Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 KELLOGG COMPANY
PACK'EM ENTERPRISES, INC.
Opposition No. 80,586
February 2, 1990
Before Sams, Rice, Rooney
Opinion by Rice
An application was filed by Pack'Em Enterprises, Inc. to register the mark 'FROOTEE ICE' and elephant design, as shown below,
with the words 'FROOTEE ICE' being disclaimed apart from the mark as shown, for flavored liquid packaged to be frozen therein to make ice bars. [FN1]
Registration was opposed by Kellogg Company, which alleged, in essence, prior use of the mark 'FROOT LOOPS' in connection with food products; ownership of registrations of the mark 'FROOT LOOPS' for cereal-derived food product to be used as a breakfast food, snack food and ingredient for making food, [FN2] for stickers, [FN3] and for cereal breakfast foods; [FN4] promotion and sale, in connection with the sale of its products under the mark 'FROOT LOOPS,' of allied or related products including, but not limited to, fruit scented markers, dessert sundaes, dairy shakes and fruit flavored frozen confections; and a likelihood of confusion.
Applicant, in answering the opposition, admitted that commencing long prior to applicant's claimed date of first use, opposer has engaged in the manufacture and sale in interstate commerce of food products, and also admitted that opposer has been engaged in the manufacture and sale of cereal under the mark 'FROOT LOOPS', but denied, in effect, the remainder of opposer's salient allegations. In addition, applicant asserted, under the heading 'AFFIRMATIVE DEFENSES,' various affirmative defenses and amplifications of the reasons for applicant's denial of likelihood of confusion. Finally, applicant counterclaimed for cancellation of opposer's last-issued registration, namely, Registration No. 1,536,599, the registration issued under Section 2(f) for the mark 'FROOT LOOPS' for cereal-derived food product to be used as a breakfast food, snack food, and ingredient for making food, on the asserted ground that the registration is invalid because the term 'Froot' is descriptive and the registration does not include a disclaimer thereof. [FN5] Alternatively, applicant requested that the Board require opposer to amend the registration to include a disclaimer of the word 'Froot.'
With its answer and counterclaim, applicant filed a motion for summary judgment in its favor as to both the opposition and the counterclaim. Opposer, in turn, filed a brief in opposition thereto and a cross-motion for summary judgment in its own behalf on the counterclaim.
Applicant asserts, as grounds for summary judgment, that 'unquestionably,' 'Fruit' is a generic term; that the misspelling of that word as 'Froot' in opposer's mark does not negate its generic character; that 'it is beyond question that the word 'fruit' (and its derivatives, including the phonetic misspelling 'Froot') is so sommonly used in the food industry to describe food products that Kellogg cannot be allowed to remove the term from the public domain and obtain exclusive use of it;' that because of the widespread use of the word 'fruit' (and derivations thereof) in the food industry, it cannot, standing alone, be distinctive of opposer's goods; that at the time when opposer applied for its subject registration, there existed registrations of five marks containing the term 'Froot' or a variation thereof for food products, so that opposer cannot claim, under Section 2(f), substantially exclusive and continuous use of the word 'Froot' standing alone; that opposer's registration affords opposer prima facie rights only in the mark as a whole, not in the word 'Froot' alone; that the Broad should therefore find, as a matter of law, there opposer has no right to the exclusive use of the word 'Froot;' and that the differences in the marks and goods of the parties, together with the many similar marks in use for similar goods and applicant's lack of intent to create confusion, weigh so overwhelmingly against likelihood of confusion as to warrant summary judgment in favor of applicant.
