The Kosher Garden, Inc.v.Sioux Falls Grocery I, LLC

Trademark Trial and Appeal Board

Dec 5, 2013

No. 92054073 (T.T.A.B. Dec. 5, 2013)

jk Mailed: December 5, 2013

Cancellation No. 92054073
(parent case)

Cancellation No. 92054076

The Kosher Garden, Inc.

v.

Sioux Falls Grocery I, LLC

Before Seeherman, Ritchie and Lykos,
Administrative Trademark Judges.

By the Board:
Sioux Falls Grocery I, LLC (“respondent”) owns the following two
registrations for “retail supermarkets; retail florist shops; retail delicatessen
services” in International Class 35:
1) POMEGRANATE (standard characters)
2) POMEGRANATE MARKET and design (MARKET disclaimed).1

1 Registration No. 3948515 registered on April 19, 2011 based upon an application
filed July 18, 2009, and Registration No. 3948538 registered on April 19, 2011 based
upon an application filed August 6, 2009. In both registrations, registrant alleges a
date of first use anywhere and date of first use in commerce of 2010.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92054073

2
The Kosher Garden, Inc. (“petitioner”) filed petitions to cancel the
registrations, on the ground of priority and likelihood of confusion under
Trademark Act Section 2(d), alleging common law rights since August 2008, in
the mark POMEGRANATE and design, as shown below, (hereafter
“POMEGRANATE and design”) for “supermarket services… and various food
and beverage products” (petitions to cancel, para. 2), as well as ownership of an
application, filed December 23, 2009, to register this mark (POMEGRANATE
disclaimed in International Classes 29, 30, 31 and 32)

for various goods and services,2 and alleging that if there is a likelihood of
confusion between petitioner’s mark for its services and goods and respondent’s
POMEGRANATE marks for its identified services, then petitioner will be
damaged by the continued registration of respondent’s marks.
Respondent denied the salient allegations in the petitions to cancel.
Petitioner moved for summary judgment in these consolidated proceedings
pursuant to Fed. R. Civ. P. 56(a). The motion has been fully briefed.3
Analysis

2 Application Serial No. 77899805, filed December 23, 2009, pursuant to Trademark
Act Section 1(a).

3 Subsequent to briefing of the motion for summary judgment, the Board provided
the parties time in which to consider the option of converting these cancellation
proceedings into proceedings seeking concurrent use registrations. The Board
Cancellation No. 92054073

3
Summary judgment is appropriate where the movant shows that there is
no genuine dispute as to any material fact and that it is entitled to judgment
as a matter of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot
be or is genuinely disputed must support its assertion by either 1) citing to
particular parts of materials in the record, or 2) showing that the materials
cited do not establish the absence or presence of a genuine dispute, or that an
adverse party cannot produce admissible evidence to support the fact. Fed.
R. Civ. P. 56(c).
Petitioner, as the moving party, carries the burden of proof. See Celotex
Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding a summary
judgment motion, the function of the Board is not to try issues of fact, but to
determine if there are any genuine disputes of material fact to be tried. See
Dyneer Corp. v. Automotive Products plc, 37 USPQ2d 1251, 1254 (TTAB
1995); University Book Store v. University of Wisconsin Board of Regents, 33
USPQ2d 1385, 1389 (TTAB 1994).
To prevail on a Section 2(d) claim, a petitioner must prove that there is no
genuine dispute of material fact that 1) it has standing to bring the proceeding; 2)
it has registered or previously used a mark; and 3) contemporaneous use of the
parties’ respective marks on or in connection with their respective goods or
services would be likely to cause confusion, mistake or to deceive consumers. See

acknowledges the parties’ responses, wherein respondent states that it is willing to
seek concurrent use registration, and petitioner states that it declines this option.
Cancellation No. 92054073

