Food-Tek, Inc.v.Rhodia, Inc.

Trademark Trial and Appeal Board

Nov 3, 1999

No. 92024523 (T.T.A.B. Nov. 3, 1999)

Paper No. 35
cmb
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Food-Tek, Inc.
v.
Rhodia, Inc.1
_____
Opposition No. 99,676
to application Serial No. 74/529,590
filed on May 25, 1994
Cancellation No. 24,523
(consolidated case)
_____
Norman E. Lehrer of Norman E. Lehrer, P.C. for Food-Tek,
Inc.
Mark I. Feldman of Rudnick & Wolfe for Rhodia, Inc.
______
Before Seeherman, Wendel and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant/respondent Rhodia, Inc. (hereinafter
“defendant”) is the owner of application Serial No.
74/529,590, by which it seeks to register on the Principal
Register the mark YOUR FOOD TECH PARTNER, in the stylized

1 By assignment from Rhone-Poulenc, Inc., recorded July 22, 1998
at Reel 1758, Frame 0879.
Opposition No. 99,676; Cancellation No. 24,523
2
lettering depicted below, for services recited as
“information services, namely providing information
regarding food ingredient use.”
Defendant also owns Registration No. 1,896,675, which is of
the mark YOUR FOOD TECH PARTNER, in typed form, for services
recited in the registration as “providing information
regarding food-ingredient use.”
In these consolidated opposition and cancellation
proceedings, opposer/petitioner Food-Tek, Inc. (hereinafter
“plaintiff”) has opposed issuance of the registration sought
by defendant in the above-referenced application, and also
has petitioned to cancel defendant’s above-referenced
registration. As grounds for opposition and cancellation,
plaintiff has alleged that it is the prior user of the
service mark and trade name FOOD-TEK for services recited in
the notice of opposition and petition to cancel as
“consulting services in the field of food manufacturing and
food product research and development.” Plaintiff also has
alleged that defendant’s marks, as used in connection with
defendant’s recited services, so resemble plaintiff’s

Opposition No. 99,676; Cancellation No. 24,523
3
previously-used service mark and trade name as to be likely
to cause confusion, to cause mistake, or to deceive. See
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Defendant has filed answers to the notice of opposition
and the petition to cancel, by which defendant has denied
those allegations which are essential to plaintiff’s Section
2(d) claims. Plaintiff and defendant have filed main
briefs, and plaintiff has filed a reply brief. No oral
hearing was requested.
The evidence of record in this case consists of the
pleadings; the files of the application and registration
involved in these opposition and cancellation proceedings;
plaintiff’s testimony deposition of plaintiff’s president
Gilbert Finkel, and exhibits attached thereto; defendant’s
testimony depositions of defendant’s employees Joseph Downes
and Debbie Remillard, and exhibits attached thereto; a
status and title copy of defendant’s involved registration,
submitted by defendant under notice of reliance; portions of
the discovery deposition of plaintiff’s president Gilbert
Finkel, submitted by defendant under notice of reliance;
various documents and other materials asserted to be
“printed publications,” submitted by defendant under notice
of reliance; and the stipulated rebuttal testimony of
plaintiff’s president Gilbert Finkel, and exhibits attached
thereto.
Opposition No. 99,676; Cancellation No. 24,523
4
Before turning to the merits of the parties’ dispute,
the Board rules as follows on the numerous evidentiary
objections made by each of the parties.
Defendant’s objections to the stipulated rebuttal
testimony of Gilbert Finkel, and to plaintiff’s Exhibits 46-
50 attached thereto, are overruled. This evidence regarding
plaintiff’s knowledge of, and its actions taken against,
certain third parties shall be considered for whatever
probative value it might have.
Plaintiff, in its briefs, has raised hearsay objections
to Debbie Remillard’s testimony (transcript pp. 48-60)
regarding her investigation of certain third parties’ uses
of FOOD TECH, and likewise objects to defendant’s
corresponding Exhibit Nos. 62-80 on the grounds of hearsay,
lack of foundation and lack of authentication. Initially,
the Board rejects defendant’s contention that plaintiff
waived its hearsay objections by failing to raise them
during Ms. Remillard’s deposition. Hearsay is a substantive
objection going to a defect in the evidence which could not
have been cured by defendant even if plaintiff had raised
the objection during the deposition. See Trademark Rule
2.123(k) and Fed. R. Civ. P. 32(d)(3)(A), and TBMP §718.04.2

