Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SAKS & COMPANY
SNACK FOOD ASSOCIATION
July 19, 1989
Hearing. May 10, 1989
Opposition No. 75,695, to application Serial No. 614,443, filed August 13, 1986
Cooper & Dunham for Saks & Company
Jeffrey W. King and Patrick J. Coyne for Snack Food Association
Before Rice, Krugman and Seeherman
Saks & Company has opposed the application of Snack Food Association to register "SFA" for association services, namely, promoting the interests of the snack food industry. [FN1] As grounds for opposition, opposer has alleged that it is the prior user of the mark "SFA" in association with the sale, distribution and advertising of a wide range of goods, including snack foods and other foods, and in the rendering of retail food store and department store services; that it is the owner of a registration for "SFA" for retail department store services; and that applicant's use of "SFA" in association with the service of promoting the interests of the snack food industry is likely to cause confusion, mistake or to deceive. In its answer applicant has denied all the salient allegations of the notice of opposition.
The record includes the pleadings; the file of the opposed application; certain advertisements and applicant's responses to certain of opposer's interrogatories, relied upon by opposer; [FN2] and an advertisement, opposer's responses to certain of applicant's interrogatories and request for admissions, and a copy of a third-party registration for "SFA", all relied on by applicant. [FN3] The record also includes testimony on behalf of each party. [FN4]
The parties have fully briefed the case, and an oral hearing was held at which both parties were represented.
Opposer is a retail company which sells merchandise to the general public through in-store, catalog and telephone sales. It owns 44 retail stores located throughout the United States which operate under the trademark "SAKS FIFTH AVENUE", and its annual sales volume is over $1 billion. In 1962 it formally adopted the mark "SFA", an acronym for Saks Fifth Avenue, in connection with its sale of merchandise and services, and obtained a registration for this mark for retail department store services in 1982. [FN5]
One of the categories of goods sold by opposer is food, including food items sold under opposer's private label and those sold under third parties' brand names for which opposer acts as the retailer. Opposer's annual sales of food products amount to $3 million, [FN6] 40% of which relates to snack foods. [FN7] By 1980 certain of its private-label food items bore the initials "SFA", for example, peanut brittle, cashew brittle and honey-glazed peanuts are sold in cans bearing a "SAKS FIFTH AVENUE" label on which the logo "SFA" appears as a repeated background design. Opposer's "FOOT OF FUDGE", sold under a label bearing the mark "SAKS FIFTH AVENUE", contains individually wrapped pieces of fudge, each labeled with just the "SFA" initials. Opposer also sells chocolate mint candies, which are individually embossed with "SFA", but the box they are sold in is trademarked only with the name "SAKS FIFTH AVENUE". Opposer recently introduced (in 1987) an item in which various candies bearing third parties' trademarks are sold in a tin labeled "SAKS FIFTH AVENUE", under which is the product identifier "SFA Sweet Stuff". Opposer has also made of record a bag covered by the repeated initials "SFA" which is used to hold a customer's loose chocolate purchases, and price tags for all the products bear the "SFA" logo.
*2 In addition to its private-label food products opposer has featured "SFA" on watches and certain clothing items such as underpants and sweat shirts.
Opposer advertises its food and other private-label products in its catalogs (particularly its Christmas catalog), which are distributed to its two million charge-account customers. Opposer also places advertisements in newspapers, trade magazines, consumer magazines and fashion magazines, although the record is not clear as to whether these advertisements include private-label goods.
Applicant is a trade association representing manufacturers and processors of snack foods. It began in 1937 as the Potato Chip Institute, then renamed itself in 1976 as the Potato Chip/Snack Food Association, using a logo with the letters "PC/SFA". In 1986 it formally dropped the Potato Chip reference from its name and logo and it is now called the Snack Food Association and uses the initials "SFA" in its logo. Its membership consists of those in the business of manufacturing snack food for sale and suppliers of equipment and services to the industry.
Applicant supplies to its members (and, for a fee, to non-members) information on what is going on in the industry, how to make good quality products and how to maximize financial margins. This information is dispensed through seminars, trade shows, and publications such as manuals, magazines, news letters and bulletins. Applicant also has a government affairs program which deals with regulatory and legislative agencies, and advises its members on developments in this area. In addition, applicant has provided information to its members on how to improve their public relations.