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Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735
(TTAB 2001).
Standing and Priority
In the petitions to cancel, petitioner relies on common law rights, alleging
continuous use of its POMEGRANATE and design mark in connection with
“supermarket services” and “various food and beverage products” since August
2008 (Petitions to Cancel, para. 2). On summary judgment, it asserts that it
commenced use of the POMEGRANATE and design mark, in connection with its
goods and services, at least as early as August 19, 2008 (motion, p. 6).4
Petitioner submits the declaration of its owner and president, Abraham
Banda, stating that “[O]n or about August 19, 2008, Petitioner opened and
commenced operation of a retail supermarket … and simultaneously commenced
use of the mark POMEGRANATE and design in commerce in connection with
supermarket services” (Banda decl., para. 7), submitting “copies of signage
showing representative use of the mark POMEGRANATE and design in
connection with supermarket services from the date of first use to the present
….” He further states that this “signage was erected when the supermarket
opened in August of 2008, and has remained the same from that time until the
present” (Banda decl., para. 8, exh. B). Mr. Banda also states that on or about

4 Petitioner also asserts use of the trade name “Pomegranate” as of January, 2008;
however, petitioner did not assert likelihood of confusion with its trade name as a
ground for opposition, and we do not grant motions for summary judgment on
unpleaded grounds. Cf. Fishking Processors Inc. v. Fisher King Seafoods Ltd., 83
USPQ2d 1762, 1764 n.3 (TTAB 2007) (Board will not grant summary judgment on
Cancellation No. 92054073

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August 19, 2008, petitioner commenced use of the mark POMEGRANATE and
design in commerce in connection with various goods;5 photographs of various
products bearing its mark were submitted with the declaration (Banda decl.,
para. 9, exh. C).
Petitioner also asserts that, in respondent’s responses to Request for
Admission Nos. 6 and 9, respondent admits that it did not provide services in
interstate commerce under its marks prior to August 19, 2008, the date
petitioner claims as its first use of its mark. Moreover, in its brief, respondent
states that it does not dispute that petitioner has standing, and does not dispute
that petitioner’s first use of its mark in commerce predates respondent’s
constructive first use date of July 18, 2009 (respondent’s brief, p. 12).
Petitioner has carried its burden on summary judgment of establishing that
there is no genuine dispute that it 1) has standing to bring this proceeding, and
2) is the prior user of its POMEGRANATE and design mark in connection with
supermarket services.
Likelihood of confusion
To prevail, petitioner must prove that respondent’s use of its mark in
connection with its identified services is likely to cause confusion with

an unpleaded ground). Accordingly, in the absence of a motion to amend, we have
given this claim no consideration.

5 The goods are identified in the Banda declaration, and include “meat, fish and
poultry, frozen meat, luncheon meats, preserved and/or cooked seafood, namely,
sable fillet and lox; herring, gefilte fish, smoked fish, preserved fish, frozen, prepared
or packaged entrees and side dishes consisting primarily of meat, fish, poultry or
vegetables; processed nuts, nut butters, dried fruit and vegetables, edible oils,
Cancellation No. 92054073

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petitioner’s previously used mark. In determining likelihood of confusion, the
Board analyzes the relevant factors bearing on the issue as set forth in In re E. I.
du Pont De Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“du Pont
factors”).
The Marks
Petitioner argues, inter alia, that the literal portion of the marks -
pomegranate - conveys the same commercial impression of a reference to that
particular kind of fruit, and that the design elements consisting of the depiction
of a pomegranate merely reinforce the commercial impression conveyed by the
wording, and therefore are insufficient to distinguish the marks.
For its part, respondent does not specifically address the first du Pont factor
regarding the similarity or dissimilarity of the marks. In its brief, under
“Conclusion,” it states that “[O]ther than the admitted similarity between the
parties’ marks, none of the DuPont (sic) factors can be resolved in Kosher
Garden’s favor, as a matter of law” (respondent’s brief, p. 22).
Thus, it appears that respondent has conceded that the parties’ marks are
similar.
In any event, we find that there is no genuine dispute as to the similarity of
the marks. Respondent’s marks are POMEGRANATE (standard characters), and
POMEGRANATE MARKET with a pomegranate design; indeed, respondent’s
description of the mark is: “The mark consists of the word ‘POMEGRANATE’

vegetable oils; yogurts; dips; processed olives; pickles; hummus chick pea paste;
processed poppy seeds; cheeses” (Banda decl., para. 9).
Cancellation No. 92054073