2 To the extent that defendant is relying on Pass & Seymour, Inc.
v. Syrelec, 224 USPQ 845 (TTAB 1984) for the proposition that
hearsay objections are waived if not timely raised, defendant’s
reliance is misplaced. In that case, the defendant waited until
its brief on the case to object to certain exhibits introduced by
Opposition No. 99,676; Cancellation No. 24,523
5
The Board agrees with plaintiff that Ms. Remillard’s
testimony concerning what she was told by other persons
during her telephone conversations with such persons, and
her notes of those telephone conversations, are inadmissible
hearsay. See Fed. R. Evid. 802; Tiffany & Co. v. Classic
Motor Carriages Inc., 10 USPQ2d 1835, 1839 n.5 (TTAB 1989).
Accordingly, the Board sustains plaintiff’s objection to
such testimony from Ms. Remillard, and to defendant’s
Exhibit Nos. 62, 66, 68, 71-75 and 77-78. As for Exhibits
63-65, 67, 69-70 and 76, which are materials which Ms.
Remillard testified that she had asked for and received from
certain of the third parties she spoke with, the Board has
considered these materials, but only to the extent that they
prove that the third parties send out such materials upon
request. See Tiffany & Co., supra.
Next, plaintiff has objected to consideration of
defendant’s Exhibit Nos. 85-111, which are documentary
materials submitted by defendant under notice of reliance.

the plaintiff during a testimony deposition. The grounds for the
objections included, inter alia, that the exhibits were
inadmissible hearsay and that the plaintiff had failed to lay a
proper foundation for establishing that the exhibits fell within
the “business records” exception to the hearsay rule. Because
the foundation objection to the exhibits could have been cured if
seasonably raised, and because the hearsay objection was based
solely on the exhibits’ lack of proper foundation as “business
records,” the Board held that the defendant had waived both the
foundation and the hearsay objections. Thus, Pass & Seymour
actually involved a foundation objection, not a hearsay
objection, and the case does not stand for the proposition that
hearsay objections, in general, are waived if not raised
promptly.
Opposition No. 99,676; Cancellation No. 24,523
6
Plaintiff contends that these documents are irrelevant to
the extent that they fail to demonstrate third-party use of
FOOD TECH in connection with the specific services rendered
by plaintiff and defendant, and that they also are
irrelevant to the extent that they demonstrate use of FOOD
TECH by third parties in foreign countries. Plaintiff
further contends that certain of the exhibits consist of
materials which are not “printed publications” and which
therefore cannot be made of record by notice of reliance
under Trademark Rule 2.122(e).
Plaintiff’s relevancy objections are overruled. The
evidence pertaining to use of FOOD TECH by third parties in
foreign countries is derived from trade publications and
other proper sources which are published or made available
in the United States and which are directed to the relevant
purchasing public in the United States. This evidence is
relevant and admissible to the extent that it shows that
purchasers in this country are exposed to these articles,
listings and other published items concerning use of the
term FOOD TECH by third parties, including use in foreign
countries. As for the documents which pertain to third-
party use of FOOD TECH in connection with goods and services
which assertedly are not the same as plaintiff’s and
defendant’s services, plaintiff’s objection goes to the

