, 15 U.S.C. § 1151(a), a mark may not be
registered unless it is “used in commerce.” Section 45 of the Trademark Act, 15 U.S.C.
§ 1127, provides that “[t]he term ‘use in commerce’ means the bona fide use of a mark
in the ordinary course of trade, and not made merely to reserve a right in a mark.”
Opposition No. 91230573
13
See also Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 120 USPQ2d
1640, 1642 (Fed. Cir. 2016) (providing an overview of the statutory use in commerce
requirement). The Trademark Act further specifies that a trademark shall be deemed
to be in use in commerce when the goods bearing the mark “are sold or transported
in commerce.” 15 U.S.C. § 1127.
Where it is found that there has been no use of the mark in connection with any
of the applied-for goods prior to the filing of an application filed under Section 1(a) of
the Trademark Act, the application is void ab initio. ShutEmDown Sports Inc. v. Lacy,
102 USPQ2d 1036, 1036 (TTAB 2012).
Opposer alleges that “there is no actual evidence of use of the mark CHAMPION
MANGO (& design) by [Applicant] on or in connection with fresh mangos presently,
prior to the filing date of the application (September 3, 2015), or prior to the date of
first use claimed by the [Applicant].”27 Opposer further alleges that Applicant “has
never used the mark CHAMPION MANGO (& design), anywhere or in the United
States, on any of the goods . . . in International Class 031 recited in the Application.”28
Applicant’s failure to respond to Opposer’s requests for admission relating to
Applicant’s use of the mark, discussed supra, establish that Applicant did not use the
mark on any goods prior to application. On this record, we must find that Applicant
did not make bona fide use of its mark on fresh mangos in commerce prior to the filing
date of the application. The application is void ab initio.

27 Notice of Opposition, p., 6, 1 TTABVUE 11
28 Id.
Opposition No. 91230573
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Decision: The opposition is sustained on the grounds of likelihood of confusion
and nonuse and registration of the mark is refused.