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above which is a stylized representation of a pomegranate attached by a stem to
a short branch to which two leaves are also attached.” Petitioner’s previously
used mark is POMEGRANATE with a pomegranate design.
Because the design element in petitioner’s mark is a pictorial representation
of a pomegranate, this design merely serves to reinforce the meaning of the word
“pomegranate.” As a result, petitioner’s mark and respondent’s
POMEGRANATE mark are extremely similar in appearance, and are identical in
pronunciation, meaning and commercial impression. In respondent’s
POMEGRANATE MARKET and design mark, MARKET is a highly descriptive,
if not generic word, and is therefore disclaimed; because it has no source-
indicating significance for these services, it does not serve to distinguish the
mark from petitioner’s mark. The pomegranate design in respondent’s mark is
similar in appearance to the design in petitioner’s mark, and serves the same
purpose, namely, to reinforce the meaning of the word POMEGRANATE.
Thus, there is no genuine dispute that the marks are similar in appearance,
pronunciation, meaning and commercial impression.
The Services
Petitioner argues that the parties’ services are identical. In response to
respondent’s argument that petitioner’s supermarket is a kosher supermarket
and that it caters to a clientele that seeks kosher food, petitioner asserts that it
“operates a large self-service retail establishment which, like any other
supermarket, is organized into departments (e.g., Dairy, Meats, Produce,
Cancellation No. 92054073

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Household goods, etc.)” (reply brief, p. 2; Banda reply decl., para. 7), and that it
offers services of a retail establishment selling “a wide variety of products, all of
which would normally be found in a supermarket” (reply brief, p. 2; Banda reply
decl., para. 8, 13-14). Petitioner further asserts that its services are similar to
respondent’s delicatessen services inasmuch as petitioner has various
departments, including one with delicatessen products (Banda reply decl., para.
8-9). Petitioner further asserts that consumers who do not seek kosher products
also shop at its establishment, and has submitted a reply declaration by Mr.
Banda to support these claims.
For its part, respondent argues that the respective services are not directly
competitive or related because petitioner is primarily a kosher market whose
targeted customers are a narrow class of customers, namely, the Orthodox
Jewish community in the Brooklyn, New York area who seek premium kosher
goods. In seeking to distinguish its own services, respondent submits the
declaration of its manager, Craig Snyder, stating that its stores promote organic
products grown or produced in Sioux Falls (Snyder decl., para. 4), that although
some of its products may qualify as kosher it does not promote itself as a kosher
retailer (Snyder decl., para. 8-9), and that it promotes in publications and media
located exclusively in Sioux Falls (Snyder decl., para. 10.).
Whether or not petitioner operates a kosher supermarket, or its services are
primarily directed to consumers seeking kosher food items, does not raise a
genuine dispute that would preclude entry of summary judgment. Respondent’s
services are identified, in part, as “retail supermarkets.” These services would
Cancellation No. 92054073

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encompass retail kosher supermarket services. See In re Jump Designs, LLC, 80
USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640
(TTAB 1981) (if services are unrestricted and broadly described, they are
presumed to encompass all services of the type described). Thus, even if
petitioner could establish only that it has common law rights for retail kosher
supermarket services, respondent’s services must be deemed to be, in part,
legally identical to petitioner’s services. Cf. Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion with respect to any item
that comes within the identification of goods in the application).6
Accordingly, we find that there is no genuine dispute as to the similarity of
the services.
Purchasers and Conditions of Sale
Petitioner argues that the purchasers are non-sophisticated consumers of
“simple consumer goods” which are relatively low cost, non-luxury goods
typically found in supermarkets and grocery stores, and that such consumers
exercise less care in their purchasing decisions, and thus are likely to be confused
as to source (motion, p. 23).
Respondent posits that customer sophistication is dispositive of the
likelihood of confusion analysis. It argues that petitioner’s class of consumers is
the Orthodox Jewish community in the Brooklyn, New York area, and that they

