Vienna Sausage Mfg. Co.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 74414871 (T.T.A.B. Mar. 30, 1999)

Paper No. 12
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 30, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Vienna Sausage Manufacturing Company
________
Serial No. 74/414,871
_______
Fred S. Lockwood of Lockwood, Alex, Fitzgibbon & Cummings
for Vienna Sausage Company.
Darlene Bullock, Trademark Examining Attorney, Law Office
101 (Chris Wells, Managing Attorney).
_______
Before Cissel, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 21, 1993, applicant filed an application to
register the mark “BIG FOOT” on the Principal Register for
“wieners,” in Class 29. The application was based on
applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce. Registration was
refused under Section 2(d) of the Act on the ground that
applicant’s mark, if it were used on wieners, would so
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2
resemble mark “BIGFOOT,” which is registered1 for “retail
convenience store services,” in Class 42, that confusion
would be likely.
There was another potential problem with the
application. It was suspended until two prior-filed
applications were abandoned, but eventually, a final
refusal was issued by the Examining Attorney based on
likelihood of confusion with the above-referenced
registration.
Applicant filed a timely Notice of Appeal, and then
filed an appeal brief. The Examining Attorney filed her
brief. Applicant did not request an oral hearing before
the Board.
The sole issue before the Board in this appeal is
whether confusion would be likely if applicant used its
mark on wieners. Based on the record in this application,
we hold that it would be, and we therefore affirm the
refusal to register.
The test to be applied in resolving the question of
whether confusion is likely was enunciated by our primary
reviewing court in In re E. I. duPont de Nemours & Co., 476

1 Reg. No. 1,553,316, issued on the Principal Register on August
22, 1989 to Johnson Oil Company. Combined affidavit under
Sections 8 and 15 accepted in 1995.
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F.2d 1357, 177 USPQ 563 (CCPA 1973). Of the thirteen
factors identified by the court as proper for consideration
in determining the propriety of a Section (2)(d) refusal,
the record in the application at hand presents evidence
regarding the similarities between the marks and the
relationship between the goods and services set forth in
the application and registration, respectively, including
the channels of trade in which they are sold and rendered,
and the potential customers of applicant’s products and
registrant’s services.
Applicant apparently concedes that the marks are
similar. In any event, they differ only in that
applicant’s “BIG FOOT” mark is presented with a space
between the two component words, whereas the registered
mark is one term, “BIGFOOT.” Confusion would plainly be
likely if these marks were used in connection with closely
related goods and services.
This appeal therefore turns on whether confusion would
be likely if these virtually identical marks were to be
used with both applicant’s goods and registrant’s services.
Applicant does not dispute that applicant’s goods will be
sold through the normal channels of trade for wieners,
which, applicant also concedes, include retail convenience
stores, where ordinary consumers will purchase them.
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Applicant does dispute, however, the Examining
Attorney’s conclusion that confusion would be likely if
applicant’s goods, bearing applicant’s “BIGFOOT” mark, were
sold in convenience stores which are operated under
registrant’s “BIG FOOT” mark.
Applicant argues that the Examining Attorney’s holding
that confusion would be likely if erroneous because,
according to applicant, “While convenience store customers
may be exposed to quite a wide range of products, most
will be national or well known brands … If a convenience
store handles wieners[,] they will most likely be Oscar
Meyer or [an]other national brand… and that, whereas some
large chain supermarkets may handle a few large volume
items under their own ‘house’ brands, such is not the case
for convenience stores[,] which by reason of their size[,]
will stock only familiar leading brands[,] since they do
not have sufficient volume to justify house brands.
Therefore, (1) there is no appreciable likelihood that a
registrant’s BIGFOOT convenience store will have its own
house brand of any product[,] and (2) if it has a house
brand[,] there is little likelihood that it will have house
brand wieners.” (brief, p.7)
The problem we have with applicant’s argument is that
it is not supported by anything in the record. The only
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evidence of record in this appeal, besides the application
and the cited registration, is the evidence the Examining
Attorney submitted, which consists of a large number of
excerpts from published articles retrieved from the Nexis
database of periodical publications. All these excerpts
establish is a fact that applicant has conceded anyway,
that convenience stores sell wieners.
Applicant in essence asks the Examining Attorney and
the Board to take judicial notice of marketing practices
applicant contends exist in the convenience store industry
with respect to merchandise bearing national brands and
house brands, and to accept, without any evidence
whatsoever, that the ordinary consumers who constitute the
purchasers and potential purchasers of applicant’s goods in
registrant’s convenience stores would not be confused by
the use of the same mark on both the storefront and wieners
sold inside the store because they are aware of the
merchandising practices in the convenience store industry.
Simply put, these are not the kinds of facts of which
the Board may take judicial notice under Rule 201 of the
Federal Rules of Evidence. They are “subject to reasonable
dispute,” and are not “generally known within the
territorial jurisdiction of the trial court” or “capable of
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accurate and ready determination by resort to sources whose
accuracy cannot reasonably be questioned.”
Because applicant’s assertions concerning the
marketing practices in the convenience store industry do
not fall into the class of facts of which the Board may
take judicial notice, applicant needed to establish them
with evidence, but applicant did not introduce any evidence
in support of its argument. We are left with the
established facts that the marks are almost identical and
that the goods set forth in the application are likely to
be sold to the same purchasers in stores that are
identified by the same mark that is used to identify the
source of the goods. Under these circumstances, confusion
would clearly be likely.
Accordingly, the refusal to register is affirmed.
R. F. Cissel
C. E. Walters
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board
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