Opposition No. 99,676; Cancellation No. 24,523
7
proper probative weight of the evidence, not to its
admissibility. The Board accordingly has considered this
evidence, and has taken care to accord it the proper
probative weight.
As for plaintiff’s objection on the ground that the
materials submitted by defendant under notice of reliance
are not “printed publications” admissible under Trademark
Rule 2.122(e), we overrule the objection in part and sustain
it in part. Defendant’s Exhibit Nos. 85-89 are standard
reference works and thus are admissible as printed
publications. Defendant’s Exhibit Nos. 91-95, 98-99 and 103
are electronically generated printouts, obtained from the
NEXIS and DIALOG databases, of articles from publications
of general circulation, and thus are admissible as printed
publications. See Weyerhauser v. Katz, 24 USPQ2d 1230 (TTAB
1992); TBMP §708. Defendant’s Exhibit Nos. 96 and 97 are
photocopies of the articles appearing in the actual printed
publications of general circulation. Defendant’s Exhibit
Nos. 104 and 105 are Dun & Bradstreet reports, which have
been held in the past to be admissible. See Tiffany & Co.,
supra; Stagecoach Properties Inc. v. Wells Fargo & Co., 199
USPQ 341, 354-57 (TTAB 1978). Accordingly, we overrule
plaintiff’s objections as to Exhibit Nos. 85-89, 91-99 and
103-105 and have considered this evidence for whatever
probative value it is worth.
Opposition No. 99,676; Cancellation No. 24,523
8
However, we sustain plaintiff’s objection to
defendant’s Exhibit Nos. 90, 100-102 and 106-111. Exhibits
101-102 and 106-111 are advertising and promotional
materials obtained from third parties’ Internet home pages.
Advertising and promotional materials are not printed
publications admissible under Trademark Rule 2.122(e). See,
e.g., Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., 201
USPQ 881 (TTAB 1979); Wagner Electric Corp. v. Raygo Wagner,
Inc., 192 USPQ 33 (TTAB 1976); TBMP §708. Such advertising
and promotional materials are not made admissible merely by
virtue of their accessibility via the Internet. Next,
defendant’s Exhibit No. 90 appears to be a printout of an
edition of an association’s newsletter which is published on
the Internet, and Exhibit No. 100 appears to be a printout
from the Internet of a current list of publications
published by and available from the Canadian Agricultural
Library. We cannot determine on this record that Exhibit
Nos. 90 and 100 were obtained from permanent-source printed
publications. Accordingly, they are not the equivalent of
NEXIS articles which would be admissible under notice of
reliance, but rather must be introduced by way of the
testimony of the person who performed the Internet search
and printed out the documents. Cf. Raccioppi d/b/a Apogee
Learning v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998). No
such testimony is of record in this case. In short, for the
Opposition No. 99,676; Cancellation No. 24,523
9
reasons discussed above, we have not considered defendant’s
Exhibit Nos. 90, 100-102 and 106-111.
Having ruled on the parties’ respective evidentiary
objections, we now shall address the merits of plaintiff’s
Section 2(d) claims. First, we find that plaintiff has
established that it has used the designation FOOD-TEK, at
least as a trade name, since a time prior to defendant’s
first use of its YOUR FOOD TECH PARTNER mark. Defendant
concedes as much. (Defendant’s Brief at p. 21.)
Plaintiff’s prior trade name use is sufficient to establish
plaintiff’s priority in this case. See Trademark Act
Section 2(d).3

3 In its brief, defendant has argued that the designation FOOD-
TEK is either generic for plaintiff’s services or that it is
merely descriptive and without secondary meaning as applied to
those services. Defendant has made these arguments as
alternatives to a third argument, i.e., that the designation
FOOD-TEK or FOOD TECH is weak and diluted by numerous third-party
uses, and that the mere presence of this designation in the
parties’ respective marks is an insufficient basis for finding
the marks to be confusingly similar. However, defendant did not
affirmatively allege in its answers to the notice of opposition
and the petition to cancel that FOOD-TEK is generic or merely
descriptive; those contentions were specifically made for the
first time in defendant’s brief on the case. Moreover, we cannot
conclude on this record that those issues were tried by the
express or implied consent of the parties, under Fed. R. Civ. P.
15(b). Because plaintiff was not on notice that the asserted
genericness and/or mere descriptiveness of the designation FOOD-
TEK would be at issue in this case, we have not considered
defendant’s arguments and evidence as to those matters.
Likewise, to the extent that defendant’s genericness and mere
descriptiveness arguments are intended to support a contention
that plaintiff does not have the requisite proprietary rights in
the designation FOOD-TEK which are essential to plaintiff’s
standing and to its Section 2(d) ground of opposition, see
generally Otto Roth & Company, Inc. v. Universal Foods
Corporation, 640 F.2d 1317, 209 USPQ 40 (CCPA 1981), we have not
considered the arguments. However, as part of our likelihood of
Opposition No. 99,676; Cancellation No. 24,523
10
We turn next to the issue of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
See In re E.I. du Pont de Nemours and Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
Defendant’s services, as recited in its application and
in its registration, are “providing information regarding
food ingredient use.” Plaintiff’s services, according to
the testimony of plaintiff’s president, include “prototype
development, product development, solv[ing] technical
problems, provid[ing] advice to food manufacturers as to
food processes and ingredients and regulatory guidance,
prototypes, and do[ing] reformulations.” (Finkel testimony
deposition at 3.) Likewise, plaintiff’s marketing brochure
states that plaintiff has “expertise in ingredient
technology” and specializes “in solving technical problems
relating to food preparation,” including in the areas of
product development, reformulation, cost control, regulatory
guidance, nutrition labeling, and pilot and prototype
production. (Plaintiff’s Exhibit No. 6.)
Defendant’s services, as recited in the application and
in the registration, are encompassed within and are

