TTAB - Trademark Trial and Appeal Board - *1 NESTLE FOODS CORPORATION v. KELLOGG COMPANY January 11, 1988

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





January 11, 1988

Hearing: May 14, 1987



 Opposition No. 64,656, to application Serial No. 234,870 filed January 10, 1980.



Thomas J. Ward, Michael A. Grow, Sheldon H. Klein and Ward, Lazarus, Grow & Cihlar for Nestle Foods Corporation



Thomas G. Howell and Neil G. Nyberg, Juettner Pyle Lloyd & Verbeck for Kellogg Company



Before Sams, Rice & Krugman






Opinion by Sams






 Kellogg Company [applicant] has made application to register its mark  "DINERS' CHOICE" for goods identified as "tea; and flour based mixes for use in making waffles, pancakes, pastry and confectionery." [FN1] Nestle Foods Corporation [opposer] has opposed registration on the grounds that "DINERS' CHOICE," as applied to applicant's goods, so resembles the mark "TASTER'S CHOICE," used by opposer on coffee from a time prior to applicant's use of "DINERS' CHOICE," as to be likely to cause confusion. In the notice of opposition, opposer claimed ownership of a registration for "TASTER'S CHOICE" for coffee. [FN2] Applicant denied the salient allegations of the notice of opposition.



 The record in this case is extensive and consists of the file of the opposed application, a status and title copy of Registration No. 832,275 for the mark "TASTER'S CHOICE," certain of applicant's answers to interrogatories posed by opposer during the discovery period, certain discovery depositions taken by opposer during the discovery period, excerpts from printed publications and official records, certain stipulations of evidentiary facts, certain of opposer's answers to interrogatories posed by applicant during the discovery period, three testimony depositions offered by opposer, five testimony depositions offered by applicant, and twelve depositions upon written questions offered by opposer as part of its evidentiary submission during its rebuttal period. [FN3]



 Opposer introduced in evidence testimony depositions and supporting exhibits concerning its adoption and use of the mark "TASTER'S CHOICE" for coffee. That evidence shows that opposer first marketed coffee under the mark "TASTER'S CHOICE" in 1966 and has marketed "TASTER'S CHOICE" coffee ever since. Opposer's vice-president of coffee, Jeffrey Caso, estimated that retail sales of "TASTER'S CHOICE" coffee from 1966 to 1983 amounted to some 2.5 billion dollars. He also testified that, for that same period, opposer incurred approximately 500 million dollars in retail advertising and promotional expenses.



 Uncontroverted evidence establishes that "TASTER'S CHOICE" coffee has been advertised widely in mass media, including television, print media, and radio. Mr. Caso's testimony that "TASTER'S CHOICE" is the largest selling instant coffee in the United States was not contradicted by applicant's evidence. There was also testimony that "TASTER'S CHOICE" coffee is sold in virtually every sort of retail outlet, from "mom and pop" grocery stores, to convenience stores, to large supermarkets, to virtually any sort of store that sells groceries.



  *2 Opposer's witness Henry F. McInerny, opposer's former vice-president of marketing for cold beverages, testified that opposer sells tea as well as coffee, although its tea is not sold under the "TASTER'S CHOICE" mark. In particular, opposer sells tea through retail grocery stores and general merchandise and drug stores, where its tea products are generally displayed in the aisle next to coffee and cocoa. Opposer's tea is sold in instant (soluble) form, tea bags, and in liquid form. Opposer's sales of tea for the year 1983 were estimated at a 100 million dollars. Witnesses for opposer testified that they were aware of a number of companies who sold both tea and coffee, at least some of which companies sold tea and coffee under the same mark.



 Opposer offered the testimony deposition of Larry Ledin, the vice-president and general manager of opposer's food service division, which division is in charge of selling and marketing opposer's products for consumption away from the home, that is, in restaurants, hospitals, recreational facilities, etc. Mr. Ledin testified that opposer's "TASTER'S CHOICE" coffee is sold through opposer's food service division, as are opposer's tea products. The witness testified that, in 1983, sales of "TASTER'S CHOICE" coffee through the food service division amounted to approximately 26 million dollars and that sales of "TASTER'S CHOICE" through the food service division since the inception of the "TASTER'S CHOICE" brand had amounted to approximately 130 million dollars. Total advertising and promotional expenditures by the food service division for "TASTER'S CHOICE" coffee had amounted to approximately 15 million dollars. "TASTER'S CHOICE" coffee is sold through the food service division in the form of single service packages of coffee, urn packs, and bulk packs. Opposer's food service division also sells tea in liquid, soluble, and tea bag form. "TASTER'S CHOICE" coffee is advertised by the food service division in trade publications and in restaurants (by being printed on menus, table tents and dispensers for single service packs). Other testimony established that opposer's "TASTER'S CHOICE" coffee is sold in a number of famous restaurants, hotels, etc.



