Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 ANDERSON, CLAYTON & CO.
CHRISTIE FOOD PRODUCTS, INC.
August 27, 1987
Hearing: May 13, 1987
Opposition No. 70,228 to application Serial No. 449,246, filed October 24, 1983
J. Ray Riley and W. Ronald Robins for Anderson, Clayton & Co.
James E. Mrose and Mary C. Thomson for Christie Food Products, Inc.
Before Rooney, Simms and Krugman
An application has been filed by Christie Food Products, Inc. to register the designation SEA & TURF (stylized) as a trademark for salad dressing. [FN1]
Registration has been opposed by Anderson, Clayton & Co. on the ground that applicant's mark so resembles opposer's previously used and registered mark SEVEN SEAS for a variety of food dressing products, frozen fish and food recipe booklets as to be likely, when applied to applicant's goods, to cause confusion, mistake, or to deceive. Opposer has further alleged that applicant's application is void ab initio for the reason that applicant has never made a valid use of the mark in commerce and that if the Board determines that there was a valid use of the mark sought to be registered, registration should nevertheless be refused for the reason that the mark has been abandoned.
Applicant, in its answer to the opposition, has admitted that opposer is a competitor in the salad dressing field but has otherwise denied the allegations therein.
The record consists of the pleadings, the file of applicant's application, a number of applicant's answers to interrogatories propounded by and relied on by opposer, a number of discovery depositions (with exhibits) relied on by opposer, a number of official records comprising third-party registrations relied on by applicant and testimony (with exhibits) taken by opposer. Both parties have filed briefs on the case and opposer has filed a reply brief. Both parties were represented at an oral hearing held before this panel.
Opposer's prior rights in the SEVEN SEAS trademark has been established by the testimony of Robert Jeter, opposer's vice president of finance and administration, in connection with which four registrations were introduced for SEVEN SEAS for dressings, namely, creamy Italian, low calorie Italian, low calorie French, green goddess, caesar, real blue cheese and thousand island and tartar sauce; [FN2] for food recipe booklets; [FN3] for frozen fish [FN4] and for cooking sauces, namely, sweet and sour, black pepper, celery seed, mixed herb, lemon and smokey mayonnaise, French dressing, and Italian dressing. [FN5] Since opposer's goods sold under the SEVEN SEAS mark include salad dressings, the only question remaining, therefore, in determining the Section 2(d) issue, is whether the marks are sufficiently similar such that their use on identical products would likely result in confusion as to source or sponsorship.
Turning to the marks, opposer's record shows that it began using the SEVEN SEAS mark in 1962 on dressings and that its annual sales at wholesale of SEVEN SEAS dressing is over $50 million with total wholesale sales of over $600 million over the last twenty years, resulting in SEVEN SEAS dressing becoming the number three brand in the country in pourable salad dressings. Opposer has further shown that for the past twenty years continuing up to the present time, it has extensively advertised and promoted its SEVEN SEAS dressing through television, magazines, newspapers and the like averaging over $6 million annually in advertising and promotional expenditures with total advertising and promotional expenditures of over $75 million over the last twenty years. It is opposer's contention that in view of the recognition and fame of its mark and considering the inexpensive nature of the goods to which the respective marks are applied, consumers would be confused as to source from the contemporaneous use of said marks.
*2 While both marks include a variant of the formative SEA, and while we would concede that the record supports a finding that opposer has enjoyed considerable success in its SEVEN SEAS products over the years, we nevertheless conclude that the marks, when compared in their entireties, are simply not sufficiently similar to be likely to cause confusion, even when used on identical, low cost consumer food products. SEA & TURF and SEVEN SEAS are, in our view, readily distinguishable visually, aurally and in meaning. The two marks connote strikingly different commercial impressions and we believe the common inclusion of SEA or SEAS in the mark is simply insufficient to warrant a finding of likelihood of confusion where, as here, the respective marks both contain additional components which distinguish the marks as a whole from each other. With respect to the common element SEA(S), applicant has introduced a number of third-party registrations into the record which consist of composite marks which include the term SEA. These include SEA GALLEY for salad dressings, SEA-FARE for salad dressing, SEA-TASTY for tartar sauce, SEA KING for, inter alia, cocktail sauce and spiced seasoning for seafoods, SEA SAUCE for vegetable based sauce for seafood, SEA BREEZE for sauces containing meat, namely, beef and pork and SEA HARVEST for batter, dry dip and tempura-style mix for meat, fish and fowl. While these registrations are not evidence of the use of any of these marks, they are probative to show that others have adopted marks in the food dressing and sauce fields which use SEA in its ordinary sense to suggest that the goods are suitable for use with seafood. [FN6] See: Sams, Third Party Registrations in TTAB Proceedings, 72 TMR 297 (1982).
