Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 HI-COUNTRY FOODS CORPORATION
HI COUNTRY BEEF JERKY
July 30, 1987
Opposition No 71,584, to application Serial No. 497,873 filed September 4, 1984.
Christensen, O'Connor, Johnson & Kindness for Hi-Country Foods Corporation.
Keller, Reynolds, Drake, Sternhagen & Johnson for Hi Country Beef Jerky.
Before Simms, Krugman and Cissel
An application has been filed by Hi-Country Beef Jerky to register HI-COUNTRY and design in the form depicted below
Registration has been opposed by Hi-Country Foods Corporation on the ground that applicant's mark so resembles opposer's previously used and registered mark HI-COUNTRY for fruit juices as to be likely, when applied to applicant's goods, to cause confusion, mistake or to deceive. [FN2] Opposer has pleaded ownership of a registration for HI-COUNTRY in the form depicted below
for apple juice. [FN3]
Applicant, in its answer to the opposition, has denied the allegations therein. Applicant has affirmatively alleged that opposer's mark is a weak mark entitled to only a limited scope of protection; that many third-party uses and registrations exist for HI-COUNTRY for various products; that opposer knew of applicant's usage of the mark since at least 1976 and acquiesced in such use [FN4] and that opposer cannot be damaged by registration of the instant mark as applicant owns a subsisting registration for the mark HI-COUNTRY and design for prepared meat products.
The record consists of the pleadings, the file of applicant's applicant and testimony taken by both parties. Each party has filed a brief on the case and opposer has filed a reply brief. No oral hearing was requested.
Opposer's priority in the HI-COUNTRY mark has been established by the testimony of Otis Harlan Jr., opposer's president, in connection with which opposer introduced into the record its pleaded registration for HI-COUNTRY (stylized) for apple juice as well as an additional unpleaded registration for HI-COUNTRY for sweet cider and fruit juice. [FN5] The Harlan testimony shows that opposer has continuously used the mark HI-COUNTRY since 1958 in connection with apple juice, apple cider and other various fruit juices introduced over the years, namely, cranberry juice, cranapple juice, cranraspberry juice, pearapple juice and grape juice. Opposer sells its products to supermarkets, grocery stores, convenience stores and the like. Annual sales of HI-COUNTRY juices range from $1.8 million (1975-76) to $3.7 million (1981-82) with average sales in the $2-3 million range.
Mr. Harlan has also testified to two instances of what is characterized as actual confusion. Specifically, the testimony details two occurrences of checks erroneously mailed to opposer where the checks should have properly been sent to, respectively, a third party named Hi-Country Products, Inc. in payment for a shipment of corn dogs and a third party named Hi-Country, Canada in payment for beef snack products, such as beef log and pepperoni. Mr. Harlan also testified to a telephone call received from a customer who wanted to place an order with opposer for beef jerky and who was informed that the wrong company had been contacted.
*2 Applicant took the testimony of its president, James Johnson. Applicant's testimony is that it has used the mark HI-COUNTRY with various logos since July, 1976 in connection with beef jerky and with snack sausage since 1978. Applicant's products are sold in convenience stores, bars, gas stations and other 'quick stop' type establishments. The record further shows that applicant registered HI-COUNTRY with a logo design somewhat different from the mark involved herein on April 9, 1985 for prepared meat products, namely, jerky and sausage. [FN6]
With respect to the 'added damage' defense raised by applicant in view of applicant's subsisting registration for substantially the same mark for identical goods, it is noted that opposer has petitioned to cancel this registration. [FN7] Accordingly, this affirmative defense is not well taken since the maintenance of applicant's prior registration is being challenged by opposer.
Turning to the marks, while applicant seeks registration of the term HI-COUNTRY together with a logo of a mountain, there is no question that the commercial impression generated by the mark as a whole is that of the term HI-COUNTRY. That is, the spoken component of the mark is the way consumers would call for the goods, and the mountain design serves to reinforce the connotation of the expression 'high country.' This commercial impression is identical to that created by opposer's HI-COUNTRY mark, depicted in either block lettering or in lower case lettering as in the form registered by opposer for apple juice. Accordingly, we find the respective marks to be virtually identical. While applicant has, as an affirmative defense, alleged that many third-party uses and registrations exist for HI-COUNTRY for many goods, there is no evidence in support of these contentions. While applicant's president, Mr. Johnson, testified that he knows of close to 50 or 100 products called 'high country,' the testimony is vague and indefinite and unsupported by any documentary evidence of any third-party use. In this regard Mr. Johnson's testimony states:
'There is a ski shop in Missoula. There was a candy company in Belgrade. There was a cement company in Denver. There is a meat company in Denver. There is several different ones.'