The first issue we must consider is whether applicant uses its mark as a service mark. [FN8] It is opposer's position that applicant uses its mark only as a collective membership mark and, moreover, that the term "association services" is meaningless and should not be accepted as an identification of services. We disagree. While it appears that applicant uses "SFA" as a collective membership mark insofar as its members can use the mark to identify themselves as being a part of the organization, we see no reason why a term which is used as a collective membership mark cannot also function as a service mark to identify association services. See, generally, Amica Mutual Insurance Co. v. R.H. Cosmetics Corp., 204 USPQ 155 (TTAB 1979). Here, the record shows that applicant performs under the mark such services to members and nonmembers as providing seminars and publications on how to increase profits, prepare high-quality products, and advise on government actions which have an impact on the industry. Activities such as these are services performed by a trade association. See testimony of Teri Richman. We find that applicant has used its mark for association services, and further find that the identification in applicant's application, i.e. association services, namely, promoting the interest of the snack food industry, is an appropriate one for applicant's services. See, generally, TMEP § 1301.02; In re International Silk Assn. (U.S.A.) Inc., 152 USPQ 779 (TTAB 1967).
*3 Turning to the pleaded issue of likelihood of confusion, we note at the outset that opposer has made its registration for "SFA" for retail store services of record. The record also shows that opposer has used "SFA" as a trade name and as a mark for certain food products since prior to the time applicant adopted "SFA" per se as its mark for association services.
The real question, in our view, is whether applicant's services are sufficiently related to opposer's goods and services that confusion is likely to result from their use of the identical mark "SFA". We think they are not. Merely because opposer sells what can be characterized as snack foods, even snack foods bearing the "SFA" logo, in its retail establishments, does not create a sufficient nexus with the association services applicant renders to the snack food industry. It is not enough to make a semantic argument in which the phrase "snack food" is used in referring to opposer's and applicant's activities; opposer has the burden of showing a real connection between these activities, and this opposer has failed to do.
In making our determination we have considered the impact of the parties' activities on both the general public and the snack food industry, since it is possible that each group could come into contact with the parties' marks. With respect to snack food manufacturers, opposer claims that it renders to them services similar to those performed by applicant, in that it advises them of governmental labeling requirements, quality control and the like in connection with the manufacturers' preparing opposer's private label products. While opposer has tried to describe its activities using the same words that are appropriate to describe applicant's, the activities are in reality different, and opposer's giving labeling specifications and quality control guidelines to its manufacturers when ordering from them does not actually constitute a service at all. Nor do we believe that manufacturers of snack food--whether actual or potential members of applicant's organization--are likely to be confused by each party's use of "SFA". Such manufacturers are sophisticated in industry practices, and would know that in general a trade association like applicant would not engage in manufacturing in competition with its members. Moreover, the food manufacturers who prepare private-label products would know full well they were dealing with opposer, while the relatively high cost of membership in applicant's organization is sufficient to insure that members are well aware of who applicant is.
As for the general public, they would of course come into contact with opposer's products and services marketed in connection with the trademark "SFA", since it is the general retail, telephone and mail-order customer to whom opposer directs its activities. On the other hand, the evidence shows that applicant does not direct any of its services to the general consumer, nor does the general public come in contact with applicant and its mark. However, since we must determine the question of likelihood of confusion based on the identification of services, rather than on any limitations reflected in actual use, we must consider applicant's services to include public relations campaigns directed by applicant at the general public to promote the interest of the snack food industry as a whole.