*2 In support of its motion, applicant submitted a copy of portions of its involved application; copies of opposer's three pleaded registrations; and a copy of a trademark search report apparently received by applicant just prior to the filing of its application. [FN6]
Opposer, on the other hand, asserts that the trademark search report submitted by applicant is not supported by an affidavit laying the foundation for its admission but rather is pure and simple hearsay; that even if applicant had submitted copies of the third-party registrations, it is axiomatic that third-party registrations are entitled to little probative value in the absence of evidence of actual use; and that in essence, applicant has not supported its motion for summary judgment with any evidence but rather has merely denied opposer's allegations of likelihood of confusion. Opposer also asserts that there are genuine issues of material fact relating to the issue of likelihood of confusion. [FN7] Opposer's brief is supported by the affidavit of Ms. Cynthia Rodman, Marketing Director for opposer, who states, inter alia, that opposer is one of the largest ready-to-eat breakfast cereal companies; that opposer has continuously used the mark 'FROOT LOOPS' since July 24, 1963; that opposer's use of the mark has been 'in association with cereal derived food products, as well as allied and related products, including fruit scented markers, dessert sundaes, dessert shakes and fruit-flavored frozen confections;' that opposer has expended in excess of $135,000,000 in advertising and promotion of its 'FROOT LOOPS' products for the calendar years 1984 through August 1989; that during this same period, opposer's sales of 'FROOT LOOPS' products exceeded $750,000,000; that opposer is the owner of the three registrations pleaded in the notice of opposition; and that, to the best of her knowledge, opposer has no actual knowledge of applicant's use of the mark 'FROOTEE ICE' and design and first became aware of applicant's claim of use thereof when the mark was published for opposition.
With respect to the counterclaim, opposer asserts that there are no genuine issues of material fact, and that opposer is entitled to judgment as a matter of law. It is clear from opposer's cross-motion that opposer initially misconstrued applicant's counterclaim as asserting that opposer fraudulently obtained its subject registration by not voluntarily offering a disclaimer of the word 'Froot,' and opposer's cross-motion for summary judgment on the counterclaim was directed to the matter of fraud. However, as noted by applicant in its brief in opposition to the cross-motion, the counterclaim contains no assertion of fraud with respect to the lack of a disclaimer. Opposer then filed a reply brief, [FN8] stating that it is unaware of any cases that have allowed for relief under Section 14 (absent a charge of fraud) on the ground that the registration sought to be cancelled does not include a disclaimer; and asking, as an alternative to summary judgment, that the counterclaim be dismissed for failure to state a claim upon which relief may be granted.
*3 We turn first to opposer's cross-motion for summary judgment on the counterclaim. Inasmuch as opposer's cross-motion was directed to the lack of a genuine issue as to whether opposer's failure to voluntarily disclaim the word 'Froot' was fraudulent, and since applicant did not, in fact, allege, as a basis for the counterclaim, that the failure to disclaim was fraudulent, opposer's cross-motion for summary judgment on the counterclaim is not well taken and is denied.
Opposer's alternative motion to dismiss for failure to state a claim upon which relief may be granted is likewise not well taken. As opposer has acknowledged in its reply brief, a registration which is less than five years old may be cancelled upon any ground which could have barred registration in the first place, i.e., could have served as a ground for opposition. See: International Telephone and Telegraph Corp. v. International Mobile Machines Corp., 800 F.2d 1118, 231 USPQ 142 (Fed. Cir. 1986). Just as the registration of a mark may be opposed (or cancelled, if the registration is less than five years old) on the Section 2(e)(1) ground that the entire mark, when applied to the goods or services of the applicant (or registrant), is merely descriptive of them, so too it may be on the ground that an undisclaimed portion of the mark is merely descriptive of the applicant's goods or services (and that the mark should not be registered without a disclaimer of that portion). See: Textron Inc. v. Pilling Chain Co., Inc., 175 USPQ 621 (TTAB 1972), and Bell v. B-I-W Group Inc., 174 USPQ 254 (TTAB 1972). See also: Golomb v. Wadsworth, 592 F.2d. 1184, 201 USPQ 200 (CCPA 1979), and C. R. Bard, Inc. v. Foley Bag Catheter, Inc., 394 F.2d 582, 157 USPQ 579 (CCPA 1968). In view thereof, and since opposer's registration sought to be cancelled issued on April 25, 1989, and hence is less than five years old, applicant's counterclaim for cancellation does state a ground upon which relief may be granted. Accordingly, opposer's alternative motion to dismiss must be denied.
