TTAB - Trademark Trial and Appeal Board - *1 HESTER INDUSTRIES, INC. v. TYSON FOODS, INC. March 20, 1987

Trademark Trial and Appeal Board

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





March 20, 1987



 Opposition No. 70,358, to application Serial No. 488,333, filed October 17, 1983.



Laurence Brown & Associates, P.C. for Hester Industries, Inc.



Richard G. Lione for Tyson Foods, Inc.



Before Sams, Rice and Rooney






Opinion by Rice






 An application was filed by Tyson Foods, Inc. to register the mark 'CHICK'N CHOICE' for boneless, breaded chicken, [FN1] use since October 1, 1983 being asserted. Applicant has disclaimed the term 'Chicken' apart from the mark as shown.



 Registration was opposed by Hester Industries, Inc. The notice of opposition begins with an allegation that opposer and 'its associated companies, affiliated and wholly owned subsidiaries' have been engaged in the production and marketing of frozen breaded precooked chicken parts since about 1949, 'said associated companies being . . ., Pierce Foods Corporation, the first successful precooked breaded and frozen chicken product pioneer, . . ..' Next comes an assertion that 'opposer and subsidiaries' market their goods under various brand names and families of trademarks using 'CHICK'N' and several variations thereof. This assertion is followed by a listing of some of the marks (accompanied by registration numbers and registration issue dates therefor) assertedly used by 'opposer and subsidiaries.' Although none of the listed marks contains the term 'CHICK'N', a number of them contain the term 'CHIK'N', namely 'CHIK'N BAKE', 'CHIK'N DIP'N', 'CHIK'N QUICKIE', 'CHIK'N-FRY', 'COSMO-CHIK'N', 'DIP'N CHIK'N', and 'SUPER CHIK'N'. The notice of opposition concludes with allegations that, inter alia, the word 'CHOICE' is descriptive as applied to chicken products; that the respective goods of the parties bearing their marks are competitive and 'meet in the same marketplace'; that there is an overlap in the parties' channels of trade; and that applicant's mark so resembles opposer's family of various 'CHIK'N' and like marks as to be likely to cause confusion, mistake, or deception. The notice of opposition was not accompanied by status and title copies of the registrations pleaded by opposer.



 Applicant, in its answer to the notice of opposition, denied all of the allegations contained therein.



 This is a very peculiar case. As noted above, opposer did not submit, with the notice of opposition, status and title copies (or, for that matter, any copies at all) of the registrations of the asserted marks of opposer mentioned in its pleadings. Cf. Trademark Rule 2.122(d). Moreover, opposer's testimony period came and went, and opposer failed to offer any evidence in its behalf. At that point, applicant could have filed a motion, under Trademark Rule 2.132(a), to dismiss for failure to prosecute. Instead, applicant, during its testimony period, filed a notice of reliance upon certain third-party registrations to show that a goodly number of marks containing the word 'CHOICE' have been registered for food products and food services. Opposer, in turn, filed a notice of reliance, during its rebuttal testimony period, upon a number of third-party registrations of marks containing the word 'CHOICE' (for food products and beverages) wherein the word 'CHOICE' is disclaimed. Opposer also relied upon the printouts of three stories from the 'NEXIS' library of Mead Data Central's 'LEXIS' system database, wherein the phrase 'choice chicken parts' is used descriptively.



  *2 In its brief on the case, opposer argued not only the issue of likelihood of confusion (opposer's argument in this regard being replete with factual assertions for which it had offered no evidence), but also that applicant's mark as a whole is merely descriptive, when applied to applicant's boneless, breaded chicken, and thus falls within the statutory prohibition of Section 2(e)(1). [FN2] Attached to opposer's brief on the case were plain copies of the registrations of the 'CHIK'N' marks mentioned in the notice of opposition, except for 'CHIK'N BAKE'; and copies of certain dictionary definitions.



 Applicant, in its brief, argued the merits of the Section 2(d) and 2(e)(1) issues. In connection therewith, applicant stated, at page 3 of its brief, that 'Opposer owns the trademarks' 'SUPER-CHIK'N', 'CHIK'N QUICKIE', 'CHIK'N DIP'N', 'CHIK-N-FRY', and 'DIP'N CHIK'N'. Attached to applicant's brief were copies of certain U.S. Department of Agriculture regulations, submitted by applicant to show that 'CHOICE' is not a grade designation for chicken or any other type of poultry.



 Inasmuch as opposer failed to offer any evidence whatsoever prior o the expiration of its period for testimony-in-chief, it failed to prove its case-in-chief during the time allowed therefor and hence cannot prevail herein. To the extent that any evidence offered by opposer during its rebuttal testimony period served to support its case-in-chief, it constituted improper rebuttal and cannot be considered.



 Moreover, with respect to applicant's admission of opposer's ownership of certain marks containing the term 'CHIK'N', we note that applicant did not admit that opposer has priority of use or owns registrations thereof; that indeed, the copies of the registrations of these marks attached to opposer's brief show on their face that they are owned by Pierce Foods Corporation (a company whose relationship to opposer, if any, was not proved by opposer); and that only the owner of a registration can rely on the Section 7(b) presumptions afforded thereto. Further, it is well settled that the mere ownership of a number of marks sharing a common feature (or even ownership of registrations thereof) is insufficient to establish a claim of ownership of a 'family' of marks characterized by the feature in the absence of competent evidence showing that prior to the first use by the alleged interloper, the various marks said to constitute the 'family,' or at least a goodly number of them, were used and promoted together in such a manner as to create among purchasers an association of common ownership based upon the 'family' characteristic [see: Porta-Tool, Inc. v. DND Corp., 196 USPQ 643 (TTAB 1977), and DAP, Inc. v. Flex-O-Glass, Inc., 196 USPQ 438 (TTAB 1976)]; and that a 'family' of marks cannot be acquired in a nonarbitrary term or a term that has been so commonly used in the trade that it cannot function as the distinguishing feature of any one party's mark [see: Cambridge Filter Corp. v. Servodyne Corp., 189 USPQ 99 (TTAB 1975)].



  *3 In view of the complete failure of proof on opposer's part, the opposition must be dismissed.



 Decision: The opposition is dismissed with prejudice.



J. D. Sams



J. E. Rice



L. E. Rooney



Members, Trademark Trial and Appeal Board



FN1. Serial No. 448,333, filed October 17, 1983.



FN2. Although opposer alleged in its notice of opposition that the word  'CHOICE' was descriptive as applied to chicken, nowhere did it allege that applicant's mark as a whole was merely descriptive as applied to applicant's goods. Thus, this asserted issue is outside the pleadings.


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