confusion analysis, we have considered all of the admissible
evidence of record as it pertains to the strength of, and the
Opposition No. 99,676; Cancellation No. 24,523
11
essentially identical to the services rendered by plaintiff.
Additionally, given the legally identical nature of the
parties’ respective services and the absence of any
restrictions in defendant’s recitations of services, we also
find that defendant’s recited services and plaintiff’s
services are offered in the same trade channels and to the
same classes of purchasers. These facts all weigh in
support of a finding of likelihood of confusion in this
case.
However, we find that defendant’s mark YOUR FOOD TECH
PARTNER and plaintiff’s trade name FOOD-TEK, when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression, are sufficiently
dissimilar that confusion is not likely to result from their
contemporaneous use, even if such use is in connection with
identical services offered in the same trade channels to the
same classes of customers. See Kellogg Co. v. Pack’Em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991).
Our finding that defendant’s mark is dissimilar to
plaintiff’s trade name is based primarily on the evidence of
record which establishes that FOOD TECH, the only element of
defendant’s mark which is at all similar to plaintiff’s
trade name FOOD-TEK, is at the very least a highly

scope of protection to be afforded to, the FOOD-TEK designation.
Opposition No. 99,676; Cancellation No. 24,523
12
suggestive term as applied to the parties’ services and as
used in the food industry. It is undisputed that “food
technology” is a generic term as applied to plaintiff’s and
defendant’s services, and the evidence of record establishes
that “food tech” would be understood by relevant purchasers
to be a shorthand way of saying “food technology.” It
appears from the record that:
-- “tech” is a recognized and commonly-used
abbreviation for “technology.” (Dictionary definition,
defendant’s Exhibit No. 88.)
-- Plaintiff’s president identifies himself as a
“food technologist”; he stated that in adopting the
name FOOD-TEK, he was trying to connote “food
technology”; he stated that he probably has used “food
tech” as a term of art to refer to “food technology.”
(Finkel Disc. Dep. at 30, 117.)
-- “Surfin’ the Food Tech Net” was used and
advertised as the theme of the Eastern Food Science
Conference X, held November 2-5, 1997 in Newport, Rhode
Island. (Defendant’s Exhibit No. 91.)
-- In an article from the January 25, 1995
edition of Journal (Ogden Newspapers 1995), it was
reported that Tim Louie, whose family manufactures
fortune cookies and other food products in Seattle,
Washington, “went to the University of Washington,
where he majored in small business administration. He
also took as many food tech classes as he could.”
(Defendant’s Exhibit No. 95.)
Moreover, the evidence of record shows that the term
FOOD TECH, and variants thereof, appear in the names of
numerous third parties throughout the food industry,