As to applicant's motion for summary judgment on the counterclaim, the summary judgment procedure is a pretrial device to dispose of cases in which the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law. See: Rule 56(c) of the Federal Rules of Civil Procedure; Flatley v. Trump, 11 USPQ2d 1284 (TTAB 1989); and cases cited in the foregoing case. The moving party bears the burden, in the first instance, of specifying the basis for its motion and 'identifying those portions of 'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it believes demonstrate the absence of a genuine issue of material fact.' [FN9] See: Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d. 265, 4 FR Serv.3d 1024 (1986). When the moving party has met this burden, and the evidence so identified by the moving party would be sufficient, in the absence of any opposing evidence, to establish the moving party's right to judgment, the nonmoving party may not rest upon the mere allegations or denials in its pleadings, but rather must proffer countering evidence sufficient to show that there is a genuine issue for trial. See: Rule 56(e), and Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987).
*4 In the present case, there are no depositions, interrogatory answers, or admissions on file, nor has applicant submitted an affidavit in support of its motion for summary judgment on the counterclaim, nor do the pleadings contain any admissions relating to the subject matter of the counterclaim. As opposer has noted, the trademark search report submitted by applicant is not credible evidence of the existence of third-party registrations; soft copies of the registrations themselves are required for the purpose. See: In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). Moreover, even copies of the registrations themselves are of limited probative value in the absence of evidence that the marks shown therein are actually in use. See: Bottega Veneta, Inc. v. Volume Shoe Corp., 226 USPQ 964 (TTAB 1985), and cases cited therein. Thus, in essence, applicant's only evidentiary support for its motion for summary judgment on the counterclaim is the disclaimer of the word 'Froot' in opposer's first registration of 'FROOT LOOPS' (for cereal breakfast foods). [FN10] Additionally, we can, of course, take judicial notice of the dictionary meaning of the word 'fruit.' [FN11] This evidence points to the lack of a genuine issue of material fact as to what is, in any event, obvious, namely, the descriptiveness of the word 'fruit,' or misspellings thereof, as applied to food products containing fruit. However, opposer's affidavit evidence relating to the length and extent of its use of the mark 'FROOT LOOPS' is sufficient to show, at the very least, that there are genuine issues of material fact relating to the distinctiveness of the word 'FROOT' as a component of opposer's mark 'FROOT LOOPS'. Accordingly, applicant's motion for summary judgment on the counterclaim is denied.
This brings us to applicant's motion for summary judgment on the opposition. We begin our discussion of this motion by noting that 'the purpose of summary judgment is judicial economy, that is, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result.' See: Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241, 1244 (TTAB 1989). See also: Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984). Further, in determining the issue of likelihood of confusion, and hence whether there is any genuine issue of material fact relating to that ultimate legal question, we must consider those of the 13 evidentiary factors listed in In re E.I. Dupont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973) which are of record and pertinent to the case in question. See: Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., ---- F.2d ----, 12 USPQ2d 1901 (Fed. Cir. 1989); Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., supra; and Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., supra. The first of those factors is 'the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.'