With respect to opposer's claim that the likelihood of confusion is increased because applicant's trade dress is similar to the trade dress utilized by opposer, the Board does not have jurisdiction to consider trade dress matters which are not part of the mark sought to be registered and must determine the question of likelihood of confusion based on the mark sought to be registered as depicted in the drawing since trade dress can be changed at any time. [FN7] Moreover, to the extent that trade dress can be construed to show whether a word mark projects a confusingly similar commercial impression [see: Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F. 2d 669, 223 USPQ 1281 (Fed. Cir. 1984)], we do not believe the overall trade dress of applicant's mark as evidenced by its labels engenders a commercial impression at all similar to that projected by opposer's trade dress, notwithstanding the fact that both applicant and opposer employ a curved line dividing the upper and lower portions of the label.
Under the circumstances, we conclude that the marks, when taken as a whole, are readily distinguishable and that purchasers familiar with opposer's SEVEN SEAS salad dressing would, upon viewing applicant's salad dressing sold under the SEA & TURF mark, be unlikely to ascribe a common source to the respective products.
*3 We now turn to the other issues raised by opposer, namely the question of whether applicant's application was void ab initio or, in the alternative, whether applicant has abandoned the mark. [FN8] In this regard, the record indicates that in 1978, a label was designed for applicant's proposed SEA & TURF salad dressing; that on or about December 15, 1978, a quantity of 20,000 labels was ordered from Label Art, Inc. and that these labels were delivered to applicant on or about January 4, 1979. While the testimony states that it was applicant's intention to proceed with the manufacture and sale of the product at the time the labels were ordered, no use of the SEA & TURF mark was made until on or about October 11, 1983. At that time, applicant shipped one case of twelve bottles of salad dressing labeled with the SEA & TURF mark from applicant's place of business in Dedham, Massachusetts to Schlotterbeck & Foss Company, a specialty food manufacturing company located in Portland, Maine. An invoice for this shipment was sent indicating a charge of $5.83 and a check drawn on the account of Schlotterbeck & Foss Company in the amount of $5.77 and made payable to applicant was sent several weeks later. The testimony states that the price paid for the case of salad dressing was in the normal range for products of that type and that Schlotterbeck & Foss Company had previously done some contract packaging for applicant of salad dressings intended to be sold at retail. It appears that, aside from the business relationship between the parties, Schlotterbeck & Foss Company and applicant have no other relationship and there is nothing in the record to indicate that the October 1983 shipment was anything other than a legitimate arm's-length sale of the product in interstate commerce. Mr. Foss, the secretary and sales manager of Schlotterbeck & Foss Company, testified that the product was sold by applicant to his company because applicant wanted Mr. Foss to see it with the hope that Mr. Foss's company might distribute it. Mr. Foss, in response to a question as to whether other parties would, from time to time, send products in for an opinion as to whether Schlotterbeck & Foss Company would be interested in handling or distributing the products, answered that this does happen occasionally but noted that when this happens, generally the people do not send a bill for the sample they leave for Schlotterbeck & Foss Company to evaluate.
Subsequent to the sale of the product in October 1983, applicant's president Dean Christie testified that three or four additional cases of the salad dressing (twelve bottles per case) were given away to friends or customers and that applicant attempted to promote the product by giving out these samples and getting opinions. Mr. Christie, however, could offer no details as to whom the samples were distributed and who offered opinions on the product. On October 24, 1983, the application was filed claiming a date of first use in commerce of October 7, 1983. The mark was published for opposition on July 31, 1984 and on October 26, 1984, the notice of opposition was filed. [FN9]
*4 It is opposer's position that the single shipment of SEA & TURF salad dressing was made solely for the purpose of obtaining a registration; that the single sale was made to Schlotterbeck & Foss for the purpose of having that company evaluate a prospective new product; that the single sale was not followed by any commercial activity and that, therefore, this single shipment was neither a bona fide commercial sale nor was it followed by any activities showing a continuous effort or intent to use the mark. Opposer concludes that applicant has not used the mark in commerce and that the application is void ab initio. In the alternative, opposer asserts that if applicant's single shipment is construed as a valid use of the mark in commerce, applicant has abandoned any rights in the mark by its failure to make any further use of the mark for more than two years following the purported sale.