This testimony cannot serve as competent evidence of third-party use of the mark HI-COUNTRY. Similarly, Mr. Johnson's testimony referring to the Coors Brewing Company's using a slogan 'taste the high country' is unsupported by any documentary evidence and is incompetent to show any third-party use. Therefore, we reject applicant's 'weak mark' affirmative defense and the only issue to be determined is whether the respective products are sufficiently related such that their marketing under virtually identical trademarks would be likely to cause confusion as to source or sponsorship for purposes of Section 2(d) of the Trademark Act.
Turning to the goods, opposer's goods comprise various fruit juices while applicant's goods are meat snack foods in the nature of jerky and sausage. There is no question but that applicant's beef snacks and opposer's fruit juices could very well be found in grocery stores, convenience stores, supermarkets and the like. However, notwithstanding these common trade channels, it has often been stated that there can be no 'per se' rule that all food products are related goods by nature or by virtue of their capability of being sold in the same food markets, (i.e. the modern supermarket environment with its enormous variety of food, cleaning, paper and other products stocked and offered for sale). See: In re August Stock KG, 218 UPSQ 823 (TTAB 1983) and cases cited therein.
*3 In the present case, we believe that prepared beef snack foods and fruit juices, while both edible food products, are completely different in character, would not normally be sold in the same sections of food stores or convenience stores and would not be expected to originate from the same entity, even when sold under virtually identical trademarks, absent a showing (not made in this case) that the mark involved was a well recognized or famous one.
Opposer's 'evidence' of actual confusion does not alter our belief that no confusion as to source or sponsorship is likely. The two misdirected checks mailed to opposer by mistake were not intended for applicant but were directed to two third parties. The circumstances surrounding the misdirected checks are unexplained and unclear and we draw no inferences from this evidence. Similarly, the testimony from opposer's deponent, Mr. Harlan, that he received a phone call asking for beef jerky is, apart from being inadmissible hearsay, vague and unclear. The identity of the caller is unknown and the circumstances surrounding the incident are unexplained. Accordingly, these incidents of 'actual confusion' are of virtually no probative value.
Under the circumstances, we find the products involved herein to be sufficiently disparate food products such that no confusion is likely from the marketing of these products under the respective trademarks. Cf. In re Mars, Inc., 741 F.2d 395, 222 UPSQ 938 (Fed. Cir. 1984). (Use of CANYON for fresh citrus fruits and candy bars not likely to cause confusion).
Decision: The opposition is dismissed.
G. D. Krugman
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN2. Opposer, while bringing this opposition based on Section 2(d) of the Trademark Act, has also made reference to Section 2(a) of the Act in its pleading. However, since opposer has not directed any of its proof to the Section 2(a) issue and has not argued the Section 2(a) ground in its brief, no further consideration will be given to the Section 2(a) claim.
FN3. Registration No. 669,704 issued November 11, 1958. Renewed.
FN4. This affirmative defense of acquiesence has not been pursued by applicant and will be given no consideration.
FN5. Registration No. 1,381,708 issued February 4, 1986, subsequent to the filing of the opposition.
FN6. Registration No. 1,329,863 issued April 9, 1985.
FN7. Cancellation No. 15,312. The cancellation proceeding has been suspended pending disposition of this opposition.
R. L. Simms
I would sustain this opposition even though applicant's goods are different from opposer's goods. This is because I believe the majority has failed to give adequate weight to other factors in this case, such at the inexpensive nature of the respective goods; the fact that goods of this nature are frequently bought 'on impulse' for between-meal snacks; that these goods are admittedly sold to the general public in some of the same channels of trade including grocery and convenience stores; the substantial sales and advertising of opposer's trade name and trademark, resulting in sales of several million dollars per year and over $25 million for the last decade; the fact that opposer's mark HI-COUNTRY is a relatively strong, arbitrary and memorable mark; and the identity of the word portions of both marks, even down to the misspelled or abbreviated version of the word 'high' and the use of a hyphen. While I agree with the majority that there is no par se rule with respect to finding likelihood of confusion when the same or similar marks are applied to different food products, nevertheless, I believe in this case that, giving due weight to the appropriate factors enunciated by this board and the court above (some of which were not present in the Mars case cited by the majority), an appreciable number of potential purchasers would be likely to assume that applicant's food products emanate from, are licensed by or otherwise associated with opposer's HI-COUNTRY juice products. Accordingly, and resolving all doubts in favor of the long-time (since 1958) prior user and registrant, I would sustain this opposition.