*5 Turning to the marks in this case, there is no genuine issue as to the fact that opposer's pleaded mark is 'FROOT LOOPS' while applicant's mark sought to be registered is 'FROOTEE ICE' with an elephant design. The only similarity between these marks is that opposer's mark begins with the word 'FROOT', a misspelling of the descriptive term 'fruit,' and applicant's mark begins with the word 'FROOTEE', a misspelling of the descriptive word 'fruity.' Considering the marks in their entireties, we are of the opinion that they differ so substantially in appearance, sound, connotation and commercial impression that there is no likelihood that their contemporaneous use by different parties will result in confusion. We would be of this opinion even if opposer offered evidence at trial establishing that it has made prior and continuous use of its mark on goods, such as fruit-flavored frozen confections, which are very closely related to the goods identified in applicant's application; [FN12] that the goods move through the same channels of trade to the same classes of purchasers; that the goods are purchased casually rather than with care; and that opposer's mark 'FROOT LOOPS' has become a very strong and well known, indeed, famous, mark as applied to its goods in commerce. That is, opposer, in responding to the motion for summary judgment on the opposition, has not set out any evidence that it could produce at trial which could reasonably be expected to cause us to come to a different conclusion. The first Dupont factor simply outweighs all of the others which might be pertinent to this case. Accordingly, we believe that there is no genuine issue as to any fact that would be material to our decision on the question of likelihood of confusion, and that applicant is entitled to judgment on this question as a matter of law. Applicant's motion for summary judgment on the opposition is, therefore, granted.
In summary, opposer's and applicant's motions for summary judgment on the counterclaim are both denied; opposer's motion to dismiss the counterclaim for failure to state a claim is denied; opposer's motions for leave to submit a reply brief and to submit the original of Cynthia Rodman's affidavit are granted; opposer's motion to strike a portion of applicant's brief in opposition to opposer's motion for summary judgment on the counterclaim is denied; applicant's motion for summary judgment on the opposition is granted; the opposition is dismissed; proceedings herein are resumed; and this case will go forward only with respect to the counterclaim.
Pursuant to Trademark Rule 2.106(b)(2)(iii), opposer is allowed until thirty days from the date hereof in which to file an answer to the counterclaim.
J. D. Sams
J. E. Rice
L. E. Rooney
Members, Trademark Trial and Appeal Board
FN1. Serial No. 747,897, filed August 23, 1988, with a claimed date of first use of March 1, 1988.
FN3. Registration No. 1,344,384, issued June 25, 1985, based on an application filed December 10, 1984.
FN4. Registration No. 786,518, issued March 9, 1965 for the mark 'FROOT LOOPS' in the design form shown below,
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
with a disclaimer of the word 'Froot' apart from the mark as shown, and amended on May 11, 1976 to 'FROOT LOOPS' in plain capital letters. The registration issued from an application filed May 11, 1964.
FN5. Applicant also sought cancellation on an additional ground, namely, that applicant owns a registration of its involved mark, issued on March 15, 1988 by the State of Michigan, for a class of goods identified as 'soft drinks and carbonated waters;' that to the extent that there is any overlap between the goods listed in applicant's application and those specified in registrant's registration sought to be cancelled, the issuance of applicant's state registration predated the filing, on May 19, 1988, of the application for opposer's said registration; that opposer was charged with constructive knowledge of applicant's previous state trademark registration; and that this constructive knowledge negated opposer's sworn declaration in its application that it lacked knowledge of any other person who had the right to use a similar mark, thus invalidating the registration.
In a paper received in the Patent and Trademark Office on December 4, 1989, however, applicant specifically retracted its attribution of constructive knowledge to opposer based on applicant's state trademark registration, and acknowledged the persuasiveness of opposer's cited authorities on the matter. Accordingly, this asserted ground for cancellation will be given no consideration in this proceeding.
FN6. Applicant also submitted a copy of its state registration, but that registration is irrelevant to the issues before us. See footnote 5. We further note that applicant's brief contains certain statements of fact for which there is no evidentiary support whatsoever. In this regard, applicant is advised that statements in an application are not evidence in behalf of an applicant, but rather must be proved. See: Omega SA v. Compucorp, 229 USPQ 191 (TTAB 1985); Osage Oil and Transportation, Inc. v. Standard Oil Co., 226 USPQ 905 (TTAB 1985); Fuld Brothers, Inc. v. Carpet Technical Service Institute, Inc., 174 USPQ 473 (TTAB 1972); and Trademark Rule 2.122(b). In the same vein, statements made in pleadings cannot be considered as evidence in behalf of the party making them, even upon summary judgment, but rather must be proved in the normal manner. See: Times Mirror Magazines, Inc. v. Sutcliff, 205 USPQ 656 (TTAB 1979). Pleadings have evidentiary value only to the extent that they contain admissions against interest made by an opponent.