 Opposer introduced into the record, as part of its case-in-chief, excerpts from Webster's Third New International Dictionary of the English Language (Unabridged 1981), specifically, definitions of the words "dine" and "taste", and an excerpt from Roget's Thesaurus (Longman 1982), specifically, an excerpt showing both "diner" and "taster" listed among a group of words and expressions set forth at the general heading of "eater."



 Evidence offered by applicant establishes that applicant has used the mark  "DINERS' CHOICE" on tea and on various frozen food products and that these products bearing the mark "DINERS' CHOICE" are packaged and marketed through various of applicant's divisions and/or subsidiaries (including Salada Foods, Mrs. Smith's Frozen Foods Co., Pure Packed Foods, and Kellogg Sales Co.) The testimony of Robert W. Taylor, vice-president of food service sales and marketing of the Kellogg Sales Co., testified that "DINERS' CHOICE" tea was first sold in 1978 and is still sold; that "DINERS' CHOICE" frozen waffles were first sold in October 1978, but that sales of frozen waffles were discontinued in 1980; that "DINERS' CHOICE" frozen pancake and waffle batters were first sold in May of 1979 and are still sold; that "DINERS' CHOICE" frozen non-dairy whipped toppings were first sold in March 1980, but that sales of frozen non-diary whipped toppings were discontinued later in 1980; that "DINERS' CHOICE" frozen "whip 'n top" was first sold in March 1980 and is still sold; and that "DINERS' CHOICE" frozen dairy creamers were first sold in March 1980 and are still sold.



  *3 The record establishes that applicant's "DINERS' CHOICE" tea is marketed exclusively to the food service trade, that is, institutions such as restaurants and hospitals, although the ultimate customers for "DINERS' CHOICE" products are ordinary consumers.



 Applicant's witness Allan G. Bates, the vice-president and controller of opposer's Salada Foods subsidiary, testified that applicant's "DINERS' CHOICE" tea is sold in tea bag form (with the tea bags sometimes packed loose and sometimes packed in individual envelopes), and that, for the period 1978-83, applicant shipped approximately 95,000 cases of "non envelope" tea bags and 22,000 cases of "envelope" tea bags. The dollar value of these shipments was approximately $1,383,000 for the period 1978-83.



 Applicant's witness Raymond D. Bateman, vice-president and general sales manager of opposer's wholly owned subsidiary, Mrs. Smith's Frozen Foods Co., testified that applicant's frozen food products bearing the mark "DINERS' CHOICE" are sold to food service distributors for shipment to hotels, hospitals, restaurants, and the like. Mr. Bateman testified that the approximate dollar value of "DINERS' CHOICE" frozen food products shipped in the period 1979-83 was $2,060,000. On cross-examination, Mr. Bateman testified that the packaging for the "DINERS' CHOICE" frozen food products was changed in 1981, by reducing the size of the "DINERS' CHOICE" mark on the packages for the frozen food products, placing it at the bottom of one of the side panels of the packages. This new package format gave prominence, instead, to the "MRS. SMITH'S" mark. Again on cross-examination, Mr. Bateman testified that the ultimate customer for "DINERS' CHOICE" frozen food products, that is, ordinary consumers, would be likely to encounter the mark by viewing "DINERS' CHOICE" products "sitting behind the shelf or out on the counter in cafeterias or food service outlets."



 Applicant introduced into evidence a stipulation of evidentiary facts regarding the adoption and use by third parties of marks incorporating the word "CHOICE". In particular, the parties stipulated that the marks "CUISINIER'S CHOICE" and "BREWER'S CHOICE" are in use by third parties on coffee products and the mark "HUSBAND'S CHOICE" is in use by a third party on a coffee extender product. No evidence as to the extent of the use of these marks was stipulated or is otherwise of record. Applicant also made of record, by means of the testimony deposition of Martin Lasher, president of S & S Coffee Roasters, Inc., of Brooklyn New York, evidence of use of the mark "GOURMET'S CHOICE" on coffee.