6 In the present case, the principle would apply to any services that come within the
identification of services in respondent’s registrations.
Cancellation No. 92054073

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are “discriminating, sophisticated purchasers” (respondent’s brief, p. 7) due to
their need for products based on their religious beliefs and cultural identity. It
further argues that petitioner advertises to this population, primarily in Jewish-
themed publications. In seeking to distinguish its own class of consumers,
respondent’s declarant, Mr. Snyder, states that its customers are discriminating
and selective purchasers who seek organic, chemical-free, locally-sourced
products (Snyder decl., para. 15-16).
To the extent that respondent argues that the parties’ respective services are
offered to or patronized by distinct classes of consumers, this does not raise a
genuine dispute. Because the services as identified in respondent’s registrations
are not limited to particular classes of consumers, we must assume that they are
offered to the public at large and may be encountered by all classes of consumers
for such services, including those consumers who seek a supermarket offering
kosher food products. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d
1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000) (“When the registration does not
contain limitations describing a particular channel of trade or class of customer,
the goods or services are assumed to travel in all normal channels of trade.”).
Nor does the purported sophistication of petitioner’s and respondent’s
customers raise a genuine dispute that would preclude entry of summary
judgment. For purposes of deciding this motion, we will make the assumption
that respondent urges, thereby resolving this issue in respondent’s favor, that
each party’s customers exercise care in choosing the supermarket they patronize.
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However, the parties’ respective marks are so similar that even careful and
discriminating customers would not distinguish between petitioner’s mark and
respondent’s marks when they are all used for supermarket services, but would
assume that the marks POMEGRANATE, POMEGRANATE MARKET and
pomegranate design, and POMEGRANATE and pomegranate design all identify
supermarket services emanating from a single source.
Lack of Actual Confusion
Respondent asserts that no actual confusion in the marketplace has been
reported. This assertion is unsupported, and in any event does not serve to raise
a genuine dispute or to preclude the entry of summary judgment. The record
shows that, as of this point, the parties operate in separate geographic areas. As
a result, there has been no real opportunity for confusion to occur.7 Thus, we
cannot treat the lack of evidence of actual confusion as raising a genuine dispute
that there is not a likelihood of confusion. See e.g., Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Mag
Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1714 (TTAB 2010).
Thus, we find no genuine dispute that the parties’ marks are similar and that,
because of the unrestricted identification in respondent’s registrations, their
services are deemed to be, in part, legally identical and to travel in the same

7 However, respondent cannot rely on the geographic separation of the parties’
services to avoid a finding of likelihood of confusion; because respondent’s
registrations are not geographically restricted, it is entitled to use its mark
throughout the United States, including in the same geographic areas where
petitioner renders its services. See Section 7(b) of the Trademark Act.

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channels of trade. To the extent that there is a genuine dispute about the
sophistication of the parties’ customers, we have resolved that dispute in favor of
respondent, and treated the customers as discriminating and careful. However,
because of the similarity of the parties’ marks, even discriminating and careful
customers are likely to be confused by the use of the marks in connection with
legally identical services. Accordingly, we find that there is no genuine dispute
that confusion is likely to result from the contemporaneous use of the parties’
marks for retail supermarket services.
Summary
Inasmuch as petitioner has carried its burden of establishing that there is no
genuine dispute that it has standing, that it is the prior user, and that
respondent’s use of its marks for supermarket services is likely to cause
confusion with petitioner’s mark, petitioner’s motion for summary judgment is
granted.
The petitions to cancel are granted and respondent’s Registration Nos.
3948515 and 3948538 will be cancelled in due course by the Commissioner for
Trademarks.