See discussion infra.
Opposition No. 99,676; Cancellation No. 24,523
13
including third parties engaged in services of the very type
provided by plaintiff and defendant:
-- from Prepared Foods (November 1997): “FMC Food
Tech is the new name of FMC’s expanded food machinery
business.” (Defendant’s Exhibit No. 94.)
-- from Dallas/Ft. Worth Business Journal (Feb.
29 – March 6, 1988): “However, for its new microwave
products, Zebbie’s turned to Food Tech, a research and
development company in Waxahachie [Texas].”
(Defendant’s Exhibit No. 96).
-- from Food & Drink Daily (Dec. 5, 1994): “Food
Tech’s irradiation facility is located ten miles from
headquarters in Plant City [Florida]. . .”
(Defendant’s Exhibit No. 97.)
-- from The Des Moines Register (Dec. 1, 1996):
“The three basic components of a successful new food
product are experience, time and money, says Carol
Lloyd of Austin Food Tech Inc., an Anaheim, Calif.,
contract food-product developer.” (Defendant’s Exhibit
No. 98.)
-- from Milling & Baking News (Oct. 21, 1997):
“Thomas E. Belshaw, Food Tec, Inc., Renton Wash.,
chairman of the International Baking Industry
Exposition Committee. . .” (Defendant’s Exhibit No.
103.)
-- from the 1997 IFT (Institute of Food
Technologists) Annual Meeting Program and Food Expo
Exhibit Directory (held June 14-18, 1997 in Orlando,
Florida): “FOODTECH DENMARK” is listed in the Directory
of Exhibitors (at p. 364). (Defendant’s Exhibit No.
18.)
-- from the July 1998 issue of Food Technology
(“A Publication of the Institute of Food
Technologists”) at page 97: the magazine’s “Reader
Service Reply Center” for information on products and
services advertised in the magazine features an
electronic inquiry service called “IFT FOODTECH
E.XPRESS.” (Defendant’s Exhibit No. 17.)
Opposition No. 99,676; Cancellation No. 24,523
14
Finally, it appears that numerous trade shows in the
food industry use variations of the term “food tech” in
connection with their trade shows, as is evidenced by the
references to such shows found in the U.S. trade press:
-- from the 1997 IFT (Institute of Food
Technologists) Annual Meeting Program and Food Expo
Exhibit Directory (held June 14-18, 1997 in Orlando,
Florida): “FOOD TECH EXPO ONLINE” is the name of IFT’s
“online exhibition containing easily searchable virtual
booths displaying exhibitor information on food
industry products and services to professionals
throughout the world.” (Defendant’s Exhibit No. 18.)
-- Trade Shows Worldwide – An International
Directory of Events, Facilities & Suppliers (Gale
Research, 13th Ed. 1998) includes listings for ten
different international trade shows directed to the
food technology, food processing, and food packaging
industries:
-- “Anuga FoodTec” (Germany)
-- “China Foodtech” (Hong Kong)
-- “Foodtech” (New Zealand)
-- “Foodtech Bangkok” (Bangkok)
-- “Foodtech” Hong Kong
-- “Foodtech” (Poland)
-- “Foodtech Russia” (Russia)
-- “Foodtech Shanghai” (China)
-- “Levant Foodtech” (Germany)
-- “PFP Expo/Foodtech South China (China)
-- from Food Engineering News (Dec. 1994): an
article about a trade show in Japan known as “Foodtech”
-- from Dairy Foods (Jan. 1993): an article about
a trade show in Germany called “DLG-Food Tech”
Based on this evidence that the term FOOD TECH is at
least highly suggestive and also used by numerous third
parties in the relevant industry, we find that purchasers
are not likely to assume, merely because plaintiff’s trade
Opposition No. 99,676; Cancellation No. 24,523
15
name is FOOD-TEK and because the words FOOD TECH also appear
in defendant’s mark, that a source, sponsorship or other
connection exists between defendant’s and plaintiff’s
respective services.
Moreover, we agree with defendant’s contention that its
mark YOUR FOOD TECH PARTNER, viewed in its entirety and in
light of the industry meaning and usage of the term FOOD
TECH, connotes that defendant is available to be the
customer’s partner in the customer’s endeavors in the field
of food technology. That “partnership” connotation is not
present in plaintiff’s trade name FOOD-TEK.
The difference in the respective connotations of
defendant’s mark and plaintiff’s trade name, along with the
other obvious differences between the respective
designations in terms of their appearance and sound, give
defendant’s mark and plaintiff’s trade name overall
commercial impressions which are sufficiently dissimilar to
preclude a finding of likelihood of confusion.
Because plaintiff has failed to establish the existence
of a likelihood of confusion, its Section 2(d) claims in the
opposition and the cancellation proceedings fail. No ground
for opposition or cancellation having been established, the
opposition and the cancellation accordingly are hereby
dismissed.
Opposition No. 99,676; Cancellation No. 24,523
16
However, it is apparent from defendant’s arguments and
evidentiary submissions that defendant deems the words FOOD
TECH to be generic and/or merely descriptive as applied to
services in the field of food technology.4 We note that the
recitation of services in defendant’s application Serial No.
74/529,590, the application involved in this opposition
proceeding, includes such services.
In view thereof, and assuming that defendant ultimately
prevails in this opposition proceeding (that is, assuming
that plaintiff does not appeal our dismissal of the
opposition within the time allotted by the rules and that
plaintiff does not prevail on any such appeal), the Board
shall remand application Serial No. 74/529,590 to the
Trademark Examining Attorney for a determination of whether
it is appropriate to require defendant to disclaim the words
FOOD TECH apart from the mark as shown, pursuant to
Trademark Act Section 6, 15 U.S.C. §1056. See Trademark
Rule 2.131, 37 C.F.R. §2.131; see generally TBMP §805.5
Decision: Opposition No. 99,676 and Cancellation No.
24,523 are dismissed. Application Serial No. 74/529,590

4 See supra at footnote 3.
5 Defendant’s Registration No. 1,896,675, involved in
Cancellation No. 24,523, is not affected by the Board’s remand of
application Serial No. 74/529,590.
Opposition No. 99,676; Cancellation No. 24,523
17
shall be remanded to the Trademark Examining Attorney for
reexamination pursuant to Trademark Rule 2.131.
E. J. Seeherman
H. R. Wendel
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board