 Applicant submitted, by means of notice of reliance under Rule 2.122(c), copies of a number of trademark registration certificates issued by the Patent and Trademark Office. These certificates of registration were for marks incorporating the word "DINER", "TASTER'S" or "CHOICE", for various food products. Of these registration certificates, only a few showed marks registered for beverages. Included among that latter group were the following registered marks: "TASTERS' CHOICE" for scotch whisky, "TASTER'S OWN" for wines, "BLENDERS' CHOICE" for coffee, "CUISINIER'S CHOICE" for coffee, "DRINKER'S CHOICE" for Canadian whiskey, "NATURE'S CHOICE" for apple juice and apple cider, "DISTILLER'S CHOICE" for whiskey, "TEXAS CHOICE" for vodka, gin, whiskey and tequila, "KING'S OWN CHOICE" for tea, "CRITIC'S CHOICE" for liqueurs and "EMPEROR'S CHOICE" for tea. Also made of record under Rule 2.122(c) was a copy of a publication entitled "San Francisco Diner's Choice, Annual Dining Guide 1983-84" and a copy of the California certificate of trademark registration to San Francisco Magazine, Inc. for "DINER'S CHOICE" for a restaurant guide.



  *4 During its rebuttal period, opposer submitted a number of depositions upon written questions. These depositions were of employees of entities identified by applicant as customers for its various "DINERS' CHOICE" products. Most of the deponents indicated either (i) that, to their knowledge, their employers had never purchased "DINERS' CHOICE" products or (ii) that, although "DINERS' CHOICE" products had been purchased at one time, such products were not now being purchased by their employers.



 Opposer has established by clear, uncontradicted evidence that it began use of its "TASTER'S CHOICE" mark on coffee in 1966 and that use of the mark has been continuous since that time. The record in this proceeding establishes that applicant did not begin use of the mark "DINERS' CHOICE" on any products until 1978. Thus, opposer has proved priority of use of its "TASTER'S CHOICE" mark. Moreover, this record leaves no doubt that coffee and tea are sold, as alternative beverages, to the same customers and that coffee and tea may well emanate from the same source, even under the same trademark.



 While the evidence shows that applicant's tea products are sold, in the first instance, exclusively to institutional users rather than ordinary consumers, applicant's identification of goods does not limit the trade channels for applicant's tea. In any event, opposer's goods, too, are sold in institutional food trade channels, and both parties' products are sold, ultimately, to ordinary consumers. We believe also that the frozen food products sold under the mark "DINERS' CHOICE" (including those flour-based mixes recited in applicant's application) are products that are sufficiently related to coffee (albeit not so related as applicant's tea) that confusion would be likely if substantially similar trademarks were applied to such goods.



 There can be no doubt whatsoever that "TASTER'S CHOICE" is a famous mark for coffee. In the face of the overwhelming evidence adduced by opposer concerning the sales of "TASTER'S CHOICE" coffee, advertising and promotional expenditures made by opposer, and opposer's efforts to police its mark (through the courts and before this Board), no other finding is possible. Even applicant seems to concede the fame of the "TASTER'S CHOICE" mark for coffee. The fame of a mark is, of course, a factor that must be considered in resolving the issue of likelihood of confusion. Specifically, confusion may be more likely in the case where a mark is famous, in that purchasers may take less care in purchasing a product under a famous mark. See Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed.Cir.1984). On the other hand, the finding that opposer's "TASTER'S CHOICE" trademark is famous for coffee does not end the inquiry on the issue of likelihood of confusion, particularly where the mark opposed is not identical to the mark whose fame has been established.



  *5 As the dictionary and Roget's Thesaurus evidence offered by opposer suggests, both "TASTER'S CHOICE" and "DINERS' CHOICE" connote a discriminating palate. While opposer's "TASTER'S CHOICE" may have been the first of these marks to be used and while it has since achieved fame as applied to coffee, these facts cannot preclude others engaged in the sale of related goods from adopting and registering marks projecting a similar suggestion, if those marks are otherwise readily distinguishable in sound and appearance. See Mead Johnson & Co. v. Eckes, 195 USPQ 187 (TTAB 1977) ["METRECAL" and "MINIKAL", for dietary food, held not confusingly similar]; Stouffer Corp. v. Health Valley Nature Foods Inc., 1 USPQ2d 1900 (TTAB 1986), aff'd App. No. 87-1292 (Fed.Cir.1987) (unpublished) ["LEAN CUISINE" and "LEAN LIVING", for low-calorie foods, held distinguishable and, thus, not confusingly similar]. In this case, while a diner indisputably tastes his food or drink, and while a taster must, sooner or later, dine, "diner" and "taster" are not wholly interchangeable terms. Moreover, the two marks, while somewhat similar in structure, may be distinguished easily in appearance, pronunciation, and meaning.