Applicant's submission of portions of its application was unnecessary since the file of that application and the file of opposer's registration sought to be cancelled are both automatically of record herein, without any action by either party, by virtue of Trademark Rule 2.122(b) (albeit the statements in the applications are not evidence in behalf of applicant, and the statements in the registration are not evidence in behalf of opposer).
FN7. Opposer did not, in its brief, specify which material facts it believes are genuinely in issue. Rather, opposer discussed the reasons why it believes there is likelihood of confusion, and concluded that there is, 'at a minimum, a genuine issue concerning the ultimate issue of whether or not there is likelihood of confusion. . . .' However, the ultimate issue of likelihood of confusion is one of law, not of fact. See: Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987), and Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985).
FN8. Opposer filed a motion for leave to file this reply brief, and also moved to strike a portion of applicant's brief in opposition to opposer's cross-motion for summary judgment, asserting that the portion of applicant's brief in question was actually in the nature of a reply brief on applicant's motion for summary judgment. Under the circumstances of this case, we elect to consider both opposer's reply brief, and the portion of applicant's said brief sought to be struck. Accordingly, opposer's motion for leave to file a reply brief is granted, and opposer's motion to strike is denied. In addition, opposer's motion for leave to substitute the original of Cynthia Rodman's affidavit in place of the facsimile copy thereof (which facsimile was filed with opposer's brief in opposition to applicant's motion for summary judgment, and opposer's cross-motion for summary judgment) is granted, since the motion is unopposed and since the facsimile copy is so poor that it is almost illegible in places.
FN9. It should be noted that in a Board proceeding, the only evidentiary materials likely to be already part of the evidentiary record at the time of the filing of a motion for summary judgment are the pleadings (which have evidentiary value to the extent that they define the issues and contain admissions); the file of the application or registration which is the subject matter of the proceeding (which has evidentiary value to the extent that it defines the mark and goods or services involved, and for any admissions against interest--see also, fn. 6); and any registrations relied on by the plaintiff and made of record by the plaintiff at the time of the filing of the plaintiff's pleading, as provided in Trademark Rule 2.122(d)(1). Thus, any other evidentiary materials 'identified,' i.e., relied upon, as supporting a motion for summary judgment usually must be submitted with the motion. See, in this regard, Trademark Rule 2.120(j)(8).
FN10. Opposer argues that the disclaimer is of no legal significance, citing In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). That case, however, concerned the legal effect to be given a disclaimer in determining the issue of likelihood of confusion. When the issue to be determined is descriptiveness, the disclaimer by a party of the particular term in question in a prior registration for the same goods or services is an admission by the party of the merely descriptive nature of the term, and its lack of exclusive rights therein, at that time. See: Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361 (CCPA 1972).
FN11. The noun 'fruit' is defined in The Random House Dictionary of the English Language (Second Edition, Unabridged, 1987) as, inter alia, '1. any product of plant growth useful to humans or animals. 2. the developed ovary of a seed plant with its contents and accessory parts, as the pea pod, nut, tomato, or pineapple. 3. the edible part of a plant developed from a flower, with any accessory tissues, as the peach, mulberry, or banana.'
FN12. Opposer's pleading in the notice of opposition failed to specify either the mark or marks under which it sold its 'allied or related products, including, but not limited to, fruit scented markers, dessert sundaes, dairy shakes and fruit flavored frozen confections,' or the time when it sold such products. The affidavit of Cynthia Rodman states that opposer has used the mark 'FROOT LOOPS' in connection with these goods, but does not indicate when such use was first made, or for how long.