Applicant, on the other hand, argues that it made an arm's-length bona fide sale in interstate commerce to a customer who was charged the usual price. Applicant contends that while it purchased some 20,000 high-quality commercial labels, the labels were incorrectly marked with the encircled 'R' registration symbol; that it was reluctant to make further sales of the product with the wrong registration markings and that, rather than have complications arising from the use of the incorrect labels, it decided to wait until the registration was obtained. Applicant notes that it promptly filed the application after the single shipment and has held up marketing the product in view of opposer's challenge to applicant's rights in the mark.
It is well settled that a single sale or shipment of goods in commerce may be sufficient to constitute use in commerce within the meaning of the Trademark Act provided the sale or shipment was a bona fide commercial transaction and was accompanied by activities or circumstances tending to indicate a continuing effort to use and place the product on the market on a commercial scale. See: Avakoff v. Southern Pacific Co., 765 F.2d 1097, 226 USPQ 435 (Fed. Cir. 1985). At the Court stated, citing Fort Howard Paper Company v. Kimberly-Clark Corp., 390 F.2d 1015, 1017, 157 USPQ 55, 57 (CCPA 1968) and Blue Bell, Inc. v. Jaymar-Ruby Inc., 497 F.2d 433, 437, 182 USPQ 65, 67-68 (2nd. Cir. 1974), an initial transaction is sufficient to support the validity of a registration so long as the initial transaction is not a sham transaction and is followed by a continuing effort or intent to engage in commercial use.
In the present case, we think it is reasonable to infer from the facts of record that the October 1983 shipment of SEA & TURF salad dressing from applicant to Schlotterbeck & Foss Company was made in order to provide a qualifying use sufficient to support applicant's application, which was promptly filed following said shipment. Notwithstanding that purpose, we believe that the situation present in this case is sufficient to warrant a conclusion that the shipment was a bona fide shipment; that applicant intended to commercially market the goods after the first shipment and that the failure to make any further sales was justified by the circumstances present herein. In this regard, we note applicant ordered and received some 20,000 commercial labels bearing the mark. It is clear that these labels were defective in that they depicted the federal registration symbol and this fact is evident from the specimens made of record in the application. [FN10] Given the relatively small size of applicant's business, we do not think it unreasonable under the circumstances to make a business decision that, rather than order new labels, it would use the mark in order to qualify for registration and then, thereafter, it would properly use the original labels. We further note that only some eleven months went by from the time the application was filed in October 1983 until the Board notified applicant of the possible challenge to its mark by opposer by indicating in a paper mailed September 14, 1984 that an extension of time to oppose had been granted. We believe that once applicant was appraised of a possible challenge to its rights in the mark, it was justified in putting any marketing plans 'on hold.' We concede that the evidence relating to marketing plans by applicant is vague and unsubstantiated as to details. Nevertheless, it is our view that, given the expense of starting up a new product, the circumstances present herein, namely, the problems with the labels together with the relatively short time involved between the filing of the application and the filing of the opposition, justify the failure of applicant to make additional sales. When these matters are looked at in conjunction with the arm's-length nature of the token sale, we cannot say that opposer has demonstrated that the shipment was a sham transaction or that the application was void ab initio. Moreover, we find no abandonment of the mark since we conclude applicant's non-use of the mark subsequent to the October 1983 shipment was excusable.
*5 For the foregoing reasons, the opposition is dismissed as to all pleaded grounds.
L. E. Rooney
R. L. Simms
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN2. Reg. No. 1,013,614 issued June 17, 1975.
FN3. Reg. No. 1,208,310 issued September 14, 1982.
FN4. Reg. No. 995,679 issued October 15, 1974.
FN5. Reg. No. 741,376 issued November 27, 1982. Section 8 affidavit accepted. Section 15 affidavit received.
FN6. The other third-party registrations relating to marks in unrelated fields are of no probative value.
FN7. The Board, in a July 11, 1986 ruling, ordered stricken opposer's allegation that the respective trade dresses were confusingly similar.
FN8. While the Board finds that there is no likelihood of confusion from the contemporaneous use of the respective marks, nevertheless, opposer has shown sufficient standing to raise these other issues, namely, it has shown that it has a commercial interest in its own mark and a reasonable basis for its belief that it is or will be damaged by the registration of applicant's mark, namely, a belief in likelihood of confusion that is not wholly without merit. See: Lipton Industries, Inc. v. Ralston Purina Co., 670 F. 2d 1024, 213 USPQ 185 (CCPA 1982).
FN9. Opposer had timely requested and received an extension of time until October 31, 1984 in which to file its opposition.
FN10. The failure of the Examining Attorney to inquire about the federal registration symbol in the specimens appears to be an oversight.