 While opposer is perfectly correct that this record does not establish widespread use of other marks incorporating the word "CHOICE" applied to food products, the certificates of registration introduced by applicant are relevant evidence, when taken together with the dictionary evidence, to the extent that they tend to prove that the word "CHOICE", as a component of a mark applied to food products, is not wholly arbitrary but, rather, has a somewhat laudatory significance as applied to the respective food products of these parties. See Tektronix, Inc. v. Daktronics, Inc., 748 F.2d 675, 189 USPQ 693 (CCPA 1976). Thus, while we do not gainsay the fame of opposer's mark "TASTER'S CHOICE", as applied to coffee, applicant's mark is not identical to opposer's famous mark, and the similarity between the two marks consists principally of the less than wholly arbitrary word "CHOICE". Also, while we have found opposer's mark to be a famous mark with respect to coffee and while we have found the products to which applicant applies its mark to be food products somewhat related in nature to coffee, we stress that the fame of opposer's mark has been developed with respect to coffee and that applicant is not seeking to register its mark for coffee. For all these reasons, we do not believe that confusion as to source is likely in the contemporaneous use of applicant's mark and opposer's mark on the parties' respective food products.



 We should emphasize that, in arriving at our conclusion that confusion as to source is not likely, we are not relying on applicant's argument concerning the absence of evidence of instances of actual confusion. As opposer convincingly demonstrated on this record, applicant's "DINERS' CHOICE" products have not been so widely distributed and advertised that much opportunity for actual confusion has arisen. Our conclusion that confusion is not likely is based, quite simply, on the overall differences in appearance, pronunciation, and connotation of these marks, the fact that they are not applied to identical goods, and the obvious laudatory quality of the word "CHOICE", which word constitutes the principal similarity between the marks involved. We believe these facts are more important to the resolution of the issue of likelihood of confusion here than the fame of the "TASTER'S CHOICE" mark as applied to coffee and the fact that the parties' marks are applied to related, and even competitive, food products.



  *6 Decision: The opposition is dismissed.



J. D. Sams



J. E. Rice



G. D. Krugman



Members, Trademark Trial and Appeal Board



FN1. Serial No. 234,870, filed January 10, 1980.



FN2. Registration No. 832,275, issued July 18, 1967 (affidavits under Sections 8 & 15 received; renewal application under Section 9 pending). After the filing of the present notice of opposition, Registration No. 832,275 was assigned by opposer to its related company Societe Des Produits Nestle S.A. (which assignment has been recorded in the Patent and Trademark Office). By means of the same document, opposer also assigned to its related company Registration No. 1,215,085 for the mark "TASTER'S CHOICE DECAF" for freeze dried decaffeinated coffee, which registration issued during the pendency of this proceeding (on November 2, 1982). Opposer received back from its related company an exclusive license to use the registered mark "TASTER'S CHOICE" in the United States. We note that, because opposer is no longer the owner of the pleaded registration for "TASTER'S CHOICE," opposer may not rely on that registration in proof of its Section 2(d) ground for opposition.



FN3. During the trial period, applicant raised a number of evidentiary objections, which objections it has reiterated in its final brief on the case. We do not believe that any of the evidentiary objections are well taken and, therefore, hereby overrule all objections entered by applicant to the evidentiary submissions made by opposer in this proceeding. In particular, applicant objected to opposer's introduction of testimony at trial concerning opposer's plans to expand use of the "TASTER'S CHOICE" mark. Applicant objected to this testimony on the grounds that, during the discovery phase of proceedings, opposer refused to answer a question (interrogatory 34) concerning any plans it had for expanding the use of "TASTER'S CHOICE" to other products. As opposer points out in its reply brief, opposer indicated a willingness to provide such information during the discovery period upon entry of a mutually acceptable protective order that would prevent disclosure of sensitive trade information. Applicant made no further attempts to discover information concerning the extent to which opposer had considered expanding use of its "TASTER'S CHOICE" mark to other products. Thus, we see no basis for excluding the testimony of opposer's witnesses on this subject. Moreover, applicant's objections to certain rebuttal depositions taken and offered by opposer to rebut applicant's testimony concerning the business establishments that had been customers for its "DINERS' CHOICE" products are not well taken. Reading each of the challenged rebuttal depositions upon written questions as a whole, we find that each deponent was testifying, on the basis of his or her personal knowledge, concerning whether "DINERS' CHOICE" products had been sold by his or her employer during the period of the deponent's employment. True, certain of the deponents, in answer to a question as to whether their employer companies had ever sold "DINERS' CHOICE" products, answered in the negative. Nonetheless, those answers were clarified by answers to succeeding questions. In short, we see no reason for excluding the evidence offered in these rebuttal depositions on the grounds of lack of proper foundation. Finally, applicant's objections to copies of a consent judgment entered in a proceeding before a U.S. District Court and a default judgment entered in a proceeding before the Trademark Trial and Appeal Board do not amount to a basis for excluding these papers from the record. Their probative value is considered below.


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