*4 Even in such circumstances, however, we think the connection between retail stores and an association promoting snack foods in general is so tenuous, if not nonexistent, that the public would not make an association between the two activities even though both services were rendered under the mark "SFA". Nor does the fact that opposer sells private-label food items substantially strengthen the connection with applicant's services, such that consumers are likely to assume that both emanate from the same source. The few items of food products on which opposer uses the mark "SFA" also bear, in much more prominent display, the trademark "SAKS FIFTH AVENUE". Because of this, the commercial impression that "SFA" is likely to project is that of an abbreviation for "SAKS FIFTH AVENUE." Further, the "SAKS FIFTH AVENUE" and "SFA" items are advertised together in the catalogs. Based on the manner in which opposer's food products are advertised and sold, we think that the public would view the "SFA"-marked products as exactly what they are--private-label products manufactured for opposer and sold in opposer's retail stores and through its catalogs--and that the public would not associate such products with an "SFA" public relations campaign on behalf of the snack food industry. As for the food items opposer sells which are not privately labeled, e.g., Neuhaus Chocolates, Cole's Traditional Christmas Pudding and Caviar Fidelis, we believe that these items would be viewed merely as goods made by other manufacturers which are sold in opposer's stores. As for any likelihood of confusion based on opposer's trade name use, it is the trade name "Saks Fifth Avenue" rather than the trade name "SFA" which is prominently used, with references to "SFA" as a trade name in opposer's advertising copy appearing more in the nature of an abbreviation of "Saks Fifth Avenue" than as a separately emphasized trade name. We think it unlikely that the public would associate a reference to "SFA" in connection with a public relations campaign promoting the snack food industry with opposer's retail stores or with the items, even food items, sold in those stores.
In making our determination we have taken into consideration the long use and advertising of "SFA" made by opposer, but the evidence of record is not sufficient for us to find "SFA" is a famous mark which consumers are likely to associate with opposer when used for such different services as those rendered by applicant.
Opposer has also relied heavily, in arguing that confusion is likely, on the fact that applicant's members may place on the packages of snack foods they distribute to the public a logo containing the letters "SFA" to indicate their membership in applicant. Whether or not the members' use of an "SFA" logo as a collective membership mark is likely to cause confusion with opposer's use of its mark is irrelevant to this proceeding; here applicant is seeking to register its service mark for association services, and our determination herein must be based on a consideration of the identified services, and not whether confusion is likely in connection with activities for which no application has been made.
*5 Decision: The opposition is dismissed.
J. E. Rice
G. D. Krugman
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN2. Applicant objected to the introduction of two annual reports, submitted by opposer with its rebuttal notice of reliance. This objection is well taken, since annual reports are not considered printed publications admissible under Trademark Rule 2.122(e). The newspaper advertisement submitted with the rebuttal notice does constitute a printed publication, however, and is therefore properly of record.
FN3. Opposer moved to strike all of applicant's first notice of reliance. Exhibits 1 through 44 submitted with the notice, although not proper matter for a notice of reliance, were introduced in connection with applicant's witness's testimony and are therefore of record. Exhibits 45 and 46 are excerpts from applicant's application, which is of record pursuant to Trademark Rule 2.122(b). Exhibits 48, 49 and 50 were withdrawn by applicant in its amended notice of reliance filed October 20, 1988. The remaining exhibits, 47 and 51 through 54, are proper subject matter for a notice of reliance, a fact which opposer does not dispute.
FN4. With its brief opposer has renewed its motion to strike the testimony of John R. Cady taken on August 30, 1988. For the reasons stated in our December 8, 1988 decision, we adhere to the ruling denying the motion.
FN5. Registration No. 1,195,950, issued May 18, 1982; Section 8 affidavit accepted; Section 15 affidavit received.
FN6. The record is not clear whether this figure refers to all food products, or only those sold under opposer's private label. The ultimate result herein would remain the same under either interpretation.
FN7. Applicant has objected to opposer's references to revenues, sales and advertising expenses as being irrelevant and lacking authentication and foundation. As for the relevancy objection, these figures are relevant to the fame of opposer's mark. With respect to the authentication and foundation objection, opposer's witness was shown to have personal knowledge of the sales and advertising figures. See, Domino's Pizza Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359 (TTAB 1988); Bangor Punta Operations, Inc. v. American Sterling Enterprises, Inc., 184 USPQ 243 (TTAB 1974).
FN8. Although this issue was not raised initially, it was tried and briefed by the parties such that we will deem the pleadings to have been amended pursuant to Rule 15(b) of the Federal Rules of Civil Procedure.